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
Applicant’s election without traverse of Group I, claims 1-10 in the reply filed on 06/10/2026 is acknowledged.
Claims 11-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/10/2026.
Status of Claims
Claims 1-10 are pending and presented for examination on the merits.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Two (2) information disclosure statements (IDS) were submitted on 05/01/2024 and 10/14/2025. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Interpretation
Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. 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, 227 USPQ 964, 966 (Fed. Cir. 1985). See MPEP 2113. In this case, the instant claims are drawn to a composition. Claims 1, 2, 5, 6, and 7 recite limitations regarding the processing of the claimed carbide (i.e. “zinc-reclaimed carbide” of claims 1 and 6, “reclaimed non-sintered carbide” of claims 2 and 7, and “does not comprise electrochemically processed carbide recycle material” of claim 5). Prior art with the claimed carbide phase composition will be interpreted as reading on the instant claims regardless of the processing of the carbide used in the cemented carbide of the prior art. Furthermore, if the composition is physically the same, it must have the same properties. See MPEP 2112.91(II). In this case, a carbide with overlapping composition will read on the claimed composition regardless of how the carbide was processed before being used in the cemented carbide composition.
Regarding claim 5, the limitation “electrochemically processed” is interpreted as subjected to a process involving an electric current to drive a chemical reaction. The instant specification defines “zinc-reclaimed carbide” as including a process using molten zinc ([0025]). Prior art using molten zinc for a “zinc-reclaimed carbide” will be interpreted as not comprising “electrochemically processed carbide recycle material”. If this interpretation is incorrect, Applicant should specify the correct interpretation of this term in response to this Office action, and indicate where such interpretation finds support in the specification as originally filed.
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.
Claims 1-10 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 recites the limitation "wherein the cemented carbide composition has a transverse rupture strength in a range of from about 330 Ksi to about 540 Ksi as measured by the ASTM B 406 standard" in lines 6-7. This limitation renders the claim indefinite since the claimed ASTM B 406 standard does not specify which edition is followed. Since industry standards change over time, it is not clear to one of ordinary skill in the art which version of ASTM B 406 must be consulted to identify the claimed transverse rupture strength requirements. The instant specification recites ISO 3327-2009 standard ([0007], emphasis added), for example, but the specification does not provide information regarding the year of the claimed ASTM B 406 standard.
Claims 2-10 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0063930 A1 of Hedin (as cited in prior Office action).
Regarding claims 1-10, Hedin teaches a method of making a cemented carbide (Title, reads on claimed cemented carbide). Hedin teaches making a cemented carbide comprising forming a slurry comprising a first powder fraction, a second powder fraction, binder metal powder, and a milling liquid ([0011]). Hedin teaches the first powder fraction is made from cemented carbide scrap recycled using the Zn recovery process comprising the element W, C, Co, and at least one or more of Ta, Ti, Nb, Cr, Zr, Hf, and Mo ([0012], [0014], [0016], reads on claimed carbide phase and Zn-reclaimed carbide comprises tungsten carbide since one of ordinary skill in the art understands recycled cemented carbide comprises tungsten carbide and Hedin teaches the scrap comprises W and C). Hedin teaches the second powder fraction comprises virgin raw materials of WC ([0013], reads on claimed carbide phase and reclaimed non-sintered carbide comprises tungsten carbide).
