DETAILED ACTION
Status of Claims
Claims 1-17 are pending. Of the pending claims, claims 1-9, 13, 16, and 17 are presented for examination on the merits, and claims 10-12, 14, and 15 are withdrawn from examination.
Claims 1-9, 13, and 16 are currently amended. Claim 17 is new.
Status of Previous Rejections Under 35 USC § 112
The previous rejection of claim 16 under 35 U.S.C. § 112(b) is withdrawn in view of the amendments to the claim.
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.
Claims 1, 2, 7-9, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0156005 (A1) to Chehab et al. (“Chehab”) in view of US 2010/0139815 (A1) to Pandey (“Pandey”).
Regarding claims 1 and 2, Chehab discloses an aluminum alloy powder (aluminium alloy in powder form). Para. [0052]. The aluminum alloy includes the following elements in percent by weight fraction (para. [0052]-[0076]):
Element
Claim 1
US 2021/0156005 A1
Element M (≥ 2)
1 - 16
Cr
0.05 - 5
Fe
2 - 15
Ni
Ni and/or Co 0.1 - 7
Co
Ni and/or Co 0.1 - 7
Element N (≥ 1)
0.5 - 5 for Ti or Ce
1 - 10 for Y
Ti
0.01 - 5
Y
0.1 - 5
Ce
0.1 - 12
O
0.1 - 0.3
silent
Al
base
remainder
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Chehab is silent regarding the amount of oxygen in the powder.
Pandey is directed to high-strength heat treatable aluminum alloy powders containing various rare earth elements. Para. [0009]. Pandey teaches that oxygen is intentionally added to the alloy powder in amounts of about 100 ppm to 2000 ppm (0.0100 wt.% to 0.2000 wt.%) so that agglomeration is prevented and explosions are inhibited. Para. [0102]; claim 6. A controlled amount of oxygen is important to provide good ductility and fracture toughness. Para. [0102], [0113].
Because aluminum is reactive quick to oxidize, it would have been obvious to one of ordinary skill in the art to have included oxygen in the aluminum powder of Chehab in the amount disclosed by Pandey in order to avoid explosive behavior of the powder. Additionally, oxygen reduces the tendency of the powder to clump together, and it would improve ductility and fracture toughness of the powder. The oxygen is interpreted as a constituent element because it is an element of the powder particle.
Regarding claim 7, Chehab teaches an average particles size from 10 µm to 100 µm. Para. [0092], [0093]. An example d50 is 52.3 µm (para. [0126]), which falls within the claimed range.
Regarding claim 8, Chehab is silent regarding the yield strength or creep at the conditions claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Chehab, in view of Pandey, teaches a material encompassing the claimed composition. Therefore, any claimed properties, such as yield strength and creep strength at the claimed conditions, would also be expected to be observed in the aluminum alloys of Chehab and Pandey.
Regarding claim 9, the claim is a product-by-process claim because it seeks to define the claimed product by its method of manufacture. The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In the present instance, because the process limitations are not given patentable weight, Chehab meets the claim because the final product, i.e., a powder, is produced. In addition, Chehab teaches forming the powders by atomization or grinding. Para. [0098], [0100], [0101].
Regarding claim 13, Chehab teaches manufacturing a part (three-dimensional object) from the filler (aluminum alloy in powder form). Abstract; para. [0015], [0104]-[0121]; claims 1 and 2.
Regarding claim 17, in adding the endpoints of the Fe, Cr, and Ti amounts in Chehab, the sum total ranges from 2.06 to 25, which encompasses the claimed range.
Claims 1, 2, 9, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP H01-319643 (A) to Matsumoto et al. (“JP ‘643”) (abstract and computer-generated English translation are in the file) in view of Pandey.
Regarding claims 1 and 2, JP ‘643 teaches an aluminum alloy powder (aluminium alloy in powder form). Abstract; page 2 – top paragraph. The alloy includes the following elements in percent by weight (page 1 – last paragraph; page 2):
Element
Claim 1
JP H01-319643 (A)
Element M (≥ 2)
1 - 16
Cr
0.7 - 15
Fe
5.0 - 15
Ni
Co
0.5 - 15
Element N (≥ 1)
0.5 - 5 for Ti or Ce
1 - 10 for Y
Ti
0.5 - 10
Y
Ce
0.5 - 5
O
0.1 - 0.3
silent
Al
base
balance
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
JP ‘643 is silent regarding the amount of oxygen in the powder.
