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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to method, classified in C22C1/1047.
II. Claims 11-16, drawn to product, classified in C22C33/0261.
III. Claims 17-18, drawn to method, classified in B22D23/00.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, that the product as claimed can be made by another and materially different process such as additive manufacturing.
Inventions III and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, that the product as claimed can be made by another and materially different process such as additive manufacturing.
Inventions I and III are directed to related process. The related inventions are distinct if: (1) the inventions as claimed are either not capable of use together or can have a materially different design, mode of operation, function, or effect; (2) the inventions do not overlap in scope, i.e., are mutually exclusive; and (3) the inventions as claimed are not obvious variants. See MPEP § 806.05(j). In the instant case, Invention I requires casting and a wetting enhancing metal while Invention III requires melting. Hence, Inventions I and III require different design and mode of operation. Furthermore, the inventions as claimed do not encompass overlapping subject matter and there is nothing of record to show them to be obvious variants.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
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).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Jeffrey R. Lomprey on 12/10/2025, a provisional election was made without traverse to prosecute the invention of Group I, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Status of Claims
Claims 1-18 are pending. Claims 1-10 are presented for this examination. Claims 11-18 are withdrawn.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 09/11/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being 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 1-10 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 pre-AIA the applicant regards as the invention.
The term “a stable nanoparticulate ODS solid” in claim 1 is a relative term which renders the claim indefinite. The term “stable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear as to whether term “stable” means lower energy state or resistance to change.
Claim 1 recites the limitation "the wetting-enhancing alloy". There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the wetting-enhancing alloy refers to the wetting-enhancing metal or the wetting-enhancing alloying element.
Instant claim 4 requires “wherein the metal or metal alloy of the master alloy powder and the molten diluent alloy comprise Fe, Mg, Mn, Co, or a mixture of any two or more thereof”. It is unclear whether the metal or metal alloy of the master alloy powder and the molten diluent alloy each individually comprises Fe, Mg, Mn, Co, or a mixture of any two or more thereof or either of the metal or metal alloy of the master alloy powder and the molten diluent alloy comprises Fe, Mg, Mn, Co, or a mixture of any two or more thereof.
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-9 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Li (US20130152739A1).
As for claim 1, Li discloses a method of producing a metal matrix nanocomposite. Since a metal matrix nanocomposite is a nanocomposite in which oxide nanoparticle are added to a metal matrix ([0003]), it reads on claimed an oxide dispersion strengthened alloy.
The method comprising: (Claim 1)
Providing a master metal matrix nanocomposite (i.e claimed master alloy powder) which comprises a first matrix metal and plurality of nanoparticles (i.e. claimed particles of metal oxide) dispersed in the first matrix metal, the first matrix metal comprises an alloy comprising a primary metal element (i.e. claimed a metal or metal alloy) and a wettability enhancing metal element (i.e. claimed a wetting-enhancing metal or an alloying element)
Introducing the mater metal matrix nanocomposite into a molten metal (i.e. claimed molten diluent alloy comprising a molten metal or metal alloy) and allowing at least a portion of the master metal matrix nanocomposite to mix with the molten metal by melting.
Followed by solidifying the molten metal to provide a second metal matrix nanocomposite. Hence, a stable nanoparticulate ODS solid as required by instant claim is expected.
As the wettability enhancing metal element is part of the master metal matrix nanocomposite, instant claimed “a wetting-enhancing metal is added to the molten diluent alloy during adding of the master alloy to the molten diluent alloy” is expected.
Instant claim 1 required “the wetting-enhancing alloy reduces an interfacial energy and van der Waals attraction between the particles of the metal oxide and the molten alloy diluent to achieve a stable nanoparticulate ODS solid” is a resulting effect due to the presence of a wetting enhancing alloy (or an alloying element) as required by instant claimed process. In view of explicit teaching in Li that the wettability enhancing metal element is added in the metal matrix ([0018] line 15), instant claim 1 required resulting effect is expected.
As for claim 2, Li discloses the second metal matrix nanocomposite is formed by casting. ([0013]
As for claims 3 and 5, Li discloses the primary metal element is Al (claim 6) and the molten metal is Al (claim 2). Hence, instant claims 3, 5 wherein clause is met.
As for claims 4 and 5, Li discloses the primary metal element includes Mg ([0017]) and the molten metal is Mg. ([0026]) Hence, instant claims 3 and 5 wherein clause is met.
As for claim 6, Li discloses the primary metal element includes Fe ([0017]) and the molten metal is Fe. ([0026]) Hence, instant claim wherein clause is met.
As for claim 7, Li discloses the oxide nanoparticles is Al2O3 ([0018])
As for claims 8-9, Li’s oxide nanoparticles support claimed wherein clause.
Claim Rejections - 35 USC § 103
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.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Yu(NPL document “Effect of Nb on the Interfacial Wettability in Al2O3/Medium Mn steel”)
As for claim 1 and 10, Li discloses instant claim 1 required process as indicated in 102 rejection of claim 1 over Li.
It is noted Li does not explicitly disclose “the wetting-enhancing alloy reduces an interfacial energy and van der Waals attraction between the particles of the metal oxide and the molten alloy diluent to achieve a stable nanoparticulate ODS solid” as required by instant claim 1; and the wettability enhancing metal element comprises Nb or Cr as required by instant claim 10.
Yu studies the effect of Nb on the Interfacial Wettability in Al2O3/Medium Mn steel(MMS) matrix composite. (title) Yu discloses Nb enriches at the interface of Al2O3/MMS and serves as a surface active agent of MMS to reduce the interfacial energy. (Page 627 Col Conclusion section (4) lines 1-4)
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Nb as a wetting agent, in the process of Li for the benefit of reducing an interfacial energy.
As for claims 2-9, they are rejected for the same reason set forth in rejection of claims 2-9 above over Li.
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Li in view of Kritsalis (NPL document “Effect of Cr on interfacial interaction and wetting mechanism in Ni alloy/Alumina systems” published in 1992)
As for claims 1 and 10, Li discloses instant claim 1 required process as indicated in 102 rejection of claim 1 over Li.
It is noted Li does not disclose “the wetting-enhancing alloy reduces an interfacial energy and van der Waals attraction between the particles of the metal oxide and the molten alloy diluent to achieve a stable nanoparticulate ODS solid” as required by instant claim 1; and the wettability enhancing metal element comprises Nb or Cr as required by instant claim 10.
Kristsalis discloses wetting and thermodynamic adhesion to an oxide substrate such as Al2O3 can be greatly enhanced by adding to a liquid metallic matrix of Ni or Fe alloy, in the amount of up to 20% Cr. (Page 1174 Conclusion section) Hence, up to 20% Cr reads on claimed wetting-enhancing alloy or an alloying element.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Cr as a wetting alloying element, in the process of Li for improving wetting and thermodynamic adhesion.
As for claims 2-9, they are rejected for the same reason set forth in rejection of claims 2-9 above over Li.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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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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/JENNY R WU/Primary Examiner, Art Unit 1733