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 II, claims 7-18, in the reply filed on 7/6/2026 is acknowledged.
Claims 1-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/6/2026.
Claim Objections
Claim 14 is objected to because of the following informalities: in line 1, “claim7” should be “claim 7” (space inserted). Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim(s) 7-18 is/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.
Claim 7 recites “A workpiece having a Beilby layer treated according to a method comprising: applying a coating to at least a portion of a surface of the workpiece”. The claim is indefinite because it is not clear what must be “treated” as claimed. Specifically, it is unclear if treatment (i.e., coating) can be applied to any surface on a workpiece (“A workpiece…treated according to a method”) or if the treatment is applied specifically to the Beilby layer (“…having a Beilby layer treated according to a method”). As written, it would appear the Beilby layer must be treated, i.e., the latter of the two previous interpretations, which has been used for examination.
Claim Rejections - 35 USC § 102
Claim(s) 7-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Agaponova (“Encapsulation Method For Surface Engineering Of Corrosion-Resistant Alloys By Low-Temperature Nitro-Carburization”, Thesis, CWRU, 2016.).
Note: Applicant cited the Agaponova reference in the IDS filed 8/9/2024. A copy of the reference was filed on 3/13/2023 in parent application number 17/242,555.
Regarding claims 7 and 14-17:
Agaponova discloses stainless steel samples that are nitrocarburized (i.e., hardened) by applying a coating of guanidinium hydrochloride followed by heating to activate the surface for hardening (Abstract, p15-16; §2.3, p38-41; §4.1, p90-100). The samples have a Beilby layer (§531, p116).
Furthermore, the examiner notes the present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Regarding claim 8-13:
Although Agaponova is silent with regard to the use of paraffinic oil, the presently claimed product does not require its presence. For instance, present claim 10 requires the paraffinic oil to be evaporated and claim 13 requires the paraffinic oil to not chemically interfere with the activation or hardening process. Thus, the claims specifically exclude the presence of the paraffinic oil in the final product and exclude the oil from having an effect on the structure of the final product. Furthermore, these limitations are viewed as product-by-process limitations. Absent evidence of criticality regarding the presently claimed paraffinic oil and given that Agaponova discloses a workpiece having an activated surface, Agaponova clearly meet the requirements of the present claims.
Regarding claim 18:
Although Agaponova is silent with regard to a coating composition comprising a vehicle comprising a powder, water, oil or solvent, these limitations are viewed as product-by-process limitations wherein the final product does not require the vehicle, e.g., a solvent. Absent evidence of criticality regarding the presently claimed reagent vehicle and given that Agaponova discloses a workpiece having an activated surface, Agaponova clearly meets the requirements of the present claims.
Claim(s) 7-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bessen (US 3,232,797).
Regarding claims 7 and 15-17:
Bessen discloses a method of nitriding (hardening) steel, which is in the form of a coil of strip or wire (1:12+). The steel is coated with a film of a compound, e.g., guanidine compounds, which is then heated and decomposed (thermal altering to activate the surface) to form the nitrided steel (1:50-2:28). Although Bessen is silent with regard to a “Beilby layer,” the reference uses steel strips and wire, which have necessarily been worked, e.g., via conventional hot and cold reduction steps to provide the desired gauge, shape, etc. (1:16+). As a result of such processing, a Beilby layer would naturally be formed. (See, e.g., [0015] of the present specification.) Therefore, the steels taught by Bessen would have a Beilby layer as presently claimed.
Furthermore, the examiner notes the present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Regarding claim 8-13:
Although Bessen is silent with regard to the use of paraffinic oil, the presently claimed product does not require its presence. For instance, present claim 10 requires the paraffinic oil to be evaporated and claim 13 requires the paraffinic oil to not chemically interfere with the activation or hardening process. Thus, the claims specifically exclude the presence of the paraffinic oil in the final product and exclude the oil from having an effect on the structure of the final product. Furthermore, these limitations are viewed as product-by-process limitations. Absent evidence of criticality regarding the presently claimed paraffinic oil and given that Bessen discloses a workpiece having an activated surface, Bessen clearly meets the requirements of the present claims.
Regarding claim 18:
Bessen discloses aqueous solutions of the nitrogen-releasing compound (1:57+; 4:74+). Furthermore, the limitations regarding reagent vehicle are viewed as product-by-process limitations wherein the final product does not require the vehicle, e.g., a solvent. Absent evidence of criticality regarding the presently claimed reagent vehicle and given that Bessen discloses a workpiece having an activated surface, Williams clearly meets the requirements of the present claims.
Claim(s) 7-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Williams et al. (WO 2016/019088).
Regarding claim 7:
Williams discloses a workpiece comprising a Beilby layer that is coated with an oxygen-free nitrogen halide salt that serves as a source for activating the surface for subsequent hardening upon thermal activation [abstract; 0016-0020; 0046].
Furthermore, the examiner notes the present claims are product-by-process claims. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Regarding claim 8-13:
Although Williams is silent with regard to the use of paraffinic oil, the presently claimed product does not require its presence. For instance, present claim 10 requires the paraffinic oil to be evaporated and claim 13 requires the paraffinic oil to not chemically interfere with the activation or hardening process. Thus, the claims specifically exclude the presence of the paraffinic oil in the final product and exclude the oil from having an effect on the structure of the final product. Furthermore, these limitations are viewed as product-by-process limitations. Absent evidence of criticality regarding the presently claimed paraffinic oil and given that Williams discloses a workpiece having an activated surface, Williams clearly meet the requirements of the present claims.
Regarding claim 14-17:
Williams teaches carburizing, nitriding, or nitrocarburizing [0018]. The oxygen-free nitrogen halide salt provides carbon and/or nitrogen [0031].
Regarding claim 18:
Williams teaches the use of a suitable liquid for dispersing the salt (i.e., a solvent) [0046]. The reference notes the salt should be water-soluble [0034]. Furthermore, the limitations regarding reagent vehicle are viewed as product-by-process limitations wherein the final product does not require the vehicle, e.g., a solvent. Absent evidence of criticality regarding the presently claimed reagent vehicle and given that Williams discloses a workpiece having an activated surface, Williams clearly meet the requirements of the present claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN D FREEMAN whose telephone number is (571)270-3469. The examiner can normally be reached Monday-Friday 11-8PM EST.
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/JOHN D FREEMAN/Primary Examiner, Art Unit 1787
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