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 .
Election/Restrictions
Applicant’s election without traverse of Group I claims 1-32 in the reply filed on 4/15/2026 is acknowledged.
Claims 33-36 are withdrawn. Only claim 35 is still pending after the amendment.
Response to Amendment
The amendment filed 4/15/2026 is entered and fully considered.
Claims 6-8, 10, 11, 15, 16, 18, 21, 23, 24, 30, 32-34, and 36 are canceled.
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 3, 5, 9, 19, 20, 22, 29, and 31 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 “relatively high concentrations” in claim 3 is a relative term which renders the claim indefinite. The term “relatively high” 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. In this instance it is not clear how high concentrations need to be to fall within the claim scope, or conversely when a lower concentration will fall outside of the claim scope.
The term “substantially” is also used in claims 5 and 9. Again, the relative term makes the scope of the claim unclear because it is not clear how much non-metal material can be incorporated before being considered no longer “substantially free”. Likewise, it is not clear when a structure is no longer considered “substantially a single-phase alloy” or multiphase alloy. Without the specification indicating a standard for determining the relative degree of concentration or single phase alloy, the term becomes subjective and indefinite.
Claim 9 refers to “strength mismatch” which is defined in the specification [0167] on page 24. However, the variables in the equation are not fully defined. Specifically, the units for concentration are not defined (mass% or atom%). The “strength” is defined in fig. 4. However, the scope of the claim includes metals that are not listed in fig. 4 and it is not clear what strength value should be used, because material science has many different “strength” measurements.
Claims 19, 20, 29 and 31 also depend from claim 5 and incorporate the same issue by dependency.
Claim 19 refers to “the coating layer formed by spraying, cladding, sputtering, vapor deposition, or electrodeposition methods” but lacks antecedent basis for “the coating layer”. The examiner recommends changing to --a coating layer--. The examiner further notes that the language is comparing the hardness of the invention to another theoretical layer which is undefined. Applicant has no basis for asserting that the coating made by the claimed process will be harder than any future process yet to be discovered involving spraying, cladding, casting, sputtering, vapor deposition, or electrodeposition methods. The scope of “other processes” is constantly expanding and changing which makes the scope of the claim change with time and is therefore indefinite.
Claim 22 refers to “a mixture of the powder materials” instead of --the mixture of the powder materials--. It is not clear if the claim is referring to a different “mixture” that was already defined in claim 1.
Claim 29 requires the coating is “rough or uneven in microscale” with a roughness of greater than 1 micron. This language is confusing and awkward. The examiner recommends simply stating the roughness of the surface properly as greater than 1 micron (Ra, Rz or Rq).
Claim Rejections - 35 USC § 102
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.
Claim(s) 1, 5, 9, 12-14, 17, 20, 22, 25-29, and 31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by BOSWELL et al. (US 5,074,908).
Regarding claims 1 and 28,
BOSWELL teaches a method of simultaneously alloying and forming a coating column 2 lines 3-7. The reference notes that the coating is accomplished by reducing the turbulent motion of striking bodies in the ball mill column 2 lines 36-55. Preventing the friction and abrasion of the striking media is accomplished by mounting a series of tubes with balls (striking material and object with target surface) inside that cannot pass each other column 3 lines 8-67. The milling balls can be considered the claimed the target surface for the coating because the claim does not specify what the object and target surface is other than “placing” on an interior surface of the ball mill chamber. Alternatively, the cylindrical surfaces themselves can also have alloy deposited thereon column 6 lines 1-4. BOSWELL further teaches that the milling tube includes particles (powder) of elements to be alloyed together such as nickel and aluminum (first and second metal) column 3 lines 36-44.
Regarding claim 5,
BOSWELL teaches loading metal powder to alloy without any additional non-metals (substantially free of non-metals).
Regarding claim 9,
BOSWELL teaches an example of using 35g Ni and 51g Al, which calculates to a weighted average strength of about 1.28 (using mass% concentration). The strength mismatch calculates to 1.16 and is therefore expected to be single phase.
Regarding claim 12,
The milling in BOSWELL does not use a solvent and is therefore a dry process.
