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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-8, drawn to a high-performance refractory high entropy alloy, classified in C22C 27/02.
II. Claims 9-17, drawn to a method for producing a high-performance refractory entropy alloy, classified in C22F 1/02.
The inventions are independent or distinct, each from the other because:
Inventions II and I 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 product as claimed can be made by another and materially different process such as powder metallurgy.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The inventions have acquired a separate status in the art in view of their different classification.
The inventions have acquired a separate status in the art due to their recognized divergent subject matter.
The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with AARON KEITH on 09 JUNE 2026 a provisional election was made WITHOUT traverse to prosecute the invention of a high-performance refractory high entropy alloy, claims 1-8. Affirmation of this election must be made by applicant in replying to this Office action. Claims 9-17 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
The disclosure is objected to because of the following informalities:
The specification is presented in a form not having sufficient clarity and contrast between the paper and the writing thereon to permit the direct reproduction of readily legible copies in any number by use of photographic, electrostatic, photo-offset, and microfilming processes and electronic capture by use of digital imaging and optical character recognition. See instant specification paragraphs [0002]-[0005], [0051]-[0052], [0064], [0086]-[0089].
Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-8 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.
Regarding claims 1-8, the term “high-performance refractory high entropy alloy” in claims 1-8 is a relative term which renders the claims indefinite. The aforementioned term is not defined by the claims, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As neither the specification nor the claims provide an explicit definition for the term, it is unclear what specific values, performance and ranges would be required to meet the recited refractory and entropy as recited in the claims.
Regarding claims 1-8, instant claim 1 requires “Al between approximately 0 and approximately 10 at %, Cr between approximately 0 and approximately 10 at %”. Instant specification recites “The terms “about” and “approximately” generally refer to a range of numbers that one of skill in the art would consider equivalent to the recited value (e.g., having the same function or result). In many instances, the terms “about” and “approximately” may include numbers that are rounded to the nearest significant figure.” MPEP 2173.05 provides that “In determining the range encompassed by the term "about" , one must consider the context of the term as it is used in the specification and claims of the application. Ortho-McNeil Pharm., Inc. v. Caraco Pharm. Labs., Ltd., 476 F.3d 1321, 1326, 81 USPQ2d 1427, 1432 (Fed. Cir. 2007). InW.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), the court held that a limitation defining the stretch rate of a plastic as "exceeding about 10% per second" is definite because infringement could clearly be assessed through the use of a stopwatch. However, in another case, the court held that claims reciting "at least about" were invalid for indefiniteness where there was close prior art and there was nothing in the specification, prosecution history, or the prior art to provide any indication as to what range of specific activity is covered by the term "about." Amgen, Inc. v. Chugai Pharmaceutical Co., 927 F.2d 1200, 18 USPQ2d 1016 (Fed. Cir. 1991).” It is noted that there is no disclosure regarding the measurement error associated with the term “about” or “approximately” thereby making it unclear to determine the range of the constituent elements resulting in the claims not clearly setting forth the metes and bounds of the patent protection desired. Claims 2-8 are dependents of claim 1, do not resolve the issue and thereby also indefinite.
Regarding claims 3-8, claim 3 requires “The high-performance refractory high entropy alloy of claim 2 wherein the alloy is configured to precipitate MC carbides within the solid solution with a BCC structure when annealed.” The recitation “the alloy is configured to precipitate MC carbides within the solid solution with a BCC structure when annealed” is an intended use or a functional limitation of the alloy, the intended use or functional limitation being dependent on a manipulation which would transform the alloy into something else. Therefore, it is unclear whether the instant product claim that is directed to the alloy (see 1st line of the claim that recites “The high-performance refractory high entropy alloy of claim 2”) is requiring the alloy to be in intermediate, in final or in both of the product states. Claims 4-8 are dependents of claim 1, do not resolve the issue and thereby also indefinite.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by B393–18: Standard Specification for Niobium and Niobium Alloy Strip, Sheet, and Plate of ASTM International (NPL’1).
