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 .
Response to Amendment and Status of Claims
Applicant’s amendments to the claims, filed July 22, 2025, are acknowledged. Claims 1, 12 and 17 are amended.
Claims 1-20 are pending and currently considered in this office action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 and dependent claims 2-11, Claim 12 and dependent claims 13-16, and Claim 20 and dependent claims 18-20, are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding Claim 1, Claim 12 and Claim 17 the claims recite wherein “the de-alloying subsystem being controlled to create macropores configured as elongated paths”. This language cannot be found in the instant specification.
Applicant directs support to Fig. 6 and para. [0031] of the instant specification, which describes structure 28b’ as both an additively manufactured and de-alloyed structure, which comprises macropores which operate as paths (30) and nanopores (32). Para. [0031] does not expressly specify that the macropores (30) are a result of the dealloying as claimed however, because 28b’ has been subjected to two processes of pore formation – formation of pores through additive manufacturing and formation of pores through dealloying. It is unclear from para. [0031] alone which pore is formed by what process because para. [0031] states that structure 28b’ has three differing length scale porosities, but Fig. 6 is a simplified figure of 28b’ and only shows 2 levels of porosity. However, in comparison of para. [0032] and Fig. 7, it is clear that the macroscale pores, i.e. macropores, (34) are formed through the additive manufacturing process and appear as elongated paths (see also para. [0010], [0025] and [0036], wherein macropores are digitally controlled/printed), while the dealloying process results in the mesoscale pores (36) and nanoscale pores (38). It is unclear if the mesoscale pores would be considered elongated paths from Fig. 7 (see upper right image showing mesoscale cavities and nanoscale pores formed within the walls forming the mesoscale cavities).
One of ordinary skill in the art would therefore ascertain from the instant specification and figures, that additively manufactured macropores 34 (Fig. 7) are consistent with the macropores 30 in Fig. 6, and the de-alloyed nanopores 38 (Fig. 7) are consistent with the nanopores 32 (Fig. 6). Further, comparative prior art Fig. 1 depicts the same nanoporous structure as Fig. 6 which is obtained from the de-alloying process, the difference between Fig. 1 and Fig. 6 being the macroporosity (channels 30) formed by the additive manufacturing process of the instant invention.
Thus, while there is support for the formation of digitally controlled macropores configured as elongated paths ‘via the additive manufacturing system’ and for the formation of mesoscale pores and nanopores formed through the de-alloying subsystem, there does not appear to be support for formation of macropores configured as elongated paths ‘through the de-alloying subsystem’.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 and dependent Claims 2-11, Claim 12 and dependent claims 13-16, and Claim 17 and dependent claims 18-20, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding Claim 1, the claim recites “each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into each of the macropores from opposing sides of the macropores”. It is unclear how a pore (nanopore) exists within and projects into a pore (macropore), as a pore is already empty space. Examiner interprets the claim to mean nanopores formed within and projecting into walls forming the macropores.
Regarding Claim 12, the claim recites “each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting in random directions into the macropores from opposing sides of the macropores”. It is unclear how a pore (nanopore) exists within and projects into a pore (macropore), as a pore is already empty space. Examiner interprets the claim to mean nanopores formed within and projecting into walls forming the macropores.
Regarding Claim 17, the claim recites “with each said elongated, channel-like macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into the macropores from opposing sides of the macropores”. It is unclear how a pore (nanopore) exists within and projects into a pore (macropore), as a pore is already empty space. Examiner interprets the claim to mean nanopores formed within and projecting into walls forming the macropores.
Regarding Claim 17, the claim recites the limitation "said elongated, channel-like macropore" in line 18. There is insufficient antecedent basis for this limitation in the claim.
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 1-10, 12-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (previously cited, US 20190054536 A1) in view of Lessar (previously cited, US 20060129240 A1) and Qi (previously cited, “Hierarchical Nested-Network Nanostructure by Dealloying”).
Regarding Claim 1, Xu discloses a system for using a feedstock to form a three-dimensional, hierarchical, porous metal structure with deterministically controlled 3D multiscale porous architectures (Abstract; Fig. 4, Fig. 11A-11B; para. [0258], wherein Xu uses a feedstock of metallic ink).
Regarding the preamble recitation “for using a feedstock to form a hierarchical, porous, metal, three dimensional (3D) structure with deterministically controlled 3D multiscale porous architectures”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.
