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 .
Claim Rejections - 35 USC § 101
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.
Claims 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1 and 14-17 do not fall within at least one of the four categories of patent eligible subject matter because the “method of using” a powder, as claimed, does not define a process or any other statutory category of invention. See Ex parte Dunki, 153 USPQ 678 (Bd.App. 1967). The claim recites “providing the nickel-iron-chromium-alloy” and “using the nickel-iron-chromium-alloy as the powder” without any providing active, positive steps delimiting how the use is actually practiced. See MPEP 2173.05(q). Claims 2-17 are also rejected on virtue of their dependency on claim 1.
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 1-17 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.
The term “high-temperature corrosion resistance” in claim 1 is a relative term which renders the claim indefinite. The term “high-temperature corrosion resistance” 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. Additionally, it is unclear what parameter the term is mapped to.
Claims 2-17 are also rejected on virtue of their dependency on claim 1.
Claims 1 and 14-17 are considered indefinite because the claim merely recites a use without any active, positive steps delimiting how the use is actually practiced. See Ex parte Erlich, 3 USPQ2d 1011 (BPAI 1986).
Claims 2-17 are also rejected on virtue of their dependency on claim 1.
Claim 1 recites the limitation "the usual process-related impurities " in pg. 6. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-17 are also rejected on virtue of their dependency on claim 1.
Claim 4 (dependent of claim 1) recites the limitation of “an aluminum content of ≥0.50% or > 0.50% to < 1.30%”. However, it is unclear if the “≥0.50%” and “> 0.50%” are options for a lower bound of one range or comprise two separate ranges. Additionally, if the “≥0.50%” term comprises a separate range, then it fails to impose a further limit on claim 1. For the purpose of examination, the recited range is interpreted as “0.50 wt.% ≤ Al < 1.30 wt.%” wherein Al is a powder Al composition.
Claim 5 (dependent of claim 1) recites the limitation of “a residual iron content of 28.0 or > 28.0 to 38.0%”. However, it is unclear if the “28” and “> 28.0” are options for a lower bound of one range or comprise two separate ranges. For the purpose of examination, the recited range is interpreted as “28 wt.% ≤ Fe < 38.0 wt.%” wherein Fe is a powder Fe composition.
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 4is 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 4 (dependent of claim 1) recites the limitation of “an aluminum content of ≥0.50% or > 0.50% to < 1.30%”. An issue arises if the “≥0.50%” constitutes a separate range limitation. The “≥0.50%” range includes values outside the 0.40-1.30 wt.% Al composition range recited in claim 1. Therefore, claim 4 fails to further limit the amount of Al set forth by claim 1. For the purpose of examination, the recited range is interpreted as “0.50 wt.% ≤ Al < 1.30 wt.%” wherein Al is a powder Al composition. The examiner suggests standardizing range bound notation and terminology throughout the application.
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 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.
Claims 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (DE 102020116858 A1, published Jan. 7, 2021 and claiming priority date of Jul. 7, 2019).
Regarding claims 1-3, Schmidt teaches a method of providing and using a Ni-based alloy powder ([0005] of machine translation). The powder comprises spherical particles with sizes between 5 and 250 µm (Clm. 4). The powder has a composition as shown in Table 1 below (Clm. 1). Applicant’s claimed composition is also listed for comparison.
Table 1
Composition (wt%)
Element
Schimdt Clm. 1
Applicant Clms. 1, 2, & 3
Ni
Bal. (>38)
35.0-38
Cr
17-28
26.0-30.0
Si
0-1.5
0.7-1.50
Al
0-2.5
0.4-1.30
Mn
0-4
0-1.0
Mg+ Ca
0-0.015 (Mg)
0.0001-0.05
C
0-0.5
0.015-0.12
N
0-0.25
0.001-0.150
P
0-0.04
0.001-0.030
O
0.00001-0.1
0.0001-0.100
S
0.15-0.03
0-0.010
Mo
0-22
0-1.0
Co
0-28
0-1.0
Cu
0-0.5
0-0.5
W
0-3
0-1.0
Fe
≤ 50
Bal.
