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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 18, 2026 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed September 18, 2026, is acknowledged. Claim 22 is newly added. No new matter has been added.
Claims 9, 10, 11 and 12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions Groups II-V, directed to a part, a powder, a filler wire, and a product, respectively, there being no allowable generic or linking claim. Applicant timely elected with traverse in the reply filed on September 5, 2024.
Claims 1, 3-12 and 14-22 are pending, and Claims 1, 3-8 and 14-22 are currently considered in this office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 4, 2026 was filed after the mailing date of the Final Rejection on April 30, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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, 3-7, 14-15 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Vo (previously cited, US 20180010216 A1) in view of Adachi (previously cited, US 20200063241 A1).
Regarding Claim 1, Vo discloses a method for manufacturing a part comprising forming a formation of successive metallic layers, superimposed on one another, each layer being formed by the deposition of a filler metal, the filler metal being subjected to an energy supply so at to melt and constitute, when solidifying, said layer (para. [0056], powder-fed directed energy deposition process, which involves layer-by-layer (successive layer) deposition), wherein the filler metal is an aluminum alloy (Abstract), consisting of the following alloy elements, in weight percent:
1-10%, including 4% Mg, which reads on the claimed 0-4.5% (para. [0031], Al-4Mg-1.7Zr; see also para. [0029], wherein Mg may be 1-10%);
0.45-3% Zr, including 1.7% Zr, which reads on the claimed >1 and ≤2.5% (para. [0031], Al-4Mg-1.7Zr; see also para. [0029], wherein Zr may be 0.45-3%);
optionally 0.3-1.5wt% V, which reads on the claimed optionally at least one other element selected from V, the at least other element being from 0.05-5wt% (para. [0029]; V is optional as claimed and therefore also reads on 0%); and
impurities: <0.05% individually (para. [0049], wherein impurities such as Sc do not exceed 0.05wt%).
Vo is silent towards Sr, Ba, Sb, Bi, Ca, P, In and/or Sn, as well as Ag and Li, and one of ordinary skill in the art would appreciate these elements to not be included, and therefore 0%, which reads on the claim language ‘optionally’ (inclusive of 0%).
Vo fails to disclose at least one alloy element selected from Fe, Mn, Ni and/or La of at least 0.5% per element.
Adachi teaches 0.3-10% Mn in order to enhance tensile strength through precipitation hardening and dispersion strengthening, further, limiting Mn to 2.5% in order to increase ductility, and further limiting to 1.5wt% in order to balance for distortion in the additive manufacturing process (para. [0046] and para. [0067], contains 1-10% Mn or further 1.5-10% Mn, and Cr is absent; para. [0087]-[0090]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included up to 2.5% Mn, or further up to 1.5% Mn, as taught by Adachi, for the invention disclosed by Vo, in order to enhance tensile strength while balancing for ductility or while balancing for ductility and distortion in the additive manufacturing process (see teaching above). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05.1.
Regarding Claim 3, Vo discloses a Mg content lower than 3.5% (para. [0029], wherein Mg may be as low as 1wt%). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 4, Vo discloses wherein the content of the other alloy element or of each other alloy element (V - see above Claim 1) is 0.3-1.5wt%, which reads on the claimed 0.1-3%, 0.1-2%, 0.1-1% or 0.1-0.5% range (para. [0029], optionally 0.3-1.5wt% V). Additionally, the other alloy element is recited as optional and therefore not required. The inclusion or absence of V meets the claimed limitations. It is noted that Claim 4 does not positively recite requiring the inclusion of the other alloy element.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5, Vo discloses after formation of the layers, and/or after the formation of the part, an application of at least one heat treatment, the temperature of the heat treatment being optionally from 300-600C (para. [0057]).
Regarding Claim 6, while Vo discloses wherein solidification rates from the melting due to the laser act as quenching, one of ordinary skill in the art would appreciate that this occurs during (not after) layer formation and is inherent to the additive manufacturing process claimed, and that the invention of Vo does not include a quenching-type heat treatment following layer formation or following part formation (para. [0056]-[0057], the formed part only undergoes heat treatment (aging), and there is no quenching involved).
Regarding Claim 7, Vo discloses wherein the filler metal is in the form of a powder, whose exposure to a beam of light or of charged particles results in a local melting followed by solidification, so as to form a solid layer (para. [0056]).
Regarding Claim 14, Vo does not disclose 0.5-5wt% Fe.
