DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-17, drawn to a method of producing a gradient nano-grained surface layer on an alloy, classified in B24C 1/00.
II. Claims 18-21, drawn to a surface mechanical attrition treatment (SMAT) alloy, classified in C22C 21/00.
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the surface mechanical attrition treatment (SMAT) alloy as claimed can be made by another and materially different process such as a process wherein the coating on the milling media is formed by physical vapor deposition or sputtering.
Through a voicemail message by Molly Payne on 4/24/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-17. Affirmation of this election must be made by applicant in replying to this Office action. Claims 18-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Claim Objections
Claim 17 is objected to under 37 CFR 1.75(c) as being in improper form because a multiple dependent claim 17 depend on multiple dependent claims 15-16. See MPEP § 608.01(n).
For the purpose of compact prosecution, claim 17 is examined as if it depends on parent claim 1.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8-9, 11 and 15-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 recites “wherein the base alloy comprises 7075 aluminum alloy, 2024 aluminum alloy, 5083 aluminum alloy and 6061 aluminum alloy”. The way claim 8 is drafted can be interpreted to mean that the claimed base alloy comprises all four of 7075, 2024, 5083 and 6061 aluminum alloys. However, the embodiments provided by the instant specification only use one type of aluminum alloy in each embodiment[0068] It is unclear if scope of claimed based alloy includes any of the 7075, 2024 and 5083 aluminum alloys to a combination of claimed 7075, 2024 and 5083 aluminum alloys.
Claim 9 recites the limitation "more cathodic precipitates" in line 2. There is insufficient antecedent basis for this limitation in the claim. Additionally, the parent claim 1 does not set forth how or whether any cathodic precipitates were produced, it is unclear as to what is considered as “more cathodic precipitates” and how they can be avoided.
Claim 11 recites the limitation "the metal" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claims 15-16 are also rejected since they depend on vague and indefinite claims 8 and 11.
Claim 17 recites “wherein the elemental components of the SMAT alloy are not changed compared to the base alloy”. However, instant claim as well as the corresponding sections of instant specification do not clearly disclose what aspects of the elemental components of the SMAT alloy the claim is referring to. It is not clear if it is the amounts or the microstructures of the elemental components of the SMAT alloy that are not changed. It is also not clear if the limitation is referring to the chemical composition of the SMAT alloy, which is not changed compared to the base alloy. Therefore, claim 17 is vague and indefinite.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-5, 9-10 and 12-17 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN 102560508 (CN508).
CN508 teaches a process for modifying surface of a metal material through surface mechanical grinding(abstract), wherein Fig. 1 of CN508, its related discussions, as well as Embodiment 2 of CN508 disclose stainless steel balls(i.e. milling media) and a steel base alloy placed inside a vibration generator, which also contains Cr powders on the bottom of the vibration generator. The steel base alloy is subjected to a surface mechanical attrition treatment by imparting the steel base alloy with the stainless steel coated with the Cr powder to form a SMAT alloy[0035-0036].
Regarding claim 1, since a SMAT treatment imparts surface grain refinement to form a gradient nanocrystal surface layer on a metal material, the examiner concludes that the process of CN508 would have produced a gradient nano-grained surface layer on the steel base alloy of CN508 as claimed.
Alternatively, it would have been obvious to one of ordinary skill in the art to have found the gradient nano-grained surface layer on the steel base alloy of CN508, since CN508 teaches a process utilizes the same SMAT treatment technique on a metal alloy as claimed.
Regarding claims 2-4, CN508 further teaches a vacuum annealing step after the SMAT treatment, which may also read on the claimed aging step.
Regarding claim 5, the stainless steel balls as taught by CN508 reads on the claimed milling media.
Regarding claim 9, CN508 does not teach that the Cr powder would induce more cathodic precipitation.
Regarding claim 10, CN508 further teaches that the metal base alloy to be treatment may be 304 and 316L stainless steel[0002], which comprises Cr. Therefore, the Cr powder of CN508 reads on the claimed powder comprising a metal found in the base alloy.
Regarding claims 12-13, the Cr powder used in SMAT treatment of a steel base alloy as taught by embodiment 2 of CN508 reads on the claimed metal not found in the base alloy since the steel base alloy in embodiment 2 of CN508 is a 45 steel which does not contain Cr.
Regarding claim 14, CN508 further teaches that the SMAT treatment takes place at room temperature[0003].
Regarding claims 15-16, since the steel base alloy of CN508 is treated by a process that has the same steps as the claimed process, the examiner concludes that the SMAT alloy of CN508 would have exhibited improved corrosion resistance as claimed.
Regarding claim 17, since the steel base alloy of CN508 is treated by a process that comprises the same process steps as claimed, one of ordinary skill in the art would have expected that the SMAT alloy produced by CN508 to be the same as the SMAT alloy produced by the claimed method, wherein the elemental components of the SMAT alloy of CN508 are not changed compared to the base alloy.
Claim(s) 7-8 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN508.
The teachings of CN508 are discussed in section 10 above.
Regarding claims 7-8 and 11, CN508 further teaches that the base metal material to be treated by SMAT treatment may be Al[0002]. Therefore, one of ordinary skill in the art would have also expected that the SMAT treatment process as taught by CN508 can also be applied to any Al based alloys with expected success, including the claimed 7075, 2024, 5083 and 6061 aluminum alloys, absent persuasive evidence to the contrary.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN508 and further in view of Kecskes et al. US 2016/0114462(Kecskes).
The teachings of CN508 are discussed in sections 10-11 above.
However, CN508 does not explicitly teach that the stainless steel balls(i.e. milling media) comprises the claimed 440C stainless steel.
Kecskes teaches a method for producing a nanostructured metal material wherein SMAT treatment is used to grain refinement(abstract, [0020]), wherein 440C stainless steel balls are used during the SMAT treatment[0041].
Regarding claim 6, it would have been obvious to one of ordinary skill in the art to have incorporated the 440C stainless steel balls as taught by Kecskes into the stainless steel balls used in the SMAT treatment of CN508 with expected success since CN508 does not have any limitations on its stainless steel balls and Kecskes’ teaching shows that 440C stainless steel balls are suitable for use as a milling media in a SMAT treatment process.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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