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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 09/15/2023 and 02/04/2025 are being considered by the examiner.
The information disclosure statement (IDS) submitted on 06/26/2025 is being considered by the examiner. However, Applicant did not provide any copy of the listed foreign patent WO 17/003547 and corresponding foreign patent is not found during search, accordingly this foreign patent reference is not considered. All the Non Patent Literature (NPL) references including the abstracts listed in the IDS dated 06/26/2025, are in non-English language and Applicant did not provide any English translation, accordingly these NPL references are not considered.
Election/Restrictions
Applicant's election without traverse of Group I, claims 1-13 , drawn to a copper alloy, in the reply filed on 01/26/2026 is respectfully acknowledged. However, claim 14 has been amended to incorporate all the limitations of claim 1 into claim 14, thereby, Group II, claims 14-30, drawn to a metal matrix composite material now falls in Group I.
Claim 15 is cancelled.
Therefore, claim 1-14 and 16- 30 are currently under examination on merit.
Claim Objection
Claim 1-30 are objected to because of the following informalities:
All of these claim recites letter “C” in capital form in the word “Claim” and is placed in the middle of the sentence, which is a grammatical error, therefore, need be replaced with “claim” for each of the claim.
Appropriate correction is required.
Applicant is advised that should claim 10 be found allowable, claim 24 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Because, claim 10 depend from claim 1, and claim 24 depend from claim 14, and claim 14 depend from claim 1.
Claim 10 recites “the alloy of claim 1, forms a matrix of a metal matrix composite (MMC) material, wherein the MMC material further comprises tungsten carbide particles”, which is the same as recited in claim 14, “a metal matrix composite material comprising reinforcement particles embedded in the alloy of claim 1” and claim 24 recites “the metal matrix composite material of claim 14, wherein the reinforcement particles comprise tungsten carbide particles”, therefore, the scope of the claim 10 and claim 24 are the same, i.e. duplicate claims.
Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Appropriate correction is required.
Claim 12 is objected to because of the following informalities:
the claim recites the unit of toughness is “in*lbf.in3” in line 2, which is not a conventional unit of toughness, Examiner interprets this as a typographical error and it represent the conventional unit of toughness “in-lbf/in³ ”.
Appropriate correction is required.
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.
Claim 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Han Seung Jeon et.al. [KR20030000138A] (machine translation) (Jeon hereafter).
Regarding claims 1 and 2, Jeon discloses an alloy comprising (a high strength high ductility Cu-Ni-Mn-Sn-Zr-Cr alloy [0008]) having a composition in terms of wt. % and are being compared with those recited in the instant claim 1 are listed in the following table.
Element
From instant Claim 1 (wt.%)
Jeon’s alloy composition, (wt.%) (Abstract, [0009])
Within the range/Overlapping
Mn
5.6 - 10.4
0.1 – 10.0
Overlapping
Ni
3.5 – 6.5
1.0 – 10.0
Overlapping
Sn
1.4 – 4.0
Claim 2: 1.4-2.6
0.1 – 10.0
Overlapping
Cu and impurities
55 and up to a balance
68 and up to a balance (calculated)
Within the range
Jeon teaches 0.01 to 1.0 wt.% of one or more elements selected from the group consisting of Zr and Cr, and a balance of Cu, (Abstract, [0009]) therefore, calculated wt.% of Cu is from 68% to (for highest wt.% of element Mn, Ni, Sn, and optional element Zr and/or Cr) 98.78% (for lowest wt.% of element Mn, Ni, Sn, and optional element Zr and or Cr).
Jeon’s alloy composition including all elements are overlapping with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have to have an alloy composition selected and produced from the range of Jeon, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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].
Although Jeon is silent about limitation “the alloy has a solidus temperature lower than a melting temperature of Cu”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have a solidus temperature lower than a melting temperature of Cu, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a solidus temperature lower than a melting temperature of Cu. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition of the alloy . Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy composition would necessarily expect to exhibit the similar properties, i.e. would have a solidus temperature lower than a melting temperature of Cu.