Pandey is directed to high-strength heat treatable aluminum alloy powders containing various rare earth elements. Para. [0009]. Pandey teaches that oxygen is intentionally added to the alloy powder in amounts of about 100 ppm to 2000 ppm (0.0100 wt.% to 0.2000 wt.%) so that agglomeration is prevented and explosions are inhibited. Para. [0102]; claim 6. A controlled amount of oxygen is important to provide good ductility and fracture toughness. Para. [0102], [0113].
Because aluminum is reactive quick to oxidize, it would have been obvious to one of ordinary skill in the art to have included oxygen in the aluminum powder of JP ‘643 in the amount disclosed by Pandey in order to avoid explosive behavior of the powder. Additionally, oxygen reduces the tendency of the powder to clump together, and it would improve ductility and fracture toughness of the powder. The oxygen is interpreted as a constituent element because it is an element of the powder particle.
Regarding claim 9, the claim is a product-by-process claim because it seeks to define the claimed product by its method of manufacture. The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In the present instance, because the process limitations are not given patentable weight, JP ‘643 meets the claim limitation. In addition, JP ‘643 teaches forming the powders by atomization. Abstract; page 2 – second paragraph.
Regarding claim 13, JP ‘643 teaches that the powders are suitable for use in engine parts, turbine impellers, and aircraft parts (three-dimensional object made from aluminium alloy in powder form). Page 3 – last paragraph (Effects of the Invention section).
Regarding claim 17, in adding the endpoints of the Fe, Cr, and Ti amounts in JP ‘643, the sum total ranges from 6.2 to 40, which encompasses the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘643 in view of Pandey, as applied to claim 1 above, and further in view of Chehab.
Regarding claim 7, JP ‘643 is silent as to the mean D50 particle size of the powder particles.
Chehab is directed to a process for manufacturing an aluminum alloy part. Title; abstract. The alloy contains Fe, Ti, and Cr. Para. [0054], [0058], [0061]. These alloys can have a d50 of 52.3 µm (para. [0126]), which falls within the claimed range. The powders have multiple uses in various applications, such as SLS, DMLS, SLM, CSC, among others (para. [0102]-[0121]), and useful in aeronautics applications (para. [0018]).
It would have been obvious to one of ordinary skill in the art to have made the particles of JP ‘643 into the particle size distribution in Chehab because that size would prepare the alloy for use in wider number of applications, such as SLS or SLM consolidation techniques for making parts for aerospace applications, thereby producing an aluminum alloy object that benefits from the high-temperature strength property of the alloys of JP ‘643 (page 3 – last paragraph (Effects of the Invention section)).
Furthermore, there is no patentable distinction where the difference is a matter of size. See MPEP § 2144.04(IV)(A). In the present instance, the powders of JP ‘643 differ only from the claim based on size of the powder particles. Chehab shows that aluminum alloy powder particles can be formed to have a size within the claimed range. Therefore, one of ordinary skill in the art can select the particle size based on desired dimension and for a particular application.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘643 in view of Pandey, as applied to claim 1 above, alone, or optionally with evidence from Dictionary of Materials and Testing (“Tomsic”).
Regarding claim 8, JP ‘643 is silent regarding the yield strength or creep at the conditions claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, JP ‘643, in view of Pandey, teaches a material encompassing the claimed composition. Therefore, any claimed properties, such as yield strength and creep strength at the claimed conditions, would also be expected from the aluminum alloy.
Alternatively regarding claim 8, JP ‘643 discloses that all inventive alloys tested in Table 2 (left columns) have a YTS at 0.2% offset (yield strength) (around about 40-44 kg/mm2), which falls within the claimed range of greater than 300 MPa (greater than 30.6 kg/mm2). Although JP ‘643 is silent as to the specific temperature of the measurement, JP ‘643 teaches that the measurement was taken at room temperature. Room temperature is understood in the art as being between 20oC and 30oC (Tomsic at p. 344), which encompasses the claimed temperature of 23oC. Therefore, one of ordinary skill in the art would have expected the measured YTS values to have been valid for a temperature at or about 23oC.