Xu discloses the system comprising:
an reservoir for holding the feedstock, the feedstock being formed as a rheologically tuned alloy ink (Fig. 1A, para. [0258] wherein syringe barrel contains the metallic ink; see para. [0177] wherein ink is rheologically tuned by solvent);
a printing stage for receiving the feedstock (Fig. 1A, substrate receives ink; para. [0258]);
a processor including a memory and configured to help carry out an additive manufacturing printing process to produce a three-dimensional (3D) structure using the feedstock in a layer-by-layer fashion, on the printing stage (Fig. 1A, wherein deposition is layer by layer on printing stage; para. [0158] wherein machine is uses computer aided design; a computer requires a processor, and utilizing a CAD model requires a processor with memory – see also para. [0260] and para. [0297], wherein software is used; one of ordinary skill in the art would appreciate that a computer which uses CAD software and a CAD model, which may be downloaded data, requires a processor with memory); and
a nozzle for applying the feedstock therethrough onto the printing stage (Fig. 1A, nozzle; para. [0258], micronozzle).
Regarding the recitation “the feedstock being formed as a rheologically turned alloy ink”, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Xu further discloses wherein the processor is configured to carry out an additive manufacturing printing process which produces the 3D structure with a digitally controlled macroporosity (see para. [0002]; para. [0158]; Fig. 4).
Additionally, the language “the additive manufacturing printing process producing the 3D structure with a digitally controlled macroporosity” is a functional limitation directed to a process performed by the claimed system/apparatus. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
In the instant case, Xu discloses the claimed structure, including a processer which carries out an additive manufacturing printing process (Abstract; para. [0158]), that is configured to and capable of producing a 3D structure (Abstract; Fig. 1) with a digitally controlled macroporosity (Fig. 4), as claimed.
Xu fails to disclose “a de-alloying subsystem for further processing the 3D structure through a de-alloying operation, the de-alloying subsystem being configured to form a de-alloyed 3D structure having two additional distinct, differing pore length scales, the de-alloying subsystem being controlled to create macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into each of the macropores from opposing sides of the macropores”.
Lessar teaches the formation of porous substrates using a system including additive manufacturing and selective dealloying, the parameters of the selective dealloying being tailored to control pore size and distribution (para. [0036]; [0045]-[0046]).
Qi further teaches a de-alloying system for processing a component through a de-alloying operation to form a de-alloyed structure having two distinct, differing pore length scales (Abstract; Fig. 4a and 4b; see also Fig. 1; see also Conclusions, “two quite distinct length scales”, “hierarchical porous structure…two levels of pore size”). Qi teaches wherein this system produces enhanced transport kinetics while maintaining large surface area, thereby producing a functional material such as actuators, varistors and catalysts (Abstract; Pg. 5948, Col. 1-Col. 2).
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 a dealloying system, as taught by Lessar and Qi, which is configured to form a de-alloyed structure having two distinct, differing pore length scales, as taught by Qi, for the invention disclosed by Xu. One would be motivated to include a dealloying system in order to control pore size and distribution (see teaching by Lessar), and further to enhance transport kinetics while maintaining large surface area, thereby production functional materials such as actuators, varistors and catalysts (see teaching by Qi above). Additionally, Xu teaches wherein porosity is desired for biomedical and aerospace applications (para. [0318]), and one of ordinary skill in the art would appreciate the benefits of enhanced transport kinetics and large surface area for biomedical implants.
One of ordinary skill in the art would appreciate that the dealloying subsystem of Lessar and Qi would be configured to, and capable of, producing the 3D structure of Xu (which comprises a macroporosity) to further comprise two additional, distinct and differing pore length scales, as claimed.
Regarding the recitation “the de-alloying subsystem being controlled to create macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into each of the macropores from opposing sides of the macropores”, this limitation is an intended use and functional recitation of the apparatus (see MPEP 2114).
In the instant case, the dealloying subsystem of Qi and Lesser would be capable of performing the claimed function because, like the instant invention, the subsystem of Qi is capable of tailoring the current density and electrical potential, and is usable with metallic materials and acidic solutions (see Fig. 2(a)-(c) of Qi; see para. [0030]-[0031] of instant invention). Additionally, Lesser teaches that pore sizes are controlled by the de-alloying process parameters (para. [0045]), Qi teaches wherein the de-alloying subsystem may be controlled to produce elongated channel-like pores having randomly shaped nanopores formed within the surfaces of the channel walls (Abstract; Pg. 5950, Col. 2, para. 1-2; Fig. 4a and 4b, showing channels and randomly shaped nanopores formed within), and Xu teaches the wherein the system is controllable to form such elongated and channel-like macropores using the additive process (see Fig. 7a-7b and 8a-8c).
