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 Acknowledged
Applicant’s election without traverse of Group I, claims 1-17, in the reply filed on 09/15/2025 is acknowledged. Newly added claims 21-23 will be grouped with Group I and examined alongside claims 1-17.
Status of Claims
Claims 1-17 and 21-23 are pending and presented for examination on the merits.
Claims 1-17 are original. Claims 21-23 are new.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120 as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 16/731,292, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The prior-filed application does not provide adequate support for claim 17 of the instant application. The limitation reciting that the bulk amorphous alloy has a grain size of about 100 micron or less is not found in the prior-filed specification. The prior-filed specification states that the BAM alloy coating can be nanocrystalline, as defined by having a grain size of 100 nm or less (para. [00125]). However, this disclosure says nothing about the grain size of an amorphous alloy coating. Therefore, claim 17 is not entitled to the filing date of the prior-filed application and will be accorded a filing date of the date the claim was originally filed, i.e., 09/05/2023.
Claim Objections
Claims 4 and 9 are objected to because of the following informalities:
Regarding claim 4, the phrase “is about” is unnecessarily repeated twice in succession.
Regarding claim 9, the claim contains a grammatical informality. The term “is” should be replaced with “of” in the phrase “the coating has an abrasion resistance as measured via ASTM G65 is less than 1 gram.”
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.
Claims 1-17 and 21-23 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 claim 1, the claim is indefinite because of lack of clarity. The bulk amorphous alloy formula contain Cr designated by subscript ‘a.’ However, the remainder of the claim does not set forth any particular numerical quantity for the Cr content. Therefore, it is unclear whether Cr is a required element or whether Cr is optional, i.e., can be zero percent.
Further regarding claim 1, the claim is indefinite because of an internal inconsistency. The claim recites that the maximum amount of B and C are about 5 wt.% and about 2 wt.%, respectively. This means that the calculated maximum total amount of B and C (C+B) is about 7 wt.%. However, the claim also recites that C+B can be as high as about 10 wt.%, which exceeds the maximum B and C sum of 7 wt.%. Thus, the individual ranges of B and C conflict with the C+B range because the sum of the endpoints of the individual B and C ranges could never reach an amount of 10 wt.%.
Regarding claims 2-17 and 21-23, the claims are likewise rejected, as they require all limitations of rejected claim 1.
Further regarding claim 16, there is insufficient antecedent basis for the limitation “the tungsten carbide” in the claim.
Further regarding claim 17, the claim is indefinite because it is contradictory. The claim recites that the bulk amorphous alloy has a grain size of about 100 micron or less. Because amorphous alloys lack crystallinity, by definition, then they cannot contain crystals or possess a grain size up to 100 microns. The claim does not recite any inclusion of a crystalline phase in the bulk amorphous alloy. Therefore, the claim does not align with the microstructural character of the alloy.
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, 3-12, 15, 16, and 21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107527702 (A) to Xu et al. (“Xu”) (abstract and computer-generated translation are attached).
Regarding claims 1 and 7, Xu discloses a coating containing an amorphous phase (bulk amorphous alloy coating). Para. [0042]. The composition of the coating includes the following elements in percent by weight (para. [0038]):
Element
Claim 1 (wt.%)
CN 107527702 A (wt.%)
Example 1
B
0 to about 5
1.5
C
0 to about 2
1
Si
0 to about 2
2
Mn
0 to about 5
2
Mo
0 to about 20
14
W
0 to about 10
5
C+B
about 2 to about 10
2.5
Fe
balance
remainder
The alloy also contains Cr. Para. [0038].
Examples 2, 3, and 4 further disclose specific alloys that fall within the claimed ranges. Para. [0048], [0055], [0061].
A specific example in the prior art that falls within claimed ranges anticipates a claimed range. MPEP § 2131.03(I). Since Xu discloses specific examples that fall within the claimed ranges, Xu anticipates the claimed ranges.
Regarding claims 3 and 4, Xu discloses alloy compositions in Examples 1-4 that fall within the claimed ranges. For instance, taking the Mo, Mn, W, and Si values of Example 1, the calculated Mo/(Mn+W+Si) ratio is 1.56, which falls within the claimed ranges. Examples 2, 3, and 4 have Mo/(Mn+W+Si) ratio of 1.60, 2.00, and 1.00, each of which falls within the claimed ranges.