List 1
Instant claims
Hedin ([0057], Table 2)
Carbide phase
45-100 wt% zinc-reclaimed carbide
48.3 wt% first powder (Zn-reclaimed carbide)
44.5 wt% second powder (virgin WC)
At least 70 wt% of cemented carbide (claim 1)
At least 80 wt% of cemented carbide (claim 3)
About 89-99 wt% of cemented carbide (claim 4)
96.7 wt% (calculated from adding first powder, second powder, and virgin cubic powder amounts)
Binder
Metallic binder comprises Co (claims 8-9)
1-11 wt% (claim 10)
3.3 wt% Co
Transverse rupture strength
330-540 Ksi
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Hedin teaches a cemented carbide with a chemical composition (carbide: [0011]-[0017], [0023]-[0036], [0049], [0057], Table 2; cobalt binder: [0037], [0049], [0057], Table 2) lying within the claimed ranges, as shown in List 1. While Hedin does not explicitly disclose a total carbide phase, summing the first powder, second powder, and virgin cubic carbide powder contents results in a value lying within the claimed carbide range, as shown in List 1. In the case where the claimed ranges 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Hedin therefore reads on the limitations a cemented carbide composition, comprising: a carbide phase comprising from about 45 wt.% to about 100 wt.% zinc-reclaimed carbide, the carbide phase being present in an amount of at least 70 wt.% of the cemented carbide composition; and a binder phase of claim 1, wherein the carbide phase is present in an amount of at least 80 wt.% of the cemented carbide composition of claim 3, wherein the carbide phase is present in an amount of from about 89 wt.% to about 99 wt.% of the cemented carbide composition of claim 4, wherein the zinc-reclaimed carbide comprises tungsten carbide of claim 6, wherein the binder phase comprises a metallic binder of claim 8, wherein the metallic binder comprises Co of claim 9, and wherein the binder phase is present in an amount of from about 1 wt.% to about 11 wt.% of the cemented carbide composition of claim 10.
Regarding the carbides of claims 2, 5, and 7, Hedin teaches the first powder is pre-milled, the second powder comprises virgin raw materials of WC, and adding separate virgin cubic carbide powders ([0013]-[0014], [0057], second powder reads on claimed reclaimed non-sintered carbide since the powder is not sintered and reads on claimed comprises tungsten carbide as described above). Hedin teaches that in the Zn recovery process the cemented carbide scrap is immersed into molten zinc in an electrical furnace ([0015], reads on claimed does not comprise electrochemically processed carbide recycle material since the electricity is used to heat the furnace, not drive any chemical reactions). While the second powder of Hedin is ”virgin” and not “reclaimed”, since the compositions of the cemented carbide of Hedin and the claimed invention overlap, as described above and shown in List 1, Hedin reads on the claimed carbides of claims 2, 5, and 7 regardless of carbide processing (see Claim Interpretation section in this Office action).
Hedin therefore reads on the limitations wherein the carbide phase further comprises reclaimed non-sintered carbide of claim 2, wherein the cemented carbide composition does not comprise electrochemically processed carbide recycle material of claim 5, and wherein the reclaimed non- sintered carbide comprises tungsten carbide of claim 7.
However, Hedin does not explicitly disclose wherein the cemented carbide composition has a transverse rupture strength in a range of from about 330 Ksi to about 540 Ksi as measured by the ASTM B 406 standard of claim 1.
Since the compositions of the cemented carbide of Hedin and the claimed invention overlap, as described above and shown in List 1, one of ordinary skill in the art would reasonably expect the cemented carbide of Hedin to necessarily possess the claimed rupture strength despite Hedin not explicitly measuring or disclosing a rupture strength.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the carbide of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are identical or substantially identical in structure (both are cemented carbides). Since the Office does not have a laboratory to test the reference carbide, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would reasonably expect the cemented carbide of Hedin to necessarily possess the claimed transverse rupture strength given the overlapping compositions between Hedin and the claimed invention.
Hedin therefore reads on the limitation wherein the cemented carbide composition has a transverse rupture strength in a range of from about 330 Ksi to about 540 Ksi as measured by the ASTM B 406 standard of claim 1.
Hedin therefore reads on all the limitations of claims 1-10.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0047051 A1 of Mehrotra is considered relevant to claims 1-4 and 6-10. Mehrotra teaches a grade powder composition comprising: a sintered cemented carbide article comprising: a reclaimed carbide phase in an amount of at least 70 weight percent of the sintered cemented carbide article; and metallic binder, wherein the reclaimed carbide phase comprises electrochemically processed sintered carbide scrap (claim 12) and the scrap comprises tungsten carbide (claim 15). Mehrotra teaches the metallic binder is cobalt and can be present in an amount of 1 to 30 weight percent in the grade powder ([0016]). The examiner notes that the overlap of compositions of the instant claims and Mehrotra is prima facie obvious. See MPEP 2144.05(I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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