Therefore, one of ordinary skill in the art would appreciate that features of macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into each of the macropores from opposing sides of the macropores, would be a result of processing parameters and an intended use of the apparatus. One of ordinary skill in the art would appreciate that the porosity in the resultant structure of the material worked upon by the apparatus is a both a feature of the material type, the processing and CAD parameters of the 3D printing of the structure, and the processing parameters of the de-alloying method (see processing parameters for example by Qi above).
Thus, the system of Xu, Lessar and Qi is capable of producing the claimed macropore configured as elongated paths, and the de-alloying subsystem is capable of controlling process parameters (i.e., electrochemical solutions used, materials (alloy systems) worked upon, potentials applied, etc.) to tailor pore sizes and distributions, including the creation of both elongated macropores and randomly shaped nanopores formed within the walls of the macropores (see teachings by Lessar and Qi). Therefore the system of Xu, Lessar and Qi would be capable of being operated and controlled to form the claimed structures (see also 112b rejection and interpretation above).
Regarding Claim 12, Xu discloses a system for forming a three-dimensional, hierarchical, porous metal structure with deterministically controlled 3D multiscale hierarchical pore architectures (Abstract; Fig. 4, Fig. 11A-11B; para. [0258]; para. [0158]).
Regarding the preamble recitation “for using a feedstock to form a hierarchical, porous, metal, three dimensional (3D) structure with deterministically controlled 3D multiscale porous architectures”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.
Xu discloses the system comprising:
a printing stage (Fig. 1A, ink is printed on substrate; para. [0258]);
an additive manufacturing system including a processor having a nozzle, and configured to print a three-dimensional (3D) structure in a layer-by-layer process by flowing a rheologically tuned ink having a binder through the nozzle onto the printing stage and to build up the 3D structure in a layer-by-layer process (para. [0258]; Fig. 1A, wherein ink is deposited layer by layer through the nozzle to build 3D structure; see para. [0177] wherein ink is rheologically tuned by solvent; Abstract, polymer binder); and
an annealing subsystem configured to anneal the 3D structure to remove the binder, and to form an alloyed 3D structure (para. [0258], binder removed in furnace and microparticles are sintered).
Xu discloses wherein the system is controllable and configured to produce channel-like macropores (see para. [0002]; para. [0158]; Fig. 4, depicting channel-like macropores).
Xu however fails to disclose a de-alloying subsystem for further processing the 3D structure through a de-alloying operation, the de-alloying subsystem being configured to form a de-alloyed 3D structure having two additional distinct, differing pore length scales, the de-alloying subsystem being controlled to create macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting in random directions into the macropores from opposing sides of the macropores.
Lessar teaches the formation of porous substrates using a system including additive manufacturing and selective dealloying, the parameters of the selective dealloying being tailored to control pore size and distribution (para. [0036]; [0045]-[0046]).
Qi further teaches a de-alloying system for processing a component through a de-alloying operation to form a de-alloyed structure having two distinct, differing pore length scales (Abstract; Fig. 4a and 4b; see also Fig. 1; see also Conclusions, “two quite distinct length scales”, “hierarchical porous structure…two levels of pore size”). Qi teaches wherein this system produces enhanced transport kinetics while maintaining large surface area, thereby producing a functional material such as an actuators, varistors and catalysts (Abstract; Pg. 5948, Col. 1-Col. 2).
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 a dealloying system, as taught by Lessar and Qi, which is configured to form a de-alloyed structure having two distinct, differing pore length scales, as taught by Qi, for the invention disclosed by Xu. One would be motivated to include a dealloying system in order to control pore size and distribution (see teaching by Lessar), and further to enhance transport kinetics while maintaining large surface area, thereby production functional materials such as actuators, varistors and catalysts (see teaching by Qi above). Additionally, Xu teaches wherein porosity is desired for biomedical and aerospace applications (para. [0318]), and one of ordinary skill in the art would appreciate the benefits of enhanced transport kinetics and large surface area for biomedical implants.
