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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/14/25 has been entered.
Status of Claims
Pending:
1, 3-6, 8-11, 13, 25, 27-35
Withdrawn:
NONE
Rejected:
1, 3-6, 8-11, 13, 25-35
Amended:
1, 13, 27
New:
NONE
Independent:
1, 13, 27
Claim Interpretation
Instant independent claim 1 is drawn to an aluminum alloy powder “for manufacturing a three-dimensional aluminum alloy part by a powder bed fusion additive manufacturing process”, which refers to an intended use for said aluminum alloy powder. Independent claims 13 and 27 contain a similar limitation.
Independent claim 1 as amended recites the limitation “when said aluminum alloy is heated to a first temperature… said aluminum alloy is capable of transitioning from a liquid phase to a multiphase system…” [emphasis added] which is a conditional limitation. Certain properties (presence of liquid and solid) are present under the condition: “when said aluminum alloy is heated to a first temperature”; however, said claim never mentions a step of heating. The examiner points out the instant claim does not recite or imply a product-by-process step of heating. For the purposes of this action, the claims are being given their broadest reasonable interpretation consistent with the specification, i.e. this phrase is being interpreted to mean that the claimed properties are present conditionally (when in said condition), in other words, that the claimed product is capable of exhibiting said property under certain specified conditions.
Claim 1 line 15 mentions “a grain refining element selected from the group consisting of…. oxides, nitrides, carbides, or aluminides”. Oxides, nitrides, carbides and aluminides are compounds, composed of elements (and not single elements, nor are they unbonded single elements). The meaning of said claims is clear- that oxides, nitrides, carbides, and aluminides can be chosen as the grain refining “element” as in “species”. Claims 13 and 27 contain similar limitations. Similarly, the amended term “elemental” in front of zirconium, tantalum, niobium, tungsten is likewise interpreted to mean “elemental” as in “species”.
If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where said interpretation is found in the original specification) in response to this action.
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.
Claims 1, 3-6, 8-11, 13, 25, 27-35 are rejected under 35 U.S.C. 103 as being unpatentable under 35 U.S.C. 103 as being unpatentable over Martin et al (US 2015/0337423, hereinafter Martin’423, previously cited) in view of teaching reference “ASM Handbook Vol. 2B” pp. 432-438, previously cited.
Martin’423 teaches aluminum alloy 7075 powder microparticles coated with Zr hydride nanoparticles (Fig. 4, [0034]), which enhance sintering during consolidation [0051] (such as consolidation into a solid article by additive manufacturing [0028]). More particularly concerning the alloying ranges of 7075, the ASM Handbook Vol. 2B p.432, Table 1 teaches that 7075 includes (in wt%): 5.1-6.1% Zn, 2.1-2.9% Mg, 1.20-2.0% Cu, ≤0.40% Si, ≤0.50% Fe, 0.18-0.28% Cr, ≤0.20% Ti, ≤0.30 Mn, ≤0.20 Ti with the balance aluminum, which overlaps the claimed alloying ranges of Cu, Mg, Si, Mn, Ti, and Al (claims 1, 3, 5, 9, 11, 13, 27, 28, 33, 34).
Concerning amended claims 1, 13, 27, the Zr hydride nanoparticles taught by Martin’423 comprise Zr (that is, comprise elemental Zr see also “Claim Interpretation” above), and therefore meet the amended Markush group selection of “elemental Zr”. More particularly, though “elemental Zr” is now specified in the Markush group of said claims, elemental Zr plus H2 are combined to form ZrH2 compound of Martin’423. The presence of Hydrogen (i.e. H2) in ZrH2 is not excluded by the instant “comprising” transitional phrase of claim 1 line 3, nor is it excluded by the instant “consisting essentially of” transitional phrase (independent claim 13 line 4). Further, as set forth in the “Claim Interpretation” above, “elemental” is interpreted to be consistent with “species”. Because claims 1, 13, and 27 are drawn to one or more of elemental Zr, elemental Ta, elemental Nb, elemental W, oxides, nitrides, carbides, borides, or aluminides, and because Martin’423 teaches Zr hydride which includes elemental Zr, Martin’423 meets the instant limitation. Martin’423 teaches said Zr hydrides are dispersed on the surface of an aluminum alloy powder [0072-0073] in an amount of ≥0.25wt% [0021], which overlaps the instantly amended claimed minimum of 0.5vol%.
Concerning the limitation “when said aluminum alloy is heated to a first temperature… said alloy is capable of transitioning from a liquid phase to a multiphase system…” see “Claim Interpretation” section above. Further, because Martin’423 teaches an overlapping alloy powder composition, then substantially the same liquid-solid phase change transition is expected from the alloy powder of Martin’423, when the claimed conditional heating takes place, as for the instant invention.
