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 of Group I, claims 1-30 and 34 in the reply filed on 03/30/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 31-33 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention(s), there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 03/30/2026. Rejoinder will be considered if and/or when appropriate.
Information Disclosure Statement
The information disclosure statement (IDS) submitted 02/272/2024 has been 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 11 and 12 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.
Specifically, claim 12 depends from claim 11 which depends from claim 1. Claim 1 permits the presence of additional elements but does not positively require Co or Cu. Claim 11 requires the alloy to further comprise about 1.5 to 2.5% Co while claim 12 requires “wherein copper is substituted partially or completely for cobalt”. The metes and bounds of claims 11 and 12 are unclear. When considering claim 11 as written and without considering claim 12, the alloy requiring about 1.5 to 2.5% Co is definite. However, in view of claim 12, which requires the substitution of Cu ‘partially or completely’ for Co, the metes and bounds of claim 11 are called into question. The issue is raised in the interest of compact prosecution. If claim 11 is intended to be structured such that about 1.5 to 2.5% Co and/or Cu is required, then an amendment to that effect should be presented. In the interest of the clarity of the record, claim 11 has been treated according to its plain language, i.e., about 1.5 to 2.5% Co is required.
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.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 12 depends from claim 11 which depends from claim 1. Claim 1 permits the presence of additional elements but does not positively require Co or Cu. Claim 11 requires the alloy to further comprise about 1.5 to 2.5% Co. Thus, the features of claim 12 requiring “wherein copper is substituted partially or completely for cobalt” do not comply with 112(d) because claim 12 does not further limit claim 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1-30 and 34 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Qiao et al. (U.S. 6,702,05).
Regarding claim 1, Qiao et al. (hereinafter “Qiao”) teaches a corrosion and wear resistant alloy (Title) having a martensitic microstructure including primary and secondary carbides (Col. 2 lines 44-46) as follows:
Element/Groups
Claimed
Qiao Heat B and Col. 6 lines 66-67
Analysis
B
About 0.005 to 0.5
0.60
Meets in view of ‘about’
C
About 1.2 to 1.8
1.48
Within
V
About 0.7 to 1.5
1.34
Within
Cr
About 7 to 11
10.57
Within
Nb
About 1 to 3.5
2.13
Within
Mo
About 6 to 11
9.60
Within
Ni
About 3 to 10
3.17
Within
Iron
Balance about 60 to 80
69.08
Within
Si
Silent but permitted by open-ended transitional phrase ‘comprising’
1.44
Permitted
Mn
Silent but permitted by open-ended transitional phrase ‘comprising’
0.59
Permitted
Impurities
Incidental
Incidental
Within
Specifically, the value of B in Qiao’s Heat B of Table 1 is 0.60 which is above the upper claimed range ‘0.5’. However, the range is ‘about 0.005 to 0.5’. Thus, 0.60 is considered to be within the range of ‘about 0.5’ such that the value anticipates the claimed range.
Regarding claim 2, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy is tungsten-free (see Heat B where there is no W listed) and the Ni content is 3.17 which is taken to meet ‘about 4’ as claimed.
Regarding claim 3, Qiao anticipates the alloy as applied to claim 1 above and further teaches the inclusion of 1.44% Si which meets the claimed feature requiring ‘up to about 1.6% Si’. Additionally, and while not expressly required by the claim as it is currently presented, Qiao’s Heat B discloses the inclusion of 0.59% Mn which would meet the claimed ‘up to about 2% Mn’.
Regarding claim 4, Qiao anticipates the alloy as applied to claim 1 above and further teaches 0.60% B, which is outside of the claimed range of ‘about 0.1 to 0.3%’ but expressly teaches such a range, and describes it as preferred, at Col. 4 lines 43-46 which is identical to the claimed range. In view of these facts, as well as the scope of the claim including ‘about’, the teachings of Qiao are taken to anticipate the claimed range of B at ‘about 0.1 to 0.3%’ with sufficient specificity. Additionally, Heat B includes 69.08% Fe which anticipates the claimed range of ‘about 60 to 70%’.
