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
Claims 1-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on February 19th, 2026.
Applicant’s election without traverse of Invention II (claims 11-15) in the reply filed on February 19th, 2026, is acknowledged.
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 11-15 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.
Claims 11-15 recite, in the preamble, “A corrosion-resistant nickel-based alloy,” which is indefinite. The body of the claim recites a substrate made of a nickel-based alloy and a passivation layer. The preamble “A corrosion-resistant nickel-based alloy” implies that the claim is directed to a composition, or a specific alloy, but the body of the claim recites neither a composition nor an alloy. In particular, later dependent claim 14 notes that the passivation layer may further include a nickel-containing oxide layer which is separate from the nickel-based alloy of the substrate (i.e., contradicting the preamble, which claims an alloy, as opposed to a combination of an alloy and an oxide layer). In the interest of compact prosecution, the claims will be interpreted as directed to a corrosion-resistant article.
Claims 12-15 are rejected due to dependence on indefinite claim 11.
Claim 14 is rejected due to dependence on indefinite claim 13 (which contains the indefinite preamble as noted above, with the further contradiction as noted above).
Claim 12 recites the phrase “the nickel content of the nickel-based alloy is greater than 50%,” which is considered indefinite. The basis for the recited nickel content range is unclear (i.e., it is not clear if the nickel content is greater than 50% by mass, by volume, or by moles/atomic units). In addition, the phrase “the nickel content” lacks antecedent basis (i.e., in the event of a nickel-based alloy with multiple nickel contents, such as in a composite alloy with multiple types of nickel grains or particles, or a substrate with an alloy having interface portions or gradients, multiple nickel contents are conceivable to a person of ordinary skill). The present specification does not provide any guidance towards a specific interpretation of present claim 12. In the interest of compact prosecution, the claim will be interpreted as specifying “a nickel content of the nickel-based alloy is greater than 50 atomic %.”
Claim 14 recites the phrase “a manganese oxide layer (MnOx), and a chromium oxide layer (CrOx),” but the meaning of the acronyms MnOx and CrOx is unclear. MnOx and CrOx can be used in the art to refer to non-stochiometric ratios of Mn:O and Cr:O (i.e., aside from 1:1). However, the present specification does not indicate if this definition should be assumed (the present specification provides no discussion at all which would inform the meaning of the terms MnOx and CrOx). Conventionally within the art, the indication of a variable “x” within chemical formulae includes a discussion of the possible values for x and their implied physical meaning. In addition, if MnOx or CrOx are present in a composition comprising a mixture of oxides, it would be unclear what “x” should mean (i.e., if “x” is just an amount of oxygen directly adjacent or bonded with manganese or chromium, or if instead, x corresponds to a total amount of oxygen present). Furthermore, these acronyms are typically used in the art to refer to a constituent of a composition, but technically, as written, the claim uses the term acronyms as if they are layers (i.e., the acronyms are used in a manner inconsistent with its usage in the art). In the interest of compact prosecution, the claim will be interpreted as “a manganese oxide layer, and a chromium oxide layer”.
Claim 15 recites the phrase “nickel-containing oxide layer (NiOx),” but the meaning of the acronym NiOx is unclear. NiOx can be used in the art to refer to a non-stochiometric ratio of Ni:O (i.e., aside from 1:1). However, the present specification does not indicate if this definition should be assumed (the present specification provides no discussion at all which would inform the meaning of the term NiOx). Conventionally within the art, the indication of a variable “x” within chemical formulae includes a discussion of the possible values for x and their implied physical meaning. In addition, if NiOx is present in a composition comprising a mixture of oxides, it would be unclear what “x” should mean (i.e., if “x” is just an amount of oxygen directly adjacent or bonded with nickel, or if instead, x corresponds to a total amount of oxygen present). Furthermore, NiOx is typically used in the art to refer to a constituent of a composition, but technically, as written, the claim uses the term NiOx as if it is a layer (i.e., NiOx is used in a manner inconsistent with its usage in the art). In the interest of compact prosecution, the claim will be interpreted as “the passivation layer is a nickel-containing oxide layer.”
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.
Claims 11-12 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Nanbu (JP2017179597A). Nanbu is read from an English machine translation which has been placed in the Application File.