One of ordinary skill in the art would appreciate that the dealloying subsystem of Lessar and Qi would be configured to, and capable of, producing the 3D structure of Xu (which comprises a macroporosity) to further comprise two additional, distinct and differing pore length scales, as claimed.
Regarding the recitation “the de-alloying subsystem being controlled to create macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting in random directions into the macropores from opposing sides of the macropores”, this limitation is an intended use and functional recitation of the apparatus (see MPEP 2114).
In the instant case, the dealloying subsystem of Qi and Lesser would be capable of performing the claimed function because, like the instant invention, the subsystem of Qi is capable of tailoring the current density and electrical potential, and is usable with metallic materials and acidic solutions (see Fig. 2(a)-(c) of Qi; see para. [0030]-[0031] of instant invention). Additionally, Lesser teaches that pore sizes are controlled by the de-alloying process parameters (para. [0045]), Qi teaches wherein the de-alloying subsystem may be controlled to produce elongated channel-like pores having randomly shaped nanopores formed within the surfaces of the channel walls (Abstract; Pg. 5950, Col. 2, para. 1-2; Fig. 4a and 4b, showing channels and randomly shaped nanopores formed within), and Xu teaches the wherein the system is controllable to form such elongated and channel-like macropores using the additive process (see Fig. 7a-7b and 8a-8c).
Therefore, one of ordinary skill in the art would appreciate that features of macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting in random directions into the macropores from opposing sides of the macropores, would be a result of processing parameters and an intended use of the apparatus. One of ordinary skill in the art would appreciate that the porosity in the resultant structure of the material worked upon by the apparatus is a both a feature of the material type, the processing and CAD parameters of the 3D printing of the structure, and the processing parameters of the de-alloying method (see processing parameters for example by Qi above).
Thus, the system of Xu, Lessar and Qi is capable of producing the claimed macropore configured as elongated paths, and the de-alloying subsystem is capable of controlling process parameters (i.e., electrochemical solutions used, materials (alloy systems) worked upon, potentials applied, etc.) to tailor pore sizes and distributions, including the creation of both elongated macropores and randomly shaped nanopores formed within the walls of the macropores (see teachings by Lessar and Qi). Therefore the system of Xu, Lessar and Qi would be capable of being operated and controlled to form the claimed structures (see also 112b rejection and interpretation above).
Regarding Claim 17, Xu discloses a system for forming a three dimensional, hierarchical, porous metal structure with deterministically controlled 3D multiscale hierarchical pore architectures (Abstract; Fig. 4, Fig. 11A-11B; para. [0258]; para. [0158]) .
Regarding the preamble recitation “for using a feedstock to form a hierarchical, porous, metal, three dimensional (3D) structure with deterministically controlled 3D multiscale porous architectures”, if the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. See MPEP 2111.02.
Xu discloses the system comprising:
a printing stage (Fig. 1A, ink is printed on substrate; para. [0258]);
a rheologically tuned, flowable ink including a metal powder and a binder (para. [0160]-[0162]; para. [0169]; para. [0172]; Fig. 1A, ink is flowable; see para. [0258] comprising metal microparticles, PLA and DCM; PLA is a binder, steel microparticles read on metal powder; see para. [0177] wherein ink is rheologically tuned by solvent);
an additive manufacturing system including a processor for controlling a printing process, and also having a nozzle, and configured to print a three dimensional (3D) structure in a layer-by-layer process by flowing the rheologically tuned ink through the nozzle onto the printing stage, to build up the 3D structure in a layer-by-layer printing operation (Fig. 1A, wherein deposition of flowable ink from nozzle is layer by layer on printing stage – see also para. [0258]; para. [0158] wherein machine is uses computer aided design; a computer requires a processor, and utilizing a CAD model requires a processor – see also para. [0260] and para. [0297], wherein software is used; one of ordinary skill in the art would appreciate that a computer which uses CAD software and a CAD model, which may be downloaded data, requires a processor); and
an annealing subsystem configured to anneal the 3D structure by heating the 3D structure for a predetermined time period to remove the binder, to form an alloyed 3D structure (para. [0258], binder removed in furnace and microparticles are sintered; para. [0083] wherein sintering may be 30minutes to 12 hours).
Xu further discloses wherein system is configured to print the 3D structure and one comprising a deterministically controlled porosity and having an engineered, digitally controlled macropore morphology, including channel-like macropores (see para. [0002]; para. [0158]; Fig. 4, depicting channel-like macropores).
