RESPONSE TO AMENDMENT
WITHDRAWN REJECTIONS
The 35 U.S.C. §101 and 112 rejections of the claims made of record in the office action mailed on 06/03/2025 have been withdrawn due to Applicant’s amendment in the response filed 12/01/2025
REJECTIONS
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 112
Claims 27 and 28 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.
Regarding claims 27-28, The phrase "preferably" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Furthermore, the limitation "the particles of said powders” is unclear. There is insufficient antecedent basis for this limitation in the claim. It is further not clear what the difference is between the “particles” and the “powder” in claims 1 and 27 is or what the “median size” of “the particles” is supposed to be since there is no claimed range for “the particles” but only “the powder”.
Claim Rejections - 35 USC § 103
Claims 1-20 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Prichard et al. (U.S. App. Pub. No. 2018/0236687) in view of Cutler (WO 87/04101) and Mueller et al. (U.S. App. Pub. No. 2016/0168038).
Regarding claims 1-5, Prichard et al. discloses a particle powder composition comprising sintered cemented carbide particles. (Abstract). The cemented carbide particles include at least 80-85% weight percent tungsten carbide (i.e. overlapping with the presently claimed range of 55% or greater) (par. [0015]), metal carbides other than tungsten in an amount of 0.1 to 5 weight percent (par. [0015]) and metallic binder in an amount of 0.1 to 35 weight percent (par. [0017]). The particles may be sintered together to form an article that has 99% of theoretical density. (par. [0021]). With respect to the content of Co and Ni, Prichard et al. teaches that the content of other metals/binders/elements, including cobalt and nickel, should be in the range of 0.1 to 5 percent by weight for carbides and 0.1 to 35% for other metals. (par. [0015] and [0017]).
Since tungsten (W) has a molecular weight about 15.3 times that of carbon (C) (i.e. a mass ratio of 15.3:1), the content of the particles tungsten is at least 75% ((80/(15.3 +1)) x 15.3) and the content of carbon is at least 4.9% (80/(15.3+1). These ranges significantly overlap with the presently claimed ranges for W and C in particular when considering that the content of WC can be higher than 80%.(“at least” , par. [0017]). 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).
With respect to the limitations “manufactured according to a process comprising the following steps” and including limitations a) through c), these limitations are directed to the process of making the claimed powder. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Therefore, since process steps a) through c) do not appear to imply any specific structure to the claimed powder, given the lack of structural differences implied by the product disclosed in the prior art and that presently claimed, the powder composition of Prichard et al. nonetheless meets the limitations of claimed powder composition produced according to steps a) through c).
Prichard et al. does not teach the density of a green article made from the sintered carbide particles but discloses that it can be at least 99% of the theoretical density.
Cutler teaches a tungsten carbide ceramic material which is densified to make articles for drilling, cutting, milling and other wear applications. (Abstract). Cutler teaches that the sintered carbide materials may having a density of greater than 95% of theoretical density of 15.77 g/cm3. (page 5, lines 21-32).
It would have been obvious to one of ordinary skill in the art to optimize the composition to produce a theoretical density within the range disclosed by Cutler with is very near 100% theoretical density, which would be above 14 g/cm3.
One of ordinary skill in the art would have found it obvious to produced sintered composites having as close to 100% theoretical density in order to produce a ceramic compact having high durability and wear resistance.
Prichard et al. does not teach that the article made from the sintered carbide particle is in the form of a ball.
Mueller et al. teaches tungsten carbide containing stabilized zirconium oxide which is formed into the shape of sintered balls. (Abstract and Fig. 1-3). Mueller et al. teaches that the balls are used as ceramics for wet milling and to reduce contamination risk compared to non-ceramics and that the balls require good wear resistance. (par. [0002]).
It would have been obvious to one of ordinary skill in the art to shape the ceramic articles made using the tungsten carbide powders disclosed by Prichard in view of Cutler et al. into the shape of ceramic balls as disclosed in Mueller et al.
One of ordinary skill in the art would have found it obvious to shape the ceramic articles made of tungsten carbide into ceramic balls in order to produce materials which are disclosed to be useful in the art for ceramic grinding materials having good wear resistance and thereby producing an article that would be expected to have commercial success due to the need for such ball shaped ceramics.
