DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Applicant’s election without traverse of Invention I, claims 1-11, in the reply filed on 01/07/2026 is acknowledged.
Claims 12-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/07/2026.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-7 and 10-11 of U.S. Patent No. 11958115B2, herein patent’115. Although the claims at issue are not identical, they are not patentably distinct from each other because they describe substantially similar grade powders.
The limitations of Instant claims 1-2 and 6-7, are met by claims 1, 8, and 11 of patent’115 with range of electrochemically process sintered scrap in claim 11 of patent’115 being encompassed by the claimed range.
The limitations of Instant claim 3, are met by claim 6 of patent’115.
The limitations of Instant claims 4-5, are met by claim 11 of patent’115 with the range being encompassed by the claimed ranges.
The limitations of Instant claim 8, are met by claim 2 of patent’115.
The limitations of Instant claim 9, are met by claim 3 of patent’115.
The limitations of Instant claim 10, are met by claim 1 of patent’115.
The limitations of Instant claim 1, are met by claim 1 and 7 of patent’115. As claims 1 and 7 of patent’115 are silent to the inclusion of virgin carbide powder in claim 1, as such it is considered to not be present in the grade powder.
Claim Objections
Claims 1, 6 and 7 are objected to because of the following informalities:
In claims 1, 6 and 7, the limitations should be corrected to other reclaimed sintered carbide scrap, in order to maintain clarity in the claim language and support from the Instant Spec.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. In claim 1, reference to other reclaimed sintered scrap is broader than the teachings set forth in the Instant Specification. The Instant Spec teaches that the scrap is always carbide scrap, thus the instances should be corrected to other reclaimed sintered carbide scrap.
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 1-3, 6-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ghandehari et al. (US 4,234,333), herein Ghandehari.
In regards to claims 1-3 and 6-9, Ghandehari teaches a carbide powder composition formed from recovered metal carbide powders [Abstract]. The reclaimed carbide is WC and a metal binder, Co, is present in the powder [Table I]. The carbide is present at an amount of at least 70 wt.% of the powder as the powder is more than 90 wt.% reclaimed WC [Table I, Col 10 lines 52-70]. Ghandehari further teaches other reclaimed sintered carbide scraps may be present such as TiC or TaC [Example 7, Col 20 lines 52-68, Col 21 lines 1-7, Table XI].
It is noted that grade in grade powder is given no patentable weight as there no distinction as to what the grade is meant to limit.
Claims 1-2 and 6-8 define the product by how the product was made. Thus, claims 1-2 and 6-8 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure being a carbide powder with a binder present. The reference suggests such a product. It is noted that Ghandehari teaches the carbide powder is electrochemically processed [Claim 1].
In regards to claim 11, Ghandehari teaches powder is made from recovered scarp carbide powder and thus no virgin WC is present [Abstract, Claim 1].
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.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gopalrao et al. (IN 5273/CHE/2014 A), herein Gopalrao, in further view of Sampath et al. (Recycling of WC-Co from scrap materials), herein Sampath.
In regards to claims 1-9 and 11, Gopalrao teaches a grade powder comprising reclaimed WC powder and a metallic binder [Abstract, Pg. 2 ¶ 3, Pg. 4 ¶ 3 ]. The WC portion of the powder is 80-99.8 wt%, the metallic binder is 0.2-20 wt% and additional carbide such as TiC is present at less than or equal to 5 wt.% [Pg. 8 Table III]. Gopalrao further teaches the WC comprises reclaimed WC particles and virgin WC particles in any desired composition [Pg. 8].
Sampath teaches electrochemically processed WC-Co powders from scrap [Abstract]. Sampath teaches the powder is used as processed with the addition of a Co binder and without the addition of virgin WC [Experimental Procedure].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have added no virgin WC powder to the grade powder of Gopalrao as taught by Sampath. One would have been motivated to do so as Sampath teaches the use of 100% scrap carbide powder is known and thus one would have had a reasonable expectation of success. The ranges for the carbide powder of modified Gopalrao overlap the claimed ranges.
Claims 1-8 and 10 define the product by how the product was made, i.e., reclaimed, electrochemically processed, zinc processed, and ATP. Thus, claims 1-8 and 10 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure being a carbide powder with a binder present. The reference suggests such a product.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
In regards to claim 10, Gopalrao teaches the average size of the carbide particles 0.5- 10 µm[Table I].
Conclusion
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784