Regarding claim 3 all discussions of claim 1 are applicable here, although, Jeon is silent about limitation “the solidus temperature is lower than 1300K”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have the solidus temperature of lower than 1300K, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and the solidus temperature is lower than 1300K. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy composition would necessarily expect to exhibit the similar properties, i.e. would have the solidus temperature is lower than 1300K.
Regarding claim 4 all discussions of claim 1 are applicable here, although, Jeon is silent about limitation “the alloy forms a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have a solidus temperature lower than a melting temperature of Cu, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and the alloy forms a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy composition would necessarily expect to exhibit the similar properties, i.e. would have the alloy forms a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature.
Regarding claim 5 all discussions of claim 1 are applicable here, although, Jeon is silent about limitation “greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy would necessarily expect to exhibit the similar properties, i.e. would have greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature.
Regarding claim 6 all discussions of claim 1 are applicable here, in addition, Jeon’s alloy does not have any impurities as Jeon teaches the remainder is composed of copper (Cu) ([0009]), which is within the as recited in the instant claim. Jeon teaches additional element, like one or more of zirconium (Zr) and chromium (Cr), can be added at 0.01 to 1.0 wt.% (Abstract, [0009]) and this value is also within as recited range.
Regarding claim 7 all discussions of claim 1 are applicable here, wherein Jeon already discloses a Cu-Ni-Mn-Sn-Zr-Cr alloy (Abstract, [0008], [0009]), i.e. Jeon’s alloy does not include one or more of Si, B and Zn.
Regarding claim 8 all discussions of claim 1 are applicable here, although, Jeon is silent about limitation “the alloy has an electrical conductivity higher than 2.5 MS/m”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have an electrical conductivity higher than 2.5 MS/m, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and has an electrical conductivity higher than 2.5 MS/m. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy would necessarily expect to exhibit the similar properties, i.e. would have an electrical conductivity higher than 2.5 MS/m.
Regarding claim 9 all discussions of claim 1 are applicable here, although, Jeon is silent about limitation “the alloy has a thermal conductivity higher than 10 W /mK”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Jeon’s alloy structure would have a thermal conductivity higher than 10 W /mK, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and has a thermal conductivity higher than 10 W /mK. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Jeon teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Jeon’s alloy would necessarily expect to exhibit the similar properties, i.e. would have a thermal conductivity higher than 10 W /mK.
Claim 1-2 and 10-14, 16-20, and 22-30 are rejected under 35 U.S.C. 103 as being unpatentable over Yuri Burhan et.al. [US9004199B2] (Burhan hereafter).
Regarding claims 1, and 2, Burhan discloses an alloy comprising a composition in terms of wt. % (Col. 20, line 1-14) and are being compared with those recited in the instant claim 1 are listed in the following table.
Element
From instant Claim 1 (wt.%)
Burhan’s alloy composition, (wt.%) (Col. 20, line 1-14)
Within the range/Overlapping
Mn
5.6 - 10.4
0.1 – 10.0
Overlapping
Ni
3.5 – 6.5
1.0 – 10.0
Overlapping
Sn
1.4 – 4.0
Claim 2 : 1.4-2.6
0.1 – 10.0
Overlapping
Cu and impurities
55 and up to a balance
24 - 96
Overlapping
Burhan’s alloy composition including all the claimed elements are overlapping with the range as recited in the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have to have an alloy composition selected and produced from the range of Burhan, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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].
Although Burhan is silent about limitation “the alloy has a solidus temperature lower than a melting temperature of Cu”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s alloy structure would have a solidus temperature lower than a melting temperature of Cu, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a solidus temperature lower than a melting temperature of Cu. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition of the alloy . Prior art, Burhan teaches an overlapping composition of an alloy. As because the alloy of the prior art is substantially identical in composition and/or structure, Burhan’s alloy composition would necessarily expect to exhibit the similar properties, i.e. would have a solidus temperature lower than a melting temperature of Cu.
