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
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-12, drawn to a metal matrix, classified in C22C29/08.
II. Claim 13, drawn to an article, classified in C23C24/103.
III. Claims 14-19, drawn to a powder, classified in B22F1/12.
IV. Claim 20, drawn to a method of applying a coating, classified in C23C4/134.The inventions are independent or distinct, each from the other because:
Inventions I and II are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as an architectural brick and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as abrasive grains and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions I and IV are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using that product, such as a process of using an architectural brick.
Inventions II and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as abrasive grains and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions II and IV 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 the product as claimed can be made by another and materially different process, such as a process where the powder is applied via epoxy and not partially melted.
Inventions III and IV are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case the product as claimed can be used in a materially different process of using the product, such as a process of ablating rust using abrasive grains.
During a telephone conversation with Ashley Crane on 05/29/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-12. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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 and the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an 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.
Applicant is reminded that upon the cancelation 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.
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.
Claim(s) 1-5 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kamo et al. (US20180066342, hereinafter referred to as Kamo).
Regarding claim 1, Kamo discloses a metal matrix composite (see Kamo at the Abstract, disclosing a cobalt-based cladding alloy, which Examiner notes corresponds to a metal matrix composite.) comprising: a metallic matrix comprising: nickel in an amount of from 10 percent to 80 percent by weight based on total weight of the metallic matrix (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 15 mass % Ni); chromium in an amount of from 10 percent to 45 percent by weight based on total weight of the metallic matrix (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 35 mass % Cr); and molybdenum in an amount of from 10 percent to 45 percent by weight based on total weight of the metallic matrix (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 30 mass % Mo);
While Kamo does not explicitly disclose comparative example 5 comprises particulate carbide, Kamo at [0049] teaches when the amount of C in the cobalt-based cladding alloy ... is 0.05 mass % or more, hard carbide phases are likely to be generated. Kamo at [0050] teaches the amount of C in the cobalt-based cladding alloy according to the embodiment of the present disclosure is 0.04 mass % or less ... since the amount of C is small, the generation of carbides is suppressed. As such, because comparative example 5 comprises 0.05 mass% C, it would inherently possess some amount of particulate carbide. 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(I) first paragraph).
Regarding claim 2, Kamo discloses the nickel and molybdenum are present in a weight ratio of less than 6:1 (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 15 mass % Ni and 30 mass % Mo, which Examiner notes is a ratio of nickel to molybdenum of 15/30= 0.5:1).
Regarding claim 3, Kamo discloses the chromium and molybdenum are present in a weight ratio of less than 2:1 (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 35 mass % Cr and 30 mass % Mo, which Examiner notes is a ratio of chromium to molybdenum of 35/30= 1.17:1, which is within the claimed range).
Regarding claim 4, Kamo discloses the nickel and chromium are present in a weight ratio of less than 3:1 (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 15 mass % Ni and 35 mass % Cr, which Examiner notes is a ratio of nickel to molybdenum of 15/35=0.42:1, which is within the claimed range).
Regarding claim 5, Kamo discloses the chromium is present in an amount greater than 22 percent by weight based on total weight of the metallic matrix (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 35 mass % Cr).
Regarding claim 7, Kamo discloses the metallic matrix further comprises silicon (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 0.8 mass % Si).
Regarding claim 8, Kamo discloses the silicon is present in an amount of from 0.05 percent by weight to 5 percent by weight based on total weight of the metallic matrix (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 0.8 mass % Si).
Regarding claim 9, Kamo discloses the metal matrix composite is substantially free of iron and/or niobium (see Kamo at Table 1, Comparative Example 5, disclosing an example comprising 0% niobium).
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.
Claim(s) 1-10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zheng et al. (US20140271318, hereinafter referred to as Zheng).
