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 the Claims
Claims 1-15 are pending wherein claims 1-6 and 11-14 are currently under examination and claims 7-10 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method for the preparation of a powder mixture and claim 15 is withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected device for making a 3-D product including a laser sintering or laser melting device. Applicant’s election of claims 1-6 and 11-14. Applicant traverses on the grounds that the description in Dobrzanski et al. does not disclose the particular claimed combination, including the recited steel powder component of a steel itself having both an austenitic phase and a ferritic phase together with a separate austenitic steel powder component. In response, the Examiner notes that Dobrzanski et al. discloses multiple powder mixes of austenitic phase and ferritic phase for exhaust system flanges (page 12). Thus, merely combining powder mixes for the same purpose to form a new powder mixture for the same purpose would be obvious to one having ordinary skill in the art. MPEP 2144.06. Therefore, the restriction is still deemed proper and therefore made final.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 13-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because: the four statutory categories are composition, apparatus, method, or article and “Use of” (claim 13) or “Use according to” (claim 14) does not fall within those four statutory categories.
Claims 13-14 are also rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. Specifically, because the claimed invention is not supported by either a well asserted utility or a well-established utility for the reasons set forth above, one skilled in the art clearly would not know how to use the claimed invention. It is unclear what scope “Use of” (claim 13) or “Use according to” (claim 14) would include or exclude in terms of what the item is and therefore the scope would be indefinite.
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.
Claim 3 is 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.
The term “super” in claim 3 is a relative term which renders the claim indefinite. The term “super” 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. There is no distinction in the claims or specification between “duplex steel” and “super duplex steel”.
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.
Claim(s) 1-6, 11-12 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Dobrzanski et al. (Sinter-hardening process applicable to stainless steels).
In regard to claims 1, 11 and 14, Dobrzanski et al. discloses mixing X2CrNiMo17-12-2 austenitic base powders with X6CR17 ferritic powder with addition of alloying elemental powders such as nickel, molybdenum, copper and chromium in form of single elements or combined form (page 12). Dobrzanski et al. further teaches powder mixes such as Composition designation A having a chromium content of 26.40 weight percent and Composition designation B having a chromium content of 21.33 weight percent (Table 2 on page 12). The recitation “for an additive manufacturing process” in claim 1 would be an intended use that would not further limit the structure of the powder mixture. MPEP 2111.02 II. Additionally, putting mixtures of austenite base powder and ferritic powder with another mixture of austenite base powder and ferritic powder would read on “a steel having two steel phases with an austenitic and a ferrite phase (duplex stee) and an austenitic steel powder component” since adding a powder mix A to a powder mix B for the sake of forming a mixture C for the purpose of forming another exhaust system flange (3-D object) would have been obvious to those having ordinary skill in the art. MPEP 2144.06.
With respect to the recitation “prepared according to claim 8” in claim 11, the Examiner notes that the claim is drawn to a product and not a process. 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, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
In regard to claim 2, Dobrzanski et al. teaches adding in a 1:1 ratio (page 12). Thus, when forming one mix of austenite/ferrite powder component with another austenite/ferrite powder component, the mixture would be 50% of the first austenite/ferrite powder component and 25% of the other austenite powder component and 25% of the other ferrite powder component.
In regard to claim 3, Dobrzanski et al. discloses substantially similar compositions and therefore a super duplex steel and/or a steel having a pitting resistance equivalence number PREN of ≥ 40 and/or ≤ 43.5 would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the steel powder component of a steel having two steel phases with an austenitic and a ferritic phase is a powder of EN 1.4410 steel according to EN 10088-1 (2014)” in claim 4, Dobrzanski et al. discloses substantially similar compositions and therefore this would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the austenitic steel powder component is a powder of EN 1.4547 steel according to EN 1088-1 (2014)” in claim 5, Dobrzanski et al. discloses substantially similar compositions and therefore this would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the steel powder component of a steel having two steel phases with an austenitic and a ferritic phase and/or the austenitic steel powder component has an average particle size of from 20 to 60 µm, wherein the average particle size is determined by laser diffraction according to ISO 13320” in claim 6, Dobrzanski et al. discloses powder mixture products having substantially the grain sizes as claimed (Figures 8-12).
With respect to the recitation “which has a ferritic fraction of from 60 to 70%, wherein the ferritic fraction is provided directly after additive manufacture and before being subjected to annealing temperatures of more than 800°C” in claim 12, Dobrzanski et al. teaches adding in a 1:1 ratio (page 12). Thus, when forming one mix of austenite/ferrite powder component with another austenite/ferrite powder component, the mixture would be 50% of the first austenite/ferrite powder component and 25% of the other austenite powder component and 25% of the other ferrite powder component. However, 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. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kuse et al. (US 2020/0391286).
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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