Regarding claim 10, 11, 14, 24 and 30 Burhan teaches a matrix of a metal matrix composite (MMC) material, wherein the MMC material comprises an alloy and tungsten carbide particles (Metal matrix composites are commonly used for the supporting material because the specific properties can be controlled by modifying the processing or components and usually combines a hard particulate phase with a ductile metallic binder phase. The hard particles often include metal carbides (e.g., tungsten carbide), and the metallic binder often includes copper or other non-ferrous alloys (Col. 2, line 8-22).
Burhan’s disclosed metal matrix composite forms part of a drilling component (drill body with impregnated drill bits exhibit improved performance and tailoring the metal binder in the blades as using an infiltration metal binder alone can result in an improvement in strength and toughness of a blade, and such example infiltrating metal binder material includes different alloy comprising Cu, Mn, Ni and Sn alloy (Col. 19, line 1-35) and (Col. 21, line 48-60), as shown above an overlapping alloy composition (Col. 20, line 1-14).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to have Burhan’s teaching for making a material matrix composite material (drilling component) comprising a hard particulate phase with a ductile metallic binder phase for tailoring the material to have as desired strength and toughness required in the application.
Regarding claim 12 all discussions of claim 1 are applicable here, in addition, Burhan teaches a metal matrix composite material comprising reinforcement particles embedded in the alloy, and Burhan discloses the quantity of tungsten carbide need to be selected such that after formation the matrix material has a toughness of greater than 20 ksi (Col.14, line 3-20)).
1 ksi = 4,000 in-lbf/in³, therefore, 20 ksi = 80,000 in-lbf/in³
Burhan’s toughness of the MMC material is within the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made, to have Burhan’s teaching of toughness with controlled quantity of the tungsten carbide for tailoring the material to have as desired toughness required in the application.
Regarding claim 13 all discussions of claim 1 are applicable here, in addition, Burhan teaches the alloy is part of a feedstock for forming a metal matrix composite (MMC) material (powder metal binder) (Col. 19, line 1-35) and wherein the feedstock further comprises tungsten carbide particles (matrix hard particles, cast tungsten carbide commercially used as a powder and another type macro-crystalline tungsten carbide is in the form of single crystals particles ) (Col. 19, line 40-57) and (Col.21, line 112). Burhan teaches common powder metallurgical methods, such as hot-pressing, sintering, and infiltration are used to form the components of the supporting material into a metal matrix composite (Col. 2, line 14-18) and example process of making a part from metal matrix composite material using different kind of sintering process wherein the particle are mixed and then compacted, pressed and followed by sintering (Col. 23, line 19).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to combine Burhan’s teaching of feedstock material as a powder for facilitating the making of material matrix composite component comprising metal binder with improved and tailored performance.
Regarding claims 16, all discussions of claim 1 and 14 are applicable here, wherein Burhan teaches an example infiltrating metal binder alloy comprising tin in the range of from more than 1% wt. to 10% wt. (Col. 20, line 1-14).
Burhan’s Sn content is overlapping with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have to have an alloy composition selected and produced from the range of Burhan, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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].
Regarding claim 17, all discussions of claim 1 and 14 are applicable here, although, Burhan is silent about limitation “the solidus temperature of the alloy is lower than 1300K”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy would have the solidus temperature is lower than 1300K, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and the solidus temperature of the alloy is lower than 1300K and a metal matrix composite material comprising reinforcement particles embedded in the alloy. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Burhan teaches an overlapping composition of an alloy in a metal matrix composite (MMC) materials comprising reinforcement particles embedded in the alloy. As because the alloy of the prior art and the metal matrix composite material comprising reinforcement particles embedded in the alloy of the prior art are substantially identical in composition and/or structure, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, the alloy would necessarily expect to exhibit the similar properties, i.e. would have the solidus temperature of the alloy is lower than 1300K. In addition, Burhan teaches the quantities of the components and the subsequent processing conditions allow control of the hardness, toughness, erosion and abrasion resistance, and other properties of the metal matrix composite (Col. 2, line 18-22).
