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 .
DETAILED ACTION
In view of the Appeal brief filed on 02/19/2026, PROSECUTION IS HEREBY REOPENED. new grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
Status of Previous Rejections
All art rejections of claims 1-2, 4-11, 13-15 and 21-24 are maintained from previous office action of 05/19/2005.
Claim Interpretations
Instant claims 1, 21 and 23 required “for 3D printing of a metallic part” is preamble Statements reciting purpose or intended use according to MPEP 2111.02 II. Hence, because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Second, instant claims 1, 21 and 23 “where the alloy is in a powder form to be used in 3D printing of the metallic part having layers in the range of 2-200 microns” is interpreted as future intended usage regarding how the claimed alloy is further processed, not what the alloy is. Hence, no patentable weight is given. Examiner takes the positions if prior art teaches an alloy in a powder form comprising all elemental compositions as claimed having particle diameter 1-200 microns, it is fully capable of being used in 3D printing of the metallic part having layers in the range of 2-200 microns.
Third, it should be noted instant claims 1, 21 and 23 are all directed to an alloy, not 3D printing of a metallic part. How the alloy is used for 3D printing of a metallic part is intended usage of claimed alloy according to MPEP 2111.02 II.
Instant claims 9-11, “when printed, at least in part by powder bed fusion, forms …” are interpreted as conditional limitations due to term “when”. Hence, it is not given patentable distinction over prior art. Second, how the metallic part having claimed properties are future properties of when the alloy is printed which are also interpreted as conditional. Hence, no patentable weight is given with respect to metallic part properties.
Regarding claims 21 and 23 transitional phase of “consisting essentially of”, absent a clear indication in the Spec or Claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of”, applicant has the burden of showing that introduction of additional steps or components would materially change the characteristics of applicant’s invention (emphasis added). See MPEP 2111.03 III. CONSISTING ESSENTIALLY OF.
Regarding claims 1 and 21-24, “wherein if present” is optional limitation due to optional term “if”. Hence, all the alloy contents after such optional limitation are also interpreted as optional.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-2, 4-11, 13-15 and 21-24 are rejected under 35 U.S.C. 103(a) as being unpatentable over Schade (US 20060285989A1).
As for claims 1-2 and 4-5, Schade discloses a corrosion resistant powder having overlapping composition as illustrated in Table 2 below including amended Cu content. (Abstract and Claim 26 and Table 1)
Table 2
Element
Applicant
(weight %)
Schade et al.
(weight %)
Overlap
(weight %)
C
0.11-0.3
Broad: About 0.001- about 0.1
Broad: About 0.1 is close to 0.11
Cr
10-12
8-16
10-12
Mo
0.5-3
0.1-1
0.5-1
Ni
0-5
0.01-2
0.01-2
Cu
0.4-0.7
0.01-0.75
0.4-0.7
Nb
0-1
0
0
Si
0-1
0.01-1.5
0.01-1
N
0-0.25
0-0.1
0-0.1
C(Claim 2)
0.1-0.3
0.01-0.1
0.1
Mo(Claim 2)
0.5-2.5
0.1-1
0.5-1
Ni(Claim 2)
0-4
0.01-2
0.01-2
Cu(Claim 2)
0-4
0.01-0.75
0.01-0.75
Nb(Claim 2)
0-0.7
0
0
Si(Claim 2)
0-0.7
0.01-1.5
0.01-0.7
N(Claim 2)
0-0.25
0-0.1
0-0.1
Mo (Claim 4)
0.89-3
0.1-1
0.89-1
C (Claim 5)
0.1-0.25
0.01-0.1
0.1
With respect to claimed C range, because Schade’s about 0.1% encompasses both a value above 0.1% such as 0.11 as claimed and a value below 0.1% such as 0.09, Schade’s about 0.1% is sufficiently close to claimed 0.11%.
Hence, a prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018)
Hence, based on the teaching of Schade, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Schade in order to arrive at alloy of claimed invention.
Regarding claimed particle diameter, Schade expressly discloses preferred average particle size 25-150 microns. (paragraph [0051] lines 8-9) Hence, 25-150 microns is within claimed 1-200 microns.
As for claims 6-8, presence of Ni, Si, Cu and N more than 0% meets instant claimed wherein clause.
As for claims 9-11, due to conditional term “when printed”, instant claimed mechanical properties are not given patentable distinction over prior art according to claim interpretation above.
As for claims 13-15, Schade teaches metallurgical powder compositions having 38-48% of particles with a particle size of less than 45 microns. (paragraph [0051])
As for independent claims 21 and 23, Schade suggests overlapping compositions ranges as indicated in Table 3 below.
Table 3
Element
Applicant
(weight %)
Schade et al.
(weight %)
Overlap
(weight %)
C
0.1-0.3
Broad: About 0.001- about 0.1
Broad: About 0.1
Cr
10-19
8-16
10-16
Mo
0.5-3
0.1-1
0.5-1
Ni
0-5
0.01-2
0.01-2
Cu
0-5
0.01-0.75
0.01-0.75
Nb
0-1
0
0
Si
0-1
0.01-1.5
0.01-1
N
0-0.25
0-0.1
0-0.1
As for claim 22, Table 4 below illustrates overlapping ranges as claimed. It should be noted instant claimed “wherein if present” is optional limitation. Hence, the fact Nb is not present in Schade still reads on instant claimed optional limitations according to claim interpretation above.
Table 4
Element
Applicant
(weight %)
Schade et al.
