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 & Status of Claims
Claims 1, 3-11 and 13-17 are examined of which claims 1, 8 and 10-11 have been amended and claims 13-17 are newly added claims.
Claims 12-13 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 31 March 2026 (affirmed on 08 JULY 2026).
Drawings
The drawings are objected to because Fig. 1 to 7 (submitted on 7/8/2026) contain illegible characters and curves. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 10 and 17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 10 was amended to remove “the balance being iron and any unavoidable impurities” while claim newly added claim 10 recites only the compositional ranges of Mn, C, Si, Ni, Cr, Ti and B. However, the disclosure teaches that the metallic core is iron based with composition of the other elements limited to specific ranges. The specification does not teach a metallic core that is not iron based as being claimed by the instant claims with limitation of ranges to only certain elements without the balance being iron and unavoidable impurities.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 3-11 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0147733 A1 of Kiriyevsky (US’733).
Regarding claims 1, 3-4 and 16, US 2020/0147733 A1 of Kiriyevsky (US’733) teaches [0005] “welding electrodes having low manganese content” [0006] “a composition comprising manganese or a compound thereof, a cellulosic material, a carbonate, titanium, and at least one member selected from the group consisting of: an alloying agent, a slag-forming agent, an arc-stabilizing agent, and any combination thereof, wherein the cellulosic material is present at a concentration of 1% to 40%, by weight, and wherein the manganese or a compound thereof is present at a concentration of 0.5 to 5%, by weight” “[0007] In some embodiments, the carbonate comprises calcium carbonate. [0008] In some embodiments, the composition further comprises fluorite. [0009] In some embodiments, the composition further comprises boron, or any combination thereof. [0010] In some embodiments, the composition further comprises nickel at a concentration of less than 1%, by weight. In some embodiments, the composition is devoid of nickel. [0011] In some embodiments, the composition comprises cellulosic material, a compound comprising boron, nickel, or any combination thereof. In some embodiments, the boron compound is selected from: boric acid and borax. [0012] In some embodiments, the weight content of the boron is in the range of 0.004-0.2%. In some embodiments, the weight content of the nickel is in the range of 0.1-0.2%. [0013] In some embodiments, the cellulosic material is present at a concentration of 20 to 40%, by weight. [0014] In some embodiments, the cellulosic material is selected from the group consisting of: sodium carboxyl methyl cellulose, hydroxyl ethyl cellulose, and a combination thereof. [0015] In some embodiments, the composition further comprises a deoxidizer. In some embodiments, the deoxidizer comprises a material selected from the group consisting of chromium oxide, ferroalloy material, and a combination thereof.” [0030] “the composition is in the form of a coating on a substrate” “[0016] In some embodiments, the deoxidizer comprises a material selected from the group consisting of ferrosilicon, ferrotitanium, zircon, and a combination thereof.” [0031] “the substrate comprises one or more metals” [0032] “an article comprising a metal wire, and the composition described herein in the form of a coating on the metal wire” [0035] “the coating is in the form of a welding flux” [0036] “In some embodiments, the article is a shielded arc electrode. In some embodiments, the shielded arc electrode is a welding consumable.” “[0024] In some embodiments, the deoxidizer is present at a concentration of 4 to 10%, by total weight. In some embodiments, the deoxidizer is present at a concentration of 10 to 18%, by total weight.” “[0058] In some embodiments, the deoxidizer is present at a concentration of 2% to 15%, by weight. In some embodiments, the deoxidizer is present at a concentration of 2% to 12%, by weight. In some embodiments, the deoxidizer is present at a concentration of 4% to 12%, by weight. In some embodiments, the deoxidizer is present at a concentration of 4% to 10%, by weight. In some embodiments, the deoxidizer is present at a concentration of 10% to 20%, by weight. In some embodiments, the deoxidizer is present at a concentration of 10% to 18%, by weight.” “[0173] In some embodiments, the article comprises the coating described herein, is in the form of a welding flux. [0174] The phrase “welding flux” refers to the insulating covering of the metal core welding wire.” “[0194] In some embodiments, the welding consumable comprises (by weight) 1-4% ferromanganese, 2-4% ferromanganese, or 2-3% ferromanganese. In some embodiments, the welding consumable comprises (by weight) 0.3-2% boron, 0.5-2% boron, or 0.5-1.5% boron.” “[0195] In some embodiments, the welding consumable comprises (by weight) at least 0.5% carbonate, at least 1% carbonate, at least 1.5% carbonate, at least 2% carbonate, at least 2.5% carbonate, at least 3% carbonate, or 3.5% carbonate.” thereby reading on welding consumable, the metallic core; and a flux coating with the recited composition of instant claims 1, 3-4, and 16. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the similar property/utility throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 5, the prior art teaches “[0019]In some embodiments, the arc-stabilizing agent comprises iron.” “[0121] In some embodiments, the arc-stabilizing agent is present at a concentration of 10% to 40%, 15% to 35%, 15 to 28%, 20% to 30%, or 25% to 35%. In some embodiments, the arc-stabilizing agent is present at a concentration of 10%, 15%, 20%, 25%, 30%, 35%, or 40%, including any value and range therebetween” thereby reading on the instant claim. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claims 6 and 7, the prior art teaches “[0007] In some embodiments, the carbonate comprises calcium carbonate” thereby reading on the instant claim. “[0025] In some embodiments, the carbonate is present at a concentration of 15 to 40%, by total weight. In some embodiments, the carbonate is present at a concentration of 15 to 22%, by total weight. In some embodiments, the carbonate is present at a concentration of 25 to 35%, by total weight.” “[0151] In additional exemplary embodiments, the composition comprises (percentages are by weight) 1.5-4% (e.g., 1.5%, 2%, 2.5%, 3%, 3.5% or 4%, including any value and range therebetween) ferromanganese, 4-10% (e.g., 4%, 5%, 6%, 7%, 8%, 9% or 10%, including any value and range therebetween) ferro-alloys deoxidizer, 15-30% iron powder (e.g., 15%, 20%, 22%, 24%, 26%, 28% or 30%, including any value and range therebetween), 25-30% carbonate(s) (e.g., 25%, 26%, 27%, 28%, 29%, or 30%, including any value and range therebetween), 25-30% fluorspar (e.g., 25%, 26%, 27%, 28%, 29% or 30%, including any value and range therebetween), 8-18% slag formers (e.g., 8%, 9%, 10%, 11%, 12%, 13%, 14%, 15%, 16%, 17%, or 18%, including any value and range therebetween), 0.5-1.5% boric Acid (e.g., 0.5%, 1%, or 1.5%, including any value and range therebetween), 0.5-2% slipping agent (e.g., 0.5%, 1%, 1.5% or 2%, including any value and range therebetween), and 0.1-0.4% nickel powder (e.g., 0.1%, 0.2%, 0.3%, or 0.4%, including any value and range therebetween).” thereby reading on the recited limitations of the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claims 8 and 9, the prior art teaches “[0134] In some embodiments, the composition comprises rutile. In some embodiments, the rutile weight content is in the range of from 5% to 70%.” “[0018] In some embodiments, the arc-stabilizing agent comprises a material selected from the group consisting of: titania, metal carbonate, potassium titanate, and any combination thereof.” “[0026] In some embodiments, the arc stabilizer is present at a concentration of 15 to 35%, by total weight.” “[0125] In some embodiments, the composition comprises feldspar, e.g., potassium feldspar. In some embodiments, the potassium feldspar weight content is in the range of from 0.1% to 15%.” “[0132] In some embodiments, the composition comprises sodium bentonite. In some embodiments, the sodium bentonite weight content is in the range of from 0.1% to 15%.” “[0133] The phrase “sodium bentonite” refers herein to absorbent aluminum phyllosilicate clay.” “[0013] In some embodiments, the cellulosic material is present at a concentration of 20 to 40%, by weight. [0014] In some embodiments, the cellulosic material is selected from the group consisting of: sodium carboxyl methyl cellulose, hydroxyl ethyl cellulose, and a combination thereof.” thereby reading on the recited limitations of the instant claims. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 10, 14 and 17, the prior art teaches “[0135] In some embodiments, the composition is in the form of a coating on a substrate. In some embodiments, the substrate comprises one or more metals. In some embodiments, the metal is an iron based alloy. In some embodiments, the iron based alloy is selected from, without being limited thereto, cast iron, and ductile iron, steel alloy comprising e.g., carbon steel, low and high alloy steel, stainless steel, cast iron, or ductile iron. In some embodiments, the metal is a nonferrous material. In some embodiments, the nonferrous material is selected from, without being limited thereto, nickel and copper, and their alloys, and aluminum.” and further teaches E7018 weld metal electrodes (Table 3, 4, [0242], [0244] as well as typical composition of weld metals ([0246]-[0247], Table 5) thereby reading on the instant recited limitations. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 11, instant claim is a capability or a property attained upon performing a future action on the welding consumable. As the prior art teaches a substantially identical product (see claim 1 analysis above), it would also be capable to attain the property as recited in the instant claim. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Moreover, the prior art teaches “[0227] In order to reduce manganese, a partial substitution with nitrogen was examined. Nitrogen substitution was attained by partially and gradually substitution of ferromanganese powder in flux coating by nitronized ferromanganese or nitronized manganese powders. Experiments of manganese measurements in fume showed that the manganese quantity in the fume was reduced but also that manganese content in weld metal was decreased respectively, which brought to severe dropping in mechanical properties of weld metal. The addition of nitrogen further caused ricing of yield point and UTS values and some tendency to a formation of porosity in weld metal.” [0234]-[0245] “Preliminary manganese emission measurements showed that the quantity of manganese compounds in the fume were decreased significantly, at least in 2 to 2.5 times compared to Z-11 electrode.” “Further Low Manganese Flux Composition” “In exemplary procedures, manganese content was reduced twice in comparison with regular E7018 electrodes. An exemplary source of manganese was ferromanganese powder and its content was reduced compared to regular ˜6% in flux coating to ˜3%.” thereby meeting the Mn emission requirements of the instant claim.
Regarding claim 15, the prior art does not teach that the carbon in the flux coating is provided as graphite and/or carbon black. However, one skilled in art recognizes that graphite and carbon black are carbon sources that are routinely used in the art for adding carbon. Therefore, it 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 to take the flux of US’733 and add use graphite and/or carbon black as carbon sources because these are commonly used common sources of carbon in the art.
Response to Arguments
Applicant's arguments filed 07/08/2026 have been fully considered but they are not persuasive.
Regarding the arguments that the prior art “fails to reach (sic) or suggest the combination of features of claim 1, as noted above, the prior art teaches the limitations and reads on the recited ranges.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., "strength, toughness and/or hardness properties") are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). See MPEP § 716.02(d). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP § 716.02(d) II. However, in the instant case, the instant claimed ranges are retreated ranges from the originally disclosed ranges and there is no data in the instant specification that clearly demonstrates the criticality of the claimed range and therefore the claimed range is deemed obvious over the prior art teachings.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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