Patent Application 18321864 - THERMAL SPRAY PARTICLE METHOD FOR PRODUCING - Rejection

Patent Application 18321864 - THERMAL SPRAY PARTICLE METHOD FOR PRODUCING

Title: THERMAL SPRAY PARTICLE, METHOD FOR PRODUCING THERMAL SPRAY PARTICLES, AND THERMAL SPRAY COATING FILM

Application Information

• Invention Title: THERMAL SPRAY PARTICLE, METHOD FOR PRODUCING THERMAL SPRAY PARTICLES, AND THERMAL SPRAY COATING FILM
• Application Number: 18321864
• Submission Date: 2025-05-19T00:00:00.000Z
• Effective Filing Date: 2023-05-23T00:00:00.000Z
• Filing Date: 2023-05-23T00:00:00.000Z
• National Class: 427
• National Sub-Class: 453000
• Examiner Employee Number: 88004
• Art Unit: 1784
• Tech Center: 1700

Rejection Summary

• 102 Rejections: 0
• 103 Rejections: 1

Cited Patents

The following patents were cited in the rejection:

• US 0352760🔗

Office Action Text

    DETAILED ACTION
Response to Amendment
In view of the addition of claims 23 and 24, new rejections directed to these claims are set forth below and were necessitated by these amendments. 

Election/Restrictions
Newly submitted claims 23-24 directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: 

Newly added claims 23 and 24 belong to the nonelected invention Group III of the groups set forth in the Requirement for Restriction mailed on 18 June 2024. Restriction was proper between the claims for reasons set forth in that Requirement for Restriction. Applicant elected Group I, claims 1-7 in a response filed 19 August 2024. Newly added claims 23 and 24 are therefore independent or distinct from the elected claims 1-7 for the reasons set forth in the Requirement for Restriction. 

Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 23-24 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA  35 U.S.C. 103(a) of the other invention.

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, 2, 4, 6, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0352760 (Hamashima).
In regards to independent claim 1 and dependent claims 2, 4, 6, and 7, Hamashima is directed to a method for forming a thermal spray coating film by forming a thermal spray coating film of an Al-Fe based intermetallic compound having a high hardness on a metal substrate. (Abstract) The thermal spray coating film is formed by forming a thermal spray coating film of an Al-Fe based intermetallic compound on the surface of a metal substrate from a mixture of an Al-Fe based intermetallic compound powder composed mainly of FeAl2 and a metal powder composed mainly of Fe as feedstock. (¶29) The preferred blend ratio of the intermetallic compound powder to the metal powder is from 70/30 to 80/20 by the weight ratio. (¶30) It is preferred that a weight ratio (Al/Fe) of Al to Fe in the mixture is from 0.55 to 0.85. (¶31) This would result in a composition that overlaps the claimed range. Therefore, a prima facie case of obviousness is established. 
It is preferred that a weight ratio (Al/Fe) of Al to Fe in the intermetallic compound powder is from 0.90 to 1.15. (¶32) The proportion of FeAl2 in the intermetallic compound powder is at least 75 wt. %. (¶33) 
The particle size is from 10 to 100 microns. (¶105) This overlaps the claimed range.
The Al-Fe intermetallic compound powder and the Fe based metal powder are respectively weighed and mixed and crushed in an organic solvent using a rotary ball mill or a vibratory ball mill. (¶102) The powder ground and mixed is fine and thus not suitable as a thermal spray coating powder and therefore it is preferred to carry out granulation. (¶103) An organic binder is used such as acrylic resin or polyethylene glycol. (¶103) The granulated powder is usually spherical and has good flowability, but is not hard enough to withstand conveyance by pressurized gas. (¶103) When this granulated powder is calcined at a temperature of from 800 to 1000 C, the organic binder is removed and the primary particles in the granulated powder are sintered with one another while keeping their spherical shape. (¶104) The particle size is from 10 to 100 microns. (¶105) 
This appears to be the identical or substantially identical process to produce the claimed product. In particular, the instant application sets forth mixing the particles, heating the particles to perform calorizing treatment for the treatment-target particles, and removing the sintering inhibitors. (Specification, Page 21, Lines 6-22) Therefore, in the absence of evidence to the contrary, it would be expected that the prior art would likewise have the same properties as those set forth in the instant claims, including the regions as set forth in the instant claims and structures of the regions. Further, amounts of the iron and aluminum overlap, it would likewise be expected that the compositions in the product produced would likewise, including in the respective regions. 

Response to Arguments
Applicant's arguments filed 18 February 2025 have been fully considered but they are not persuasive. 
Applicant argued that Hamashima does not teach or suggest a particle having the claimed properties. Applicant asserts that Hamashima teaches a mixture of Fe-Al intermetallic compound powder alloy powder and mixing the powder, adding an organic binder, and performing granulation granulation treatment. Applicant asserts that Hamashima does not teach or suggest a particle having a core portion and an outer layer covering the core portion as set forth in the instant claims. 
This argument is not found to be persuasive. 
As set forth above and in the previous Office action, Hamashima sets forth a method of producing a metal powder that appears to be identical or substantially identical to that set forth in the instant application for producing the claimed product. Applicant has not provided evidence in the record that the prior art process would not produce the claimed product. 

Applicant argues that the thermal spay coating film obtained by the method of Hamashima does not have good high-temperature sulfidation resistance.
This argument is not found to be persuasive. 
This argument is not commensurate in scope with the instant elected claims. The elected claims are directed to a thermal spray powder. This is not directed to a thermal spay coating film. The method of depositing or the resulting thermal spray coating film formed by a particular method is not claimed. Therefore, this argument is not commensurate in scope with the claimed directed to a thermal spray powder.  

Conclusion
THIS ACTION IS MADE FINAL. 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 Daniel J Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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, Humera Sheikh can be reached on (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784



/Daniel J. Schleis/            Primary Examiner, Art Unit 1784