Prichard et al. does not disclose using the particle powder composition in a process of milling a suspension, wet dispersing or treating a surface, as claimed.
Mueller et al. teaches that the sintered WC based balls disclosed are known in the art to be useful in wet milling techniques and wet dispersions in the paint, varnish and ceramic industries due to their high wear resistance. (par. [0002]).
It would have been obvious to one of ordinary skill in the art to use the ceramic powder composition disclosed by the combination of Prichard in view of Cutler and Mueller et al. in a process involving wet milling or wet dispersing the ceramic powder balls.
One of ordinary skill in the art would have found it obvious to use the ceramic powder balls disclosed in the prior art in a process involving wet milling or wet dispersing as one of ordinary skill in the art would have a reasonable expectation of success of using the powder composition for the known utility thereof. Given the similarity in compositions in Prichard and Mueller et al., it would have been predictable to combine the teachings of the product of Prichard et al. for the known use disclosed in Mueller et al. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claims 3-5, Prichard et al. teaches that the content of other metals/binders/elements, including cobalt and nickel, should be in the range of 0.1 to 5 percent by weight for carbides and 0.1 to 35% for other metals, including tantalum, titanium, chromium, niobium, molybdenum, vanadium. (par. [0015] and [0017]). Prichard et al. does not disclose boron and therefore the element would be substantially not contained in the composition, therefore the sum of these elements would lie within the presently claimed range in view of the broad disclosure in par. [0015] and [0017].
Cutler teaches that control of grain size is important when forming ceramics including the tungsten carbide and that finer grains leads to higher strength and that the grain size affects the fracture mode. (page 6, line 31-page 7, line 6). Cutler teaches inclusion of grain growth inhibitors included in the compositions during sintering including borides (i.e. a source of boron in the ceramic material) in an amount of 1.5% by volume but preferably less than 1 vol%. (page 7, lines 20-25)
Regarding claims 6-7, Cutler et al. discloses producing sintered ceramics by densifying the ceramic material of close to 15.77 g/cm3. (page 5, lines 21-32).
Regarding claims 8-12, Prichard et al. teaches that the content of other metals/binders/elements should be in the range of 0.1 to 5 percent by weight for carbides and 0.1 to 35% for other metals. (par. [0015] and [0017]). Metal carbides include titanium, zirconium and tantalum. (par. [0015]).
Regarding claim 13, Prichard et al. does not disclose boron and therefore the element would be substantially not contained in the composition, therefore the sum of these elements would lie within the presently claimed range in view of the broad disclosure in par. [0015] and [0017].
Cutler teaches that control of grain size is important when forming ceramics including the tungsten carbide and that finer grains leads to higher strength and that the grain size affects the fracture mode. (page 6, line 31-page 7, line 6). Cutler teaches inclusion of grain growth inhibitors included in the compositions during sintering including borides (i.e. a source of boron in the ceramic material) in an amount of 1.5% by volume but preferably less than 1 vol%. (page 7, lines 20-25)
It would have been obvious to one of ordinary skill in the art to optimize the amount of boron in the ceramic composition containing the titanium carbide sintered particles disclosed in Prichard et al.
One of ordinary skill in the art would have found it obvious to optimize the relative amount of boron in view of the teachings in Cutler regarding using borides as a grain growth inhibitor to control the grain growth during sintering conditions for making an article having high strength. One of ordinary skill in the art would therefore have been motivated to use a sufficient amount of grain growth inhibitor material, including boron containing materials, in the ceramic of Prichard et al. to achieve the desirable properties but without using an excessive amount as Cutler seems to prefer a very small quantity (less than 1% by volume).
Regarding claim 14, Mueller et al. discloses that the balls have width to length ratios of 0.90 to 0.99 (i.e. sphericity). (par. [0011] and [0031]).
Regarding claim 15, Prichard et al. discloses that the content of tungsten carbide (which would include both WC and W2C forms) can be greater than 85% by mass of the cemented carbide materials. (par. [0015]).
