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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 31, 2025 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed December 31, 2025, are acknowledged. Claims 1,15 and 17-18 are amended, and Claim 16 is cancelled. No new matter has been added.
Claims 1, 5-15 and 17-18 are currently pending and considered in this office 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 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, 5-15 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Karabin (previously cited, US 20190309402 A1) in view of Palanivel (previously cited, US 20210332461 A1).
Regarding Claim 1, Karabin discloses a method for manufacturing a part including a formation of successive metallic layers, the layers superimposed on one another, each layer being formed by the deposition of a filler metal, the filler metal being subjected to an energy input so as to melt and constitute, when solidifying, said layer (para. [0005]).
Karabin discloses wherein the filler metal is any suitable ternary, quaternary or higher order aluminum alloy which forms eutectic phases and intermetallic phases, including an Al-Fe-Ni alloy comprising at least iron and nickel as alloying elements (para. [0022]; para. [0038]).
Karabin, however, does not expressly disclose the claimed composition.
Palanivel teaches an aluminum alloy composition comprising:
4-6wt% Ni, which reads on the claimed range of 3.5-5% Ni;
0.2-0.8% Fe, which reads on the claimed range of 0.5-1% Fe;
optionally 0.01-0.1% Ti, which reads on other alloy elements <0.1% individually, and <0.5% all in all, wherein the other alloy elements are selected from Ti; and
a remainder of Al and incidental impurities, wherein the incidental impurities are less than or equal to 0.1wt% in total, further less than 0.03% in total, and wherein impurities are each 0.05% or less, which reads on the claim language wherein impurities are less than 0.05% individually and less than 0.15% all in all (Abstract; para. [0006]; para. [0042]; Table 1A, wherein Ti is absent (optional is inclusive of 0%); see also Tables 1B-1C, wherein Ti optionally included at 0.01-0.1% and wherein impurity of elements (Zr, Mg, Cu, Zn, Cr, V, Mn, Si, Ca, others) are each 0.05% or less, and other elements in total are less than or equal to 0.03%).
Additionally, the impurity ranges disclosed by Palanivel for Zr (<0.001), Si (<0.05), Cu (≤ 0.01) and Mg (<0.01) further read on the claimed ranges of optionally ≤0.5% Zr, optionally ≤0.5% Si, optionally ≤1% Cu, and optionally ≤0.5% Mg (see Table 1C of Palanivel). Regarding the composition of Palanivel, 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.
Palanivel teaches wherein this alloy composition comprises high electrical conductivity and high yield strength compared to conventional aluminum alloys, and wherein this alloy forms a eutectic and intermetallic phases, as desired by Karabin (Palanivel, para. [0030]; para. [0052]; para. [0076]; Karabin, para. [0022]).
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 the aluminum alloy composition taught by Palanivel for the invention disclosed by Karabin, in order to produce a three-dimensional object with high yield strength and high conductivity, and because the alloy of Palanivel would be suitable for the invention of Karabin because the alloy composition is both a Al-Fe-Ni alloy and forms a eutectic and intermetallic phases (see teachings above by Palanivel and Karabin).
Regarding Claim 5, Palanivel discloses wherein the weight fraction of each other alloy element is lower than 500ppm (see Table 1A, wherein Ti is optional and absent (0%); see Table 1C, 0.01-0.1% Ti is equivalent to 100-1000ppm; see also in Table 1C, wherein all other elements are 0.05% (500ppm) or less).
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 6, Claim 7 and Claim 8, Palanivel discloses wherein (Claim 6) ≤0.2% Si, (Claim 7) ≤0.2% Cu, and (Claim 8) ≤0.2% Mg (Table 1C, <0.05% Si, ≤0.01% Cu and <0.01% Mg).
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 9, Karabin discloses wherein the method further comprises, following the formation of the layers, an application of a heat treatment (para. [0017]; para. [0021]).
