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
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.
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 1-26 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.
Claim 1, line 4 recites “the powder composition being in a green state” which renders the claim indefinite because it is unclear what is a green state. Does ”green state” mean the powder composition is a green color? Does ”green state” mean the powder composition has not been heated or melted? Does ”green state” mean the powder composition is in a powder form? Appropriate correction is required. As discussed in the printed publication of the application, paragraph 0033 states “the first state is the “green” state in which the powder has been deposited on the surface as a slurry or paste 36”, however claims are interpreted in light of the specification instead of reading limitations of the specification into the claims (see MPEP 2111).
Claims 2-26 are also rejected because they are dependent upon claim 1.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 2, 3, 4, 5, 6, 7, 8, 10, 12, 15, 16, 18 and 26 are rejected under 35 U.S.C. 102(a)(1) / (a)(2) as being anticipated by Matsuhisa (JPH09108834). An English machine translation of Matsuhisa (JPH09108834) is include with the Notice of Reference Cited (PTO-892).
With respect to the limitations of claim 1, Matsuhisa teaches a method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding (0008, generating a spark discharge between an electrode and the surface of the metal member), that method comprising: coating a first region of the workpiece with a powder composition (Fig 1, 0011, the metal surface P is coated with a powder or paste 8) of electrically conductive particles (0014), the powder composition being in a green state (0012); and using an ESD applicator to weld the composition to the workpiece (electrode D, 0008, 0012).
With respect to the limitations of claims 2, 3, 4, 5, 6, 7, 8, 10, 12, 15, 16, 18 and 26, Matsuhisa teaches the method includes obtaining powders (0014) of at least a first material and a second material (Abstract, metallic material such as nickel and cobalt); mixing those powders together (0011, made by mixing a binder with powdered coating or buildup material); and applying the mixture of powders to the workpiece (0011, the metal surface P is coated with a powder or paste 8);
the method includes preparation of a High Entropy Alloy mixture (Abstract, metallic material such as nickel and cobalt, 0014);
the method includes preparation of a powder mixture in which there are more than two principal elements (Abstract, 0014-0016);
the method includes preparation of a powder mixture in which no element has an atomic fraction greater than 35% (0014, the mixing ratio of these individual components or mixtures may be between 0.1% and 100% by weight);
the method includes preparation of a powder mixture of at least three elements, each of those elements having an atomic fraction of 5%-35% (0014-0016);
the method includes preparation of a powder mixture of an alloy of at least five elements, and in which each of the at least five elements has an atomic fraction of 5-35% (0014-0016);
said method includes forming the powder composition into a slurry (0008, the coating or build-up material powder may be applied paste);
said method includes combining the powder composition and a carrier (0011, made by mixing a binder with powdered coating or buildup material);
the carrier is a binder (0011, made by mixing a binder with powdered coating or buildup material);
the ESD applicator employs a welding rod of a material (0034) that is different from the powder composition (0014-0016);
the ESD applicator employs a welding rod of a material (0034) that is different from the workpiece (0013);
the method includes conducting ESD processing at an ESD contact frequency of 10 to 10,000 Hz (0020, pulse voltage of 20 to 1,000 Hz);
the method includes applying the powder mixture to a surface that is at least one of (a) not flat; and (b) not horizontal (Fig 1, curved surface P, 0012).
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.
Claims 5, 6 and 7 are rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834).
With respect to the limitations of claim 5, 6 and 7, Matsuhisa discloses that any of the individual or mixture atomic fraction weight ranges between 0.1% and 100% which fully discloses the atomic fraction greater than 35%; atomic fraction of 5%-35%. Matsuhisa discloses the claimed invention except for explicitly showing the method includes preparation of a powder mixture in which no element has an atomic fraction greater than 35%; the method includes preparation of a powder mixture of at least three elements, each of those elements having an atomic fraction of 5%-35%; the method includes preparation of a powder mixture of an alloy of at least five elements, and in which each of the at least five elements has an atomic fraction of 5-35%.
However, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention was made to have the method includes preparation of a powder mixture in which no element has an atomic fraction greater than 35%; the method includes preparation of a powder mixture of at least three elements, each of those elements having an atomic fraction of 5%-35%; the method includes preparation of a powder mixture of an alloy of at least five elements, and in which each of the at least five elements has an atomic fraction of 5-35%, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable atomic fraction weight and contact frequency ranges involves only routine skill in the art (see MPEP 2144.04).
Claims 9, 11, 13 and 25 are rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834) as applied to claims 1, 8, 10 and 12, further in view of Murphy (US 2016/0010472).
With respect to the limitations of claims 9, 11 and 13, Matsuhisa discloses the claimed invention except for the method includes allowing the slurry to dry on the workpiece in the green state prior to ESD processing; the carrier is an aqueous liquid; the method includes applying the powder composition to the work piece and then allowing the binder to set. However, Murphy discloses the method includes allowing the slurry to dry on the workpiece (0031, processes for depositing the metallic chromium coating include…coating with chromium-bearing particles (e.g. Cr or Cr alloy particles) in a liquid carrier followed by drying) in the green state prior to ESD processing (ESD as disclosed by Matsuhisa); the carrier is an aqueous liquid (0031, liquid carrier); the method includes applying the powder composition to the work piece and then allowing the binder to set (0031, coating with chromium-bearing particles (e.g. Cr or Cr alloy particles) in a liquid carrier followed by drying) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding of Matsuhisa silent to drying, setting and a liquid carrier with the method includes allowing the slurry to dry on the workpiece in the green state prior to ESD processing; the carrier is an aqueous liquid; the method includes applying the powder composition to the work piece and then allowing the binder to set of Murphy for the purpose of using a known a liquid carrier, drying and setting step that allows a particle / carrier coating to be adhered to a workpiece prior to processing (0031).
With respect to the limitations of claim 25, Matsuhisa in view of Murphy discloses the method includes masking at least one portion of the workpiece (Murphy, Abstract, 0007, masking).
Claim 14 is rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834) as applied to claim 1, further in view of Lambert (US 2011/0078909).
With respect to the limitations of claim 14, Matsuhisa discloses the claimed invention except for the method includes depositing successive layers of green material on the workpiece. However, Lambert discloses the method includes depositing successive layers of material on the workpiece (Fig 4, 0053, this may be accomplished during a single pass or through multiple passes or layers of deposited electrode material of tungsten carbide, titanium carbide or vanadium carbide) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding of Matsuhisa silent to multiple passes with the method includes depositing successive layers of material on the workpiece of Lambert for the purpose using a known deposition technique that achieves a required layer thickness through multiple passes (0053).
Claim 17 is rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834) as applied to claim 1, further in view of Burumkulov (RU2119552). An English machine translation of Burumkulov (RU2119552) is included with the Notice of Reference Cited (PTO-892).
With respect to the limitations of claim 17, Matsuhisa discloses the claimed invention except for the method includes conducting ESD processing of the workpiece with electrical discharges of less than 10 Joules per contact. However, Burumkulov discloses the method includes conducting ESD processing of the workpiece with electrical discharges of less than 10 Joules per contact (Abstract, 0012, pulse discharge energy 0.04-5.4J) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding of Matsuhisa silent to energy of the discharge with the method includes conducting ESD processing of the workpiece with electrical discharges of less than 10 Joules per contact of Burumkulov for the purpose of using a known electrical discharge energy that achieves an increased thickness and improved quality of the coating (Abstract).
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834) as applied to claim 1, further in view of Gang (CN114196953). An English machine translation of Gang (CN114196953) is included with the Notice of Reference Cited (PTO-892).