With respect to the hot yield strength, the claim recites that the hot yield strength is measured at 250oC, which is less than the YTS measurement at 300oC in JP ‘643. In JP ‘643, the YTS at 300oC is about 20-22 kg/mm2 (Table 2 – center columns). Since higher temperatures would soften the material (yield strength is lowered as seen when comparing the YTS at room temperature versus at 300oC), it follows that the YTS of JP ‘643 at 250oC would be the same as or higher than the YTS at 300oC. Therefore, the YTS of the alloys of JP ‘643 at 250oC would be expected to be at least about 20-22 kg/mm2, which overlaps the claimed range of greater than 200 MPa (greater than 20.4 kg/mm2).
Claims 1-4, 8, 9, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP S62-47448 (A) to Shimizu et al. (“Shimizu”) (abstract and computer-generated translation are attached) in view of Pandey.
Regarding claims 1 and 2, Shimizu is directed to aluminum alloy for powder metallurgy. Abstract. The alloy can be made into granules, flakes, a fine wire, or a ribbon-like thin strip (aluminium alloy in powder form). Abstract; p. 2 – first paragraph. The aluminum alloy contains the following elements in percent by weight (abstract; claim 1; p. 1 – fifth paragraph):
Element
Claim 1
JP S62-47448 (A)
Element M (≥ 2)
1 - 16
Cr
Mo, Cr, W, Co, and/or Ni 1 - 7
Fe
5 - 17
Ni
Mo, Cr, W, Co, and/or Ni 1 - 7
Co
Mo, Cr, W, Co, and/or Ni 1 - 7
Element N (≥ 1)
0.5 - 5 for Ti or Ce
1 - 10 for Y
Ti
1 - 7
Y
Ce
O
0.1 - 0.3
silent
Al
base
balance
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Shimizu is silent regarding the amount of oxygen in the powder.
Pandey is directed to high-strength heat treatable aluminum alloy powders containing various rare earth elements. Para. [0009]. Pandey teaches that oxygen is intentionally added to the alloy powder in amounts of about 100 ppm to 2000 ppm (0.0100 wt.% to 0.2000 wt.%) so that agglomeration is prevented and explosions are inhibited. Para. [0102]; claim 6. A controlled amount of oxygen is important to provide good ductility and fracture toughness. Para. [0102], [0113].
Because aluminum is reactive quick to oxidize, it would have been obvious to one of ordinary skill in the art to have included oxygen in the aluminum powder of Shimizu in the amount disclosed by Pandey in order to avoid explosive behavior of the powder. Additionally, oxygen reduces the tendency of the powder to clump together, and it would improve ductility and fracture toughness of the powder. The oxygen is interpreted as a constituent element because it is an element of the powder particle.
Regarding claim 3, Shimizu discloses an aluminum alloy containing the following elements in percent by weight and a specific example that falls within the claimed range (abstract; claim 1; p. 1 – fifth paragraph; Table 1 – No. 2):
Element
Claim 3
JP S62-47448 (A)
JP S62-47448 (A) (No. 2)
Element M (≥ 2)
Cr
0.5 - 4.0
Mo, Cr, W, Co, and/or Ni 1 - 7
1
Fe
0.5 - 8
5 - 17
6
Ni
Mo, Cr, W, Co, and/or Ni 1 - 7
1
Co
Mo, Cr, W, Co, and/or Ni 1 - 7
------------
Element N (≥ 1)
Ti
0.5 - 4.0
1 - 7
2
Y
------------
------------
Ce
at most 0.2
------------
------------
Si
at most 3.0
------------
------------
O
0.1 - 0.3
silent
------------
Al
base
balance
balance
Shimizu does not teach Si in the alloy. This means that Si is zero percent or present only at impurity level, which falls within the claimed range of at most 3 wt.%.
Shimizu does not teach Ce in the alloy. This means that Ce is zero percent or present only at impurity level, which falls within the claimed range of at most 0.2 wt.%.