List 1
Element
Instant Claims
(at%)
Prior Art
Type 1
(mass%)
Prior Art
Type 3
(mass%)
Nb
≥ 30
Balance
Balance
Ta
≤ 20
max 0.1
max 0.1
Ti
≤ 30
max 0.02
max 0.02
Mo
≤ 30
max 0.010
max 0.010
Hf
≤ 5
max 0.02
max 0.02
Zr
≤ 5
max 0.02
0.8 to 1.2
C
≤ 5
max 0.01
max 0.01
V
≤ 20
-
-
Al
between ~ 0 and ~ 10
max 0.002
max 0.002
Cr
between ~ 0 and ~ 10
max 0.002
max 0.002
W
≤ 10
max 0.03
max 0.03
B
≤ 1
max 2 ppm
max 2 ppm
Y
≤ 1
-
-
Regarding claims 1-2, B393–18: Standard Specification for Niobium and Niobium Alloy Strip, Sheet, and Plate of ASTM International (NPL’1) teaches commercially available Type 1 Reactor Grade Unalloyed Niobium R04200 and Type 3 Reactor Grade Niobium–1% Zirconium alloy R04251.
MPEP provides PRIOR ART WHICH TEACHES A RANGE OVERLAPPING OR TOUCHING THE CLAIMED RANGE ANTICIPATES IF THE PRIOR ART RANGE DISCLOSES THE CLAIMED RANGE WITH "SUFFICIENT SPECIFICITY" When the prior art discloses a range which touches or overlaps the claimed range, but no specific examples falling within the claimed range are disclosed, a case by case determination must be made as to anticipation. In order to anticipate the claims, the claimed subject matter must be disclosed in the reference with "sufficient specificity to constitute an anticipation under the statute." What constitutes a "sufficient specificity" is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with "sufficient specificity" to constitute an anticipation of the claims. Compare ClearValue Inc. v. Pearl River Polymers Inc., 668 F.3d 1340, 101 USPQ2d 1773 (Fed. Cir. 2012) with Atofina v. Great Lakes Chem. Corp, 441 F.3d 991, 999, 78 USPQ2d 1417, 1423 (Fed. Cir. 2006). In ClearValue, the claim at issue was directed to a process of clarifying water with alkalinity below 50 ppm, whereas the prior art taught that the same process works for systems with alkalinity of 150 ppm or less. In holding the claim anticipated, the court observed that "there is no allegation of criticality or any evidence demonstrating any difference across the range." Id. at 1345, 101 USPQ2d at 1777. In Atofina, the court held that a reference temperature range of 100-500 degrees C did not describe the claimed range of 330-450 degrees C with sufficient specificity to be anticipatory, even though there was a slight overlap between the reference’s preferred range (150-350 degrees C) and the claimed range. "[T]he disclosure of a range is no more a disclosure of the end points of the range than it is each of the intermediate points." Id. at 1000, 78 USPQ2d at 1424. Patentee described claimed temperature range as "critical" to enable the process to operate effectively, and showed that one of ordinary skill would have expected the synthesis process to operate differently outside the claimed range. See MPEP § 2131.03 I.
In the instant case, the prior art teaches two commercially available materials of Niobium and its alloy, Type 1 and Type 3, their compositions and effectively discloses the claimed range with “sufficient specificity” as shown in the List 1 above thereby anticipating the alloy of the instant claims.
Type 1 Reactor Grade Unalloyed Niobium R04200 and Type 3 Reactor Grade Niobium–1% Zirconium R04251 are refractory alloys as Nb is a refractory element and is the major component of the pure Type 1 and the alloyed Type 3.
Regarding claim 2, Nb has a BCC structure (Type 1) and one skilled in art also recognizes that Type 3, Nb-1Zr alloy, R04251 also has a BCC structure.
Regarding claims 3-8, the limitations are interpreted as an intended use or a functional limitation of the alloy, the intended use or functional limitation being dependent on a manipulation which would transform the alloy into something else.
In the instant case, the prior art teaches Type 3, Nb-1Zr alloy, R04251, which would meet all of the recited limitations.
In the alternative, Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “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. The prior art teaches Type 3, Nb-1Zr alloy, R04251, which is identical or substantially identical in structure or composition to what is recited in instant claim 2. Therefore, it is expected that the alloy of the prior art would be capable of attaining the claimed capabilities since the claimed and prior art products are identical or substantially identical in structure or composition. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Conclusion
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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