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 .
Status of Claims
Claims 1-6 are pending and presented for examination on the merits.
Claims 1-6 are currently amended.
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
Three (3) information disclosure statement(s) (IDS) were submitted on 05/02/2024, 03/13/2025, and 04/27/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Specification
The disclosure is objected to because of the following informalities: the instant abstract is 36 words, which is less than the minimum 50 words in length.
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Appropriate correction is required.
Claim Objections
Claims 2 and 5 are objected to because of the following informalities:
Claim 2 recites the limitation “Mo2NiB”. However, the instant specification recites “Mo2NiB2” in [0041]. Based on the instant disclosure, “Mo2NiB” of claim 2 appears to be a typo that should instead read “Mo2NiB2” to match the instant specification.
Claim 5 recites the limitation “The alloy according to according to claim 1” (emphasis added), which repeats “according to” twice.
Appropriate correction is required.
Claim Interpretation
The transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. See MPEP 2111.03(II). The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). In the instant case, claim 1 recites “an alloy consisting of”, which excludes additional elements not specified in the claim. Claims 2 and 3 recite “comprises”, which is inclusive, but does not recite elements that were not originally included in claim 1. The composition of the claimed alloy is interpreted as closed due to the use of “consisting of” in claim 1 and the content ranges of claims 2 and 3 are interpreted as modifying the ranges of the elements recited in claim 1.
Regarding the chemical composition of claims 1-3, elements including the term “optionally”, including zero in their compositional range, or including the limitation “≤”, including the claimed V, Nb, Cu, W, S, N, Al, and Ni, are interpreted as optional elements since the limitations include a 0% content.
Regarding claim 4, 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 claimed “alloy is in the hardened and tempered condition” is interpreted as a product-by-process limitation since the patentability of the claimed alloy does not depend on its method of production (i.e. hardening and tempering).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-6 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 and 7-16 of U.S. Patent No. 11242581 B2.
US11242581B2 claims an alloy produced by powder metallurgy by gas atomizing and having a non-amorphous matrix, the alloy consists of in weight % (wt. %): C 0-0.8 Si 0-2.5 Mn 0-15 Mo 12-35 B 1.6-2.8 Cr 0-25 V ≤15 Nb ≤15 Ti ≤5 Ta ≤5 Zr ≤5 Hf ≤5 Y ≤3 Co ≤20 Cu ≤5 W ≤22 S ≤0.5 N ≤0.5 Al ≤7 REM ≤0.5 balance Fe and/or Ni apart from impurities. The instant invention claims an alloy with overlapping composition. Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions are alloys with overlapping chemical compositions. While claim 1 of US11242581B2 has broader content ranges than the instant inventions, claims 2, 4, 7, and 9 have narrower content ranges that more closely overlap with the claimed ranges of the instant invention. 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 I.
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 2, 4, and 5 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 2 recites the limitation "which comprises at least one of the following components" in lines 1-2. This limitation renders the claim indefinite since it is unclear whether “components” is referring to physical objects made of the recited elements, to the element content ranges recited, or a different interpretation. The instant specification does not recite a definition of the term “component” and only recites “nitrogen is an optional component” ([0035]).
Claim 4 recites the limitation “has a hardness of at least 68 HRC, preferably at least 69 HRC, most preferably at least 70 HRC”. This limitation renders the claim indefinite. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “at least 68 HRC”, and the claim also recites “preferably at least 69 HRC” and “most preferably at least 70 HRC” which are the narrower statements of the range/limitation. The claim is considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the limitation “wherein the alloy fulfils at least one of the following conditions: the alloy comprises 15-35 volume % hard phase particles, the hard phase particles comprise at least one of borides, nitrides, carbides and/or combinations thereof, at least 90 % of the hard phase particles have a size of less than 5 μm and at least 50 % of the hard phase particles have a size in the range of 0.3 – 3μm and at least 60 % of the hard phase particles consist of Mo2FeB2 or Mo2NiB, the matrix of the alloy does not contain more than 4 % Mo, and/or the alloy does not contain more than 5 % retained austenite”. This limitation renders the claim indefinite. Before claim amendments of 05/02/2024, claim 5 recited six different conditions under different bullet points. As amended, it is unclear whether “at least 90 % of the hard phase particles have a size of less than 5 μm and at least 50 % of the hard phase particles have a size in the range of 0.3 – 3μm and at least 60 % of the hard phase particles consist of Mo2FeB2 or Mo2NiB” (emphasis added) is intended to recite a single condition including all three clauses, or two or three different conditions. It is further unclear where the distinction is between the claimed “following conditions” due to the use of the term “and” as highlighted above.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0044766 A1 of Tidesten (Pre-Grant Publication for issued US 11242581 B2).