Regarding claim 4, Shimizu discloses an aluminum alloy containing the following elements in percent by weight (abstract; claim 1; p. 1 – fifth paragraph; Table 1 – No. 2):
Element
Claim 4
JP S62-47448 (A)
Element M (≥ 2)
Cr
2 - 4
Mo, Cr, W, Co, and/or Ni 1 - 7
Fe
3 - 7
5 - 17
Ni
Mo, Cr, W, Co, and/or Ni 1 - 7
Co
Mo, Cr, W, Co, and/or Ni 1 - 7
Element N (≥ 1)
Ti
1 - 4
1 - 7
Y
------------
Ce
at most 0.2
------------
Si
at most 3.0
------------
O
0.1 - 0.3
silent
Al
base
balance
Shimizu does not teach Si in the alloy. This means that Si is zero percent or present only at impurity level, which falls within the claimed range of at most 3 wt.%.
Shimizu does not teach Ce in the alloy. This means that Ce is zero percent or present only at impurity level, which falls within the claimed range of at most 0.2 wt.%.
Regarding claim 8, Shimizu is silent regarding the yield strength or creep at the conditions claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Shimizu, in view of Pandey, teaches a material encompassing the claimed composition. Therefore, any claimed properties, such as yield strength and creep strength at the claimed conditions, would also be expected from the aluminum alloy.
Regarding claim 9, the claim is a product-by-process claim because it seeks to define the claimed product by its method of manufacture. The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In the present instance, because the process limitations are not given patentable weight, Shimizu meets the claim limitation. In addition, Shimizu teaches forming the powders by atomization. Page 2 – first & second paragraph; p. 2 – Example 1.
Regarding claim 13, Shimizu teaches that the aluminum alloy can be used as an aircraft member, an automobile engine part, an electric equipment part, and a hydraulic and pneumatic equipment part (three-dimensional objects made from aluminium alloy in powder form). Page 1 – first paragraph.
Regarding claim 17, in adding the endpoints of the Fe, Cr, and Ti amounts in Shimizu, the sum total ranges from 7 to 31, which encompasses the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Shimizu in view of Pandey, as applied to claim 1 above, and further in view of Chehab.
Regarding claim 7, Shimizu is silent as to the mean D50 particle size of the powder particles.
Chehab is directed to a process for manufacturing an aluminum alloy part. Title; abstract. The alloy contains Fe, Ti, and Cr. Para. [0054], [0058], [0061]. These alloys can have a d50 of 52.3 µm (para. [0126]), which falls within the claimed range. The powders have multiple uses in various applications, such as SLS, DMLS, SLM, CSC, among others (para. [0102]-[0121]), and useful in aeronautics applications (para. [0018]).
It would have been obvious to one of ordinary skill in the art to have made the particles of Shimizu into the particle size distribution in Chehab because that size would prepare the alloy for use in wider number of applications, such as SLS or SLM consolidation techniques for making parts for aerospace applications, thereby producing an aluminum alloy object that benefits from the superior strength and elongation at high-temperature of the alloys of Shimizu (abstract).
Furthermore, there is no patentable distinction where the difference is a matter of size. See MPEP § 2144.04(IV)(A). In the present instance, the powders of Shimizu differ only from the claim based on size of the powder particles. Chehab shows that aluminum alloy powder particles can be formed to have a size within the claimed range. Therefore, one of ordinary skill in the art can select the particle size based on desired dimension and for a particular application.
Claims 1, 2, 5, 8, 9, 13, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,607,523 to Masumoto et al. (“Masumoto”) in view of Pandey.
Regarding claims 1 and 2, Masumoto teaches an aluminum-based alloy powder having the following composition in atomic percent (col. 1, lines 40-56; col. 2, lines 38-67; col. 3, lines 1-9; col. 5, lines 1-5; Table 2 – Inventive sample No. 13):
Element
Claim 1
US 5,607,523
US 5,607,523 (No. 13)
Element M (≥ 2)
1 - 16
Cr
Mn and/or Cr 1 - 7 at.%
Cr: 3.0 at.% (5.4 wt.%)
Fe
------------
------------
Ni
Co, Ni, and/or Cu 0.5 - 5 at.%
Ni: 1.0 at.% (2.0 wt.%)
Co
Co, Ni, and/or Cu 0.5 - 5 at.%
Co: 1.0 at.% (2.0 wt.%)
Element N (≥ 1)
0.5 - 5 for Ti or Ce
1 - 10 for Y
Ti
------------
------------
Y
REM, Y, and/or Mm > 0 to 5 at.%
Y: 1.0 at.% (3.1 wt.%)
Ce
REM incl. Ce
------------
O
0.1 - 0.3
silent
silent
Al
base
balance
balance
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Masumoto is silent regarding the amount of oxygen in the powder.
