Detailed Office Action
Notice of Pre-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 Amendments
The amendment filed on 08/29/2025 has been entered. Claim 9 has been added and find support in at least page 13 of the specification. Claims 2 – 3 have been canceled. Claim 9 is directed to the withdrawn invention (i.e. the product) and is withdrawn with claim 8. The examiner notes that the claim 9 depends on “claim 10” but there is no claim 10. It appears given the preamble phrase “the extruded material” that it is intended as claim 8. Claims 1 and 4 – 7 remain under examination.
Applicant’s amendments to claim 1 has overcome the previous rejections under 112(b).
Claim Rejections – U.S.C. §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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 and 5 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073, using espacenet translation) in view of Hong (US2011/0068299) and Kwon (“Fabrication of Functionally Graded Carbon-Nanotube Reinforced Aluminum Matrix Composite”), and in further view of Curran (US2016/0289858)
Regarding claims 1, Chang teaches a method for manufacturing a composite profile material [Title]. Chang teaches producing a composite billet with heterogenous composition via extrusion [0026], meeting the claimed limitation of extruding a billet. Chang teaches that mixtures of powder including mixtures of aluminum powder and/or carbon nanotubes [0016, 0017, 0019, 0050], meeting the claimed limitation of aluminum-carbon nanotube composite and forming a composite powder.
Chang teaches that the composite billet comprises a first billet of hollow cylindrical shape [0037 – 0038], a second billet that may be a cylindrical shaped, metal bulk or a powder [0039 – 0040], and a third billet comprised of powder disposed between the first and second billet [0051] (meeting the claimed limitation of preparing a multi-layered billet and extruding it).
Wherein the first billet of Chang reads on a “shell layer” as claimed, the second billet of Chang reads on a “core layer” as claimed, and the third billet of Chang reads on a “intermediate layer” as claimed. The second billet and third billet can be made of composite powder [0050 – 0052], which meets the claimed limitation. The first billet can be a metal listed in [0037] or an alloy thereof, including aluminum which meets the claimed limitation.
Chang describes that the first, second, and third billet can all have different compositions [0073 – 0074] but does not disclose the specific compositions. Chang does not explicitly teach forming a composite powder of aluminum powder and carbon nanotubes via ball milling. Chang suggests that post-processing treatments can be performed on the extruded billet, but does not teach subjecting the aluminum/aluminum alloy composite billet to anodizing following extrusion.
Hong teaches a method for fabricating nanocomposite powder which includes a carbon nanotube and a metal [Title]. Hong teaches that the composite powder is preferably carbon nanotubes and aluminum powder and that the composite powder is formed by ball milling the two together in order to homogenously mix them [0053, 0055], meeting the claimed limitation. Furthermore, Hong teaches that the amount of carbon nanotubes used in a metal matrix metal powder is 0.1 – 50 wt% [0052].
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date to have obvious to taken the method of Chang and used ball milling to produce a homogenous mixture of carbon nanotubes and aluminum powder as disclosed by Hong. Both are in the same field of endeavor and including mixing powders of aluminum and CNT and as such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the ball milling (as disclosed by Hong) in the method of Chang. Furthermore, an ordinarily skilled artisan would be motivated to do so because Hong discloses it can produce homogenous powder mixture.
Chang describes that the first, second, and third billet can all have different compositions [0073 – 0074] but does not disclose the specific compositions. Chang suggests that post-processing treatments can be performed on the extruded billet, but does not teach subjecting the aluminum/aluminum alloy composite billet to anodizing following extrusion.
Kwon is directed to functionally graded composite material [title] made using a composite powder which comprises carbon-nanotubes and aluminum powder through powder metallurgy route [Abstract; Experimental]. Kwon teaches that the creation of functionally graded material (FGMs) allows for the creation of a bulk material that has tailored properties due to controlled distribution of the desired characteristics within the material [page 1, left column, top]. Kwon shows that several different powders of varying carbon nanotube amounts were created and layered in order to make the material [Experimental] with the vol% of CNT range from 0 – 15 vol%, which overlaps with the second and third billet.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of creating a composite billet as taught by Chang, and used two composite powders of different compositions in the creation of the second and third billet range from 0 – 15 vol% of CNT, as disclosed by Kwon. As discussed by Kwon, the use of functionally graded material allows for the tailoring of properties of bulk material by controlling the distribution of the desired characteristics in each layer. Furthermore, both are in the same field of endeavor and Chang suggests that the first, second, and third billet can all have different compositions [0073 – 0074] and as such, an ordinarily skilled artisan would have a reasonable expectation of success in applying the vol% range of CNT to the method of Chang in view of Hong to achieve predictable results.
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Chang suggests that post-processing treatments can be performed on the extruded billet but does not teach subjecting the aluminum/aluminum alloy composite billet to anodizing following extrusion.