Adachi alternatively teaches including 0.3-2wt% Fe and adjusting Mn to 1.5-10wt% in order to form a Mn-Fe compound which increases high temperature strength in an additively manufactured product, while balancing for hot cracking, and further teaches limiting Mn to 1.5-5wt% in order to obtain high ductility (para. [0052]; para. [0120]-[0121]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included up to 2wt% Fe and at least 1.5wt% Mn, as taught by Adachi, in order to increase high temperature strength through Mn-Fe compounds in an additively manufactured product, while balancing for hot cracking and while maximizing ductility.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 15, Vo is silent towards Ni.
Adachi further teaches including 0.5-3wt% Ni to increase high temperature strength and improve heat resistance (para. [0047]; para. [0140]; para. [0177]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 0.5-3wt% Ni, which reads on the claimed range of 1-2wt% Ni, as taught by Adachi, for the invention disclosed by Vo, in order to increase high temperature strength and improve heat resistance (see teaching above).
Regarding Claim 17 and Claim 18, Adachi teaches up to 2.5wt% Mn, and further up to 1.5% Mn, which reads on (Claim 17) 1-2wt% Mn and (Claim 18) 0.5-5wt% total at least one of Fe, Mn, Ni and/or La (see Claim 1 above; Adachi, para. [0046] and [0067], contains 1-10% Mn or further 1.5-10% Mn, and Cr is absent; para. [0088]-[0090]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 19, Adachi and Vo disclose wherein the composition comprises Mn as the one element selected from Fe, Mn, Ni and La, and wherein the alloy does not comprise Cr (Vo, para. [0049], wherein chromium in some embodiments is considered an unavoidable impurity and would therefore be absent from the alloy/unintentionally added; Adachi, para. [0046], wherein only Mn is included and Cr is absent).
Regarding Claim 20, Vo discloses 4% Mg and 1.7% Zr, which reads on the claimed ranges 2-4.5% Mg and >1-2.5% Zr, and Adachi discloses up to 2.5wt% Mn, and further up to 1.5% Mn, which reads on 1-2wt% of at least one alloy selected from Fe, Mn, Ni and/or La (Vo, para. [0031], Al-4Mg-1.7Zr; para. [0029], 1-10% Mg and 0.45-3% Zr; see Claim 1 above; Adachi, para. [0046] and [0067], contains 1-10% Mn or further 1.5-10% Mn, and Cr is absent; para. [0088]-[0090]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 21, Adachi and Vo disclose wherein the composition comprises Mn as at least one element selected Mn, Ni and La (see Claim 1 above; Adachi, para. [0046]).
Regarding Claim 22, Vo 1.7% Zr, which reads on the claimed ranges >1.2-2.5%, and Adachi discloses up to 2.5wt% Mn, and further up to 1.5% Mn, which reads on 1-2wt% of one alloy element selected from Fe, Mn, Ni and/or La (Vo, para. [0031], Al-4Mg-1.7Zr; para. [0029], 1-10% Mg and 0.45-3% Zr; see Claim 1 above; Adachi, para. [0046] and [0067], contains 1-10% Mn or further 1.5-10% Mn, and Cr is absent; para. [0088]-[0090]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Vo (previously cited, US 20180010216 A1) in view of Adachi (previously cited, US 20200063241 A1), as applied to Claim 1 above, in further view of Martin (previously cited, US 20190161836 A1).
Regarding Claim 8, Vo discloses using the aluminum composition in powder-fed directed energy deposition processes, but does not disclose wherein the aluminum composition may be used in the form of a wire for the additive manufacturing process.
Martin teaches wherein aluminum compositions which are used as a powder in direct metal deposition processes may alternatively be used as a wire, such that exposure to a heat source results in local melting followed by solidification, so as to form a solid layer (para. [0047]; para. [0058]; para. [0126]-[0127]; para. [0135]-[0136]). Thus, Martin teaches that feedstock in the form of a wire is an art equivalent form to feedstock as a powder.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used a wire feedstock (filler) with the composition disclosed by Vo in place of the powder feedstock (filler), as taught by Martin, because Martin demonstrates that the wire feedstock is an art equivalent to a powder feedstock for a direct metal deposition additive manufacturing process (see teaching above), and because Vo discloses wherein the aluminum alloy composition may be formed into a wire (para. [0053]).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Vo (previously cited, US 20180010216 A1) in view of Adachi (previously cited, US 20200063241 A1), as applied to Claim 1 above, in further view of Ema (JP 2004001085 A, English Machine Translation provided).
Regarding Claim 16, Vo is silent towards La.
