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 .
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 10/26/23 has been considered by the examiner.
Election/Restrictions
Applicant's election with traverse of claims 1-16 in the reply filed on 5/13/26 is acknowledged. The traversal is on the ground(s) that there is no evidence of record to show the claimed product can be made as the Office has alleged. This is not found persuasive because the product (claims 17-19) can be made by another and materially different process that that of claims 1-16. Evidence, such as Selvam et al., Dry sliding wear behaviour of zinc oxide reinforced magnesium matrix nano-composites, Materials and Design 58 (2014) pp.475–481, indicate that it is known to manufacture magnesium matrix composites containing ZnO nanoparticles by using a much shorter sintering time combined with a higher sintering temperature. Selvam teaches that “the Mg–ZnO nano-composite samples used to study wear behaviour were produced through powder metallurgy. Magnesium powder of 60–300 μm having a purity of 98.5% and 50–200 nm sized ZnO particles were blended at 200 revolutions per minute for 1 h in a high energy ball mill. The blended powders were cold compacted at a pressure of 510 MPa using a 1000 kN press to produce green compacts of 35 mm diameter and 40 mm height. The green compacts were sintered at 640 °C for 14 min by a hybrid microwave sintering technique (page 476).
Additionally, applicant argues that a search of all the claims would not impose a serious burden on the Office (Remarks p. 2). This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classifications, the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries). The elected process claims are directed to a powder metallurgy process, such that searching is directed to this method of manufacturing. However, the nonelected product claims are not limited by the process of manufacturing. Determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. MPEP 2113(I). Therefore, searching is directed to the product claimed and is not limited by the manufacturing method.
The requirement is still deemed proper and is therefore made FINAL.
Claims 17-19 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. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/13/26.
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim 1 recites the limitation "wherein the Zr particles and the ZnO NPs are homogeneously dispersed in a matrix of the Mg particles in the composite". Claim 1 also recites the limitation "wherein the Zr particles and the ZnO NPs separately form aggregates at grain boundaries of the Mg particles in the composite". These limitations are contradictory. Either the Zr particles and the ZnO NPs are homogeneously dispersed throughout the matrix, or they are aggregated at the grain boundaries. Accordingly, the scope of protection sought is unclear. Claims 2-16 are rejected due to their dependence on rejected 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 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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
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 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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Xu et al. (US 20130047785 A1), in view of Seth, P.P., Parkash, O. & Kumar, D. Studies on the Effect of Processing Parameters on Microstructure and Properties of Magnesium Compacts Prepared via Powder Metallurgy, Trans Indian Inst Met 73, 2715–2726 (2020), and Cao et al., Evolution of the microstructure and mechanical properties of Mg-matrix in situ composites during spark plasma sintering, Powder Metallurgy 2016 VOL 59 NO 5, pp. 302-307.
Regarding claims 1-2 and 15, wherein the Zr particles and the ZnO NPs separately form aggregates at grain boundaries of the Mg particles in the composite, Xu teaches that “nanomatrix materials and methods of making these materials are described generally” (which reads upon “a method of making a composite, comprising”, as recited in the instant claim; paragraph [0012]). Xu teaches that “subparticle 222 may have any suitable size, and in an exemplary embodiment may have an average particle size of about 10 nm to about 1 micron, and more particularly may have an average particle size of about 50 nm to about 200 nm, and that subparticle 222 may comprise any suitable form of subparticle, including an embedded subparticle 224” (which reads upon “nanoparticles (NPs)”, as recited in the instant claim; which reads upon claim 2; paragraph [0016]; overlapping ranges). Xu teaches that “embedded subparticle 224 may be embedded by any suitable method, including, for example, by ball milling or cryomilling hard particles together with the particle core material 18” (paragraph [0016]). Xu teaches that “the embedded subparticle or plurality of embedded subparticles may include various metal, carbon, metal oxide, metal nitride, metal carbide, intermetallic compound or cermet particles, or a combination thereof. In an exemplary embodiment, hard particles may include Ni, Fe, Cu, Co, W, Al, Zn, Mn or Si, or an oxide, nitride, carbide, intermetallic compound or cermet comprising at least one of the foregoing” (which reads upon “ZnO nanoparticles (NPs)”, as recited in the instant claim; paragraph [0016]). Xu teaches that “the powder metal compact 200 includes a cellular nanomatrix 216 comprising a nanomatrix material 220 and a plurality of dispersed particles 214” (which reads upon “a composite”, as recited in the instant claim; paragraph [0013]). Xu teaches that “the particle cores 14 may also be formed by mechanical alloying of pure metal powders of the desired amounts of the various alloy constituents” (which reads upon “mixing ZnO nanoparticles (NPs), Mg particles, and Zr particles to form a powder mixture”, as recited in the instant claim; paragraph [0015]). Xu teaches that “mechanical alloying involves ball milling, including cryomilling, of these powder constituents to mechanically enfold and intermix the constituents and form particle cores 14, and that in addition to the creation of nanostructure as described above, ball milling, including cryomilling, may contribute to solid solution strengthening of the particle core 14 and core material 18, which in turn contribute to solid solution strengthening of dispersed particle 214 and particle core material 218” (paragraph [0015]). Xu teaches that “description of the resulting chemical composition of nanomatrix 216 and nanomatrix material 220 may be simply understood to be a combination of the constituents of coating layers 16 that may also include one or more constituents of dispersed particles 214” (paragraph [0027]; matrix material shares the composition of the dispersed particles). Xu teaches that “dispersed particles 214 include particle core material 218 comprising, in weight percent, about 0.5 to about 6.5 Zn, about 0.3 to about 0.75 Zr and the balance Mg and incidental impurities” (which reads upon “wherein the composite includes 0.1-5 wt.