Pandey is directed to high-strength heat treatable aluminum alloy powders containing various rare earth elements. Para. [0009]. Pandey teaches that oxygen is intentionally added to the alloy powder in amounts of about 100 ppm to 2000 ppm (0.0100 wt.% to 0.2000 wt.%) so that agglomeration is prevented and explosions are inhibited. Para. [0102]; claim 6. A controlled amount of oxygen is important to provide good ductility and fracture toughness. Para. [0102], [0113].
Because aluminum is reactive quick to oxidize, it would have been obvious to one of ordinary skill in the art to have included oxygen in the aluminum powder of Masumoto in the amount disclosed by Pandey in order to avoid explosive behavior of the powder. Additionally, oxygen reduces the tendency of the powder to clump together, and it would improve ductility and fracture toughness of the powder. The oxygen is interpreted as a constituent element because it is an element of the powder particle.
Regarding claim 5, Masumoto discloses broader overlapping ranges and a specific example that falls within the claimed range (col. 1, lines 40-56; col. 2, lines 38-67; col. 3, lines 1-9; col. 5, lines 1-5; Table 2 – Inventive sample No. 13):
Element
Claim 5
US 5,607,523
US 5,607,523 (No. 13)
Element M (≥ 2)
Cr
Mn and/or Cr 1 - 7 at.%
Cr: 3.0 at.% (5.4 wt.%)
Fe
at most 0.1
------------
------------
Ni
1 - 7.5
Co, Ni, and/or Cu 0.5 - 5 at.%
Ni: 1.0 at.% (2.0 wt.%)
Co
1 - 5.5
Co, Ni, and/or Cu 0.5 - 5 at.%
Co: 1.0 at.% (2.0 wt.%)
Element N (≥ 1)
Ti
------------
------------
Y
2 - 10
REM, Y, and/or Mm > 0 to 5 at.%
Y: 1.0 at.% (3.1 wt.%)
Ce
REM incl. Ce
------------
Mn and/or Zr
at least 0.01
Mn and/or Cr 1 - 7 at.%
------------
O
0.1 - 0.3
silent
silent
Al
balance
balance
Masumoto teaches that the alloy may contain some combination of Mn and Cr. Col. 2, lines 50-56. Therefore, Mn may be present in a non-zero amount such that Mn and Cr total 1-7 at.% (col. 1, lines 46-56), which overlaps the claimed range of Mn and/or Zr being at least 0.01 wt.%.
Masumoto does not teach Fe in the alloy. This means that Fe is zero percent or present only at impurity level, which falls within the claimed range of at most 0.1 wt.%.
Regarding claim 8, Masumoto is silent regarding the yield strength or creep at the conditions claimed. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Masumoto, in view of Pandey, teaches a material having the same chemical composition. Additionally, Masumoto teaches that the alloy has high strength not only at room temperature but also at temperatures as high as 300oC. Col. 2, lines 38-49; Table 2. Therefore, any claimed properties, such as yield strength and creep strength at the claimed conditions, would also be expected from the aluminum alloy.
Regarding claim 9, the claim is a product-by-process claim because it seeks to define the claimed product by its method of manufacture. The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In the present instance, because the process limitations are not given patentable weight, Masumoto meets the claim limitation. Additionally, Masumoto teaches forming the powders by atomization, with mechanical alloying as an acceptable alternative. Col. 2, lines 16-24; col. 5, lines 1-4.
Regarding claim 13, Masumoto teaches forming the powders into a billet (three-dimensional object made from the aluminium alloy in powder form). Col. 5, lines 4-14.