For all elements barring Ni, Schmidt’s taught composition ranges overlap or are within the claimed composition ranges. Particularly, in the case of the taught Fe range, when using the applicant’s taught maximum composition values for all required elements, the applicant’s Fe balance would be 28.75 wt%, which is within Schmidt’s taught Fe range. 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(1). In the case of the taught Ni range, Schmidt’s minimum taught range value is sufficiently close to the applicant’s maximum taught range value that one would expect similar powder properties when using either value (i.e. Schmidt’s 38.000...01 wt.% vs. 38 wt.% in claim 1 or 37.999...99 wt.% in claim 2). Claimed ranges of a result effective variable, which do not overlap the prior art ranges, are unpatentable unless they produce a new and unexpected result, which is different in kind and not merely in degree from the results of the prior art. (MPEP 2144.05).
Additionally, using Schmidt’s minimum Ni range value and maximum Si & Al range values, Schmidt’s taught powder would have an FC value of about -8, which is within the claimed Fc range of ≤2.5.
Regarding claim 4, Schmidt teaches an Al composition range of 0-2.5 wt.%, which overlaps with the claimed Al range of greater than or equal to 0.50 wt.% and less than 1.30 wt.%. 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(1).
Regarding claim 5, using Schmidt’s minimum Ni range value and maximum required element range values, Schmidt’s taught powder would have a Fe balance of about 33.8 wt.%, which is within the claimed residual iron content greater than or equal to 28.0 wt.% and less than 38.0 wt.%.
Regarding claim 6, Schmidt also teaches that their powder can also comprise up to 0.1 wt.% Zr (Clm. 1), which fulfills the applicant’s claimed element range. Additionally, using Schmidt’s Zr range values, their powder would have an FRE value range of 0-0.1096, which overlaps with the claimed FRE range of ≤0.10. 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(1).
Regarding claim 7, it is noted that the limitations are directed towards possible powder compositions with Ce and La. Under the broadest reasonable interpretation of the claim language, a powder without Ce, La, or Cerium mixed metal would fulfill the limitations set forth in claim 7. Therefore, Schmidt’s taught powder, which does not include Ce, La, or cerium mixed metal, meets all the limitations in claim 7.
Regarding claims 8-11, Schmidt teaches that their powder also comprises the elements in ranges as shown in Table 2 (Clm. 1). The applicant’s taught ranges are also listed for comparison.
Table 2
Composition (wt%)
Element
Schmidt Clm. 1
Applicant Clms. 8-11
Ti
0-3.25
0-0.50
Nb+Ta
0-6.0 (Nb)
0-0.50
B
0-0.125
0.0001-0.008
V
0-0.6
0-0.6
Schmidt’s taught composition ranges overlap or are within the claimed composition ranges. 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(1).
Regarding claim 12, Schmidt also teaches an alloy powder composition with a Pb composition of 0-0.0005 wt.%, which is within the claimed Pb range of 0-0.002 wt.% (Clms. 2 & 3). Additionally, Schmidt’s powder compositions do not contain Sn and Zn, which fulfill the claimed impurity ranges.
Regarding claim 13, Schmidt produces their powder via a vacuum induction inert gas atomization system (VIGA) ([0015] of machine translation).
Regarding claims 14-15, Schmidt uses their powders to manufacture parts via a layer-by-layer additive manufacturing process ([0005, 0023] of machine translation). Additionally, it is noted that claims 14-15 are recitations that are directed towards the intended use of a powder, and not towards the claimed powder method itself. While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Regarding claim 16, Schmidt teaches that their powder is used to manufacture components for use in the chemical process industry (Clm. 15). Additionally, it is noted that claim 16 are recitations that are directed towards the intended use of a powder, and not towards the claimed powder method itself. While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (DE 102020116858 A1, published Jan. 7, 2021 and claiming priority date of Jul. 7, 2019), as applied to claim 1 above, and in further view of Hattendorf (US 2021/0115536 A1).