Regarding claim 5, Qiao anticipates the alloy as applied to claim 1 above and further teaches the C is 1.48% which anticipates the claimed range of ‘about 1.4 to 1.8%’ and teaches that the Ni is 3.17% which meets the claimed lower bound of ‘about 4’.
Regarding claim 6, Qiao anticipates the alloy as applied to claim 1 above and further teaches the V is 1.34% which meets the claimed lower bound of ‘about 1%’. Additionally, Qiao teaches at Col. 6 lines 1-6 that V may be included in an amount of about 0.7 to 1.5 wt% which anticipates the claimed range of ‘about 0.8 to 1%’ with sufficient specificity.
Regarding claim 7, Qiao anticipates the alloy as applied to claim 1 above and further teaches the Cr is 10.57% which anticipates the claimed range of ‘about 9 to 11%’.
Regarding claim 8, Qiao anticipates the alloy as applied to claim 1 above and further teaches the Nb is 2.13% which anticipates the claimed range of about 1 to 2.5%.
Regarding claim 9, Qiao anticipates the alloy as applied to claim 1 above and further teaches the Mo is 9.60% which anticipates the claimed range of ‘about 8 to about 10’.
Regarding claim 10, Qiao anticipates the alloy as applied to claim 1 above and further teaches that Co may be included in an amount that is ‘less than about 4’ wt% (Col. 5 lines 46-50) which is identical to the claimed range of ‘up to about 4%’.
Regarding claim 11, Qiao anticipates the alloy as applied to claim 1 above and further teaches that Co may be included in an amount preferably between ‘about 1.5 to 2.5%’ (Col. 5 lines 48-49) which is identical to the claimed range of ‘about 1.5 to 2.5%’.
Regarding claim 12, Qiao anticipates the alloy as applied to claim 11 above and further teaches that Cu may be partially or completely substitute for Co (Col. 5 lines 54-55).
Regarding claim 13, Qiao anticipates the alloy as applied to claim 1 above and further teaches that (B+V+Nb) is between 1.9 and 4.3 because (0.6 + 1.34 + 2.13) = 4.07. Additionally, Qiao expressly discloses this relationship at Col. 6 lines 15-17.
Regarding claim 14, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy is in a hardened and tempered condition (Col. 2 lines 44-45).
Regarding claim 15, Qiao anticipates the alloy as applied to claim 14 above and further teaches that the primary carbides have a width smaller than about 10 microns and the secondary carbides are smaller than about 1 micron (Col. 2 lines 46-50).
Regarding claim 16, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy is preferably in the form of a casting (Col. 2 lines 50-51).
Regarding claim 17, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy is in a hardened and tempered condition having a hardness of at least about 4 Rockwell C (Col. 2 lines 50-52).
Regarding claim 18, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy is in a hardened and tempered condition and exhibits a high temperature compressive yield strength at 800 F of at least about 100 ksi (Col. 2 lines 50-55).
Regarding claim 19, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy exhibits a dimensional stability of less than about 0.5x10-3 inches after 20 hours at 1200F (Col. 2 lines 56-57).
Regarding claims 20-24, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the iron alloy comprises a part for an internal combustion engine such as a valve seat insert for a diesel engine using EGR (Col. 2 lines 58-60)
Regarding claim 25, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy may be a valve seat insert in the form of a casting (Col. 2 lines 60-61).
Regarding claim 26, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy may be a valve seat insert in the form of a pressed and sintered compact (Col. 2 lines 61-62).
Regarding claim 27, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy may be a coating on the face of a valve seat insert (Col. 2 lines 62-63).
Regarding claim 28, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy preferably exhibits, at a temperature of 800F, a Vickers hot hardness of at least about 475 which anticipates the claimed range of ‘at least about 475’ and a compressive yield strength of a least about 100 ksi which anticipates the claimed range of ‘at least about 190 ksi’ with sufficient specificity because Qiao’s disclosed range fully encompasses the claimed range (Col. 2 lines 52-55).
