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 with traverse of Group I, claims 1-9 in the reply filed on 09/15/2026 is acknowledged. The traverse is on the ground that Baba reference does not disclose instant claimed invention which is directed to a metallic glass. The argument is moot since newly cited reference Xi and Choi-Yim both disclose Ni-based bulk metallic glass comprising Ni, Nb and Cu ranges in atomic percent as claimed. Hence, unit of invention is lacking.
As a result, the requirement is still deemed proper and is therefore made FINAL.
Claims 10-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-15 are pending. Claims 1-9 are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 08/01/2024, 06/25/2024, 06/07/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-9 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 pre-AIA the applicant regards as the invention.
Instant claims 1-3 required “a-c-x” and “b-y” are unclear as whether they represent atomic % of Ni and Nb respectively or something else. It appears that “a” represents Ni at%. “b” represent Nb at%, “c” represents Cu at%. Clarification is required
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
Claim Interpretations
Instant claims 1-9 required “comprising” is interpreted as open inclusive transitional term which does not (emphasis added) exclude any other un-recited element according to MPEP 2111.03 I.
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.
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.
Claim(s) 1-5 and 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over Choi-Yim (NPL document “Ni-based bulk metallic glass formation in the Ni–Nb–Sn and alloy systems Ni–Nb–Sn–X (X=B,Fe,Cu)” published in 2003)
As for claims 1-5 and 7-8, Choi-Yim discloses a Ni-based bulk metallic glass formation in the Ni–Nb–Sn and alloy systems Ni–Nb–Sn–X (X=B,Fe,Cu). Tabe 1 (Page 1031) discloses Ni atomic % content ranges from 55-60%. Nb at% ranges from 31-37%, Sn at% ranges from 3-9% and Fe ranges from 0-5% and Cu ranges from 0-5%. Zr is expected to be 0at%.
Hence, Choi-Yim suggests a metallic glass formed from alloy systems Ni–Nb–Sn–X (X=B,Fe,Cu), wherein at% of Ni, Nb, Sn, Fe and Cu all overlapping claimed ranges as illustrated in Table 1 below.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Hence, based on the teaching of Choi-Yim, it would have been obvious to one skill in the art, to select the atomic amount of each element within the ranges disclosed by Choi-Yim in order to arrive at alloy of claimed invention.
Table 1
Element
Applicant
(at %)
Choi-Yim et al.
(at %)
Tabel 1
Overlap
(at %)
Ni
54-72
55-60
55-60
Nb
35-44
31-37
35-44
Cu
0.05-9
0-5
0.05-5
Co, Fe, Ag, Mn, Pd, Au, Ir, Os, Pt, Re, Rh, Ru or Tc
0-20
Fe: 0-5
0-5
Hf, Ta, Ti, Cr, Mo, Sc, V, W or Y
0-20
0
0
B, Si, Al, Sn, Ca, Ga, In, Mg or Zn
0-10
Sn: 3-9
3-9
Zr
0-3
0
0
Ni (Claim 2)
58-66
55-60
58-60
Nb(claim 3)
35-42
31-37
35-37
Cu(Claim 4)
0.05-8
0-5
0.05-5
Co, Fe, Ag, Mn, Pd, Au, Ir, Os, Pt, Re, Rh, Ru or Tc (Claim 5)
0.5-10
Fe: 0-5
0.5-5
B, Si, Al, Sn, Ca, Ga, In, Mg or Zn
(Claim 7)
0-8
Sn: 3-9
3-8
Zr (Claim 8)
<3
0
0
Claim(s) 6 is rejected under 35 U.S.C. 103 as being unpatentable over Choi-Yim (NPL document “Ni-based bulk metallic glass formation in the Ni–Nb–Sn and alloy systems Ni–Nb–Sn–X (X=B,Fe,Cu)” published in 2003) in view of Lee (NPL document “Ni-Based Refractory Bulk Amorphous Alloys with High Thermal Stability” published in 2003).
As for claim 6, Choi-Yim does not disclose presence of Hf, Ta, Ti, Cr, Mo, Sc, V, W or Y in the amount of 0.5-10 at%.
Lee discloses Ni-Based Refractory Bulk Amorphous Alloys with High Thermal Stability, Alloys of nominal composition Ni60Nb40-xTax (x = 0,3, 5, 10, 20at%), in which Nb is partially substituted with Ta. The alloy significantly improves the thermal stability of the amorphous phase against crystallization, which in turns improves the glass forming ability. (Page 2087 Conclusion paragraph) Hence, Lee suggests presence of Ta in the amount of 0-20% which overlaps claimed 0.5-10.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Ta in the at% ranges from 0-20% as suggested by Lee, in the Ni-based bulk metallic glass of Cho-Yim as Lee discloses adding Ta improves the thermal stability of the amorphous phase against crystallization, which in turns improves the glass forming ability.
Claim(s) 1-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Xi (NPL document “Ni-Based Metallic Glass Composites Containing Cu-Rich Crystalline Nanospheres” published in 2018)
As for claims 1-4 and 6-8, Xi discloses Ni-Based Metallic Glass Composites Containing Cu-Rich Crystalline Nanospheres. Table 1 (Page 1131) discloses at% of each alloy elemental composition overlapping with claimed ranges as illustrated in Table 2 below.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”).
MPEP 2144.05(III)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” Here, applicant’s attorney refers to unexpected results from the claimed formulation, however, no showing of such results are made.
Table 2
Element
Applicant
(at %)
Xi et al.
(at %)
Tabel 1
Overlap
(at %)
Ni
54-72
46.875-62.5
54-62.5
Nb
35-44
23.4375-31.25
31.25 is close to 35
Cu
0.05-9
0-25
0.05-9
Co, Fe, Ag, Mn, Pd, Au, Ir, Os, Pt, Re, Rh, Ru or Tc
0-20
0
0-5
Hf, Ta, Ti, Cr, Mo, Sc, V, W or Y
0-20
Ta: 4.6875-6.25
4.6875-6.25
B, Si, Al, Sn, Ca, Ga, In, Mg or Zn
0-10
0
0
Zr
0-3
0
0
Ni (Claim 2)
58-66
46.875-62.5
58-62.5
Nb(claim 3)
35-42
23.4375-31.25
31.25 is close to 35
Cu(Claim 4)
0.05-8
0-25
0.05-8
Hf, Ta, Ti, Cr, Mo, Sc, V, W or Y
(Claim 6)
0.5-10
Ta: 4.6875-6.25
4.6875-6.25
B, Si, Al, Sn, Ca, Ga, In, Mg or Zn
(Claim 7)
0-8
0
0
Zr (Claim 8)
<3
0
0
Allowable Subject Matter
Claim 9 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 9 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 and to include all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