Regarding claim 17, referring to Inventive sample No. 13 in Table 2 of Masumoto and maximizing the amount of Cr such that the alloy composition is Cr 7.0, Ni 1.0, Co 1.0, Y 1.0, and Al 90.0 in atomic percent, the sum total of Fe, Cr, and Ti in the alloy is 12.1 wt.%, which falls within the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Masumoto in view of Pandey, as applied to claim 1 above, and further in view of Chehab.
Regarding claim 7, Masumoto is silent as to the mean D50 particle size of the powder particles.
Chehab is directed to a process for manufacturing an aluminum alloy part. Title; abstract. The alloy contains Fe, Ti, and Cr. Para. [0054], [0058], [0061]. These alloys can have a d50 of 52.3 µm (para. [0126]), which falls within the claimed range. The powders have multiple uses in various applications, such as SLS, DMLS, SLM, CSC, among others. Para. [0102]-[0121].
Given the high hardness and strength of the aluminum alloys of Masumoto (col. 1, lines 5-10; col. 2, lines 38-49), it would have been obvious to one of ordinary skill in the art to have made the particles of Masumoto into particles having the size disclosed in Chehab because that size would prepare the alloy for use in wider number of applications, such as SLS or SLM consolidation techniques, thereby producing an aluminum alloy object that benefits from the mechanical properties of Masumoto’s alloys.
Furthermore, there is no patentable distinction where the difference is a matter of size. See MPEP § 2144.04(IV)(A). In the present instance, Masumoto’s powders differ only from the claim based on size of the powder particles. Chehab shows that aluminum alloy powder particles can be formed to have a size within the claimed range. Therefore, one of ordinary skill in the art can select the particle size based on desired dimension and for a particular application.
Claims 1, 2, 6, 9, 13, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over JP H01-149935 (A) to Matsumoto et al. (Asada on PTO-892) (abstract and computer-generated translation on file) (“JP ‘935”) in view of Pandey.
Regarding claims 1 and 2, JP ‘935 teaches an aluminum alloy powder (aluminium alloy in powder form) that includes the following elements in percent by weight (abstract; claims; page 1 – last full paragraph):
Element
Claim 1
JP H01-149935 (A)
Element M (≥ 2)
1 - 16
Cr
0.5 - 5
Fe
4 - 20
Ni
0.5 - 5
Co
0.5 - 5
Element N (≥ 1)
0.5 - 5 for Ti or Ce
1 - 10 for Y
Ti
Y
Ce
0.3 - 5
O
0.1 - 0.3
silent
Al
base
balance
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
JP ‘935 is silent regarding the amount of oxygen in the powder.
Pandey is directed to high-strength heat treatable aluminum alloy powders containing various rare earth elements. Para. [0009]. Pandey teaches that oxygen is intentionally added to the alloy powder in amounts of about 100 ppm to 2000 ppm (0.0100 wt.% to 0.2000 wt.%) so that agglomeration is prevented and explosions are inhibited. Para. [0102]; claim 6. A controlled amount of oxygen is important to provide good ductility and fracture toughness. Para. [0102], [0113].
Because aluminum is reactive quick to oxidize, it would have been obvious to one of ordinary skill in the art to have included oxygen in the aluminum powder of JP ‘935 in the amount disclosed by Pandey in order to avoid explosive behavior of the powder. Additionally, oxygen reduces the tendency of the powder to clump together, and it would improve ductility and fracture toughness of the powder. The oxygen is interpreted as a constituent element because it is an element of the powder particle.
Regarding claim 6, JP ‘935 teaches an aluminum alloy powder (aluminium alloy in powder form) that includes the following elements in percent by weight (abstract; claims; page 1 – last full paragraph): (Table is located on the next page.)
Element
Claim 6
JP H01-149935 (A)
Element M (≥ 2)
Cr
0.5 - 5
Fe
0.5 - 6
4 - 20
Ni
2 - 10
0.5 - 5
Co
at most 0.1
0.5 - 5 (see discussion below)
Element N (≥ 1)
Ti
Y
Ce
0.5 - 5
0.3 - 5
Si
at most 3
------------
O
0.1 - 0.3
silent
Al
balance
JP ‘935 teaches that one or two or more elements from among Ni, Cr, Co, V, and Ce are selected. Abstract; claim 1; page 1. This means that Co is 0.5-5% by weight if it is included in the alloy. However, other elements other than Co (e.g., Ni, Cr, V, and/or Ce) may be selected. Therefore, if Co is not selected, its amount would be zero percent or impurity level, which falls within the claimed range of at most 0.1 wt.%.