% of the Zr particles, based on a total weight of the composite,”, as recited in the instant claim; paragraph [0014]). Xu teaches that “powder 10 and additional powder 30 may be mixed to form a homogeneous dispersion of dispersed particles 214 and dispersed second particles 234” (which reads upon “wherein the Zr particles and the ZnO NPs are homogeneously dispersed in a matrix of the Mg particles in the composite”, as recited in the instant claim; which reads on claim 15; paragraph [0025]; the Examiner notes that claim 15 is also a method claim that fails to recite any further method steps, but rather recites a wherein clause with the intended results of the process steps from claim 1, and thus can also be rejected with MPEP § 2111.04 I, in this case, the art specifically teaches this result). Xu teaches that “solid-state metallurgical bond is formed in the solid state by solid-state interdiffusion between the coating layers 16 of adjacent powder particles 12 that are compressed into touching contact during the compaction and sintering processes used to form powder compact 200” (which reads upon “compacting and sintering”, as recited in the instant claim; paragraph [0020]).
It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. 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). See MPEP 2144.05 (I). Here, the claimed range of the ZnO NPs have an average size of 80-200 nm lies inside the range disclosed by the prior art of an average particle size of about 50 nm to about 200 nm. Accordingly, the prior art renders the claim obvious.
Xu teaches “ball milling a powder to provide particle cores 14, and more particularly by cryomilling (e.g., ball milling in ball milling media at a cryogenic temperature or in a cryogenic fluid, such as liquid nitrogen) a powder to provide the particle cores 14 used to form dispersed particles 214” (which reads upon “mixing ZnO nanoparticles (NPs), Mg particles, and Zr particles under an inert atmosphere”, as recited in the instant claim; paragraph [0015]; liquid nitrogen is generally chemically inert). Additionally or alternatively, one of ordinary skill in the art understands that fine powdered magnesium may ignite spontaneously on contact with air and it would be obvious to use an inert atmosphere when processing powdered magnesium to avoid fires.
Xu teaches that “the powder compacts may be made by any suitable powder compaction method, including cold isostatic pressing (CIP), hot isostatic pressing (HIP), dynamic forging and extrusion, and combinations thereof” (paragraph [0012]). Xu is silent regarding compacting the powder mixture at a pressure of 500-600 MPa for at least 1 minute to form a compacted mixture; and sintering the compacted mixture at a temperature of 400-500 °C for at least 1 hour to form the composite.
Seth is similarly concerned with magnesium compacts prepared via powder metallurgy (title). Seth teaches that “the present study involves the investigation on the effect of processing parameters of powder metallurgy on the microstructure and hardness characteristics of the green as well as sintered specimens of magnesium, and that the processing parameters include the high-energy ball milling time, compaction pressure, and sintering temperature” (page 2715) Seth teaches that “powder metallurgy (PM) process can be used to reduce the formability issue with its inherent near-net-shape processing and fabrication of high-performance components for various engineering applications” (page 2715) Seth teaches that “a uniaxial die and punch arrangement were used for compaction of 1 h (BM1), 3 h (BM3), and 5 h (BM5) as well as without ball milling (WBM) powders” (page 2717) Seth teaches that “the die and punch setup were compacted at a pressure of 100, 200, 300, 400, 500, and 530 MPa for 90 s using a 100 ton hydraulic press” (which reads upon “compacting the powder mixture at a pressure of 500-600 MPa for at least 1 minute to form a compacted mixture”, as recited in the instant claim; page 2717) Seth teaches that “the green compacts of 530BM3 samples were subjected to solid-state sintering in a tubular furnace in continuously flowing argon gas” (page 2717) Seth teaches that “the green samples were sintered at three different temperatures, viz. 500, 550 and 600 °C (which are lower than the melting temperature of magnesium) for 1 h to compete sintering process” (which reads upon “sintering the compacted mixture at a temperature of 400-500 °C for at least 1 hour to form the composite”, as recited in the instant claim; page 2717) Seth teaches that “the grain size and pore size depend on the ball milling time, and that as the ball milling time increases, the grain size and pore size decrease” (page 2724) Seth teaches that properties such as green density, crystallite size, percentage area porosity, bulk density, relative density, and hardness can be adjusted by adjusting processing parameters (conclusions; pages 2725-26)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the compact of the prior art combination, and adjusting and varying the processing parameters, including compaction times and pressures, and sintering times and temperatures, such as within the claimed ranges, as taught by Seth, motivated to form a conventional magnesium alloy compact using known and tested processing parameters predictably suitable for magnesium alloy compact applications.