Xu however fails to disclose a de-alloying subsystem for further processing the 3D structure through a de-alloying operation, the de-alloying subsystem being configured to form a de-alloyed 3D structure having two additional distinct, differing pore length scales, the de-alloying subsystem being controlled to macropores configured as elongated paths with each said elongated, channel-like macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into the macropores from opposing sides of the macropores.
Lessar teaches the formation of porous substrates using a system including additive manufacturing and selective dealloying, the parameters of the selective dealloying being tailored to control pore size and distribution (para. [0036]; [0045]-[0046]).
Qi further teaches a de-alloying system for processing a component through a de-alloying operation to form a de-alloyed structure having two distinct, differing pore length scales (Abstract; Fig. 4a and 4b; see also Fig. 1; see also Conclusions, “two quite distinct length scales”, “hierarchical porous structure…two levels of pore size”). Qi teaches wherein this system produces enhanced transport kinetics while maintaining large surface area, thereby producing a functional material such as an actuators, varistors and catalysts (Abstract; Pg. 5948, Col. 1-Col. 2).
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 a dealloying system, as taught by Lessar and Qi, which is configured to form a de-alloyed structure having two distinct, differing pore length scales, as taught by Qi, for the invention disclosed by Xu. One would be motivated to include a dealloying system in order to control pore size and distribution (see teaching by Lessar), and further to enhance transport kinetics while maintaining large surface area, thereby production functional materials such as actuators, varistors and catalysts (see teaching by Qi above). Additionally, Xu teaches wherein porosity is desired for biomedical and aerospace applications (para. [0318]), and one of ordinary skill in the art would appreciate the benefits of enhanced transport kinetics and large surface area for biomedical implants.
One of ordinary skill in the art would appreciate that the dealloying subsystem of Lessar and Qi would be configured to, and capable of, producing the 3D structure of Xu (which comprises a macroporosity) to further comprise two additional, distinct and differing pore length scales, as claimed.
Regarding the recitation “the de-alloying subsystem being controlled to create macropores configured as elongated paths, with each said elongated, channel-like macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into the macropores from opposing sides of the macropores” and “wherein the de-alloying further configures the alloyed 3D structure with a total porosity of 95%”, these limitations are intended use and functional recitations of the apparatus.
While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim. See MPEP 2114.
In the instant case, the dealloying subsystem of Qi and Lesser would be capable of performing the claimed function because, like the instant invention, the subsystem of Qi is capable of tailoring the current density and electrical potential, and is usable with metallic materials and acidic solutions (see Fig. 2(a)-(c) of Qi; see para. [0030]-[0031] of instant invention). Additionally, Lesser teaches that pore sizes and distributions (this would include amount of porosity) are controlled by the de-alloying process parameters (para. [0045]), Qi teaches wherein the de-alloying subsystem may be controlled to produce elongated channel-like pores having randomly shaped nanopores formed within the surfaces of the channel walls (Abstract; Pg. 5950, Col. 2, para. 1-2; Fig. 4a and 4b, showing channels and randomly shaped nanopores formed within), and Xu teaches the wherein the system is controllable to form such elongated and channel-like macropores using the additive process (see Fig. 7a-7b and 8a-8c).
Therefore, one of ordinary skill in the art would appreciate that features of macropores configured as elongated paths, with each said macropore having a plurality of randomly shaped nanopores formed therewithin and projecting into each of the macropores from opposing sides of the macropores, and the amount of porosity including a resultant 95% porosity, would be a result of processing parameters and an intended use of the apparatus. One of ordinary skill in the art would appreciate that the porosity in the resultant structure of the material worked upon by the apparatus is a both a feature of the material type, the processing and CAD parameters of the 3D printing of the structure, and the processing parameters of the de-alloying method (see processing parameters for example by Qi above).
Thus, the system of Xu, Lessar and Qi is capable of producing the claimed macropore configured as elongated paths, and the de-alloying subsystem is capable of controlling process parameters (i.e., electrochemical solutions used, materials (alloy systems) worked upon, potentials applied, etc.) to tailor pore sizes and distributions (and amount of porosity), including the claimed 95% porosity and the creation of both elongated macropores and randomly shaped nanopores formed within the walls of the macropores (see teachings by Lessar and Qi). Therefore, the system of Xu, Lessar and Qi would be capable of being operated and controlled to form the claimed structures (see also 112b rejection and interpretation above).