Regarding claim 29, Qiao anticipates the alloy as applied to claim 1 above and further teaches that the alloy may be used for wear resistant applications such as ball bearings (Col. 2 lines 64-65).
Regarding claim 30, Qiao teaches a corrosion and wear resistant alloy (Title) having a martensitic microstructure including primary and secondary carbides (Col. 2 lines 44-46) as follows:
Element/Groups
Claimed
Qiao Disclosure (Col. 4-Col. 6)
Qiao Heat B and Col. 6 lines 66-67
Analysis of example
B
About 0.1 to 0.3
About 0.1 to 0.3
0.60
Meets in view of ‘about’
C
About 1.4 to 1.8
About 1.4 to 1.8
1.48
Within
Si
About 0.7 to 1.3
Less than 1.6
1.44
Meets in view of about
V
About 0.8 to 1.5
About 8 to 1.5
1.34
Within
Cr
About 9 to 11
About 9 to 11
10.57
Within
Nb
About 1 to 3.5
About 1 to 3.5
2.13
Within
Mn
About 0.2 to 0.7
Less than 0.8
0.59
Within
Co
About 0 to 4
Less than about 4
0
Within
Ni
About 3 to 10
Less than about 2
3.17
Within
Mo
About 6 to 11
About 6 to 11
9.60
Within
Iron
Balance about 60 to 80
Balance
69.08
Within
Impurities
Incidental
Incidental
Incidental
Within
Heat B does not report any values for W or otherwise make mention that W is included. Thus, the alloy of Heat B is tungsten free. Further, the Examples are described as being ‘cast’; see Col. 7 lines 63-65 as well as Col. 8 line 6.
Qiao’s Heat B anticipates the claimed invention with particular attention the claim language that utilizes the approximation ‘about’. The reported values of B and Si are considered to be within the scope of the claimed ranges in view that the word ‘about’ is used. Furthermore, the Qiao disclosure expressly discloses identical preferred ranges such that they are seen to anticipate the claimed ranges with sufficient specificity.
In the interest of making the record clear, it is noted that Qiao’s general disclosure of the Ni range is outside the claimed range, i.e. Qiao teaches ‘less than about 2’ but Heat B of Table 1 includes 3.17 Ni which is expressly within the claimed range.
Regarding claim 34, Qiao teaches a corrosion and wear resistant alloy (Title) having a martensitic microstructure including primary and secondary carbides (Col. 2 lines 44-46) as follows:
Element/Groups
Claimed
Qiao Heat B and Col. 6 lines 66-67
Analysis
B
About 0.005 to 0.5
0.60
Meets in view of ‘about’
C
About 1.2 to 1.8
1.48
Within
V
About 0.7 to 1.5
1.34
Within
Cr
About 7 to 11
10.57
Within
Nb
About 1 to 3.5
2.13
Within
Mo
About 6 to 11
9.60
Within
Ni
About 3 to 10
3.17
Within
Iron
Balance about 60 to 80
69.08
Within
Si
Silent but permitted by open-ended transitional phrase ‘comprising’
1.44
Permitted
Mn
Silent but permitted by open-ended transitional phrase ‘comprising’
0.59
Permitted
Impurities
Incidental
Incidental
Within
Specifically, the value of B in Qiao’s Heat B of Table 1 is 0.60 which is above the upper claimed range ‘0.5’. However, the range is ‘about 0.005 to 0.5’. Thus, 0.60 is considered to be within the range of ‘about 0.5’ such that the value anticipates the claimed range.
Additionally, there are no reported values of Ti, Zr, Hf, and/or Ta. Thus, these are taken to be zero. In view that Heat B includes 2.13% Nb, the claimed expression is met because 2.13% lies between 1 and 3.5% as claimed.
Furthermore, Qiao expressly appreciates this relationship as claimed at Col. 6 lines 21-28).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/ Primary Examiner, Art Unit 1738
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