Regarding claim 7, Schmidt does not exemplify an alloy powder comprising Ce, La, or cerium mixed metal.
Hattendorf teaches a Ni-Cr-Fe-Al alloy powder for use in additive manufacturing (Abstract [0001]). Additionally, the alloy can comprise La, Ce, and cerium mixed metal [0129-0141]. All are added solely for the purpose of increasing oxidation resistance [0301-0303]. All three can comprise 0.001-0.20 wt.% of the powder [0301-0303]. Hattendorf’s ranges match the claimed La, Ce, and cerium mixed metal ranges. 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(1).
Schmidt and Hattendorf are analogous arts because both teach the use of an alloy powder containing Cr, Fe, and Ni in additive manufacturing.
Therefore, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to incorporate La, Ce, and cerium mixed metal in the amounts taught by Hattendorf into Schmidt’s alloy powder because doing so increases the oxidation resistance of Schmidt’s powder.
The resultant powder would have an FRE value of 0.0007-0.14, which overlaps with the claimed FRE range of ≤0.10. 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(1).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Schmidt (DE 102020116858 A1, published Jan. 7, 2021 and claiming priority date of Jul. 7, 2019), as applied to claim 1 above, and in further view of Noujima (WO 2019163217 A1).
Regarding claim 17, Schmidt is silent on using their powder in a component in a refuse-incineration plant or in a refuse-pyrolysis plant
Noujima uses a Cr-Fe-Ni alloy powder to for use in the production of garbage incinerator members (pg. 10 of machine translation). The alloy is chosen for its high corrosion resistance at high temperatures (Abstract). Overall, Noujima is a teaching that shows that Cr-Fe-Ni alloy powders were already known in the art as material to produce products used in a refuse-incineration plant. For comparison, Schmidt teaches an alloy powder containing Cr, Fe, and Ni (see Table 1 above). Additionally, Schmidt teaches that their taught alloy powder has favorable corrosion and heat resistances [0004-0005].
Schmidt and Noujima are analogous arts in the same field of endeavor.
Therefore, given that the use of Cr-Fe-Ni alloys were already known in the art as material to produce products used in a refuse-incineration plant, it would have been obvious for a person having ordinary skill in the art use Schmidt’s nickel-iron-chromium alloy powder to produce garbage incinerator members (as taught by Noujima) and obtain predictable advantages (i.e. a garbage incinerator member with favorable corrosion and heat resistances).
Additionally, it is noted that claim 17 is a recitation that is directed towards the intended use of a powder, and not towards the powder method itself. While intended use recitations and other types of functional language are not entirely disregarded, the intended use must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
Related Art
The prior art made of record and not relied upon is considered pertinent to the applicant's disclosure: Hasselqvist (US 2020/0318220 A1). Hasselqvist teaches an alloy powder comprising Ni, Cr, Fe, La, and Ce ([0003], Clms. 1 & 9). Hasselqvist teaches that the addition of La and Ce increases oxidation resistance [0022].
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 and 14-17 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 9-13 of U.S. Patent No. 12152290 B2 (henceforth known us ‘290).
Although the claims at issue are not identical, they are not patentably distinct from each other because both applicant’s claim 1 and ‘290’s claims 9-13 are directed towards the use of a metal powder with overlapping compositions (290 Clm. 4). Additionally, the applicant’s claims 14-16 share recitations with ‘290’s claims 12 & 15. Particularly:
Applicant’s claims 14 & 15 and ‘290’s claim 9 share the same layer-by-layer additive manufacturing limitations.
Applicant’s claim 16 and ‘290’s claim 12 share the same chemical process industry limitation.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER FLORES whose telephone number is 571-272-9130. The examiner can normally be reached Mon-Fri 7:30AM-5:00PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/J.F./Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