Ema teaches a filler metal composition comprising up to 1wt% La in order to refine crystal grains and because La combines with hydrogen to form a hydrogen compound which is effective for preventing porosity and blowholes (para. [0032]). One of ordinary skill in the art would appreciate that filler metal is utilized and relevant to additive manufacturing and that porosity prevention is a pertinent problem in additive manufacturing.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 1wt% La, as taught by Ema, for the invention disclosed by Vo, in order to maximize the effect of crystal grain refinement and preventing porosity and blowholes (see teaching above).
Claims 1, 3-8, 14-15 and 17-22 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi (previously cited by Applicant in IDS filed January 25, 2023, US 20200063241 A1) in view of Martin (previously cited, US 20190161836 A1).
Regarding Claim 1, Adachi discloses a method for manufacturing a part comprising forming a formation of successive metallic layers, superimposed on one another, each layer being formed by the deposition of a filler metal, the filler metal being subjected to an energy supply so at to melt and constitute, when solidifying, said layer (para. [0008]; para. [0084]-[0087]), and wherein the filler metal is an aluminum alloy, in one embodiment (second aspect), consisting of:
Element
Adachi, 2nd aspect
para.
Claim 1 (wt%)
Fe
0.3-2wt%
[0052]
≥0.5% at least one of Fe, Mn, Ni or La
Mn
1.5-10wt%
[0052]
≥0.5% at least one of Fe, Mn, Ni or La
optionally:
any one or more of:
Mg
0.5-5wt%
[0055]
0-4.5wt%
Ni
0.5-3wt%
[0055]
≥0.5% at least one of Fe, Mn, Ni or La
Cu
0.5-5wt%*
[0055]
Si
4-30wt%*
[0055]
optionally:
any one or more of:
Zr
0.2-5wt%
[0058]
>1-2.5wt%
Ti
0.2-3wt%
[0058]
opt. 0.05-5wt%
Sc
0.2-5wt%*
[0058]
Li
0.2-10wt%
[0058]
opt. 0.06-2wt%
V
0.2-5wt%
[0058]
opt. 0.05-5wt%
*The claim excludes the elements of Cu, Si and Sc, however, these elements are optional in Adachi and may be 0%, particularly in the presence of one or more of Mg and Ni (Cu and Si), and one or more of Zr, Ti, Li and V (Sc), respectively. Therefore, the aluminum alloy of Adachi reads on the ‘consisting of’ language of the claim.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I. Additionally, Applicant has not provided criticality or a showing of unexpected results for the claimed ranges.
Adachi is silent towards the content of each impurity for the first and second embodiments/aspects of invention, and does not disclose wherein impurities are <0.05% individually (para. [0035]).
Martin teaches wherein total impurities are 0.15wt% or less, with individual impurities being each 0.05wt% or less (para. [0035]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used an aluminum alloy comprising the impurity levels taught by Martin for the invention disclosed by Adachi in order to produce the composition for the aluminum alloy part desired by Adachi, and to prevent unexpected microstructures due to processing effects from the unwanted elements. One of ordinary skill in the art would appreciate the desire to keep unwanted elements (impurities) to be as low as possible in order to produce the correct composition.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I. Additionally, Applicant has not provided a criticality for the content of the impurity elements.
Regarding Claim 3, Adachi discloses wherein the aluminum alloy includes 0.5-5wt% Mg, and wherein Mg is also optional (0%), which reads on the claimed range of 3.5wt% or less (para. [0055]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 4, Adachi discloses 0.2-5wt% Ti and 0.2-5wt% V, which reads on optionally at least element selected from V and Ti of an amount 0.1-3wt% each (para. [0058]). Additionally, the other alloy element is recited as optional and therefore not required. The inclusion or absence of Ti and/or V meets the claimed limitations. It is noted that Claim 4 does not positively recite requiring the inclusion of the other alloy element. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5, Adachi discloses wherein the method includes, after the formation of the layers, and/or after the formation of the part, an application of at least one heat treatment, the temperature of the heat treatment being optionally from 300-600C (para. [0117]). Examiner notes that the temperature range of the heat treatment is not required (optional), and not required to meet the claim limitations.
Regarding Claim 6, Adachi discloses including no quenching-type heat treatment following formation of the layers, and/or formation of the part (para. [0117], wherein it is preferable to use without heat treatment, and therefore without quenching-type heat treatment).
Regarding Claim 7, Adachi discloses wherein the filler metal is in the form of a powder, whose exposure to a beam of light or of charged particles results in a local melting followed by solidification, so as to form a solid layer (para. [0085]; para. [0146]). One of ordinary skill in the art would appreciate the irradiation with a laser beam or electron beam to be a local melting.