Therefore, because Martin’423 teaches an overlapping Al alloy with Zr grain-refining nanoparticles, and because the claimed physical properties are expected to result by virtue of the combination of said overlapping composition together with consolidating by additive manufacturing [0028, 0144], it is held that Martin’423 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 3, 5, 9, 11, 13, 27, 28, 33, 34, see above discussion of composition. Further concerning claim 13, as set forth above, Martin’423 teaches said Zr is chemically disposed on the surface of said particle of aluminum alloy powder, and therefore meets the instant limitation. Concerning claim 30, the amount taught by Martin’423 of 2.1% Mg is considered to fall within the scope of the claimed “about 2 wt%” of Mg.
Further concerning claim 11, which recites the limitation “wherein said multiphase system includes said solution of liquid phase aluminum, said solid phase of silicon particles, and another solid phase of iron-containing intermetallic particles dispersed throughout said liquid phase aluminum…”, because Martin’423 teaches an overlapping alloy powder composition, then substantially the same liquid-solid phase change transitions are expected from the alloy powder of Martin’423, when the claimed conditional heating takes place (see “Claim Interpretation” section above), as for the instant invention.
Concerning claims 25, 35, as stated above, Martin’423 teaches aluminum alloy 7075 powder microparticles coated with Zr hydride nanoparticles (Fig. 4, [0034]), which meets the recited limitation of “chemically…disposed on surfaces of said particle of said aluminum alloy powder”.
Concerning claims 6, 8, 10, 29, 31, and 32, Martin’423 broadly teaches a matrix powder microparticle selected from aluminum and aluminum alloys, including aluminum alloys with one or more of Mg, Si, and Cu (see Martin’423 at claims 12 and 13), and therefore the broad disclosure of Martin’423 is held to meet the claimed alloying additions of Mg, Si, and Cu.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
Response to Arguments/Amendment
In the response filed 7/16/24 applicant amended claims 1, 13, and 27, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s argument that the instant claims are allowable because the prior art does not teach or suggest selecting a grain refining element from one or more of elemental Zr, elemental Ta, elemental Nb, elemental W, oxides, nitrides, carbides, borides, or aluminide, has not been found persuasive. As set forth above, the Zr hydride nanoparticles taught by Martin’423 comprise Zr (that is, comprise elemental Zr), and therefore meet the amended Markush group selection of “elemental Zr”. The presence of Hydrogen (i.e. H2) in ZrH2 is not excluded by the instant “comprising” transitional phrase of claim 1 line 3, nor is it excluded by the instant “consisting essentially of” transitional phrase (independent claim 13 line 4). Because claims 1, 13, and 27 are drawn to one or more of elemental Zr, elemental Ta, elemental Nb, elemental W, oxides, nitrides, carbides, borides, or aluminides, and because Martin’423 teaches Zr hydride which includes elemental Zr, Martin’423 meets the instant limitation.
Applicant’s argument the instant invention is allowable because the amended claims exclude the addition of ZrH2 taught by Martin’423, and it would be a technical error of chemistry to conclude that the Zr portion of ZrH2 can be selected within the Markush group, temporarily ignoring the bonded hydrogen (argument page 8), has not been found persuasive. As set forth above, because Martin’423 teaches Zr hydride which includes elemental Zr (and because the presence of H2 is not excluded by the instant transitional phrase) Martin’423 meets the instant limitation. Further, with respect to the argument emphasizing the importance of Zr as an element (which applicant argues does not include the molecular form), it is pointed out that the instant claims and specification refer to elements and compounds interchangeably. For instance, claim 1 line 15 mentions “a grain refining element selected from the group consisting of…. oxides, nitrides, carbides, or aluminides”. Oxides, nitrides, carbides and aluminides are compounds, composed of elements (oxides, etc. is not an unbonded element). The meaning of said claims is clear- that oxides, nitrides, carbides, and aluminides can be chosen as the grain refining “element” as in species (see “Claim Interpretation” above). Further, the instant specification at [0023] refers to “at least one grain-refining element is selected from the group consisting of Al3Zr, Al3Ta, Al3Nb, Al3Ti, TiB, TiB2 WC, AlB”- wherein Al3Zr, etc. are technically compounds composed of elements. It clear (from the specification, claims, etc.) that elements and compounds share much of the same identity, and a further reason that applicant’s argument “it would be a technical error of chemistry to conclude that the Zr portion of ZrH2 can be selected within the Markush group, temporarily ignoring the bonded hydrogen” is untenable.
As stated previously, the examiner agrees that the instant claims are not obvious in view of Hou (who teaches vol% oxides outside the amended range) or Shiina (who teaches vol% Zr outside the amended range).
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 JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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 Hendricks can be reached on 571-272-1401. 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.
/Keith D. Hendricks/ Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 12/14/25
Prosecution Insights