Regarding claim 18, all discussions of claim 1 and 14 are applicable here, although, Burhan is silent about limitation “the alloy forms a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, the alloy would have a solidus temperature lower than a melting temperature of Cu, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a metal matrix composite material comprising reinforcement particles embedded in the alloy and the alloy forms a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature and a metal matrix composite material comprising reinforcement particles embedded in the alloy. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Burhan teaches an overlapping composition of an alloy and a metal matrix composite (MMC) materials comprising reinforcement particles embedded in the alloy. As because the alloy of the prior art and the metal matrix composite material comprising reinforcement particles embedded in the alloy of the prior art are substantially identical in composition and/or structure, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, the alloy would necessarily expect to exhibit the similar properties, i.e. would form a single phase solid solution having a face-centered cubic (FCC) crystal structure from the solidus temperature down to at least 400 K below the solidus temperature. In addition, Burhan teaches the quantities of the components and the subsequent processing conditions allow control of the hardness, toughness, erosion and abrasion resistance, and other properties of the metal matrix composite (Col. 2, line 18-22).
Regarding claim 19, all discussions of claim 1 and 14 are applicable here, although, Burhan is silent about limitation “greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy would have greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a metal matrix composite material comprising reinforcement particles embedded in the alloy and greater than 90 wt.% of the alloy is a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Burhan teaches an overlapping composition of an alloy and a metal matrix composite (MMC) materials comprising reinforcement particles embedded in the alloy. As because the alloy of the prior art and the metal matrix composite material comprising reinforcement particles embedded in the alloy of the prior art are substantially identical in composition and/or structure, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, the alloy would necessarily expect to exhibit the similar properties, i.e. would be greater than 90 wt.% of the alloy a single phase solid solution with a face-centered cubic (FCC) crystal structure at room temperature. In addition, Burhan teaches the quantities of the components and the subsequent processing conditions allow control of the hardness, toughness, erosion and abrasion resistance, and other properties of the metal matrix composite (Col. 2, line 18-22).
Regarding claim 20, all discussions of claim 1 and 14 are applicable here, in addition, Burhan is silent about the impurity (Col. 20, line 1-14) and therefore, the impurity would be expected to be about zero or bare minimum, which is within as recited range.
Regarding claim 22, all discussions of claim 1 and 14 are applicable here, although, Burhan is silent about the limitation “the alloy has an electrical conductivity higher than 2.5 MS/m”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, would have an electrical conductivity higher than 2.5 MS/m, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a metal matrix composite material comprising reinforcement particles embedded in the alloy and the alloy has an electrical conductivity higher than 2.5 MS/m. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Burhan teaches an overlapping composition of an alloy and a metal matrix composite (MMC) materials comprising reinforcement particles embedded in the alloy. As because the alloy of the prior art and the metal matrix composite material comprising reinforcement particles embedded in the alloy of the prior art are substantially identical in composition and/or structure, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, wherein the alloy would necessarily expect to exhibit the similar properties, i.e. would have an electrical conductivity higher than 2.5 MS/m. In addition, Burhan teaches the quantities of the components and the subsequent processing conditions allow control of the hardness, toughness, erosion and abrasion resistance, and other properties of the metal matrix composite (Col. 2, line 18-22).