JP ‘935 does not teach Si in the alloy. This means that Si is zero percent or present only at impurity level, which falls within the claimed range of at most 3 wt.%.
Regarding claim 9, the claim is a product-by-process claim because it seeks to define the claimed product by its method of manufacture. The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In the present instance, because the process limitations are not given patentable weight, JP ‘935 meets the claim limitation. Additionally, JP ‘935 teaches forming the powders by atomization. Page 1 – last full paragraph; pages 1-2 – bridging paragraph; page 2 – Embodiment section.
Regarding claim 13, JP ‘935 teaches producing a billet and rod from the powders (forming a three-dimensional object from the aluminum alloy powders). Page 2 – Embodiment section.
Regarding claim 16, JP ‘935 teaches an aluminum alloy powder (aluminium alloy in powder form) that includes the following elements in percent by weight (abstract; claims; page 1 – last full paragraph):
Element
Claim 16
JP H01-149935 (A)
Element M (≥ 2)
Cr
0.5 - 5
Fe
0.5 - 6
4 - 20
Ni
2 - 10
0.5 - 5
Co
at most 0.1
0.5 - 5 (see discussion below)
Element N (≥ 1)
Ti
Y
Ce
0.5 - 5
0.3 - 5
Si
at most 3
------------
Zr
at most 1.0
------------
Gd, Nd, and La
at most 2.0
------------
O
0.1 - 0.3
silent
Al
98-100% of the remainder
balance
JP ‘935 teaches that one or two or more elements from among Ni, Cr, Co, V, and Ce are selected. Abstract; claim 1; page 1. This means that Co is 0.5-5% by weight if it is included in the alloy. However, other elements other than Co (e.g., Ni, Cr, V, and/or Ce) may be selected. Therefore, if Co is not selected, its amount would be zero percent or impurity level, which falls within the claimed range of at most 0.1 wt.%.
JP ‘935 does not teach Si in the alloy. This means that Si is zero percent or present only at impurity level, which falls within the claimed range of at most 3 wt.%.
JP ‘935 does not teach Zr in the alloy. This means that Zr is zero percent or present only at impurity level, which falls within the claimed range of at most 1.0 wt.%.
JP ‘935 does not teach Gd, Nd, and La in the alloy. This means that Gd, Nd, and La are zero percent or present only at impurity level, which falls within the claimed range of at most 2.0 wt.%.
Aluminum is the balance of the alloy (i.e., 100% of the balance) (claim 1; p. 1 – penultimate paragraph), which falls within the claimed range.
Regarding claim 17, in adding the endpoints of the Fe, Cr, and Ti amounts in JP ‘935, the sum total ranges from 4.5 to 25, which encompasses the claimed range.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘935 in view of Pandey, as applied to claim 1 above, and further in view of Chehab.
Regarding claim 7, JP ‘935 teaches an average particle size of 70 µm (page 187 (original document) at left column; page 2 – Embodiment section), which falls within the claimed range. JP ‘935 does not specify this number to be the mean D50 particle size.
Chehab is directed to a process for manufacturing an aluminum alloy part. Title; abstract. The alloy contains Fe, Ti, and Cr. Para. [0054], [0058], [0061]. These alloys can have a d50 of 52.3 µm (para. [0126]), which falls within the claimed range. The powders have multiple uses in various applications, such as SLS, DMLS, SLM, CSC, among others. Para. [0102]-[0121].
Given the high strength of the aluminum alloys of JP ‘935 (Table 2; page 2 – Embodiment section), it would have been obvious to one of ordinary skill in the art to have made the particles of JP ‘935 into particle size distribution in Chehab because that size would prepare the alloy for use in wider number of applications, such as SLS or SLM consolidation techniques, thereby producing an aluminum alloy object that benefits from the mechanical properties of the alloys of JP ‘935.