With respect to the limitations of claim 18, Matsuhisa discloses the claimed invention except for the method includes conducting ESD processing at an ESD contact frequency of 10 to 10,000 Hz. However, Gang discloses the method includes conducting ESD processing at an ESD contact frequency of 10 to 10,000 Hz (N0018, Pgs 14-15, the electrode moves relative to the workpiece, it vibrates perpendicular to the hardened surface, with a vibration frequency of 1-100Hz) is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding of Matsuhisa silent to the contact frequency with the method includes conducting ESD processing at an ESD contact frequency of 10 to 10,000 Hz of Gang for the purpose of using a known contact frequency that is suitable for ESD coating (0003).
With respect to the limitations of claim 19, Matsuhisa discloses that any of the individual or mixture atomic fraction weight ranges between 0.1% and 100% which fully discloses the atomic fraction greater than 35%; atomic fraction of 5%-35%. Matsuhisa in view of Gang discloses the claimed invention except for explicitly showing the frequency is in the range of 1500 to 5000 Hz.
However, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention was made to have the frequency is in the range of 1500 to 5000 Hz, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable atomic fraction weight and contact frequency ranges involves only routine skill in the art (see MPEP 2144.04).
Claims 20, 21, 22, 23 and 24 are rejected under 35 U.S.C. 103 as being obvious over Matsuhisa (JPH09108834) as applied to claim 1, further in view of Scotchmer (US 2021/0346976).
With respect to the limitations of claims 20, 21, 22, 23 and 24, Matsuhisa discloses the claimed invention except for the method includes vibrating the workpiece during ESD processing independently of any vibration of the ESD applicator; the method includes ultrasonic vibration of at least one of (a) the workpiece; and (b) the ESD applicator; the method includes peening; the method includes reversing polarity of the workpiece and the ESD applicator; the method includes applying powder composition to more than one discrete surface areas of the workpiece. However, Scotchmer discloses the method includes ultrasonic vibration of at least one of (a) the workpiece; and (b) the ESD applicator (Fig 3, 0021, applicator 40 is subject to vibration, whether due to a mechanical oscillator such as a rotating or reciprocating imbalance weight, or due to an ultrasonic vibrator); the method includes peening (0032, 0034, peening); the method includes reversing polarity of the workpiece and the ESD applicator (0049, three pulses are sent with reverse electrical polarity); the method includes applying powder composition to more than one discrete surface areas (Figs 1, 2, coating 30, footprints 51-55, 0028-0030) of the workpiece is known in the art. It would have been obvious for one having ordinary skill in the art before the effective filing date of the invention to adapt the method of treatment of an electrically conductive work piece using Electro-Spark Discharge (ESD) welding of Matsuhisa silent to the recited ultrasonic vibration, peening, reversing polarity and coating discrete surface areas with the method includes ultrasonic vibration of at least one of (a) the workpiece; and (b) the ESD applicator; the method includes peening; the method includes reversing polarity of the workpiece and the ESD applicator; the method includes applying powder composition to more than one discrete surface areas of the workpiece of Scotchmer for the purpose of providing a known configuration that allows coatings to be accurately deposited on discreet areas of workpiece, thereby improving the overall versatility of the method. Additionally, including the peening of Scotchmer provides for a finer grained structure and an even coating (0032). Moreover, including the ultrasonic vibration of Scotchmer allows for rapidly making and breaking of contact between the applicator and workpiece (0032) to prevent shorting.
Matsuhisa in view of Scotchmer discloses the claimed invention except for the method includes vibrating the workpiece during ESD processing independently of any vibration of the ESD applicator. However, it would have been obvious for one having ordinary skill in the art before the effective filing date of the invention was made to have the method includes vibrating the workpiece during ESD processing independently of any vibration of the ESD applicator, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable vibrating configuration involves only routine skill in the art (see MPEP 2144.04). One would have been motivated to vibrate the workpiece during ESD processing independently of any vibration of the ESD applicator to increase rapidly making and breaking of contact between the applicator and workpiece to prevent shorting (Scotchmer, 0032).
Conclusion
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/THIEN S TRAN/Primary Examiner, Art Unit 3761 9/21/2026
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