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
Applicant’s election without traverse of Group I, claims 1-13, in the reply filed on 12 November 2025 is acknowledged.
Claims 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 November 2025.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 17 December 2024 was considered by the examiner.
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 1-14 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.
In regards to independent claim 1, this claim sets forth the limitation “(Bi+Sb)/(Sn+Zn) in between 0.5 and 3.0 wt. percent” in the sixth line of the claim. The metes and bounds of this particular limitation cannot be determined since the calculation of (Bi+Sb)/(Sn+Zn) would not result in a value having a weight percent since the weight percents of Bi and Sb would cancel the weight percents of Sn and Zn. Therefore, the resulting ratio cannot be in wt. percent. For the purposes of examination the Office is interpreting this limitation as “(Bi+Sb)/(Sn+Zn) in between 0.5 and 3.0”.
Further regarding claim 1, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation at least 4 times higher than the hardness of lead in the HVN scale, and the claim also recites a hardness of 18 HVN, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the Office is interpreting this narrower language to be merely exemplary of the remainder of the claim and therefore not required.
In further regards to independent claim 1, this claim sets forth the limitation “at least 4 times higher than the hardness of Lead in the HVN scale” in the tenth and eleventh lines of the claims. The metes and bounds of this particular limitation since it is not clear which hardness of lead one should use in order to determine this value. Lead can be deposited in multiple forms and by various methods. The hardness can be affected by the form the lead is in and/or the method utilized to form the lead. For the purposes of examination the Office is construing this to mean lead in any form and formed by any method.
As to dependent claims 2-13, these dependent claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, claims 2-13 are rejected for the reasons set forth above in regards to independent claim 1.
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.
Claims 1-13 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0144975 (Marya).
In regards to independent claim 1 and dependent claim 6, Marya is directed to alloys that are used in embodiments relating to fluid isolation alloys. (¶1)
The alloy can be used as a coating for a body. (¶29) For example, the alloy can be used to coat steel, galvanized metal, or other metal bodies. (¶29) In the example of a galvanized metal, the galvanization includes zinc, which is reactive with copper and forms an intermetallic with copper. Therefore, the galvanization corresponds to the claimed first layer.
The alloy can include greater than 50 wt. % to less than 65 wt. % bismuth; greater than 35 wt. % to less than 50 wt. % tin; about 0.01 wt. % to about 2.5 wt. % indium; and at least one of: about 0.01 wt. % to about 2.5 wt. % antimony, about 0.01 wt. % to about 0.5 wt. % gallium, about 0.01 wt. % to about 4 wt. % zinc, and about 0.01 wt. % to about 2.5 wt. % chromium, where all weight percent values are based on a total weight of the alloy. (¶5) These compositional ranges overlap the claimed ranges and includes values that meet the claimed ratio. As seen in Table 2, the HVN of the resulting alloys taught by this reference include values that fall within the claimed range.
As to claim 2, Marya sets forth various components in which the material may be used, including wires, cables, hoses, pumps, casings, tubes, pipes, conduits, etc. (¶26-¶29) The thickness of the product would depend on the intended use of the final product. Likewise, such products would be expected to have the claimed thickness. Further, the change in size would be a mere change in the relative dimensions and would result in a product that does not perform differently than the prior art. Therefore, the products of the prior art would be expected to include values that fall within the claimed thickness range.
As to claim 3, a polymeric insulation can be provided, which would liquefy within the claimed temperature range. (¶28)
As to claim 4, Marya does not set forth the presence of intermetallic phases. Likewise, the composition overlaps the claimed range. Therefore, the product of the prior art would be expected to have intermetallic phases, if any, that fall within the claimed range.
As to claim 5, Marya teaches a galvanized steel. The zinc layer of the galvanization can include portions that are considered a first layer versus an underlayer, including where the zinc has diffused into the steel. Accordingly, a portion of the galvanization can be considered to be a first layer with the remainder being considered to be a galvanized steel.
As to claims 7-13, the alloy can be used to coat a wire, a cable, a hose, or other elongated element. Illustrative elongated elements can include, but are not limited to, electrical wires or cables, fiber optic cables, pneumatic hoses, or the like. (¶28) The wire may be a component of a submersible pump. (¶28) In a downhole environment, illustrative voids can include, but are not limited to, the wellbore; cracks, perforations, or other openings in a casing, tube, pipe, or other conduit; voids located within a subterranean formation; fluid passage ways within downhole tools, e.g., ports in sand screens and downhole chokes and valves; and any other void that may be desired to seal either permanently or temporarily. (¶26) This would include downhole centralizers. The alloy can be used as a coating for a body, e.g., a metal body. (¶29) The alloy can be used to coat any field part, e.g., downhole tools, downhole pipes or conduits, surface equipment, or the like. (¶29) Such pieces can be considered to have portions that are intentionally degradable.
Claims 1, 3, 4, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over CN 112410636 (CN ‘636).
In regards to independent claim 1, CN ‘636 is directed to multi-layer composite thermal conductive sheet. (Line 11) The multi-layer composite sheet comprises an outer alloy and a core layer, the core layer is located between the outer layer alloys, the core layer is a metal with a melting point of between 145 and 165 C. (Lines 41-43) The melting point of the outer layer alloy is between 60 and 80 C. (Line 43)
The core layer may be an indium foil. (Line 45) This material corresponds to a first layer that is reactive to at least one of copper and zinc and produces an intermetallic when in contact with at least one of solid copper and zinc.
The outer layer alloy includes 20 to 40 parts of bismuth, 40 to 70 parts of indium, 0 to 30 parts of tin, and 0 to 2 parts of zinc. (Lines 47-48) These compositional ranges overlap the claimed ranges. As claimed, the amount of antimony and zinc may be zero values. It appears from the specification that the ratio and compositional ranges of the elements as set forth in the instant claims results in the claimed hardness values. (See ¶45 and ¶54 of Specification) Therefore, since the prior art teaches compositional ranges that overlap the claimed ranges, it would likewise be expected that within these overlap the resulting product would meet the hardness limitations.
As to claim 3, the multi-layer composite sheet comprises an outer alloy and a core layer, the core layer is located between the outer layer alloys, the core layer is a metal with a melting point of between 145 and 165 C. (Lines 41-43) One outer layer alloy corresponds to the claimed second layer and the other corresponds to the third layer. The melting point of the outer layer alloy is between 60 and 80 C. (Line 43) Therefore, the layer would liquefy when subjected to the temperatures between the claimed ranges.
As to claim 4, CN ‘636 does not set forth the presence of intermetallic phases and sets forth compositional ranges that overlap the claimed ranges. Therefore, it would be expected that the amount of the intermetallic phases would fall within the claimed range.
As to claim 7, the product is capable of conveying electrical energy. Therefore, the product of the prior art would meet the claimed limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784