Regarding Claim 10, Karabin discloses wherein the heat treatment is performed at 500°F or higher, which reads on the claimed range of 200-500°C (para. [0018], 500°F equates to 260°C). 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 11, Karabin is silent towards solution heat treatment followed by quenching, and one of ordinary skill in the art would appreciate that the invention of Karabin is absent from these steps. Therefore, the invention of Karabin reads on the claimed limitation wherein the method does not include any steps of solution heat treatment followed by quenching.
Regarding Claim 12, Karabin discloses wherein the filler metal is in the form of a powder, whose exposure to a beam of light results in a local melting followed by solidification, so as to form a solid layer (para. [0005]).
Regarding Claim 13, Karabin teaches that the filler metal can be derived from a filler wire, whose exposure to a heat source results in a local melting followed by solidification, so as to form a solid layer (paragraphs [0005], and [0008]).
Regarding Claim 14, Karabin discloses a metallic part obtained by the method of Claim 1 (para. [0005]; Abstract).
Regarding Claim 15, Karabin discloses a powder, intended to be used as a filler material of an additive manufacturing process (para. [0005], and [0021]).
Karabin discloses wherein the filler composition, and therefore powder composition, comprises any suitable ternary, quaternary or higher order aluminum alloy which forms a eutectic and further intermetallic phases, including an Al-Fe-Ni alloy comprising at least iron and nickel as alloying elements (para. [0022]; para. [0038]).
Karabin, however, does not expressly disclose the claimed composition.
Palanivel teaches an aluminum alloy composition comprising:
4-6wt% Ni, which reads on the claimed range of 3.5-5% Ni;
0.2-0.8% Fe, which reads on the claimed range of 0.5-1% Fe;
optionally 0.01-0.1% Ti, which reads on other alloy elements <0.1% individually, and <0.5% all in all, wherein the other alloy elements are selected from Ti; and
a remainder of Al and incidental impurities, wherein the incidental impurities are less than or equal to 0.1wt% in total, further less than 0.03% in total, and wherein impurities are each 0.05% or less, which reads on the claim language wherein impurities are less than 0.05% individually and less than 0.15% all in all (Abstract; para. [0006]; para. [0042]; Table 1A, wherein Ti is absent (optional is inclusive of 0%); see also Tables 1B-1C, wherein Ti optionally included at 0.01-0.1% and wherein impurity of elements (Zr, Mg, Cu, Zn, Cr, V, Mn, Si, Ca, others) are each 0.05% or less, and other elements in total are less than or equal to 0.03%).
Additionally, the impurity ranges disclosed by Palanivel for Zr (<0.001), Si (<0.05), Cu (≤ 0.01) and Mg (<0.01) further read on the claimed ranges of optionally ≤0.5% Zr, optionally ≤0.5% Si, optionally ≤1% Cu, and optionally ≤0.5% Mg (see Table 1C of Palanivel). Regarding the composition of Palanivel, 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.
Palanivel teaches wherein this alloy composition comprises high electrical conductivity and high yield strength compared to conventional aluminum alloys, and wherein this alloy forms a eutectic and intermetallic phases, as desired by Karabin (Palanivel, para. [0030]; para. [0052]; para. [0076]; Karabin, para. [0022]).
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 the aluminum alloy composition taught by Palanivel for the invention disclosed by Karabin, in order to produce a three-dimensional object with high yield strength and high conductivity, and because the alloy of Palanivel would be suitable for the invention of Karabin because the alloy composition is both a Al-Fe-Ni alloy and forms a eutectic and intermetallic phases (see teachings above by Palanivel and Karabin).
Regarding Claim 17, Palanivel discloses wherein the composition comprises 4-6% Ni, which reads on the claimed range of 3.5-4% Ni, and 0.2-0.8% Fe, which reads on the claimed range of 0.5-1% Fe (para. [0042]; see also para. [0043], wherein Ni may be less, such as 3.5wt% and para. [0044], wherein Fe may be higher, and 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 18, Palanivel does not require additional elements other than Fe, Ni and Al (Ti is optional and inclusive of 0%), and further discloses ranges of impurity elements and other elements which are within the claimed ranges and/or are inclusive of 0% (see Claim 1 above; see Table 1A, Ti not required; see Table 1C for particular impurity ranges) which reads on the claimed language “consisting essentially of”. 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Copending Application No. 17/995,968
Regarding Claims 1, 5-12, 14-15 and 17-18, the claims are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim(s) 1, and 7 of copending Application No. 17/995,968 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the applicant’s copending application, claim 1 includes all of the method steps as claimed and further includes an overlapping compositional range.
