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 Status
Applicants’ June 03, 2026 response to the March 16, 2026 Non Final Rejection is acknowledged. Claims 2-4 and 6-8 are pending, claim 3 is independent. Any rejections and/or objections, made in the previous Office Action, and not repeated below, are hereby withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 2 is rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. There is written description support for this composition being of the iron-based alloy material, but not the metal structure which includes a base material, interface layer and hard layer.
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.
Claim 2 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to contain a reference to a claim previously set forth. Specifically, claim 2 depends on a claim that succeeds it, not previously set forth. 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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 3-4 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hamentgen et al. (EP-3428300-A1 Google Patents machine translation of March 05, 2026), hereinafter Hamentgen (of record).
Regarding claim 3, 4, and 8, Hamentgen teaches an alloy of a core region having a composition shown below in Table including residual Fe (iron-based material) (Pg. 2 [7] to Pg. 3 [1]) and a composite body formed of an outer region, a core region and an interface between them (Pg. 8 [5]; Fig. 2) and Fig. 2 shows the outer region and core region and interface are layers (Fig. 2), the outer region is steel (considered the “base material”; Pg. 3 [5]), the core layer is the composition above in Table 2 (considered to be the “hard” layer) (Pg. 2 [7] to Pg. 3 [1]) of a steel (Pg. 3 [4]) with a hardness of at most 53 HRC (567 HV; Pg. 3 [7]; as the hardness overlaps that claimed it is considered “hard”). As the base and hard layers are metals (steel), this is understood to be a “metal structure”. One of ordinary skill in the art reasonably understands “production-related” impurities are equivalent to “unavoidable”.
Table (wt%)
Instant claim 1
Hamentgen (Pg. 2 [7] to Pg. 3 [1]).
Cr
7-12
0-18
Ni
3.0-9.0
0-15
Mn
Total 8.5-14
0.2-18
Calculates to 0.32-26.6
V
0.01-5
Si
0.1-1.6
C
0.01-2.0
Iron
70-80
Residual, at least 40% calculates to max of 99
Unavoidable impurities
present
Production-related (unavoidable)
Mo
0.2-5.0
W
0.01-15
Co
0.1-8
N
0.01-0.25
Nb/Ta
0.01-5
P
0.001-0.1
S
0.001-0.1
Pb
0.001-0.1
Cu
0-1.2
Hamentgen further teaches the core layer composition above in Table 2 (Pg. 2 [7] to Pg. 3 [1]), the outer layer contains 3-31 weight% Cr, at least 40 weight% Fe, and 0-10 weight% Ni (Pg. 5 [2]) and the outer and core regions are bonded by hot isostatic pressing (Pg. 6 [4]). One of ordinary skill in the art reasonably understands where these two layers are bonded to form the interface layer the elements will mix at the interface layer. Therefore, Cr and Fe values overlapping that claimed are in the scope of this mixing. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
If Ni is limited in the core region to that of claim 1, the Ni range would be close but not overlapping to that claimed. However, no criticality to this Ni range has been shown by applicant or the prior art of record. Therefore, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (MPEP 2144.05 I).
Regarding claims 6 and 7, Hamentgen teaches each limitation of claim 3, as discussed above, and further teaches a composite body formed of an outer region, a core region and an interface between them (Pg. 8 [5]; Fig. 2) and Fig. 2 shows the outer region and core region and interface are layers (Fig. 2), the core layer is the composition above in Table 2 (considered to be the “hard” layer) (Pg. 2 [7] to Pg. 3 [1]), the core layer has a thickness of at least 3% the radius of the roll, which has a diameter of 50 mm-1200 mm (Pg. 4 [4]-[5]) and the separating body of steel (between the core and outside areas; i.e. interface) is 1-5 mm (Pg. 7 [1]). The core layer is at least 3% of a radius 25-600mm, at 3% this calculates to 0.75-18mm.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Allowable Subject Matter
Claim 2 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(a) and (d), set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record teaches away a range of carbon in the core region that is not close to that claimed, and there is not teaching, suggestion or motivation to adjust a single element in a composition of an iron alloy that would not possibly impact the results of the other elemental compositions.
Response to Arguments
Applicant's arguments filed June 03, 2026 have been fully considered but they are not persuasive. Applicants’ allegations of “unexpected results” do not refer to specific data value points, and therefore fails to prove a nexus of criticality between any single parameter and any specific results. Applicants’ arguments to how Fig. 2 of Hamentegen is different than that claimed. There is an interface material between a hard layer and different layer in the prior art of record, meeting the claimed limitations. Applicants’ use of the word “base” material does not preclude it being an outer layer under broadest reasonable interpretation of “base”. Therefore, applicants’ arguments are not persuasive.
For these reasons, and for those reasons as advanced in the rejections above, the present claims are not found to distinguish over the prior art and this action is made FINAL.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
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/KATHERINE A CHRISTY/ Primary Examiner, Art Unit 1784
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