Regarding claim 23, all discussions of claim 1 and 14 are applicable here, although, Burhan is silent about limitation “the alloy has a thermal conductivity higher than 10 W /mK”, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy would have a thermal conductivity higher than 10 W /mK, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to an alloy composition and a metal matrix composite material comprising reinforcement particles embedded in the alloy and the alloy has a thermal conductivity higher than 10 W /mK. It is to be noted, neither claim nor the instant disclosure describes any specific way that imparts this claimed limitation of the alloy except the composition. Prior art, Burhan teaches an overlapping composition of an alloy and a metal matrix composite (MMC) materials comprising reinforcement particles embedded in the alloy. As because the alloy of the prior art and the metal matrix composite material comprising reinforcement particles embedded in the alloy of the prior art are substantially identical in composition and/or structure, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, wherein the alloy would necessarily expect to exhibit the similar properties, i.e. would have a thermal conductivity higher than 10 W /mK. In addition, Burhan teaches the quantities of the components and the subsequent processing conditions allow control of the hardness, toughness, erosion and abrasion resistance, and other properties of the metal matrix composite (Col. 2, line 18-22).
Regarding claims 25, all discussions of claim 1, 14 and 24 are applicable here, in addition, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, and Burhan discloses in an example, a material comprising 70% by volume (vol. %) of tungsten carbide (WC) and the balance is a metal binder (Col.17, line 47-50).
Burhan’s vol.% of tungsten carbide in the metal matrix composite material is within the range as recited in the instant claim.
Burhan teaches the matrix material selected may depend on the desired properties which can be obtained by varying hard particle content, metal binder content, and metal binder type (Col.15, line 46-49), and one of ordinary skill in the art would appreciate based on these teachings that the composition and amounts may be varied depending on the particular application (Col.17, line 55-58).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to have Burhan’s teaching of amount (vol.%) of tungsten carbide in the metal matrix composite material for producing metal matrix composite material as desired strength and toughness required in an intended application.
Regarding claims 26, all discussions of claim 1, 14 and 24 are applicable here, in addition, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, and Burhan teaches different types of the tungsten carbide particles, like the spherical sintered tungsten carbide has an average particle size in the range, in particular from 1 to 5 microns and the hard particles may also comprise cast tungsten carbide and mono-tungsten carbide (Col.13, line 42-50) and in an another example, the mono-tungsten carbide may contain particles having a size from 20 to 44 microns, and the sintered tungsten carbide may contain particles having a size from 20 to 88 microns (Col.14, line 20-27).
Burhan’s tungsten carbide particles are within the range as recited in the instant claim.
Burhan teaches the matrix material selected may depend on the desired properties which can be obtained by varying metal carbide particle size, content, and metal binder content, and type (Col.15, line 46-49). Burhan further teaches the material used to form the metal matrix composite material (bit body and the blades) may be chosen based on the desired mechanical properties and/or rate of infiltration. A greater rate of infiltration reduces the time period the bit is exposed to the elevated infiltration temperatures, thus, protecting the abrasive particles ( e.g., diamonds). Taller blades can take longer to infiltrate so a bit body and optionally blade material having a greater rate of infiltration can help to protect the abrasive particles (e.g., diamonds) from temperature degradation. The rate of infiltration can be controlled by adjusting the particle size distribution of the powders to be infiltrated that controls the spacing between particles and the capillary force of infiltration (Col. 21, line 48-60).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to have Burhan’s teaching of particle size of the tungsten carbide in the metal matrix composite material for producing metal matrix composite material as desired strength and toughness required in an intended application, while protecting the part inside that containing an abrasive particles (e.g., diamonds) from temperature degradation.
Regarding claims 27, all discussions of claim 1, 14 and 24 are applicable here, in addition, Burhan teaches a matrix material comprising hard particles which comprise spherical sintered tungsten carbide and metal binder (Col.13, line 41-43). The diameter or length of a particle being determined based on the maximum length or diameter of the particle when it is not spherical (Col.16, line 1-6) and Burhan defines the term "spherical", as used and throughout the disclosure, means any particle having a generally spherical shape and lack the corners, sharp edges, and angular projections commonly found in crushed and other non-spherical particles (Col. 19. Line 49-52).
