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 .
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 1-20 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.
The term “lightweight” in claims 1-20 is a relative term which renders the claim indefinite. The term “lightweight” is not defined by the claims, 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. This renders the density of the steel indefinite which renders the scope of the claims indefinite.
Additionally, the term “substantially” in claims 2 and 14 is a relative term which renders the claim indefinite. The term “substantially” is not defined by the claims, 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. This renders the length and width of the aluminum oxide particles indefinite which renders the scope of the claims indefinite.
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(s) 1-3, 5, 7-15, 17, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 113088823A to Zhu et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes).
Regarding claims 1, 3, 13 and 15, Zhu discloses a steel which can be in the form of a structural part for an electronic device (Zhu, translation page 7) comprising the following composition (Zhu, abstract, claims 1 and 3, translation pages 3 and 4) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Zhu wt%
Overlaps?
Fe
≥48.18
Balance
Yes
Mn
30.01-35.01
25-35
Yes
Al
12.01-15.01
6-12
See below
C
1.0-1.5
0.7-2.0
Yes
O
0.03-0.3
0.01-0.50
Yes
V
0-0.6
Trace (0-0.1)
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Zhu including the instantly claimed because Zhu discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed Al content, the broadest reasonable interpretation of the upper Al content of Zhu, written as “12wt% Al,” as opposed to “12.0wt% Al” or “12.00 wt% Al,” would include values that round to 12 wt% Al, including the instantly claimed lower limit of 12.01 wt%, and thus overlaps the instantly claimed range. Alternatively, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the upper limit of Zhu of 12 wt% Al is close enough to the instantly claimed lower limit of 12.01 wt% Al that one of ordinary skill in the art would expect them to have the same properties absent evidence showing otherwise.
Regarding the term “lightweight,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Zhu would be expected to have the same or similar density as the instantly claimed steel because the steel of Zhu has the same or substantially the same composition.
Regarding claims 5, 7-9, 17, 19 and 20, the steel of Zhu overlaps the instantly claimed composition ranges.
Regarding claims 2 and 14, para [0101] of the instant specification states that the aluminum oxide phase is generated in situ through reaction in the matrix by using a process such as sintering. The steel of Zhu is subjected to sintering (Zhu, claim 4) and as such would be expected to generate the same or substantially the same aluminum oxide phase.
Regarding claim 10, the steel of Zhu is formed through a metal injection molding process using a powder raw material (Zhu, claim 4).
Regarding claim 11, the steel of Zhu is capable of achieving a density within 5.9 to 6.3 g/cm3 (Zhu, Table 2).
Regarding claim 12, the steel of Zhu is capable of achieving a yield strength of 700 MPa to 1200 MPa and an elongation of 1.5 to 20% (Zhu, Table 2).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2018/024892 to Valls Angles.
Regarding claims 1, 3, 13 and 15, Valls Angles discloses a steel which can be in the form of a tool, die, piece of mould (Valls Angles, page 1, lines 5-8), which typically have electronic controls and thus can be construed as structural parts for an electronic device, comprising the following composition (Valls Angles, page 12 line 1- page 15 line 10) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Zhu wt%
Overlaps?
Fe
≥48.18
Balance
Yes
Mn
30.01-35.01
8.2-34.6
Yes
Al
12.01-15.01
0-18
Yes
C
1.0-1.5
0.52-2.48
Yes
O
0.03-0.3
Trace (0-2.0)
Yes
V
0-0.6
0-8
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Valls Angles including the instantly claimed because Valls Angles discloses the same utility throughout the disclosed ranges.
Regarding the term “lightweight,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Valls Angles would be expected to have the same or similar density as the instantly claimed steel because the steel of Valls Angles has the same or substantially the same composition.
Regarding claims 5-9 and 16-20, the steel of Valls Angles overlaps the instantly claimed composition ranges.
Regarding claims 2 and 14, para [0101] of the instant specification states that the aluminum oxide phase is generated in situ through reaction in the matrix by using a process such as sintering. The steel of Valls Angles may be subjected to sintering (Valls Angles, page 2 lines 16-34) and as such would be expected to generate the same or substantially the same aluminum oxide phase.
Regarding claim 10, the steel of Valls Angles may be formed through powder metallurgy processes (Valls Angles, page 2, lines 16-34), which one of ordinary skill in the art would recognize as including metal injection molding processes.
Regarding claim 11, the density of an alloy is largely a function of the composition of said alloy. As the composition of the steel of Valls Angles overlaps the instantly claimed ranges, the density of the steel of Valls Angles would also be expected to overlap the instantly claimed ranges.
Regarding claim 12, the steel of Valls Angles is capable of achieving a yield strength of 700 MPa to 1200 MPa (Valls Angles, Table 4). Regarding the instantly claimed elongation, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the steel of Valls Angles would be expected to have the same or similar yield strength as the instantly claimed steel because the steel of Valls Angles has the same or substantially the same composition and method of manufacturing.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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