Regarding claim 13,
BOSWELL does not teach a temperature for milling. Accordingly, the temperature can be reasonably interpreted to mean room temperature (18°C) or standard temperature (0°C) which falls within the claimed range. The temperature is not part of the variable parameters in BOSWELL which focuses on spherical size and kinetic energy column 4 lines 1-30.
Regarding claim 14,
The claim requires the use of a cryogenic ball mill device but does not require a method of cryogenic milling. Therefore the claim turns on the interpretation of “cryogenic ball mill”. The broadest interpretation of the limitation would be a ball mill that can be operated at “cold” temperatures. Given the breadth of the claim the ball mill in BOSWELL could be chilled and used at a room temperature and could therefore be a cryogenic ball mill (being operated at room temperature).
Regarding claim 17,
BOSWELL does not teach the resulting grain size of the alloy formed by ball milling the metal powder. However, the same metals alloyed by the same mechanical alloying process in a ball mill is expected to result in the same grain size.
Regarding claim 20,
BOSWELL does not teach the resulting hardness of the alloy formed by ball milling the metal powder. However, the same metals alloyed by the same mechanical alloying process in a ball mill is expected to result in the same hardness.
Regarding claim 22,
As described above, the cylindrical surfaces themselves can also have alloy deposited thereon column 6 lines 1-4. The end caps of the cylinders can be considered “part” of the cylinder (the object) when the cylinder inner surface is the “target surface”.
Regarding claim 25,
BOSWELL does not expressly teach any deposition occurring at the plug end surfaces (lid) of the tube. However the coating of the milling material indicates that alloys are forming on the exposed surfaces struck by the milling balls. Accordingly, it would be reasonable to expect that there is also alloying material being formed at the tube ends in addition the to the surfaces of the ball milling material.
Regarding claim 26,
BOSWELL teaches the cylindrical surfaces themselves can also have alloy deposited thereon (the interior wall) column 6 lines 1-4. The tubes as with all things are “removable” and therefore considered to be “configured to be removable”.
Regarding claim 27,
The cylinders are fixed inside the ball mill as shown in fig. 1.
Regarding claim 29,
BOSWELL teaches the coating has projections (uneven) which can be less than 1mm high (microscale, greater than 1 micron) column 5 line 24 and 35.
Regarding claim 31,
BOSWELL teaches using the small objects as a deburring agent column 4 lines 31-32. The operation of deburring is considered a “post-processing treatment” and will inherently reduce the surface protrusions of both the deburring agent and the deburred target.
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.
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.
Claim(s) 2-4, 9, 17, and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over BOSWELL et al. (US 5,074,908) in view of BAO et al. (CN 117107097; citations to machine translation).
Regarding claims 2-4,
BOSWELL teaches a method of mechanically alloying metals in a ball mill but does not teach an alloy of more than 2 metals. However, BAO teaches mechanically alloying by mixing cobalt, chromium, iron, nickel, and titanium in a ball mill abstract. The alloy has high hardness, strength, abrasion resistance, and corrosion resistance for improved service life abstract. Each metal is loaded at 20 atom% which is the same as mol% and considered “relatively high” page 3. At the time of filing the invention it would have been prima facie obvious to provide use the mechanical alloying of BOSWELL to make another alloy such as the alloy in BAO because it is a high hardness alloy.
Regarding claim 9,
BAO teaches a composition for alloying material that includes 5 elements. The reference does not expressly teach a strength mismatch as defined in the specification [0167] on page 26. However, when using the metals of BAO at the claimed concentrations (20 atom% each), the calculated strength mismatch using applicant’s equation and strength values is 1.48. The strength mismatch is what causes the formation of single and multi phase alloys according to the specification [0168]. The strength mismatch in BAO will form a single-phase alloy.
Regarding claim 17,
The references do not teach the resulting grain size of the alloy formed by ball milling the metal powder. However, the same metals alloyed by the same mechanical alloying process in a ball mill is expected to result in the same grain size.
Regarding claim 20,
The references do not teach the resulting hardness of the alloy formed by ball milling the metal powder. However, the same metals alloyed by the same mechanical alloying process in a ball mill is expected to result in the same hardness.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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, MICHAEL CLEVELAND can be reached at 571272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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