Regarding claims 1-6, Tidesten teaches an alloy produced by powder metallurgy (Abstract, reads on claimed alloy).
List 1
Instant claims (wt%)
Tidesten (wt%)
Tidesten Example 2 (wt%)
C
0.3-0.8
0.4-0.6 (claim 2)
0.45-0.65 (claim 3)
0-2.5
0.32
Si
0.1-1.8
0.2-1.3 (claim 2)
0.4-1.2 (claim 3)
0-2.5
0.44
Mn
0.1-1.3
0.2-0.5 (claim 3)
0-15
0.3
Mo
15-23 (claims 1 and 3)
16-23 (claim 2)
4-35
19
B
1.1-2.8
1.2-2.4 (claim 2)
1.4-2.2 (claim 3)
0.2-2.8
2
Cr
2-9
3-8 (claim 2)
3-6 (claim 3)
0-25
11
Co
4-12
6-12 (claim 2)
7-10 (claim 3)
≤ 20
≤ 8 preferred ([0022])
-
V
≤ 5 (“optionally”)
≤ 1.5 (claim 2)
0.05-0.5 (claim 3)
≤ 15
0.26
Nb
≤ 5 (“optionally”)
≤ 1.5 (claim 2)
≤ 15
-
Cu
≤ 5 (“optionally”)
≤ 5
-
W
≤ 5 (“optionally”)
≤ 1 (claim 2)
≤ 22
-
S
≤ 0.5 (“optionally”)
≤ 0.05 (claim 2)
≤ 0.5
-
N
≤ 0.5 (“optionally”)
≤ 0.5
-
Al
≤ 0.1 (“optionally”)
≤ 7
-
Ni
≤ 10 (“optionally”)
≤ 5 (claim 2)
≤ 1 (claim 3)
≤ 5 ([0019])
-
Ti: ≤ 5
Ta: ≤ 5
Zr: ≤ 5
Hf: ≤ 5
Y: ≤ 3
REM: ≤ 0.5
-
Fe
Balance (“apart from impurities”)
Balance
Balance
Regarding the chemical composition of claims 1-3, Tidesten teaches an alloy with a chemical composition ([0009]-[0029], claims 1, 3, 4, 7, 9) overlapping with the claimed alloy, 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.
Additionally, Tidesten further teaches an inventive example (Example 2) with a chemical composition lying within the claimed ranges for all elements, except for Cr, Co, and the C content of claim 3. However, the broader disclosure of Tidesten teaches it is desirable to have at least 2% Cr to provide a good hardenability and an upper limit of 25% to prevent formation of undesired carbides ([0011]), a cobalt content of ≤ 20% to impart high temperature strength and a preferred upper limit of 8% since cobalt is expensive ([0022]), and a preferable carbon content of 0.4-0.6% to obtain high strength, carbides, and hardening ([0010]). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Cr, Co, and C contents of the alloy of Example 2 with the broader disclosure of Tidesten, such as within claimed ranges, to achieve good hardenability, carbide formation, and strength while managing cost and preventing undesired carbides, as taught by Tidesten.
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.
Tidesten therefore reads on the limitations of claims 1-3.
Regarding claim 4, Tidesten teaches hardening followed by tempering ([0032], Example 1, reads on claimed hardened and tempered condition). Tidesten teaches inventive examples with hardnesses of 49-60 HRC (Table 1). While the example of Tidesten with 60 HRC hardness is slightly below the claimed at least 68 HRC, one of ordinary skill in the art would reasonably expect the alloys of Tidesten to necessarily possess the claimed hardness given overlapping chemical composition and processing (both are hardened and tempered).
