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 1-12 are pending and presented for examination on the merits.
Priority
Copies of the certified copies of the priority documents have been received.
Claim Objections
Claim 2 is objected to because of the following informalities:
Claim 2 recites the limitation “MOx-SO3H aqueous solution”. The term “MOx-SO3H” is not defined in the claim. The instant specification recites “sulfonic acid group-modified oxide (MOx-SO3H) aqueous solution” ([0008]). For clarity, abbreviated terms should be spelled out before relying on the abbreviation alone.
Appropriate correction is required.
Claim Interpretation
In claim 1, the recitation “for preparing a molybdenum alloy by ultra-high-temperature rolling” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951). In this case, claim 1 does not recite any active method steps and consequently any process resulting in the claimed molybdenum alloy will be interpreted as reading on the claimed process for preparing a molybdenum alloy by ultra-high-temperature rolling.
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 1-12 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 “A process for preparing a molybdenum alloy by ultra-high-temperature rolling, wherein the molybdenum alloy is an ultra-high strength and toughness molybdenum alloy, and comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle”. Claim 1, as currently written, do not recite any active, repeatable, and tangible method steps. Accordingly, the scope of protection sought is unclear and claim 1 is therefore indefinite. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP § 2173.05(q).
In this case, claim 1 recites the resulting alloy product of the claimed method but does not provide any information on how the alloy is made. Claims 3 and 10 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite. In contrast, claim 2 recites active, repeatable, and tangible method steps and therefore claims 2, 4-9 and 10-12 resolve this issue.
The term “ultra-high-temperature rolling” in claims 1 and 2 is a relative term which renders the claim indefinite. The term “ultra-high-temperature rolling” 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. Dependent claim 9 recites a temperature range which narrows the “ultra-high-temperature” of the claimed ultra-high-temperature rolling and therefore “ultra-high-temperature rolling” in claim 9 is not indefinite.
Claims 3-8 and 10-12 depend on claims 1-2, do not resolve the aforementioned issues, and are thereby also indefinite.
The term “ultra-high strength and toughness molybdenum alloy” in claims 1 and 2 is a relative term which renders the claim indefinite. The term “ultra-high strength and toughness” 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. While dependent claims 10 and 12 recite a tensile strength which could provide a parameter for the claimed “ultra-high strength” of the claimed ultra-high strength and toughness molybdenum alloy, the claims do not provide a toughness range to define the “ultra-high strength and toughness molybdenum alloy”.
Claims 2-12 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Regarding claims 10 and 12, the limitation “wherein the ultra-high strength and toughness molybdenum alloy remains stable in a high-temperature environment of 1,500°C” renders the claim indefinite. It is unclear what is encompassed by the term “stable” and what type of stability (e.g. thermal, thermodynamic, mechanical, dimensional, etc.) or property (e.g. specific mechanical or material properties at 1500°C used as a measure of “stability”) the alloy needs to meet the claimed “remains stable in a high-temperature environment of 1,500°C”.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Phase evolution of hydrothermal synthesis oxide-doped molybdenum powders” of Sun.
Regarding claim 1, Sun teaches hydrothermal synthesis oxide-doped molybdenum powders (Title, synthesis reads on claimed process for preparing a molybdenum alloy by ultra-high-temperature rolling). Sun teaches synthesized oxide-doped Mo alloys with compositions given in vol% (Table 1). The inventive examples of Sun from Table 1 use Al2O3, ZrO2, and La2O3, which one of ordinary skill in the art understands are ceramic particles. Sun teaches the powders are 10-100 nm (page 6) and therefore the oxides of Sun read on the claimed nano-ceramic oxide particle. With the exception of the 100% Mo sample, all the inventive examples of Table 1 of Sun read on the claimed composition of claim 1. Converting vol% to wt% was performed by using the density of Mo, Al2O3, ZrO2, and La2O3 (10.22 g/cm3, 3.97 g/cm3, 5.7 g/cm3, and 6.51 g/cm3 respectively) to obtain the total mass of Mo and oxide in each sample and obtain the weight% by dividing the mass of the Mo or oxide by the total mass. The resulting oxide content for the samples is 0.2 wt% Al2O3 for sample A0.4, 0.3 wt% Al2O3 for sample A0.8, 0.5 wt% Al2O3 for sample A1.2, 0.6 wt% Al2O3 for sample A1.6, 0.8 wt% Al2O3 for sample A2.0, 0.7 wt% ZrO2 for sample Z1.2, and 0.8 wt% La2O3 for sample L1.2, which are all within the claimed composition of the alloy of claim 1.
Sun therefore reads on the limitation a process for preparing a molybdenum alloy by ultra-high-temperature rolling, wherein the molybdenum alloy is an ultra-high strength and toughness molybdenum alloy, and comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle of claim 1.