With respect to the aspect ratio, or the claimed ratio, between a first length along a major axis and a second length along a minor axis, of 1.20 or lower, although, Burhan is silent about this limitation, it would have been obvious to one of ordinary skill in the art before the effective filling date of the present invention, that Burhan’s tungsten carbide particles have a ratio, between a first length along a major axis and a second length along a minor axis, of 1.20 or lower, because, “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. [MPEP 2112.01 (I)].
In this case, claim is directed to the tungsten carbide particles have a spheroidal shape having ratio, between a first length along a major axis and a second length along a minor axis, of 1.20 or lower. According to the paragraph [0030] of the instant specification of the disclosure, the term “spheroidal” is substantially spherical particles, and can be made from commercially available fused tungsten carbide powder or a mixture of tungsten, mono tungsten carbide and/or carbon.
The Prior art, Burhan teaches spherical sintered (fused) tungsten carbide and metal binder (Col.13, line 41-43). As because the alloy of the prior art teaches spherical sintered (fused) tungsten carbide which is substantially identical in structure of the claimed invention, therefore, Burhan’s tungsten carbide particle would necessarily expect to exhibit the similar properties, i.e. would have a ratio between a first length along a major axis and a second length along a minor axis, of 1.20 or lower.
Regarding claim 28, all discussions of claim 1 and 14 are applicable here, in addition, Burhan’s metal matrix composite material comprising reinforcement particles embedded in the alloy, and Burhan discloses he tungsten carbide particles have a surface that is textured to have a grain boundary area (the hard particles may comprise large grain of a substantial percentage, i.e., fifty percent or more, of the grains carburized tungsten carbide (Col.13, line 18-20)). It would have been obvious to one of ordinary skill in the art that a grain would have a grain boundary.
Burhan’s grain boundary area fraction of tungsten carbide in the metal matrix composite material is within the range as recited in the instant claim.
Regarding claim 29, all discussions of claim 1 and 14 are applicable here, in addition, Burhan teaches a metal matrix composite material comprising reinforcement particles embedded in the alloy, and the quantity of each tungsten carbide may be selected such that after formation the matrix material has an erosion rate of less than 0.001 in/hr, a toughness of greater than 20 ksi, and a transverse rupture strength of greater than 140 ksi (Col.13, line 18-20)).
Burhan’s of transverse rupture strength of the metal matrix composite material is overlapping the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have of transverse rupture strength of the metal matrix composite material selected and produced from the range of Burhan, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to have Burhan’s teaching of transverse rupture strength of the metal matrix composite material for producing metal matrix composite material with as desired strength and toughness required in an intended application.
Claim 10-11, 14, 20-21, 24, and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Han Seung Jeon et.al. [KR20030000138A] (machine translation) (Jeon hereafter) as applied to claim 1 and further in view of Yuri Burhan et.al. [US9004199B2] (Burhan hereafter).
Regarding claim 10, 11, 14, 24 and 30 all discussions of claim 1 are applicable here, but Jeon is silent about the limitation the alloy forms a matrix of a metal matrix composite (MMC) material, wherein the MMC material further comprises tungsten carbide particles.
However, Burhan teaches a matrix of a metal matrix composite (MMC) material, wherein the MMC material comprises an alloy and tungsten carbide particles (Metal matrix composites are commonly used for the supporting material because the specific properties can be controlled by modifying the processing or components and usually combines a hard particulate phase with a ductile metallic binder phase. The hard particles often include metal carbides (e.g., tungsten carbide), and the metallic binder often includes copper or other non-ferrous alloys (Col. 2, line 8-22).
Burhan’s disclosed metal matrix composite forms part of a drilling component (drill body with impregnated drill bits exhibit improved performance and tailoring the metal binder in the blades as using an infiltration metal binder alone can result in an improvement in strength and toughness of a blade, and such example infiltrating metal binder material includes different alloy comprising Cu, Mn, Ni and Sn alloy (Col. 19, line 1-35) and (Col. 21, line 48-60).