Regarding claim 5, Xu discloses that the alloys are partially amorphous. Para. [0042], [0052], [0058], [0064].
Regarding claim 6, Xu discloses a coating thickness of 0.5 mm (~0.020 inch) (para. [0045]), which falls within the claimed range.
Regarding claim 8, Xu discloses that the coating has a hardness of 1081 HV (para. [0043]), which falls within the claimed range. Other hardness values of Examples 2, 3, and 4 fall within the claimed range. Para. [0052], [0058], [0064].
Regarding claims 9, 10, and 15, Xu is silent as to the wear resistance value as measured by ASTM G65 standard and compared to tungsten carbide (WC). However, Xu discloses a wear test weight loss result of 0.0009 g (0.9 mg) for one of its embodiments. Example 1 – para. [0045]. The instant specification shows a WC-containing alloy having a weight loss of 85 mg and the inventive alloys having a weight loss of 85 mg or 55 mg. Para. [00140]. Since the wear test of Xu shows an example possessing a weight loss of 0.9 mg during a wear test, Xu’s alloys have a wear resistance better than that of WC-containing material.
Additionally, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, the amorphous structure of Xu is identical to the claimed amorphous structure, and the chemical composition of the amorphous alloy of Xu falls within the claimed ranges. Thus, any claimed properties, such as wear resistance, would also be expected to exist in the prior art.
Regarding claims 11 and 16, Xu discloses an alloy containing Cr 18% by weight, Mo 14%, W 5%, Mn 2%, B 1.5%, Si 2%, C 1%, Ce 1%, and Fe the remainder. Para. [0038]. The calculated density based on proportions of the elements is 7.37 g/cc, which falls within the claimed ranges.
Regarding claim 12, Xu shows an image of the coating at Fig. 3(a), and no cracks are seen.
Regarding claim 21, there is no mention in Xu of tungsten carbide being present in the amorphous alloy.
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 1-12, 15-17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Xu.
Regarding claims 1 and 7, Xu teaches an iron-based amorphous alloy powder used to make a coating (bulk amorphous alloy coating). Para. [0019]. The composition of the alloy includes the following elements (abstract; claim 1; para. [0009]):
Element
Claim 1 (wt.%)
CN 107527702 A (wt.%)
B
0 to about 5
1 - 4
C
0 to about 2
0 - 3
Si
0 to about 2
0 - 4
Mn
0 to about 5
1 - 5
Mo
0 to about 20
10 - 20
W
0 to about 10
2 - 8
C+B
about 2 to about 10
1 - 7
Fe
balance
40 - 65
The alloys further contain Cr. Abstract; claim 1; para. [0009].
These ranges overlap and fall entire within the claimed ranges.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Regarding claims 2-4, Xu discloses ranges for each alloying element. Taking the midpoints of the ranges of Mo (15), Mn (3), W (5), and Si (1), the calculated Mo/(Mn+W+Si) ratio is 1.67, which falls within the ratio ranges of claims 3 and 4. Taking the lower limit endpoints of the ranges of Mo (10), Mn (1), W (2), and Si (0), the calculated Mo/(Mn+W+Si) ratio is 3.33, which falls within the ratio ranges of claim 2.
Regarding claim 5, Xu teaches that the amorphous phase content is greater than or equal to 50% (partially amorphous). Para. [0021]. Specific percentages are found in Examples 1-4. Para. [0042], [0052], [0058], [0064].
Regarding claim 6, Xu discloses an example coating thickness of 0.5 mm (~0.020 inch) (para. [0045]), which falls within the claimed range.
Regarding claim 8, Xu discloses that the coating has a hardness of 1000-1081 HV (para. [0019]), which overlaps the claimed range.
Regarding claims 9, 10, and 15, Xu is silent as to the wear resistance value as measured by ASTM G65 standard and compared to tungsten carbide (WC). However, Xu discloses a wear test weight loss result of 0.0009 g (0.9 mg) for one of its embodiments. Example 1 – para. [0045]. The instant specification shows a WC-containing alloy having a weight loss of 85 mg and the inventive alloys having a weight loss of 85 mg or 55 mg. Para. [00140]. Since the wear test of Xu shows an example possessing a weight loss of 0.9 mg during a wear test, Xu’s alloys have a wear resistance better than that of WC-containing material.