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 alloy 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), b) the claimed and prior art products are identical or substantially identical in structure (both are powders), and c) the claimed and prior art products are produced by identical or substantially identical processes (both are hardened and tempered). Since the Office does not have a laboratory to test the reference alloy, 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).
Tidesten therefore reads on the limitation wherein the alloy, wherein the alloy is in the hardened and tempered condition and has a hardness of at least 68 HRC, preferably at least 69 HRC, most preferably at least 70 HRC of claim 4.
Regarding claim 5, Tidesten teaches wherein the alloy comprises 3-35 volume % hard phase particles, the hard phase particles comprises at least one of borides, nitrides, carbides and/or combinations thereof, at least 90% of the hard phase particles have a size of less than 5 μm and at least 50% of the hard phase particles have a size in the range of 0.3-3 μm (claim 1, ranges overlap with the claimed ranges). Tidesten teaches at least 60% of the hard phase particles consist of Mo2FeB2 or Mo2NiB2, the matrix of the alloy does not contain more than 4% Mo, and the alloy does not contain more than 5% retained austenite (claim 2, particles, Mo content, and retained austenite content are the same as the instant invention). 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.
Tidesten therefore reads on the limitation wherein the alloy fulfils at least one of the following conditions: the alloy comprises 15-35 volume % hard phase particles, the hard phase particles comprise at least one of borides, nitrides, carbides and/or combinations thereof, at least 90 % of the hard phase particles have a size of less than 5 μm and at least 50 % of the hard phase particles have a size in the range of 0.3 – 3μm and at least 60 % of the hard phase particles consist of Mo2FeB2 or Mo2NiB, the matrix of the alloy does not contain more than 4 % Mo, and/or the alloy does not contain more than 5 % retained austenite of claim 5.
Regarding claim 6, Tidesten teaches a tool for punching, forming, blanking, fine-blanking, extrusion, deep drawing, powder pressing or a part or mold used for die casting or plastic molding comprising the alloy (claim 14, reads on claimed a fine blanking tool or a powder pressing tool or a stamping tool or a cutting tool comprising the alloy).
Tidesten therefore reads on the limitation a fine blanking tool or a powder pressing tool or a stamping tool or a cutting tool comprising the alloy according to claim 1 of claim 6.
Tidesten therefore reads on all the limitations of claims 1-6.
Claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over JPH07179997A of Okano (as cited in IDS mailed 05/02/2024, with reference to its English machine translation).
Regarding claims 1-6, Okano teaches a powder alloy (Abstract, reads on claimed alloy).
List 2
Instant claims (wt%)
Okano (wt%)
Okano, Sample 5, Table 1 (wt%)
C
0.3-0.8
0.4-0.6 (claim 2)
0.45-0.65 (claim 3)
0.3-3.5
0.50
Si
0.1-1.8
0.2-1.3 (claim 2)
0.4-1.2 (claim 3)
0.6-3.5
0.32
Mn
0.1-1.3
0.2-0.5 (claim 3)
≤ 0.6
0.31
Mo
15-23 (claims 1 and 3)
16-23 (claim 2)
7.0-50
17.4
B
1.1-2.8
1.2-2.4 (claim 2)
1.4-2.2 (claim 3)
0.1-5.0
1.55
Cr
2-9
3-8 (claim 2)
3-6 (claim 3)
0.5-2.9 (rounds to 3)
1.10
Co
4-12
6-12 (claim 2)
7-10 (claim 3)
7.0-20
9.12
V
≤ 5 (“optionally”)
≤ 1.5 (claim 2)
0.05-0.5 (claim 3)
Total of one or more of V, Ti, Nb, and Ta: 0.5-12
2.11
Nb
≤ 5 (“optionally”)
≤ 1.5 (claim 2)
Total of one or more of V, Ti, Nb, and Ta: 0.5-12
-
Cu
≤ 5 (“optionally”)
-
-
W
≤ 5 (“optionally”)
≤ 1 (claim 2)
0.5-20.0
2.11
S
≤ 0.5 (“optionally”)
≤ 0.05 (claim 2)
≤ 0.1 (“impurity”)
-
N
≤ 0.5 (“optionally”)
-
-
Al
≤ 0.1 (“optionally”)
-
-
Ni
≤ 10 (“optionally”)
≤ 5 (claim 2)
≤ 1 (claim 3)
≤ 3.0
-
Total of one or more of V, Ti, Nb, and Ta: 0.5-12
-
Fe
Balance (“apart from impurities”)
Balance (“substantially consisting of Fe”)
Balance (“substantially consisting of Fe”)
Regarding the chemical composition of claims 1-3, Okano teaches an alloy with a chemical composition ([0007]-[0015], claims 1-3) overlapping with the claimed alloy, as shown in List 2. The Examiner notes that the upper limit of Cr 2.9% of Okano is considered as end point overlap with the lower limit of 3% Cr of instant claims 2 and 3 since following the rules of significant figures would result in 2.9% Cr being equivalent to 3% Cr. 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.