Regarding claim 1, Zheng discloses a metal matrix composite (see Zheng at the Abstract, disclosing a metal matrix composite) comprising: a metallic matrix comprising: nickel in an amount of from 10 percent to 80 percent by weight based on total weight of the metallic matrix (see Zheng at Table IX, disclosing 0-20 wt.% Nickel, which overlaps with the claimed range.) 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); chromium in an amount of from 10 percent to 45 percent by weight based on total weight of the metallic matrix (see Zheng at Table IX, disclosing 5-35 wt.% chromium, which overlaps with the claimed range.); and molybdenum in an amount of from 10 percent to 45 percent by weight based on total weight of the metallic matrix (see Zheng at Table IX, disclosing 0-35 wt.% molybdenum, which overlaps with the claimed range.); and particulate carbide (see Zheng at [0017], disclosing hard particles comprising carbides of tungsten).
Regarding claim 2, while Zheng does not explicitly disclose the nickel and molybdenum are present in a weight ratio of less than 6:1, Zheng at Table IX discloses a range of nickel from 0-20 wt.% and a range of molybdenum from 0-35% which provides for a range of ratios that overlap with the claimed range. For example, the lower endpoints for each range provide for a ratio of 0, which is within the claimed range. Additionally, the upper endpoints for each provide for a claimed ratio of 4:7, which is within the claimed range. Therefore, the ranges of nickel and molybdenum in table IX provide for a range of ratios that overlap with the claimed range.
Regarding claim 3, while Zheng does not explicitly disclose the chromium and molybdenum are present in a weight ratio of less than 2:1, Zheng at Table IX discloses a range of chromium from 5-35 wt.% and a range of molybdenum from 0-35% which provides for a range of ratios that overlap with the claimed range. For example, the upper endpoints for each provide for a claimed ratio of 1:1, which is within the claimed range. Therefore, the ranges of chromium and molybdenum in table IX provide for a range of ratios that overlap with the claimed range.
Regarding claim 4, while Zheng does not explicitly disclose the nickel and chromium are present in a weight ratio of less than 3:1, Zheng at Table IX discloses a range of nickel from 0-20 wt.% and a range of chromium from 5-35% which provides for a range of ratios that overlap with the claimed range. For example, the lower endpoints for each range provide for a ratio of 0, which is within the claimed range. Additionally, the upper endpoints for each provide for a claimed ratio of 4:7, which is within the claimed range. Therefore, the ranges of nickel and chromium in table IX provide for a range of ratios that overlap with the claimed range.
Regarding claim 5, Zheng discloses the chromium is present in an amount greater than 22 percent by weight based on total weight of the metallic matrix (see Zheng at Table IX, disclosing 5-35 wt.% chromium, which overlaps with the claimed range.).
Regarding claim 6, Zheng discloses the particulate carbide comprises tungsten carbide particles (see Zheng at [0017], disclosing hard particles comprising carbides of tungsten).
Regarding claim 7, Zheng discloses the metallic matrix further comprises silicon (see Zheng at Table IX, disclosing 0-5 wt.% silicon, which overlaps with the claimed range.).
Regarding claim 8, Zheng discloses the silicon is present in an amount of from 0.05 percent by weight to 5 percent by weight based on total weight of the metallic matrix (see Zheng at Table IX, disclosing 0-5 wt.% silicon, which overlaps with the claimed range.).
Regarding claim 9, Zheng discloses the metal matrix composite is substantially free of iron and/or niobium (see Zheng at Table IX, disclosing no niobium).
Regarding claim 10, Zheng discloses the metallic matrix comprises a Laves phase (see Zheng at [0040], disclosing a Laves phase).
Regarding claim 12, Zheng discloses the metal matrix composite has: (a) a relative magnetic permeability of less than 1.01 µr, as measured by ASTM A342; (b) a Rockwell scale hardness of at least 35 HRC, as measured by ASTM E18; and/or (c) a volume loss of no more than 33 mm3 as measured by ASTM G65 Procedure A (see Zheng at [0032], disclosing an average volume loss (AVL) less than 20 mm3 according to ASTM G65 Standard Test Method for Measuring Abrasion using the Dry Sand/Rubber Wheel, Procedure A.).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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, Amber Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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