Regarding Claim 2, Xu discloses wherein the feedstock comprises an alloy powder (para. [0169]). Further, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Regarding Claim 3, Xu discloses wherein the rheologically tuned alloy ink comprises an ink formed from a plurality of different metal powders and a binder (para. [0168] and para. [0161]-[0162]). Further, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Regarding Claim 4, Xu discloses wherein the additive manufacturing printing process comprises a direct ink writing (DIW) process (Fig. 1A; para. [0320]; para. [0352]; further, the ink extrusion 3D printing process of Xu reads on a direct ink writing process).
Regarding Claim 5, Xu discloses wherein the additive manufacturing printing process comprises at least one of: a direct ink writing (DIW) process; a selective laser sintering process; a selective laser melting process; a binder powder bed printing process; a fused deposition modeling process; a projection microstereolithography process; an electrophoretic deposition process; a screen printing process; and an inkjet printing process (Fig. 1A; para. [0320]; para. [0352]; additionally, the ink extrusion 3D printing process of Xu reads on a direct ink writing process).
Regarding Claim 6, Xu discloses wherein the rheologically tuned alloy ink comprises an ink formed from silver powder and gold powder (para. [0168]-[0169]; see also Qi, Fig. 1). Further, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Regarding Claim 7, Xu discloses wherein the rheologically tuned alloy ink comprises also comprises an organic binder (para. [0160]-[0162]; para. [0172]; see para. [0258] ink comprising metal microparticles, PLA and DCM; PLA is a binder). Further, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Regarding Claim 8, Xu discloses further comprising an annealing subsystem for performing an annealing operation on the 3D structure prior to performing the de- alloying operation (para. [0258], binder removed in furnace and microparticles are sintered). One of ordinary skill in the art would appreciate the de-alloying to be applied to a formed (sintered) component in order to subject nanoporosity to the correct geometry, and to main structural integrity of the component (see also Qi, wherein de-alloying is applied to bulk samples – Pg. 5948, Col.1; see methods, Pg. 5953).
.
Regarding Claim 9, Claim 14 and Claim 19, Xu discloses wherein the annealing subsystem is configured to heat the 3D structure to 0.99%-0.7% of a melting temperature of an alloy being used to form the 3D structure (para. [0224; para. [0258]; for example, one would appreciate high alloy steel to have a melting temperature of about 1400C, and 200C below, or slightly below, 1400C would be a temperature within 0.7-0.99% (0.85%) of 1400C).
Regarding Claim 10 and Claim 15, Xu discloses wherein the annealing subsystem is configured to maintain the 3D structure heated for between 1 hour to 24 hours (para. [0083] wherein sintering may be up to 12 hours).
Regarding Claim 13, Xu discloses wherein the rheologically tuned ink comprises an ink from a plurality of metal powders and a binder (para. [0168] and para. [0161]-[0162]). Further, this limitation is directed to a material worked upon by the apparatus. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” See MPEP 2115.
Regarding Claim 18, Xu discloses wherein the rheologically tuned alloy ink comprises an ink formed from a plurality of different metal powders and a binder (para. [0168] and para. [0161]-[0162]).
Claims 11, 16 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Xu (previously cited, US 20190054536 A1) in view of Lessar (previously cited, US 20060129240 A1) and Qi (previously cited, “Hierarchical Nested-Network Nanostructure by Dealloying”), as applied to Claims 1, 12 and 17 above, respectively, in further view of Martin (previously cited, “Nanoporous gold for biomedical applications: structure, properties and applications”).
Regarding Claim 11, Claim 16 and Claim 20, Qi does not expressly disclose ‘submerging’, and therefore does not expressly disclose wherein the de-alloying subsystem enables submerging the 3D structure (Claim 16) in a solution or (Claim 11 and Claim 20) in an aqueous solution for a predetermined time. However, Qi discloses wherein samples are placed in HClO4 solution, and it would be obvious to submerge the samples in the solution in order to treat the entire sample (Pg. 5954, Methods, samples are placed in HCLO4 solution for a positive amount of time; see Fig. 4). One of ordinary skill in the art would appreciate concentrated acid, such as HClO4 solution, to be an aqueous solution.