Xu is silent regarding how much of the composite is made up of hard particles. Specifically, Xu is silent regarding wherein the composite includes 1-10 wt.% of the ZnO NPs, based on a total weight of the composite.
Regarding the subject limitation, in order to carry out the invention of Xu, it would have been necessary and obvious to look to the prior art for exemplary percents by weight of ZnO used in magnesium composites. Cao provides this teaching. Cao teaches that Biomedical Mg-matrix in situ composites were fabricated from Mg and ZnO powder via ball mixing and spark plasma sintering (page 302). Cao teaches that the highest failure strain at 12.9% was achieved in the Mg-5 wt-% composite compared with the 156 MPa strength and the 10.2% failure strain of pure Mg (page 302). Cao teaches that the strengths of as-produced composites are as double as that of cortical Bones, and that with these superior mechanical properties, the fabricated composites are considered as very potential candidate for biomedical load-bearing applications. (page 302). Cao teaches that for different purposes of investigation, different mass ratios of Mg/ZnO powders of Mg-50 wt-% ZnO, Mg-20 wt-% ZnO, Mg-10 wt-% ZnO and Mg-5 wt-% ZnO were mixed in argon atmosphere using a planetary micro mill (page 303). Cao teaches that the Mg-5, 10 and 20 wt-% ZnO powders were used to study the use of Mg in situ composites as biomaterials (page 302). Cao teaches that the density of the reaction products increased with the mass fraction of the initial ZnO powder (page 305). Cao teaches that the failure strain of the composites decreased with the increase of the ZnO fraction (page 306). Cao teaches that ZnO, as a metal oxide, is a type of reinforcement, which improves the strength but has a negative effect on the ductility of the composites (page 306). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the magnesium composite of the prior art combination, and adjusting and varying the percents by weight of ZnO, such as within the claimed ranges, as taught by Cao, motivated to form a conventional magnesium composite using known and tested percents by weight of ZnO predictably suitable for biomedical applications.
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Examples of claim language that may raise a question as to the limiting effect of the language in a claim include wherein and whereby. The court in Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP § 2111.04 I. The limitations wherein the Mg particles have an average grain size of 5-10 μm in the composite, and wherein the Zr particles and the ZnO NPs separately form aggregates at grain boundaries of the Mg particles in the composite, is interpreted as simply expressing the intended result of a process step positively recited.
Regarding claims 3-4, modified Xu teaches the method of claim 1 as stated above. Xu teaches that “the particle cores 14 may have a unimodal distribution and an average particle diameter or size of about 5 μm to about 300 μm” (paragraph [0022]). It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. 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). See MPEP 2144.05 (I). Here, the claimed range an average size of 30-60 μm lies inside the range disclosed by the prior art of about 5 μm to about 300 μm. Accordingly, the prior art renders the claim obvious.
Regarding claims 5-14 and 16, modified Xu teaches the method of claim 1 as stated above. Claims 5-14 and 16 are method claims that fail to recite any further method steps. Rather, they recite wherein clauses with the intended results of the process steps from claim 1. Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. Examples of claim language that may raise a question as to the limiting effect of the language in a claim include wherein and whereby. The court in Hoffer v. Microsoft Corp., 405 F.3d 1326, 1329, 74 USPQ2d 1481, 1483 (Fed. Cir. 2005), noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited. See MPEP § 2111.04 I.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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. The Examiner requests that interviews not be scheduled during the last week of each fiscal quarter or the last half of September, which is the end of the fiscal year. Q4: 9/21-9/30/26; Q1: 1/4-1/8/27.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (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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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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