Regarding Claim 8, Adachi discloses wherein the filler metal is derived from a filler wire, whose exposure to a heat source results in local melting followed by solidification, so as to form a solid layer (para. [0085]-[0086]; para. [0146]). One of ordinary skill in the art would appreciate the irradiation with a laser beam or electron beam to be a local melting.
Regarding Claim 14, Adachi discloses wherein the aluminum alloy comprises 0.3-2wt% Fe, which reads on the claimed range of 1-2wt% Fe (see table above; para. [0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 15, Adachi discloses wherein the aluminum alloy comprises 0.5-3wt% Ni, which reads on the claimed 1-2wt% Ni (see table above; para. [0055]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 17, Adachi discloses wherein the aluminum alloy comprises 1.5-10wt% Mn, which reads on the claimed range of 1-2wt% Mn (see table above; para. [0052]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 18, Adachi discloses wherein the aluminum alloy comprises 0.3-2wt% Fe, and 1.5-10wt% Mn and optionally 0.5-3wt% Ni (see table above; para. [0046]; para. [0052]; para. [0055]). Adachi therefore discloses wherein the aluminum alloy comprises a total of Fe, Ni and Mn which ranges from 1.8% (no Ni) to 15wt%, and overlaps the claimed range of 0.5-5wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 19 and Claim 21, Adachi discloses, alternatively in another embodiment (see first aspect), wherein the aluminum alloy composition is adjusted to consists of 0.3% of Fe or less (inclusive of 0%) and 0.3-10wt% Mn, wherein the alloy may further include 0.2-7wt% Mg and 0.2-5wt% Zr (para. [0046], Cr absent; para. [0047]; para. [0058]). The element Ni is also optional in Adachi and therefore may be 0%, particularly in the presence of Mg (para. 47], “may further contain”, i.e., optionally contain, 0.5-3wt% Ni).
Thus, Adachi discloses an alloy comprising (Claim 19) only one element (Mn) selected from Fe (Fe is 0%), Mn, Ni (Ni is optional and 0%) and La (silent, 0%), in an amount of 0.5-5wt%, and also an alloy wherein (Claim 21) the at least one alloy element is selected from Mn (0.3-10wt%), Ni (optionally 0.5-3wt%) and/or La of at least 0.5wt% per element (Fe is 0%). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 20, Adachi discloses 0.3-2wt% Fe, 0.3-10wt% Mn, 0.05-5wt% Mg, 0.5-3wt% Ni and 0.2-5wt% Zr, which overlaps the claimed ranges of 2-4.5wt% Mg, >1 to 2.5wt% Zr, and at least one of Mn, Fe and Ni in an amount of 1-2wt% for each element (see table above in Claim 1; para. [0052], [0055] and [0058]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 22, Adachi discloses, alternatively in another embodiment (see first aspect), wherein the Fe and Mn in the aluminum alloy composition is adjusted to 0.3% of Fe or less (inclusive of 0%) and 0.3-10wt% Mn (para. [0046], Cr absent; see also para. [0047] and para. [0058] regarding elements from Table 1). As in the second aspect, the element Ni is optional in Adachi’s first aspect, and may be 0%, particularly in the presence of Mg (para. 47], “may further contain”, i.e., optionally contain, 0.5-3wt% Ni).
Therefore, Adachi discloses 0% Fe, 0.3-10wt% Mn, optionally 0.05-5wt% Mg, 0% Ni and 0.2-5wt% Zr, which overlaps the claimed ranges of 0-4.5wt% Mg, >1.2 to 2.5wt% Zr and one alloy element selected from Mn, Fe, Ni and La in an amount of 1-2wt%. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Adachi (previously cited and cited by Applicant in IDS filed January 25, 2023, US 20200063241 A1) in view of Martin (previously cited, US 20190161836 A1), as applied to Claim 1 above, in further view Ema (JP 2004001085 A, English Machine Translation provided).
Regarding Claim 16, Adachi is silent towards La.
Ema teaches a filler metal composition comprising up to 1wt% La in order to refine crystal grains and because La combines with hydrogen to form a hydrogen compound which is effective for preventing porosity and blowholes (para. [0032]). One of ordinary skill in the art would appreciate that filler metal is utilized and relevant to additive manufacturing and that porosity prevention is a pertinent problem in additive manufacturing.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included 1wt% La, as taught by Ema, for the invention disclosed by Adachi, in order to maximize the effect of crystal grain refinement and preventing porosity and blowholes (see teaching above).