Regarding claim 16, the sintered articles of Prichard et al. have average grain sizes in the range of 1 to 50 microns. (par. [0021])
Regarding claim 17, Mueller et al. teaches a “powder” comprising tungsten carbide balls as claimed (Fig. 1-3) and having diameters between 0.05 to 3 mm. (par. [0021]).
It would have been obvious to make the sintered balls having diameters in this range from the standpoint of producing a sintered ball that can be used in the applications disclosed in Mueller et al., namely ball milling device.
Regarding claims 18-20, Prichard et al. teaches that the content of other metals/binders/elements, including cobalt and nickel, should be in the range of 0.1 to 5 percent by weight for carbides and 0.1 to 35% for other metals, including tantalum, titanium, chromium, niobium, molybdenum, vanadium. (par. [0015] and [0017]). Prichard et al. does not disclose boron and therefore the element would be substantially not contained in the composition, therefore the sum of these elements would lie within the presently claimed range in view of the broad disclosure in par. [0015] and [0017]. Prichard et al. further discloses tungsten carbide containing additional compounds which do not contain nickel or cobalt and therefore it would be within the scope of the disclosure of Prichard et al. to have a composition containing substantially no Co or Ni (i.e. less than 0.05%), as claimed.
Regarding claim 26, although Prichard et al. does not disclose sintering at atmospheric temperature, the process by which the claimed powder composition is made is not germane to patentability in the absence of clear structural differences between the claimed product and the prior art. MPEP 2113. Claim 26 is therefore rejected for substantially the same reasons as claim 1, above.
Regarding claims 27-28, Prichard et al. discloses that the average size of the tungsten carbide particles can lie in the range of 1-100 micrometers. (par. [0015]).
Claims 1-20 and 26-28 are rejected under 35 U.S.C. 103 as being unpatentable over Cutler (WO 87/04101) in view of Mueller et al. (U.S. App. Pub. No. 2016/0168038).
Regarding claims 1-7, Cutler discloses tungsten carbide ceramics and methods of making the same for use in cutting, drilling and grinding applications. (Abstract). The ceramic compositions include 480 grams of WC including, 6.13% carbon, 0.01% Co, 0.01% Cr, 0.025% Fe, 0.01% Mo, 0.008% Ni and 0.009% O. (Example 1, page 9, lines 9-25). The content of tungsten would therefore be 91.8% (6.13% x 15.3). The ceramic had a density of 15.22 g/cm3. (Id.).
With respect to the limitations “manufactured according to a process comprising the following steps” and including limitations a) through c), these limitations are directed to the process of making the claimed powder. The method of forming the product is not germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. MPEP 2113. Therefore, since process steps a) through c) do not appear to imply any specific structure to the claimed powder, given the lack of structural differences implied by the product disclosed in the prior art and that presently claimed, the powder composition of Cutler et al. nonetheless meets the limitations of claimed powder composition produced according to steps a) through c).
Cutler does not teach that the article made from the sintered carbide particle is in the form of a ball.
Mueller et al. teaches tungsten carbide containing stabilized zirconium oxide which is formed into the shape of sintered balls. (Abstract and Fig. 1-3). Mueller et al. teaches that the balls are used as ceramics for wet milling and to reduce contamination risk compared to non-ceramics and that the balls require good wear resistance. (par. [0002]).
It would have been obvious to one of ordinary skill in the art to shape the ceramic articles made using the tungsten carbide powders disclosed by Cutler et al. into the shape of ceramic balls as disclosed in Mueller et al.
One of ordinary skill in the art would have found it obvious to shape the ceramic articles made of tungsten carbide into ceramic balls in order to produce materials which are disclosed to be useful in the art for ceramic grinding materials having good wear resistance and thereby producing an article that would be expected to have commercial success due to the need for such ball shaped ceramics.
Cutler does not disclose using the particle powder composition in a process of milling a suspension, wet dispersing or treating a surface, as claimed.
Mueller et al. teaches that the sintered WC based balls disclosed are known in the art to be useful in wet milling techniques and wet dispersions in the paint, varnish and ceramic industries due to their high wear resistance. (par. [0002]).
It would have been obvious to one of ordinary skill in the art to use the ceramic powder composition disclosed by the combination of Cutler and Mueller et al. in a process involving wet milling or wet dispersing the ceramic powder balls.