Regarding Claim 1 and Claims 15 and 17-18, Applicant’s copending Claim 1 includes 0.5-7% Fe, 0.5-7% Ni, 0.3-2.5 Zr, and the remainder being aluminum and unavoidable impurities. The compositional ranges taught within the copending claims overlap the claimed ranges, establishing a prima facie case of obviousness for the compositional ranges. It would have been obvious to the skilled artisan at the time of invention to have selected a composition in the ranges as claimed because the copending application teaches the same utility over overlapping ranges.
Regarding Claims 5-8, Applicant’s copending composition meets the compositional requirements of these claims. See MPEP 2144.05(I).
Regarding Claims 9-11, Applicant’s copending claim 7 describes a heat treatment that meets these claims.
Regarding Claim 12, and further Claim 15, Applicant’s copending Claim 1 describes a filler metal that is a powder.
Regarding Claim 14, Applicant’s copending Claim 1 describes a metal part obtained by the method of copending Claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed December 31, 2025, with respect to Claims 1 and 15, and dependent claims thereof, rejected under 35 U.S.C. 103 over Karabin, and alternatively over Karabin in view of Boettinger, have been fully considered, and are persuasive in view of Applicant’s amendments to the claims further limiting the range of Fe to 0.5-1wt%. Further, Applicant’s arguments are persuasive and Examiner agrees that the specifically disclosed embodiments of Karabin, wherein Fe is 1-8% and Ni is 1-17%, also require the inequalities disclosed for those specific embodiments. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made over Karabin in view of Palanivel, as detailed above. Additionally, it is the position of the Examiner that while the specifically disclosed embodiments of Karabin (wherein Fe is 1-8%, Ni is 1-17%, and inequalities thereof) lie outside the claimed ranges, Karabin still broadly discloses the use of an Al-Ni-Fe alloy and one which comprises a eutectic and intermetallic phases (see rejection of Claim 1 and Claim 15 above).
Applicant’s arguments directed to the specific embodiments disclosed by Karabin are deemed moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Sanaty (US 20160258042 A1): teaches an aluminum alloy comprising 0.2-4% Fe, 0.1-0.8% Zr, 0.07-0.15% Sn, In or Sb, 0.02-0.2% Si, up to about 4% Ni and a balance of Al (para. [0010]).
Boettinger (previously cited, “On the Formation of Dispersoids during Rapid Solidification of an Al-Fe-Ni Alloy”): teaches an atomized powder comprising a composition of 3.7% Ni and 1.5% Fe, and a balance of Al (Pg. 1101, Col. 1, Para. 2). One of ordinary skill in the art would appreciate that the composition consists of Ni, Fe and Al, and comprises 0% additional elements, as additional elements are not recited. Boettinger further teaches forming the composition using 99.99% pure components, and therefore one of ordinary skill in the art would appreciate impurities to be less than 0.1% individually, and less than 0.5% in total (Pg. 1101, Col. 1, Para. 3).
Boettinger teaches this composition advantageously comprises a eutectic microstructure comprising rounded particles of the Al9(Fe,Ni)2 phase within the alpha-Al matrix (Pg. 1101, Col. 1, Para. 2; Pg. 1107, V. Conclusion), which is a feature desired by Karabin (see para. [0004]; para. [0020]; para. [0038], wherein Karabin desires a fine eutectic-structure with intermetallic phases), and wherein this composition presents high temperature properties (Pg. 1101, Col. 1, Para. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT. 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 Walker can be reached on (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735