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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Status of Claims
Claims 1-21 are canceled and Claims 22-51 are new.
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 37-39, 50 and 51 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 37 recites the limitation "the remaining amount" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Claim 38 recites the limitation “fine lamellar-type” in lines 1 and 2. The term “fine” in is a relative term which renders the claim indefinite. The term “fine” 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. UNI EN ISO 945-1 standard was not provided by applicant and is not publicly available.
Regarding Claim 39, the phrase "pearlitic-type" renders the claim(s) indefinite because the claim includes elements not actually disclosed (those encompassed by "type"), thereby rendering the scope of the claims unascertainable.
Claim 39 recites the limitation "the pearlitic-type" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 50 recites the standard “UNI EN ISO 945-1.” This standard and the size of the fine lamellae was not provided by applicant is and is not publicly available.
Claim 51 recites the limitation "the percentage by weight of pearlite" in lines 1 and 2. There is insufficient antecedent basis for this limitation in the claim.
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 37 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 37 recites that “the remaining amount … essentially consists of the ferrous matrix.” In Claim 22, from which Claim 37 depends, the use of “grey cast iron comprising” reads on other elements being present. Therefore, it is not clear what other elements are being eliminated in “the remaining amount” other than the ferrous matrix. Note that “the remaining amount” is rejected under 112(b) above. The specification states on pages 6 and 7 “either consists of or essentially consists of said ferrous matrix … [denoting] the grey cast iron … can comprise impurities such as niobium and/or aluminum, each in an amount lower than 0.01% by weight.” 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 Interpretation
The table below will be used to compare the cited prior art to Claim 22:
wt %
Claim 22
RU 2334014 C1
US 2018/0148808 A1
C
3.60-3.90
2.5-4.0
3.2-3.8
Si
1.40-1.90
0.8-2.5
1.8-2.8
Ti
≤ 0.10
0-4.0
0
B
0.04-0.07
0-1.0
0.02-0.5 w/ V
V
0.07-0.14
0-1.0
see B
Mn
0.60-0.90
0.3-1.5
0.2-1
Ni
≤ 0.20
0-2.5
0-0.75
Cr
≤ 0.35
0
0.1-1.2 w/ Mo
Cu
≤ 0.35
0-4.0
0.3-1
P
≤ 0.10
0
0.02-0.03
S
≤ 0.12
0
≤ 0.05
Sn
≤ 0.10
0
0-0.1
Mo
≤ 0.10
0
see Cr
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 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 22-30, 32-36, 40, 41, and 43-50 are rejected under 35 U.S.C. 103 as being unpatentable over RU 2334014 C1, based on the machine translation.
RU 2334014 C1 (RU ‘014) teaches gray cast iron with the composition listed above in the table. RU ‘014 teaches overlapping ranges for C, Si, Ti, B, V, Mn, Ni, and Cu. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. Applicants can rebut a prima facie case of obviousness based on overlapping ranges by showing the criticality of the claimed range or by showing that the art, in any material respect, teaches away from the claimed invention. See MPEP § 2144.05 III.
Regarding Claim 23, RU ‘014 teaches 0% tungsten.
Regarding Claim 24, RU ‘014 teaches the claimed range of carbon.
Regarding Claim 25, RU ‘014 teaches the claimed range of silicon.
Regarding Claim 26, RU ‘014 teaches the claimed range of titanium.
Regarding Claim 27, RU ‘014 teaches the claimed range of boron.
Regarding Claim 28, RU ‘014 teaches the claimed range of vanadium.
Regarding Claim 29, RU ‘014 teaches the claimed range of manganese.
Regarding Claim 30, RU ‘014 teaches the claimed range of nickel.
Regarding Claim 32, RU ‘014 teaches the claimed range of copper.
Regarding Claim 33, RU ‘014 teaches the claimed range of phosphorus.
Regarding Claim 34, RU ‘014 teaches the claimed range of sulfur
Regarding Claim 35, RU ‘014 teaches the claimed range of tin.
Regarding Claim 36, RU ‘014 teaches the claimed range of molybdenum.
Regarding Claim 40, RU ‘014 reads on 0% ferrite.
Regarding Claim 41, RU ‘014 reads on less than 5% cementite and free carbides.
Regarding Claim 43, RU ‘014 teaches 0% tungsten.
Regarding Claim 44, RU ‘014 teaches the claimed range of carbon.
Regarding Claim 45, RU ‘014 teaches the claimed range of silicon.
Regarding Claim 46, RU ‘014 teaches the claimed range of titanium.
Regarding Claim 47, RU ‘014 teaches the claimed range of boron.
Regarding Claim 48, RU ‘014 teaches the claimed range of manganese.
Regarding Claim 49, RU ‘014 teaches the claimed range of copper.
Regarding Claim 50, RU ‘014 does not teach the claimed standard as recited as claimed but RU ‘014 substantially teaches the claimed product. Where the claimed and prior art products are identical or substantially identical in structure or composition [emphasis added], or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. See MPEP 2112.01.
Claim 38 is rejected under 35 U.S.C. 103 as being unpatentable over RU ‘014 as applied to claim 22 above, and further in view of Pina et al in International Journal of Solids and Structures.
RU ‘014 discloses the invention substantially as claimed. Copper promotes graphitization [0009]. However, RU ‘014 does not teach that the gray cast iron is of the fine lamellar-type as claimed.
Pina et al teaches that cast irons can be classified as flake or lamellar graphite iron (FGI), compacted or vermicular graphite iron, and spheroidal, nodular or ductile graphite iron. FGI contains graphite inclusions in the form of lamellas or flakes (page 153). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the grey cast iron in RU ‘014 is lamellar as taught in Pina et al, since gray and lamellar graphite are synonyms for the same type of cast iron.
Allowable Subject Matter
Claim 31 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 37 is not in proper form based on the rejection under 35 U.S.C. 112(d) above but is not rejected over prior art.
Claims 39 and 51 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 the limitations of the base claim and any intervening claims.
Claim 42 is allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claim 31, RU ‘014 teaches no chromium as claimed.
Regarding Claims 39 and 51, RU ‘014 does not suggest a pearlite matrix as claimed.
Regarding Claim 42, RU ‘014 does not suggest the cast iron is for disc brakes. RU ‘014 teaches parts for furnaces and heating units [0001].
Han (US 2018/0148808 A1) teaches an alloy cast iron with a graphite structure and pearlite matrix (abstract) with the composition listed above in the table. However, Han teaches a vermicular graphite cast iron and not a gray cast iron as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith D. Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/Tima M. McGuthry-Banks/Primary Examiner, Art Unit 1733
Prosecution Insights