With regards to claim 11, Nanbu discloses a substrate comprising a nickel alloy plate (i.e., an article comprising a substrate made of a nickel-based alloy) and a nickel oxide layer located thereon (i.e., a passivation layer on at least one surface of the substrate) (Nanbu – Translation: page 2, subsection entitled [Metal Base Material], “In the present invention, the metal substrate… a nickel alloy plate”; page 3, subsection entitled [Oxide film], “As described above… it is an important feature that an oxide film having an uneven surface is formed…. a nickel-based substrate… is composed of at least nickel oxide…”). As best understood, the substrate is corrosion-resistant, and the nickel oxide layer is a passivation layer, as the present specification admits that nickel oxide layers are considered passivation layers, and further, such layers provide corrosion resistance (See Present Specification PGPub: para. [0002]-[0004] and [0017]). With respect to the nickel oxide plating layer, Nanbu discloses an average roughness in the range of 30 to 100 nm (i.e., 0.03 to 0.1 microns; (30 nm)(1 micron / 1000 nm) = 0.03 microns; (100 nm)(1 micron / 1000 nm) = 0.1 microns; overlapping the claimed range of less than 0.04 microns) and a thickness of 40 to 1200 nm (i.e., overlapping the claimed range of between 5 and 200 nm) (Nanbu: page 3, subsection entitled [Oxide film], “In the present invention… an arithmetic average roughness (Ra) of 30 to 100 nm… thickness of the oxide film is preferably in the range of 40 to 1200 nm…”). It is noted that instances of overlapping ranges have been held sufficient to establish a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 12, the percent nickel in the nickel-based alloy can be calculated from the composition in the oxide film of Nanbu (i.e., as the nickel-based alloy substrate of Nanbu is calcined under oxygen to form its oxide layer, meaning, the original composition of the underlying nickel-based alloy substrate is the original composition minus oxygen) (Nanbu: page 3, [Oxide film], “As described above…”). As best understood, the nickel-based alloy of Nanbu may be an alloy of nickel and iron only, wherein the amount of iron is 3 atomic% or less, provided in order to enable production of iron oxide which provides improved adhesion to glass (Nanbu: page 3, [Oxide film], “That is,… iron is 3 atomic% or less). Therefore, it would have been obvious to have incorporated only 3 atomic% or less iron into the alloy composition of Nanbu (i.e., resulting in 100 – 3 = 97% atomic% or greater nickel), as such a composition would be oxidizable to provide improved adhesion to glass (Nanbu: page 3, [Oxide film], “That is,… iron is 3 atomic% or less). This range overlaps the claimed range of greater than 50 atomic%, thereby establishing a prima facie case of obviousness, per MPEP 2144.05.
With regards to claim 15, the passivation layer is nickel oxide (i.e., a nickel-containing oxide layer, or, NiO) (see above discussion).
Examiner’s Note
Claims 13-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. Presuming the issues under 35 U.S.C. 112(b) are overcome, claims 13-14 would be in condition for allowance.
The following is a statement of reasons for the indication of claims distinguishing over the art:
Nanbu fails to disclose, teach, or render obvious the subject matter of claims 13-14.
Claim 13 requires the nickel-based alloy to further include chromium (Cr) and manganese (Mn) metals. While Nanbu discloses the inclusion of chromium (Cr) (see page 2 of Nanbu, subsection [Metal base material]), Nanbu fails to disclose the inclusion of manganese. Nanbu only lists iron, copper, and chromium as suitable materials for forming a nickel alloy usable in its invention. It is noted that the composition of the nickel-based alloy of Nanbu affects the oxide layer (passivation layer) formed following calcination with oxygen. It is unclear if the addition of manganese would adversely affect the formation of a suitable oxide layer (which must be capable of adhesion to glass). Similarly, it cannot be concluded that the roughness properties of Nanbu would be unaffected by the inclusion of manganese. It is also unclear if inclusion of manganese into the alloy composition of Nanbu would allow its required coefficient of thermal expansion to be maintained. Given the requirements of Nanbu in totality, a person of ordinary skill would not conclude that manganese could be added to the nickel-based alloy composition of Nanbu without rendering it inoperable for its intended purpose. Claim 14 is dependent on claim 13, and therefore, claim 13 is potentially allowable for the same reasons. Note that MnOx and CrOx are defined by the claims and present specification as shorthand for manganese oxide and chromium oxide, respectively.
Conclusion
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/ETHAN WEYDEMEYER/
Examiner, Art Unit 1783
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