Response to Arguments
Applicant’s arguments, filed September 18, 2026, with respect to Claim 1, and dependent claims thereof, rejected under 35 U.S.C. 103 over Vo in view of Araki (teaching of Ni and Mn) and alternatively over Vo in view of Araki (teaching of Fe), have been fully considered, and upon further consideration, a new ground(s) of rejection is made over Vo in view of Adachi, as detailed above.
Applicant’s arguments directed to Araki and to Kaji (and Eloi – see Remarks, pg. 9) are deemed moot, as these references are no longer applied in the rejections.
Applicant’s arguments, filed September 18, 2026, with respect to Claim 1, and dependent claims thereof, rejected under 35 U.S.C. 103 over Adachi in view of Martin, have been fully considered but are respectfully not found persuasive.
Regarding Adachi:
Applicant argues that Adachi does no teach specifically choosing Mg and Zr, while excluding other elements such as Si and Cu.
Applicant argues that the range disclosed for Zr (0.2-5wt%) is broad, and does not teach limiting to the range to within >1 to 2.5wt%.
Applicant argues that the working examples of Adachi do not comprise a Zr amount within the claimed range, and argues that the working examples which do comprise Zr also comprise Si and Cu.
Applicant argues that choosing the claimed elements from the options of Adachi requires hindsight.
These arguments are respectfully not found persuasive.
The ranges of elements for Adachi overlap the claimed ranges. Adachi discloses wherein the aluminum alloy may further contain any one element (or more) chosen from Si, Mg, Cu and Ni. Therefore, Adachi discloses wherein Si and Cu are only optionally contained and may be 0%, which reads on the claimed composition. The Zr range of Adachi also overlaps the claimed range and Applicant has not provided criticality for the Zr range or demonstrated unexpected results (see MPEP § 2144.05.I).
Regarding the examples which show Zr outside the claimed range and comprise Si and/or Cu, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments, and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123.I&II).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Nie (“Effect of Zr content on formability, microstructure and mechanical properties of selective laser melted Zr modified Al-4.24Cu-1.97Mg-0.56Mn alloys”): teaches an alloy with an overlapping composition, used for additive manufacturing, comprising up to 2wt% Zr (Abstract).
Valls (US 20180318922 A1): teaches additively manufacturing parts comprising aluminum alloys, an overlapping composition, and further wherein greater than 0.15% and less than 4.1% of La is included (para. [0060]).
Eloi (US 20190194781 A1): teaches an alloy powder for additive manufacturing comprising 0.3-1.7% Mg, 0.4-5% Zr, 0.2-1% Si, 0-1% at least one of Mn, Cr and Ti, and a balance of Al and impurities, and further allowing up to 1wt% Fe (Abstract; para. [0074]).
Martin (previously cited and cited above, US 20190161836 A1): teaches wherein aluminum compositions which are used as a powder in direct metal deposition processes may alternatively be used as a wire, such that exposure to a heat source results in local melting followed by solidification, so as to form a solid layer (para. [0047]; para. [0058]; para. [0126]-[0127]; para. [0135]-[0136]). Thus, Martin teaches that feedstock in the form of a wire is an art equivalent form to feedstock as a powder.
Matsuoka (cited by Applicant in IDS filed March 14, 2025, EP 2799165 A1): teaches an aluminum alloy composition for a powder comprising 2-7% Fe, 0.6-1.5% Zr, 0.5-1% Ti, 0.5-2.2% Mg and a balance of Al and impurities (para. [0038]).
Araki (previously cited, US 20190368008 A1): teaches additions of up to 1.5wt% Fe to form Al-Fe-based intermetallics in order to refine crystal grains and improve tensile strength and/or to form a solid solution in aluminum to improve tensile strength (para. [0045]), and up to 2.0wt% total of elements including two of Zr and Ni, or alternatively two of Zr and Mn, in order to improve heat resistance and corrosion resistance (para. [0053]).
Wu (CN 108372292 A, English Machine Translation provided): teaches an additive manufacturing aluminum alloy comprising a matrix of 1-8wt% Mg and at least one of 0.05-3wt% Zr, 0.05-3wt% Sc, 0.05-2wt% Mn and 0.01-1wt% Ti, wherein 0.1-2.0wt% Mn is included in order to enhance performance and 0.05-3wt% Zr is included to improve the materials stability at high temperatures (para. [0011]; para. [0013]).
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