Burhan teaches an example infiltrating metal binder alloy comprising copper in the range of from 24 to 96% wt., nickel in the range of from 0 to 15% wt., manganese in the range of from 0 to 25% wt., tin in the range of from more than 1% wt. to 10% wt., and zinc in the range of from 3 to 20% wt. (Col. 20, line 1-14), which is overlapping with as recited in the instant claim and with Jeon’s alloy.
Burhan’s alloy composition including all the claimed elements are overlapping with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have to have an alloy composition selected and produced from the range of Burhan, because “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. 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].
Burhan is analogues to Jeon and the instant claim as Burhan teaches similar metal alloy for making a structural component.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to combine Burhan’s teaching of making material matrix composite drilling component comprising metal binder with Jeon’s metallic alloy, for producing structural component utilizing a metal matrix composite material for exhibiting improved performance combining a hard particulate phase with a ductile metallic binder phase for tailoring the material to have as desired strength and toughness required in the application.
Regarding claim 20, all discussions of claim 1 and 14 are applicable here, in addition, Jeon’s as disclosed alloy does not have any impurities as Jeon teaches the remainder is composed of copper (Cu) ([0009]), therefore Jeon’s range of impurity is within the as recited in the instant claim. Jeon’s additional element, like one or more of zirconium (Zr) and chromium (Cr), can be added at 0.01 to 1.0 wt.% (Abstract, [0009]) and this value is also within as recited range.
Regarding claim 21, all discussions of claim 1 and 14 are applicable here, wherein Jeon already discloses a Cu alloy that does not include one or more of Si, B and Zn (Abstract, [0008], [0009]).
Claim 10, 11, 14, 24 and 30 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Han Seung Jeon et.al. [KR20030000138A] (machine translation) (Jeon hereafter) as applied to claim 1 and further in view of Garrett T. Olsen et.al. [US20190234151] (Olsen hereafter).
Regarding claim 10, 11, 14, 24 and 30 all discussions of claim 1 are applicable here, but Jeon is silent about limitation the alloy forms a matrix of a metal matrix composite (MMC) material, wherein the MMC material further comprises tungsten carbide particles.
However, Olsen teaches a structural metal-matrix composite (MMC) portion and use thereof, and more specifically to tools having a structural MMC portion including a metal-based matrix and the term "structural MMC," in Olsen’s disclosure includes at least a metal-based matrix material, a binder material, and a structural element, wherein binder material and reinforcement (i.e., strengthening) material are dispersed or otherwise embedded within the metal matrix to provide structural reinforcement to and/or alter the physical properties (e.g., wear resistance, friction coefficient, thermal conductivity, and the like) of the matrix material and being used as a tool providing a structural form thereto for a specific application, such as a portion of a wellbore tool ( e.g., a drill bit, a leg of a drill bit, and the like) ([0016].
Olsen teaches reinforcement material (e.g., tungsten carbide particulates) ([0021] and matrix material is a metal ( e.g., a transition metal, a post-transition metal, etc.), a metal alloy, a superalloy, and any combination thereof including copper and copper alloy ([0031]). Olsen then teaches a drilling component generally used for land-based and subsea drilling operations that employ floating or sea-based platforms and rigs ([0075]-[0078]) and the drilling component (bit body) ([0047]) composed of a structural metal-matrix composite (MMC), a portion of a wellbore tool ([0085]).
Jeon teaches an alloy having a high-strength, high-ductility and excellent corrosion resistance when in contact with seawater or air with high salinity when used for ship parts, marine structure parts, and electrical and electronic parts for marine equipment ([0005]).
Olsen is in the field of making a structural component (drill component) and thus analogous to the instant claim and Jeon as Jeon’s alloy is for using for making structural parts.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention was made to combine Olsen’s teaching of making drilling component from a structural metal-matrix composite (MMC) component with the alloy of Jeon, as Jeon’s alloy has improved structural properties and excellent corrosion resistance in contact with seawater for having a parts of the drilling component for intended application in sea-based drilling.
Conclusion
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738