One of ordinary skill in the art would have found it obvious to use the ceramic powder balls disclosed in the prior art in a process involving wet milling or wet dispersing as one of ordinary skill in the art would have a reasonable expectation of success of using the powder composition for the known utility thereof. Given the similarity in compositions in Cutler and Mueller et al., it would have been predictable to combine the teachings of the product of Cutler et al. for the known use disclosed in Mueller et al. The selection of a known material based on its suitability for its intended purpose is prima facie obvious. MPEP 2144.07.
Regarding claims 8-9, Cutler does not teach any Zr in the ceramic and therefor the Zr content would be less than 0.17% and 0.1% by mass as claimed. Cutler discloses optionally adding less than 1% by volume of ZrO2. (page 8, lines 6-10)
Regarding claims 10-13, Cutler teaches that control of grain size is important when forming ceramics including the tungsten carbide and that finer grains leads to higher strength and that the grain size affects the fracture mode. (page 6, line 31-page 7, line 6). Cutler teaches inclusion of grain growth inhibitors included in the compositions during sintering including tantalum compounds, titanium compounds and borides (i.e. a source of boron in the ceramic material) in an amount of 1.5% by volume but preferably less than 1 vol%. (page 7, lines 20-25)
It would have been obvious to one of ordinary skill in the art to optimize the amount of boron in the ceramic composition containing the titanium carbide sintered particles disclosed in Prichard et al.
One of ordinary skill in the art would have found it obvious to optimize the relative amount of boron in view of the teachings in Cutler regarding using borides as a grain growth inhibitor to control the grain growth during sintering conditions for making an article having high strength. One of ordinary skill in the art would therefore have been motivated to use a sufficient amount of grain growth inhibitor material, including tantalum compounds, titanium compounds and boride containing materials, in the ceramic of Prichard et al. to achieve the desirable properties but without using an excessive amount as Cutler seems to prefer a very small quantity (less than 1% by volume).
Regarding claim 14, Mueller et al. discloses that the balls have width to length ratios of 0.90 to 0.99 (i.e. sphericity). (par. [0011] and [0031]).
Regarding claim 15, the content of WC used in Example 1 is nearly 100% of all media, minus a small amount of grain controlling agent (less than 1% by volume, page 8, lines 22-25) and other impurities disclosed in Example 1.
Regarding claim 16, the sintered articles of Cutler has a grain size of less than 5 micrometers. (page 9, lines 19-22).
Regarding claim 17, Mueller et al. teaches a “powder” comprising tungsten carbide balls as claimed (Fig. 1-3) and having diameters between 0.05 to 3 mm. (par. [0021]).
Regarding claims 18-20, the ceramic compositions include 480 grams of WC including, 6.13% carbon, 0.01% Co, 0.01% Cr, 0.025% Fe, 0.01% Mo, 0.008% Ni and 0.009% O. (Example 1, page 9, lines 9-25).
Regarding claim 26, the process by which the claimed powder composition is made is not germane to patentability in the absence of clear structural differences between the claimed product and the prior art. MPEP 2113. Claim 26 is therefore rejected for substantially the same reasons as claim 1, above. Furthermore, Cutler discloses sintering at atmospheric temperatures (without external pressure) (col. 8, lines 2-13).
Regarding claims 27-28, Cutler discloses using powder sizes in the range of 1-3 microns for the WC powder. (page 7, lines 1-6).
ANSWERS TO APPLICANT’S ARGUMENTS
Applicant’s arguments in the response filed 12/01/2025 regarding the prior art rejections made of record in the previous office action have been carefully considered but are deemed unpersuasive.
Applicant argues that Prichard and Cutler do not disclose the new limitations directed to the process of making the claimed powder composition of claim 1. In particular Applicant argues that the sintering temperature of greater than 1800oC and pressure less than 2 bar distinguishes from the prior art teachings. However, the claimed process limitations do not appear to impart any distinct structural features to the claimed powder composition according to claim 1. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. In the absence of clear structural differences between the invention as claimed and the prior art, the claims remain unpatentable over the teachings of the cited references in the record.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 01/21/2026