Additionally, Okano further teaches an inventive example (Sample 5, Table 1) with a chemical composition lying within the claimed ranges for all elements, except for Cr, W content of claim 2, and Si and V content of claim 3. However, the broader disclosure of Okano teaches adding 0.5-2.9% Cr to form carbides and borides and improve wear and oxidation resistance ([0009]), adding 0.5-20% W to form M2C or M6C-type carbides and improve wear resistance ([0011]), adding 0.6-3.5% Si to improve hardenability and corrosion resistance, and adding a V content totaling 0.5 to 12% from one or more of V, Ti, Nb, and Ta to form carbides and borides which improve secondary hardening ([0012], 0.5% V overlaps at the end point of claim 3). It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the Cr, W, Si, and V contents of the alloy of Sample 5 with the broader disclosure of Okano, such as within claimed ranges, to improve wear resistance, oxidation resistance, and hardenability, as taught by Okano.
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.
Okano therefore reads on the limitations of claims 1-3.
Regarding claim 4, Okano teaches an inventive example with a hardness of 68.4 HRC (Sample 20, Table 4). 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. In this case, since the alloy of Okano has the claimed hardness, the alloy of Okano reads on the claimed alloy despite processing differences. See Claim Interpretation section in this Office action.
Okano therefore reads on the limitation wherein the alloy, wherein the alloy is in the hardened and tempered condition and has a hardness of at least 68 HRC, preferably at least 69 HRC, most preferably at least 70 HRC of claim 4.
Regarding claim 5, Okano teaches fine carbides and borides are dispersed within the matrix and account for approximately 20-45% of the total area ([0020]). The area % of Okano is interpreted as reading on the claimed volume % since of ordinary skill in the art understands area fraction is typically used as an estimated substitute for volume fraction.
Okano therefore reads on the limitation wherein the alloy fulfils at least one of the following conditions: the alloy comprises 15-35 volume % hard phase particles, the hard phase particles comprise at least one of borides, nitrides, carbides and/or combinations thereof, at least 90 % of the hard phase particles have a size of less than 5 μm and at least 50 % of the hard phase particles have a size in the range of 0.3 – 3μm and at least 60 % of the hard phase particles consist of Mo2FeB2 or Mo2NiB, the matrix of the alloy does not contain more than 4 % Mo, and/or the alloy does not contain more than 5 % retained austenite of claim 5.
Regarding claim 6, Okano teaches using the alloy as a component material for parts that require wear resistance such as tools, hot working tools, high-temperature forged components, rolls, and molds ([0001], [0014], reads on claimed a fine blanking tool or a powder pressing tool or a stamping tool or a cutting tool comprising the alloy since one of ordinary skill in the art understands tools that require wear resistance and hot working tools include fine blanking tools, powder pressing tools, stamping tools or cutting tools).
Okano therefore reads on the limitation a fine blanking tool or a powder pressing tool or a stamping tool or a cutting tool comprising the alloy according to claim 1 of claim 6.
Okano therefore reads on all the limitations of claims 1-6.
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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