(weight %)
Overlap
(weight %)
C
0.14-0.18
About 0.001- about 0.1
0.14 is close to about 0.1
Cr
10.5-12
8-16
10-16
Mo
1.2-1.8
About 0.1 to about 1
1.2 is close to about 1
Ni
1.5-2.5
0.01-2
1.5-2
Cu
0.4-0.7
0.01-0.75
0.4-0.7
Nb
0.02-0.05
0
0
Si
0-1
0.01-1.5
0.01-1
N
0.04-0.07
0-0.1
0.04-0.07
As for claim 24, Table 5 below illustrates overlapping ranges as claimed. It should be noted instant claimed “wherein if present” is optional limitation. Hence, the fact Nb is not present in Schade still reads on instant claimed optional limitations according to claim interpretation above.
Table 5
Element
Applicant
(weight %)
Schade et al.
(weight %)
Overlap
(weight %)
Cr
10.5-12
8-16
10-16
Ni
1.5-2.5
0.01-2
1.5-2
Cu
0.4-0.7
0.01-0.75
0.4-0.7
Nb (optional)
0.02-0.05
0
0
N
0.04-0.07
0-0.1
0.04-0.07
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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-2, 4-11 and 13-15 and 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 10,953,465. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions claim an alloy for 3D printing of a metallic part and the alloy comprising similar base alloy compositions including C, Cr, and Mo. Regarding amendment, the fact US’465 claim 3 claim each of said one or more lays has a thickness of 5-20 microns supports amended 1-200 microns.
Claims 1-2, 4-11 and 13-15 and 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 10,920,295. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions claim an alloy for 3D printing of a metallic part and the alloy comprising similar base alloy compositions including C, Cr, and Mo. Regarding amendment, the fact US’295 claim 18 claim each of said one or more lays has a thickness of 2-200 microns supports amended 1-200 microns.
Claims 1-2, 4-11 and 13-15 and 21-24 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 12,000,006. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions claim an alloy for 3D printing of a metallic part and the alloy comprising similar base alloy compositions including C, Cr, and Mo. Regarding amendment, the fact US’006 claim 1 claim each of said one or more lays has a thickness of 2-200 microns supports amended 1-200 microns.
Response to Argument
Applicant’s argument filed on 02/10/2026 brief is considered but is not persuasive.
Applicant first argues the typographical error in Schade’s Example DP5 does not enable any alloys with a carbon content even close to the claims and to establish prima facie obviousness, the prior art must have overlapping or similar ranges.
Argument is not persuasive for the following reasons:
First, according to MPEP 2121, a prior art reference is presumed to be operable and enabling if it expressly anticipates or makes obvious all elements of the claimed invention.
If a reference anticipates or renders obvious the claimed invention, the examiner is entitled to reject without separately investigating whether the reference is enabling. A reference is enabling if it describes the claimed invention in sufficient detail to allow a person of ordinary skill in the art to make or use it. Proof of efficacy is not required.
Second, because Schade’s about 0.1 encompasses both a value above 0.1% such as 0.11 as claimed and a value below 0.1% such as 0.09, Schade’s C range overlaps claimed C range. Hence, a prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”). That is, applicant’s argument that prior art must have overlapping or similar ranges to establish prima facie obviousness is merely an allegation without evidence proof.
Applicant then argues Schade specifically teaches away from a higher carbon content and states "carbon, sulfur, oxygen, and nitrogen additives are preferably kept as low as possible in order to improve compressibility and sinterability." (see Schade [0058].) Argument is not persuasive because applicant misinterpreted paragraph [0058] by ignoring the other statements in the same paragraph which clearly states “Corrosion resistant metallurgical powders may include any concentration of carbon, sulfur, oxygen and nitrogen. For example, some embodiments may require high concentrations of carbon, and nitrogen to promote the formation of high temperature martensite. corrosion resistant metallurgical powder compositions contain, independently, from about 0.001 to about 0.1 weight percent carbon”. That is, the fact Schade explicitly discloses a high concentration of carbon to promote the formation of high temperature martensite and about 0.1 weight percent carbon for corrosion resistance metallurgical powder composition makes applicants’ teaching away merely an allegation.
Applicant then argues where the art teaches away, the Examiner's reliance on "routine optimization" or "result-effective variables" fails. Argument is not commensurate in scope of current rejection which does not reply on "routine optimization" or "result-effective variables" to reject claimed invention.
Applicant further argues Schade discloses the need for Ti, Al, P and S to enhance mechanical properties of the final metal part, and hence Schade does not meet instant claims 21 and 23 required “consisting essentially of” which exclude the presence of Ti, Al and P.
Such argument is not persuasive for the following reasons:
First, "Consisting Essentially Of" Is Construed as Equivalent to "comprising" according to MPEP 2111.03.
Absent a clear indication in the Spec or Claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of”, applicant has the burden of showing that introduction of additional steps or components would materially change the characteristics of applicants’ invention(emphasis added), not prior art’s invention. In the instant case, nothing in the specification discloses the additional component such as Ti, Al and P would materially change the characteristics of applicants’ invention. Because applicant fails to meet such burden, examiner’s position that "Consisting Essentially Of" being construed as “comprising” is correct.
Second, Schade discloses lower limits of TI, Al, S and P is about 0.0%. (see Schade’s claims 6-7) That is, Schade does not require Ti, Al, S and P at all. Hence, applicant’s argument that Schade discloses the need for Ti, Al, P and S is merely allegation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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