Additionally, Martin teaches wherein dealloying involves immersing samples in concentrated acid for a specified period of time, which reads on the claimed submerging (pg. 156, sect. 7.5, dealloying; immersing reads on submerging).
Therefore, it would be obvious to one of ordinary skill in the art that the de-alloying subsystem enable submerging/immersing of the 3D structure in an aqueous solution for a predetermined time, as claimed, and as taught by Martin, for the invention of Xu and Qi, in order to dealloy the entire surface of the component.
Response to Arguments
Applicant’s arguments, filed July 22, 2025, with respect to Claims 1, 12 and 17, and dependent claims thereof, rejected under 35 U.S.C. 103 over Xu in view of Lessar and Qi, have been fully considered but are respectfully not found persuasive.
Regarding Xu:
Applicant argues that Xu is silent to a de-alloying subsystem or operation, and that there is no teaching by Xu to suggest desirability for comprising one.
This argument is not found persuasive.
Xu is not relied upon to disclose the de-alloying subsystem, and this feature is taught by Lessar and Qi. Further, Xu discloses a desire to make a porous structure, including for the manufacture of well-known porous structures such as artificial bones and microelectron-mechanical systems including batteries for energy storage (para. [0003]-[0004]; para. [0155]; para. [0212], controlled porous patterns; para. [0245], conductive porous microstructures; para. [0316] porous femur with a designed porosity, pores and tunnels…designed in the CAD model; para. [0318], biomedical and aerospace fields since geometrically complex shapes are porous configurations are often preferred; artificial bone implants with fine ad uniform pores, as well as complex 3D porous aerospace structures). Thus, Xu expresses a desire for manufactured and designed porosity, and Lessar and Qi teach a solution using a dealloying subsystem to further employ different porosities and control of said porosity in combination with an additive manufacturing system, with the added benefit that a system could further create products used for actuators, varistors, catalysts, and those with enhanced transport kinetics and large surface area. Applicant does not appear to find fault with the motivation presented in the rejection to combine.
Regarding Qi and Lessar:
Applicant argues that Qi does not form three distinct levels of porosity, does not disclose the formation of a macropore configured as an elongated path, and does not disclose nanopores projecting inwardly from opposite sides.
Applicant argues the nanopores of Qi are randomly formed.
Applicant argues that Lessar merely teaches various parameters may be selected for de-alloying to control pore size and distribution, but Lessar does not suggest that the dealloying system is capable of forming the macropore and nanopore configuration.
These arguments are not found persuasive.
The claims are directed to an apparatus, not a method. The de-alloying subsystem of Qi carries the same structural capabilities as the subsystem of the instant invention (e.g., structurally capable of dealloying metallic materials in high molarity acidic solutions – see rejection above). Applicant has not pointedly argued what structural differences there are between the claimed invention and the de-alloying subsystem of Lessar and Qi, other than alleged differences which appear to be features due to processing parameters and material worked upon. Additionally, the Examiner disagrees that the instant invention has support for and discloses a de-alloying system which produces macroporosity (see 112a rejection above) and is structurally different than the system of Qi. It is the Examiner’s position that the macroporosity referred to in the claims and the instant disclosure is digitally controlled and created by additive manufacturing process. Moreover, one of ordinary skill in the art would appreciate that the de-alloying system of Lessar and Qi would be capable of being operated to produce the macroporosity through modification of process parameters and the chosen material.
Regarding three distinct porosities, this is a feature of the material worked upon and the process parameters using the additive manufacturing portion of the apparatus and the de-alloying portion of the apparatus. Xu discloses the additive manufacturing apparatus, and demonstrates the ability to tailor pore size, and would be capable of manufacturing macroscopic pores (see also 112b above regarding which apparatus portion produces the macropores). Lessar and Qi teach a dealloying subsystem which would be further capable of performing the functions and processes necessary to achieve additional levels of porosity including nanoporosity (as demonstrated by Qi). Again, the porosity features are directed to the manner of using the apparatus (both additive manufacturing portion and dealloying portion) and is also a feature of the material worked upon. The structural limitations are obvious over Xu, Lessar and Qi, and the limitations have been met.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Liu (CN 107398554 A, English Machine translation provided): teaches a system comprising additive manufacturing and a chemical de-alloying system to create a Cu micro-nano structure (Abstract).
Park (US 20180057912 A1): teaches a metallic melt dealloying system to produce a porous structure (Abstract; Fig. 9).
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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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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