Curran teaches an anodizing process for anodizing aluminum/aluminum alloys [0004]. Curran teaches that anodizing can be applied to surfaces to achieve desired effects [0003] including cosmetic appeal and durability [0018]. The anodizing process disclosed by Curran produces protective coatings without visible defects [0018] while achieving a hardness of greater than 320 Hv [0037] and Curran discloses that the anodizing process helps reduce corrosion of the workpiece [0002, 0044]. Curran teaches that the anodizing liquid/electrolyte is a dilute sulfuric acid and organic acid, of which the organic acid can be oxalic acid [0038], meeting the claimed limitation.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have applied a step of anodizing with a mixed solution of sulfuric acid and oxalic acid, as taught by Curran, to the composite billet extrudate of Chang. Both Chang and Curran include aluminum/aluminum alloy workpieces and as such, an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results. Additionally, an ordinarily skilled artisan would have been motivated to apply the anodization of Curran to Chang in order to improve cosmetic appeal and durability, create an exterior hardness of greater than 320 HV, and/or improve corrosion resistance of the workpiece.
Regarding claim 5, Chang in view of Hong, Kwon, and Curran teaches the invention as applied in claim 1. Chang teaches that the billet is subjected to direct extrusion [0010], which meets the claimed limitation.
Regarding claim 6, Chang in view of Hong, Kwon, and Curran teaches the invention as applied in claim 1. Curran teaches the oxalic concentration of the mixed solution is 10 – 100 g/L (~0.52 – 5.2 L/L (vol%); based on 1.9 g/cm3 density of oxalic acid), which overlaps with the claimed range [0038]. The sulfuric acid concentration of less than 70 g/L (~3.8 L/L (vol%) or less; based on 1.83 g/L density of sulfuric acid) [0036]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claim 7, Chang in view of Hong, Kwon, and Curran teaches the invention as applied in claim 1. Curran discloses that current densities of 0.5 – 2 A/dm2 can be used [0038], which overlaps with the claimed range. Curran also discloses that the mixed solution also makes it possible to perform the anodizing at higher temperatures of 25°C (i.e. ~room temperature) to 40°C, which falls within the claimed range [0039]. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073, using espacenet translation) in view of Hong (US2011/0068299) and Kwon (“Fabrication of Functionally Graded Carbon-Nanotube Reinforced Aluminum Matrix Composite”), and in further view of Curran (US2016/0289858), as applied to claim 1, in further view of Kim (KR20160019711A, using espacenet translation)
Regarding claim 4, Chang in view of Hong, Kwon, and Curran teaches the invention as applied in claim 1. Hong suggests that discharge plasma sintering is used in the art for sintering composites of carbon nanotubes and metal powder [0008], but does not explicitly teach applying discharge plasma sintering.
Kim teaches a method for producing double nanoparticle reinforced aluminum gradient functional material [0039]. Kim further teaches that the carbon nanotubes and aluminum powder are added together and silicon carbide nanoparticles are added in order to increase the dispersion of the carbon nanotubes in the composite powder [0015]. Kim teaches that the composite powder can be produced by milling with balls (i.e. ball milling) to create a homogenously dispersed composite powder, similar to Hong [0040]. Kim also teaches that discharge plasma sintering can be used to sinter/densify the powder and that discharge plasma sintering can precisely sinter within a short time [0042 – 0043]. Kim further discloses that the discharge plasma sintering temperature is 400 – 600°C, which falls within the claimed temperature, at a pressure of 30 – 100 MPa, which falls within the claimed pressure [0043], for up to 600 minutes, which overlaps with the claimed time range [0053]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of pressing the powder in the billet as taught by Chang as-modified, and substituted it with the hot discharge plasma sintering as taught by Kim. As taught by Kim, the use of discharge plasma sintering would allow for precise sintering (densification) and reduce the time to do so. Given Chang as-modified and Kim are directed to workpieces formed from composite powders, an ordinarily skilled artisan would have a reasonable expectation of success in applying hot discharge plasma sintering (as taught by Kim) to the method of Chang as-modified. As well, a person of ordinary skill in the art would recognize that the reduction of pores in the final product would improve the quality of final product, as evidenced by Chang [0046] and therefore, would be motivated to apply the step.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejections of:
Claims 1 and 6 – 7 under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073) in view of Curran (US2016/0289858)
Claims 2 – 3 and 5 under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073) in view of Curran (US2016/0289858), as applied to claim 1, in further view of Hong (US2011/0068299)
Claim 4 under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073) in view of Curran (US2016/0289858) and Hong (US2011/0068299), as applied to claim 2, in further view of Kim (KR20160019711A)
However, upon further consideration, a new rejection is made of:
Claims 1 and 5 – 7 under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073) in view of Hong (US2011/0068299) and Kwon (“Fabrication of Functionally Graded Carbon-Nanotube Reinforced Aluminum Matrix Composite”), and in further view of Curran (US2016/0289858)
Claim 4 under 35 U.S.C. 103 as being unpatentable over Chang (KR101822073) in view of Hong (US2011/0068299) and Kwon (“Fabrication of Functionally Graded Carbon-Nanotube Reinforced Aluminum Matrix Composite”), and in further view of Curran (US2016/0289858), as applied to claim 2, in further view of Kim (KR20160019711A)
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738