Furthermore, there is no patentable distinction where the difference is a matter of size. See MPEP § 2144.04(IV)(A). In the present instance, the powders of JP ‘935 differ only from the claim based on size of the powder particles. Chehab shows that aluminum alloy powder particles can be formed to have a size within the claimed range. Therefore, one of ordinary skill in the art can select the particle size based on desired dimension and for a particular application.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over JP ‘935 in view of Pandey, as applied to claim 1 above, with evidence from Tomsic.
Regarding claim 8, JP ‘935 teaches that alloys No. 8 and No. 17 have YTS at 0.2% offset (yield strength) of 43.8 kg/mm2 and 44.5 kg/mm2, respectively (Table 2), which fall within the claimed range of greater than 300 MPa (greater than 30.6 kg/mm2).
JP ‘935 teaches that the measurement is taken at room temperature. Page 2. Although JP ‘935 does not define room temperature, it is understood in the art as being between 20oC and 30oC (Tomsic at p. 344), which encompasses the claimed temperature of 23oC. Therefore, one of ordinary skill in the art would have expected the YTS of JP ‘935 to have held the measured values at 23oC because it was taken at room temperature.
Furthermore, JP ‘935 is silent regarding the yield strength the claimed elevated temperature and the creep strength at the claimed conditions. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, JP ‘935 in view of Pandey teaches a material having the same chemical composition. Additionally, JP ‘935 teaches high tensile yield strengths not only at room temperature but also at temperatures as high as 300oC. See Table 2. Therefore, any claimed properties, such as yield strength and creep strength at the claimed elevated conditions, would also be expected from the aluminum alloy.
Response to Arguments
Applicant's arguments filed 09/17/2025 have been fully considered, but they are not persuasive.
Applicant argues that Pandey does not render the claim obvious because Pandey discloses the oxygen as an oxide coating, whereas the claimed invention is directed to oxygen as a constituent element, which Applicant alleges means an element present within the bulk of the powder particle.
In response, this is not persuasive because Applicant’s definition of “constituent” is narrow and inconsistent with the instant specification. The instant specification states the following (p. 6, lines 2-4, emphasis added):
Further non-aluminium constituents may be, for example, oxygen, which may be present as an oxide proportion on the surface of the powder particles.
Thus, oxygen present on the surface of the particle is consistent with the Pandey’s teaching of an oxide coating.
Applicant asserts that the claimed alloy powder is inventive with control of oxygen yielding unexpected and advantageous results. Applicant states that the oxygen imparts superior flowability (faster flow times), as indicated in the specification and shown in Table 1.
In response, this is not persuasive because the alleged unexpected results are not commensurate in scope with the claimed invention. See MPEP § 716.02(d). Table 1 appears to be limited to Al alloys where each alloy contains Fe, Cr, and Ti. However, the claims encompass multiple alloy combinations that do not require each of Fe, Cr, and Ti to be present when other M elements (such as Ni and Co) and N elements (such as Ce or Y) are selected.
Furthermore, criticality of the claimed range has not been shown, and the allegedly surprising results are not demonstrated over an entire claimed range. See MPEP § 716.02(d) and MPEP § 716.02(d)(II). Instant claim 1 recites an oxygen quantity having a lower limit of 0.15 wt.% and an upper limit of 0.3 wt.%. Instant claim 2 recites an oxygen content having a lower limit of 0.15 wt.% and an upper limit of 0.25 wt.%. Referring to Table 1 of the instant specification, although Alloy No. 3 contains 0.16 wt.% oxygen (falls within the claimed ranges), its flowability is 61 s, which is closer to the flowability of Alloy No. 1 (67 s and having an oxygen content of 0.09 wt.% that falls outside the claimed range) than to the flowability of Alloy No. 2 (27.5 s and having an oxygen content of 0.23 wt.% that falls within the claimed range). There also are no data showing flowability outside the upper limits of 0.25 wt.% and 0.3 wt.%. Thus, one cannot conclude criticality of the claimed oxygen range because the data in the specification do not demonstrate the alleged superior flowability over the entire claimed range while also demonstrating lack of superior flowability outside the claimed 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.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
January 02, 2026