Regarding claim 3, Sun teaches the method of claim 1 as described above.
Sun teaches inventive examples of Sun in Table 1 using Al2O3, ZrO2, and La2O3, which one of ordinary skill in the art understands are alumina, zirconia, and lanthana respectively.
Sun therefore reads on the limitation wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana of claim 3.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by CN 115896521 A of Zhang (with reference to its English machine translation).
Regarding claim 1, Zhang teaches a method for improving the mechanical property of a ceramic phase reinforced molybdenum alloy, the raw materials comprise in percentage by mass: 0.1-5% of nano ceramic powder and the balance of Mo powder (Abstract, method reads on claimed process for preparing a molybdenum alloy by ultra-high-temperature rolling; raw material composition reads on claimed comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle; ceramic phase reinforced molybdenum alloy reads on claimed ultra-high strength and toughness molybdenum alloy). Zhang teaches rolling methods ([0033], reads on claimed ultra-high-temperature rolling).
Zhang therefore reads on the limitation a process for preparing a molybdenum alloy by ultra-high-temperature rolling, wherein the molybdenum alloy is an ultra-high strength and toughness molybdenum alloy, and comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle of claim 1.
Regarding claim 3, Zhang teaches the method of claim 1 as described above.
Zhang teaches the nano-ceramic powder is any one or more of ZrO2 or TiO2 ([n0006], ZrO2 or TiO2 read on claimed wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana since one of ordinary skill in the art understands ZrO2 is zirconia and TiO2 is titania).
Zhang therefore reads on the limitation wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana of claim 3.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Study on preparation and properties of molybdenum alloys reinforced by nano-sized ZrO2 particles” of Cui.
Regarding claim 1, Cui teaches preparation and properties of molybdenum alloys
reinforced by nano-sized ZrO2 particles (Title, preparation reads on claimed process for preparing a molybdenum alloy by ultra-high-temperature rolling; nano-sized ZrO2 particles reads on claimed nano-ceramic oxide particle). Cui teaches an inventive example (Number 5, Table 1) with a ZrO2 content of 1.5 wt% which is within the claimed range of nano-ceramic oxide particle of claim 1, and a balance of Mo, which is within the claimed range of molybdenum of claim 1. Cui teaches the alloy samples are rolled (page 214, first paragraph, rolling reads on claimed ultra-high-temperature rolling).
Cui therefore reads on the limitation a process for preparing a molybdenum alloy by ultra-high-temperature rolling, wherein the molybdenum alloy is an ultra-high strength and toughness molybdenum alloy, and comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle of claim 1.
Regarding claim 3, Cui teaches the method of claim 1 as described above.
Cui teaches nano-sized ZrO2 particles (Title, ZrO2 reads on claimed wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana since one of ordinary skill in the art understands ZrO2 is zirconia).
Cui therefore reads on the limitation wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana of claim 3.
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 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over CN 107099716 A of Gong (with reference to its English machine translation).
Regarding claim 1, Gong teaches an interface-strengthened molybdenum alloy, comprising the following components by mass percentage: 85%-98% Mo, 0.5%-15% active metal elements, 0.1%-5% carbides and 0.1%-5% rare earth metal oxides ([0008], interface-strengthened molybdenum alloy reads on claimed ultra-high strength and toughness molybdenum alloy and composition overlaps with alloy composition of claim 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.
Gong teaches the particle size of the nanocomposite rare earth doped powder obtained after reduction is 20-600 nm (claim 7, rare earth oxides with nm size read on claimed nano-ceramic oxide particle). Gong teaches a preparation method for preparing the molybdenum alloy (claims 3-10, method reads on claimed process for preparing a molybdenum alloy by ultra-high-temperature rolling). Gong teaches multiple rolling is performed in a temperature decreasing manner; the temperature of the multiple rolling is successively decreased from 1200℃ to 350°C (claim 10, reads on claimed ultra-high-temperature rolling).
Gong therefore reads on the limitation a process for preparing a molybdenum alloy by ultra-high-temperature rolling, wherein the molybdenum alloy is an ultra-high strength and toughness molybdenum alloy, and comprises 95 wt% to 99.9 wt% of molybdenum and 0.1 wt% to 5 wt% of a nano-ceramic oxide particle of claim 1.
Regarding claim 3, Gong teaches the method of claim 1 as described above.
Gong teaches the rare earth metal oxide includes one or more of Y2O3, LaO2 and CeO2 ([0011], [0073], one of ordinary skill in the art understands Y2O3 is yttria, LaO2 is a lanthanum oxide and La2O3 is lanthana; Y2O3 reads on claimed wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana).
Gong therefore reads on the limitation wherein the nano-ceramic oxide particle is one selected from the group consisting of zirconia, titania, alumina, hafnia, yttria, and lanthana of claim 3.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over “Phase evolution of hydrothermal synthesis oxide-doped molybdenum powders” of Sun, as applied to claim 1 above.