Additionally, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, the amorphous structure of Xu is identical to the claimed amorphous structure, and the chemical composition of the amorphous alloy of Xu falls within the claimed ranges. Thus, any claimed properties, such as wear resistance, would also be expected to exist in the prior art.
Regarding claims 11 and 16, Xu discloses an alloy containing Cr 18% by weight, Mo 14%, W 5%, Mn 2%, B 1.5%, Si 2%, C 1%, Ce 1%, and Fe the remainder. Example 1 – para. [0038]. The calculated density based on proportions of the elements is 7.37 g/cc, which falls within the claimed ranges.
Regarding claim 12, Xu shows an image of the coating at Fig. 3(a), and no cracks are seen.
Regarding claim 17, Xu teaches that the content of amorphous phase is larger than or equal to 50%. Abstract; claim 3; para. [0011], [0021]. Because amorphous alloys lack crystallinity, the grain size would be zero micron, which falls within the claimed range.
Regarding claim 21, there is no mention in Xu of tungsten carbide being present in the amorphous alloy.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Xu, as applied to claim 1 above, and further in view of US 2003/0062811 (A1) to Peker et al. (“Peker”).
Regarding claims 13 and 14, Xu is silent regarding shrinkage.
Peker is directed to amorphous alloys for electronic hardware. Para. [0073]. Fe-based amorphous alloys are generally 6.5-8.5 g/cc, which makes them attractive for high-wear applications. Para. [0084]. Peker teaches that the solidification shrinkage of bulk amorphous alloys is much less than the solidification shrinkage of conventional metals. Para. [0079]. This is due to the fact that bulk amorphous alloys do not accumulate significant stress down to below their glass transition temperature. Para. [0079]. Figure 13 shows solidification shrinkage under 1%, which falls within or overlaps the claimed ranges. Thus, one of ordinary skill in the art would have expected the glassy (amorphous) alloys of Xu to have low shrinkage due to their amorphous state.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Xu, as applied to claim 1 above, and further in view of WO 2015/168481 (A1) to Kang et al. (“Kang”).
Regarding claims 22 and 23, Xu does not teach the presence of tungsten carbide added at the claimed intended impurity level.
Kang is directed to an amorphous coating. Abstract; para. [0007]. The coating may comprise Fe-based amorphous metal alloy. Para. [0021]-[0024]. Kang teaches adding at least one of wear resistant particles selected from the group consisting of tungsten, carbides, and borides. Para. [0061]. By adding WC particles (for example in amounts up to 20%), the modulus of elasticity and hardness can be modified. Table 2.
It would have been obvious to one of ordinary skill in the art to have added WC particles to the amorphous alloy coatings of Xu because their addition would enhance the wear resistance of the coating as well as permit customization of the elastic modulus and hardness.
Claims 1, 3-8, 11, 12, 16, 17, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106868496 (A) to Sun et al. (“Sun”) (abstract and computer-generated translation are attached).
Regarding claims 1 and 7, Sun teaches an iron-based amorphous alloy coating. Abstract; para. [0002]. The composition of the alloy includes the following elements (abstract; para. [0011]-[0018]):
Element
Claim 1 (wt.%)
CN 106868496 A (mass %)
B
0 to about 5
2.8 - 4.1
C
0 to about 2
0.7 - 1.1
Si
0 to about 2
1.0 - 1.5
Mn
0 to about 5
1.8 - 2.2
Mo
0 to about 20
12.9 - 15.8
W
0 to about 10
5.0 - 6.2
C+B
about 2 to about 10
3.5 - 5.2
Fe
balance
balance
The alloys further contain Cr. Abstract; para. [0011].
These ranges overlap and fall entire within the claimed ranges.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Regarding claims 3 and 4, Sun discloses ranges for each alloying element. Taking the midpoints of the ranges of Mo (14.35), Mn (2.00), W (5.60), and Si (1.25), the calculated Mo/(Mn+W+Si) ratio is 1.62, which falls within the claimed ratio ranges.
Regarding claim 5, Sun shows that the amorphous powder used in the coating is fully or near fully amorphous. FIG. 2 – peak pattern; para. [0036].
