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 .
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 1-7 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 1-6 all claim a nickel-based bulk metallic glass alloy. However, as the claims are currently presented, it is possible to include elements other than nickel as the most predominant element in the alloy. Co, W, and B can all be included at higher atomic percentages than Ni. It is not clearly established if Ni is required to be the most predominant element in the alloy. While the specification only lists examples in which Ni is the predominant element, no clarification is given as to whether this is a requirement of the invention. Claim 7 is rejected as it depends on claim 1 and does not solve the above issues.
Claim 7 claims a method for producing a composite from the nickel-based bult metallic glass alloy. It is not clear what the composite contains other than the alloy. No other element or component of the composite is listed in the claim. The specification does not add clarity, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “high amount” in claim 7 is a relative term which renders the claim indefinite. The term “high amount” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The amount of refractory metal and boron included in the claim is indefinite.
Claim 7 claims exposing the nickel-based bulk metallic glass alloy to a heat treatment at a temperature above the crystallization temperature. It is unclear what the term crystallization temperature if referring to. It could be referring to the alloy itself or some other component included in the heat treatment. the specification does not provide clarity, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 6 does not add any limitations to independent claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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 1-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over US20160090644 of Na in view of WO2012053570 of Kurahashi further in view of EP0002923 of Ray.
Claim 1 claims a nickel-based bulk metallic glass alloy containing a refractory metal and boron comprising an amount of Ni between 25 and 60 atomic percent, an amount of Co between 8 and 35 atomic percent, and amount of W between 8 and 30 atomic percent and an amount of B between 12.1 and 30 atomic percent.
Na teaches bulk Nickel-Cobalt based glasses bearing chromium, tantalum, phosphorus, and boron in the same field of endeavor as the claimed invention. Na discloses a range for Co of 0.5 to 40 atomic percent, Para[0007], and a range for Ni of 22.5-79 atomic percent, Para[0006-0011]. This overlaps with the claimed ranges of 8 to 35 atomic percent and 26 to 60 atomic percent, respectively. 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. Na does not disclose overlapping ranges for tungsten and boron.
Kurahashi teaches a Ni-based amorphous alloy with high ductility, high corrosion resistance and excellent delayed fracture resistance in the same field of endeavor as Na and the claimed invention. Kurahashi discloses that excellent ductility, corrosion resistance and delayed fracture resistance are exhibited by incorporating Cr, Mo, Nb, B in appropriate amounts in Ni, Para[0013]. Kurahashi teaches that 10 to 25 atomic percent of B may be contained, Para[0013]. This overlaps with the claimed range of 12.1 to 30 atomic percent. 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.
Ray teaches iron group transition metal-refractory metal-boron glassy alloys in the same field of endeavor as the claimed invention. Ray discloses a range for tungsten of 13 to 40 atomic percent, Para[0005]. This overlaps with the claimed range of 8 to 30 atomic percent. 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. Ray teaches that rapidly quenched ribbons of this composition are substantially totally glassy and possess superior mechanical properties, i.e., high tensile strength and ductility, Para[0011,0017].
Therefore, it would be obvious to one of ordinary skill in the art to add W and B, in the ranges disclosed in Kurahashi and Ray, respectively, to the Ni-Co based glass disclosed in Na to obtain a substantially totally glassy alloy with excellent ductility, corrosion resistance, delayed fracture resistance, and superior mechanical properties. Claim 7 is rejected as it depends on claim 1 and does not solve the above issues.
Claim 2 further limits claim 1 by stating that the alloy further comprises at least one of the elements selected from the group consisting of iron (Fe), copper (Cu), chromium (Cr), manganese (Mn), and aluminum (Al) in the range of 0.01 to 15 atomic percent.
Na teaches chromium in the range of 3 to 11 atomic percent, Para[0008]. This 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. Na also discloses that up to 2 atomic percent of Cr is substituted by Fe, Mn, Cu, or combinations thereof, Para[0026]. Therefore, Na in view of Kurahashi further in view of Ray reads on all limitations of claim 2.
Claim 3 further limits claim 1 by stating that the alloy further comprises at least one of the elements selected from the group consisting of titanium (Ti), zirconium (Zr), erbium (Er), samarium (Sm), neodymium (Nd), yttrium (Y), lanthanum (La), and hafnium (Hf) in a range of 0.01 to 10 atomic percent.
Ray teaches that up to 20 atom percent of at least one of zirconium and titanium, Para[0003]. This 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. Ray discloses that zirconium and titanium are effective for improving mechanical properties and heat resistance, Para[0003]. Thus, it would be obvious to one of ordinary skill in the art to add zirconium and titanium to the nickel-based bulk metallic glass alloy in the claimed range. Therefore, Na in view of Kurahashi further in view of Ray reads on all limitations of claim 3.
Claim 4 further limits claim 1 by stating that the alloy further comprises at least one of the elements selected from the group consisting of tantalum (Ta), niobium (Nb), molybdenum (Mo), vanadium (V) in a range of 0.01 to 15 atomic percent.
Na discloses a range for tantalum of 1.5 to 4 atomic percent, Para[0009]. Na also teaches that up to 1.5 atomic percent of Ta is substituted by Nb, V, or combinations thereof, Para[0028], and that up to 2 atomic percent of Cr is substituted by Mo, Para[0026]. This 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. Therefore, Na in view of Kurahashi further in view of Ray reads on all limitations of claim 4.
Claim 5 further limits claim 1 by stating that the alloy further comprises at least one of the elements selected from the group consisting of carbon (C), silicon (Si), phosphorus (P), beryllium (Be) in a range of 0.01 to 15 atomic percent.
Na discloses a range for phosphorous of 0.5 to 40 atomic percent, Para[0007]. This 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. Therefore, Na in view of Kurahashi further in view of Ray reads on all limitations of claim 5.
Claim 7 further limits claim 1 by claiming a method comprising a step of exposing the nickel-based bulk metallic glass alloy to a heat treatment at a temperature above the crystallization temperature. It is unclear what the crystallization temperature is referring to, see 112(b) above. For the purposes of prior art, this will be interpreted as encompassing the crystallization temperature of the nickel-based bulk metallic glass alloy.
Kurahashi teaches that the mother alloy was melted by high-frequency heating to obtain an amorphous ribbon, Para[0022]. Thus, it would be obvious to one of ordinary skill in the art to heat the claimed alloy at a temperature above its crystallization temperature in order to obtain an amorphous ribbon for further processing or manufacturing. Therefore, Na in view of Kurahashi further in view of Ray reads on all limitations of claim 7.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733