Regarding claim 10, Sun teaches the method of claim 1 as described in 35 U.S.C. 102 rejection above.
However, Sun does not explicitly disclose wherein the ultra-high strength and toughness molybdenum alloy remains stable in a high-temperature environment of 1,500°C, has a tensile strength of not less than 600 MPa and an elongation of not less than 50% at room temperature, and has a tensile strength of not less than 230 MPa and an elongation of not less than 30% at a high temperature of 1,200°C of claim 10.
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 the claimed and prior art products are identical or substantially identical in composition (see compositional analysis for claim 1 above). 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).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the alloy of Sun to possess the claimed stability at 1500°C, tensile strength, and elongation at room temperature and 1200°C since the alloy of Sun overlaps in chemical composition with the claimed alloy. A prima facie case of obviousness has been properly established herein.
Sun therefore reads on the limitation wherein the ultra-high strength and toughness molybdenum alloy remains stable in a high-temperature environment of 1,500°C, has a tensile strength of not less than 600 MPa and an elongation of not less than 50% at room temperature, and has a tensile strength of not less than 230 MPa and an elongation of not less than 30% at a high temperature of 1,200°C of claim 10.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over CN 115896521 A of Zhang (with reference to its English machine translation), as applied to claim 1 above.
Regarding claim 10, Zhang teaches the method of claim 1 as described in 35 U.S.C. 102 rejection above.
Zhang teaches a molybdenum alloy with excellent mechanical properties, possessing a tensile strength ≥ 820 MPa and an elongation ≥ 20% ([n0016], tensile strength and elongation overlap with claimed ranges at room temperature; one of ordinary skill in the art understands mechanical properties are typically reported at room temperature).
Zhang therefore reads on the limitation has a tensile strength of not less than 600 MPa and an elongation of not less than 50% at room temperature of claim 10.
However, Zhang does not explicitly disclose wherein the ultra-high strength and toughness molybdenum alloy remains stable in a high-temperature environment of 1,500°C of claim 10 and has a tensile strength of not less than 230 MPa and an elongation of not less than 30% at a high temperature of 1,200°C of claim 10.
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 the claimed and prior art products are identical or substantially identical in composition (see compositional analysis for claim 1 above). 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).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the alloy of Zhang to possess the claimed stability at 1500°C and properties at 1200°C since the alloy of Zhang overlaps in chemical composition, tensile strength, and elongation with the claimed alloy. A prima facie case of obviousness has been properly established herein.
Zhang therefore reads on the limitation wherein the ultra-high strength and toughness molybdenum alloy remains stable in a high-temperature environment of 1,500°C of claim 10 and has a tensile strength of not less than 230 MPa and an elongation of not less than 30% at a high temperature of 1,200°C of claim 10.
Zhang therefore reads on all the limitations of claim 10.
Allowable Subject Matter
Claims 2, 4-9, and 11-12 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.
The following is an examiner’s statement of reasons for allowance:
The instant claims are to a process comprising, among other things, making a solution of ceramic powder, a solution of molybdenum salt, mixing both solutions and obtaining a powder.
The closest prior art is “Phase evolution of hydrothermal synthesis oxide-doped molybdenum powders” of Sun, which shares applicant Henan University of Science and Technology and Shizhong Wei as an inventor with the instant application. Sun teaches oxide-doped Mo alloys with chemical compositions lying within the claimed ranges of claim 1, as described in the 35 U.S.C. 102 rejection in this Office action. However, Sun teaches preparing the powder with nitric acid, urea, and two-stage hydrogen reduction (Section 2 Experimental Procedure and Fig. 1). Sun therefore does not teach or suggest benzenesulfonic acid nor a molybdenum salt aqueous solution with a pH of 5.5 to 6.5. It would not have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Sun to obtain the claimed process of claim 2.
Another prior art is CN 114574265 A of Fan (with reference to its English machine translation). Fan teaches preparing a molybdenum sulfonate compound (Abstract) adding long-chain alkylbenzene sulfonic acid ([n0015]), but does not teach obtaining a molybdenum alloy nor the addition of any type of oxide.
It would not have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Sun to add the alkylbenzene sulfonic acid of Fan since Sun and Fan use different chemical reactions to obtain different products in their methods.
The references, alone or in combination, do not teach or suggest mixing benzenesulfonic acid and a nano-ceramic oxide particle, and preparing a molybdenum salt aqueous solution with a concentration of 0.02 mol/L to 2.5 mol/L of claim 2.
Thus claim 2 is distinct from the art. As claim 2 is distinct from the art, claims 4-9 and 11-12 are also distinct from the art as they depend from and further limit claim 2.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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