Regarding claim 6, Sun teaches that the thickness of the powder placed on the substrate (i.e., the coating) has a thickness of about 1 mm (0.039 in) (para. [0039]), which falls within the claimed range.
Regarding claim 8, Sun teaches a hardness reaching up to 1180 Hv (para. [0025]), which overlaps the claimed range. The coating hardness is in the range of 980-1180 Hv (para. [0042]), which falls within the claimed range.
Regarding claims 11 and 16, taking the midpoints of the Cr, Mn, Mo, W, B, C, and Si of the alloy ranges in Sun, the calculated density based on proportions of the elements is 7.23 g/cc, which falls within the claimed ranges.
Regarding claim 12, Sun teaches that the coatings are free of cracks and holes. Para. [0021], [0024].
Regarding claim 17, Sun shows that the amorphous powder used in the coating is fully or near fully amorphous. FIG. 2 – peak pattern; para. [0036]. Because amorphous alloys lack crystallinity, the grain size would be zero micron, which falls within the claimed range.
Regarding claim 21, there is no mention of tungsten carbide being present in this amorphous alloy of Sun.
Claims 9, 10, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, as applied to claim 1 above, with evidence from Mohammed et al., “Wear resistance of 304 austenitic stainless-steel friction welded joints,” Journal of University of Duhok, Vol. 23, No. 1 (Pure and Eng. Sciences), 2020, pp. 191-198 (“Mohammed”).
Regarding claims 9, 10, and 15, Sun is silent as to the wear resistance value as measured by ASTM G65 standard and compared to tungsten carbide (WC). However, Sun teaches that the wear of the amorphous coating was about one quarter of the 304L stainless steel in one embodiment. Example 1 – para. [0043]. The wear rate of an as-received 304 stainless steel is 181 mg, 213 mg, or 296 mg depending on sliding distance (Mohammed at p. 196 – Fig. 7), with one quarter of those values being about 45 mg, 53 mg, and 74 mg, respectively. The instant specification shows a WC-containing alloy having a weight loss of 85 mg and the inventive alloys having a weight loss of 85 mg or 55 mg. Para. [00140]. Since the wear test of Sun shows an example possessing one quarter of 304L stainless steel corresponding to 45 mg, 53 mg, or 74 mg depending on sliding distance, Sun’s alloys have a wear resistance better than that of WC-containing material.
Additionally, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, the amorphous structure of Sun’s alloys is identical to the claimed amorphous structure, and the chemical composition of the amorphous alloy of Sun falls within the claimed ranges. Thus, any claimed properties, such as wear resistance, would also be expected to exist in the prior art alloys.
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, as applied to claim 1 above, and further in view of Peker.
Regarding claims 13 and 14, Sun is silent regarding shrinkage.
Peker is directed to amorphous alloys for electronic hardware. Para. [0073]. Fe-based amorphous alloys are generally 6.5-8.5 g/cc, which makes them attractive for high-wear applications. Para. [0084]. Peker teaches that the solidification shrinkage of bulk amorphous alloys is much less than the solidification shrinkage of conventional metals. Para. [0079]. This is due to the fact that bulk amorphous alloys do not accumulate significant stress down to below their glass transition temperature. Para. [0079]. Figure 13 shows solidification shrinkage under 1%, which falls within or overlaps the claimed ranges. Thus, one of ordinary skill in the art would have expected the glassy (amorphous) alloys of Sun to have low shrinkage due to their amorphous state.
Claims 22 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Sun, as applied to claim 1 above, and further in view of WO 2015/168481 (A1) to Kang et al. (“Kang”).
Regarding claims 22 and 23, Sun does not teach the presence of tungsten carbide added at the claimed intended impurity level.
Kang is directed to an amorphous coating. Abstract; para. [0007]. The coating may comprise Fe-based amorphous metal alloy. Para. [0021]-[0024]. Kang teaches adding at least one of wear resistant particles selected from the group consisting of tungsten, carbides, and borides. Para. [0061]. By adding WC particles (for example in amounts up to 20%), the modulus of elasticity and hardness can be modified. Table 2.
It would have been obvious to one of ordinary skill in the art to have added WC particles to the amorphous alloy coatings of Sun because their addition would enhance the wear resistance of the coating as well as permit customization of the elastic modulus and hardness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
September 30, 2025