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 .
Priority
Receipt is acknowledged of a certified copy of FR 2004725 filed May 13, 2020 as required by 37 CFR 1.55. Receipt is also acknowledged of a copy of WO 2021/156583, a copy of the WIPO publication of PCT/FR2021/050802 filed May 10, 2021.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed January 5, 2026.
Claims Filing Date
January 5, 2026
Amended
1, 3, 6-9
New
16-18
Withdrawn
2, 4, 5, 10-12
Under Examination
1, 3, 6-9, 13-18
The applicant argues support for the amendments in the as-filed specification at 6:21 to 7:2 (Remarks p. 14 para. 2).
Information Disclosure Statement
The information disclosure statement filed October 11, 2022 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because
U.S. Patent Application Publications Cite No. 7, 20131380166, is not a valid number.
It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Withdrawn Abstract Objection
The following objection is withdrawn due to abstract amendment:
Line 3 “comprising” being legal phraseology.
Withdrawn Claim Objection
The following objection is withdrawn due to claim amendment:
Claim 1 inconsistent formatting of numerical ranges including both “X-X” and “X to X”.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejections are withdrawn due to claim amendment:
Claim 1 line 8 “the surface fraction of the equiaxial grains”.
Claim 1 line 10 “the surface fraction of columnar grains”.
Claim 3 lines 1-3 “the part is produced at a temperature optionally from…”.
Claim 1 lines 8-42 reciting broad and narrow statements.
Claim 3 lines 1-3 reciting broad and narrow statements.
Claim 6 lines 3-16 reciting broad and narrow statements.
Claim 7 lines 3-4 reciting broad and narrow statements.
Claim 8 lines 1-3 reciting broad and narrow statements.
Claim 9 lines 2-5 reciting broad and narrow statements.
Response to Remarks filed January 5, 2026
Deng
Applicant’s arguments, see Remarks para. spanning pp. 15-16, filed January 5, 2026, with respect to Deng have been fully considered and are persuasive. The rejection of Deng has been withdrawn.
The applicant persuasively argues Deng discloses 0-0.5% Zr ([0008]), whereas amended claim 1 recites 0.60 to 1.60% Zr (Remarks para. spanning pp. 15-16).
Deng is relied upon as a secondary reference in a pending rejection of claim 7. The following applicant's arguments filed January 5, 2026 has been fully considered but it is not persuasive.
The applicant argues Deng is not qualified as prior art because it was filed on July 10, 2020 and published August 28, 2020, whereas the present application claims priority to FR2004725 filed May 13, 2020, which is earlier than the publication date of Deng (Remarks p. 15 para. 6).
Deng was published August 28, 2020. This date is between applicant’s foreign priority document, FR 2004725 filed May 13, 2020, and the filing date of the PCT, May 10, 2021. 37 C.F.R. 1.55 Claim for foreign priority states that (3) An English language translation of a non-English language foreign language application is not required except: (ii) When necessary to overcome the date of a reference relied upon by the examiner. An English language translation of applicant’s foreign priority document, FR 2004725, has not been provided. Therefore, the publication date of Deng has not been overcome.
Kulovits
Applicant’s arguments, see Remarks p. 16 para. 5, filed January 5, 2026, with respect to Kulovits have been fully considered and are persuasive. The rejection of Kulovits has been withdrawn.
The applicant argues amended claim 1 requires 1.00 to 6.00% Cu (Remarks p. 16 para. 3), but Kulovits states that Cu may be included only as an impurity in an amount of not greater than 0.05 wt% ([0014]) (Remarks p. 16 para. 5).
Double Patenting
The applicant argues a terminal disclaimer regarding the double patenting rejections will be considered once the claims are in condition for allowance (Remarks p. 17 para. 3 to p. 18 para. 2).
The nonstatutory double patenting rejection of claims 1, 3, 6-9, and 13-18 over claims 1-9 of copending Application No. 17/995,967 (App ‘967, reference application) is withdrawn due to abandonment of App ‘967 on October 7, 2025.
The remaining double patenting rejections are maintained.
New Grounds
In light of claim amendment and upon further consideration new grounds of rejection are made over Adachi ‘241 and over Fu.
Claim Interpretation
Claim 1 lines 2-7 “each layer”, “said layer”, “a solid layer”, and claim 7 line 2 “the layers” are interpreted as having antecedent basis to claim 1 line 2 “solid metallic layers”.
Claim 1 lines 34-37 are given the broadest reasonable interpretation of optional Fe being either a first alternative embodiment of 0.50 to 7.00 mass% or a second alternative embodiment of less than or equal to 1.00 mass%.
Claim Rejections - 35 USC § 103
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.
Claims 1, 6-9, and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over Adachi ‘241 (US 2020/0063241).
Regarding claim 1, Adachi ‘241 discloses a method for producing a part ([0001], [0045]), comprising production of successive solid metallic layers, which are superimposed on each other, each layer describing a pattern defined using a digital model, each layer being produced by depositing a metal, called filler metal, the filler metal being subjected to a supply of energy so as to become molten and to constitute, upon solidifying, said layer, wherein the filler metal takes the form of a powder, the exposure of which to an energy beam results in a melting followed by a solidification, so as to form a solid layer ([0084]-[0086], [0143]-[0151]),
wherein the part is produced at a temperature from 25 to 150°C (150 to 250°C) ([0059]-[0061], [0091]); and
wherein the filler metal is an aluminum alloy comprising at least the following alloy elements:
- Zr, in a mass fraction of 0.60 to 1.60% (0.2 to 5 wt%);
- Sc, in a mass fraction less than 0.10 %;
- Mg, in a mass fraction less than 2.00%;
- Zn, in a mass fraction less than 2.00%;
- Ni, in a mass fraction of 1.00 to 6.00% (0.5 to 3 wt%);
- Mn, in a mass fraction of 1.00 to 6.00% (0.3 to 10 wt%);
- Cu, in a mass fraction of 1.00 to 6.00% (0.5 to 5 wt%);
- optionally Cr in a mass fraction of 0.50 to 7.00%;
- optionally at least one element selected from: Hf, Ti, Er, W, Nb, Ta, Y, Yb, Nd, Ce, Co, Mo, Lu, Tm, V and/or mischmetal, in a mass fraction less than or equal to 5.00% each, and less than or equal to 15.00% in total;
- optionally at least one element selected from: Si, La, Sr, Ba, Sb, Bi, Ca, P, B, In and/or Sn, in a mass fraction less than or equal to 1.00% each, and less than or equal to 2.00% in total;
- optionally Fe, in a mass fraction of 0.50 to 7.00% according to a first alternative embodiment, or in a mass fraction less than or equal to 1.00%, according to a second alternative embodiment (0.3 wt% or less);
- optionally at least one element selected from: Ag in a mass fraction of 0.06 to 1.00% and/or Li in a mass fraction of 0.06 to 1.00%;
- optionally impurities in a mass fraction less than 0.05% each, and less than 0.15% in total;
- remainder being aluminum ([0046]-[0047], [0058]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitations of the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44%; and a grain structure such that the surface fraction of columnar grains being greater than or equal to 22% have been considered and determined to recite a structure that results from the claimed composition undergoing the claimed process. The prior art discloses an overlapping composition of an Al alloy (Adachi ‘241 [0046]-[0047], [0058]) manufactured by a substantially similar process of production of successive metallic layers (Adachi ‘241 [0084]-[0086], [0143]-[0151]), such that the resulting claimed structure of the part naturally flows from the disclosure of the prior art, including the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44%; and a grain structure such that the surface fraction of columnar grains being greater than or equal to 22%.
Regarding claim 6, Adachi ‘241 discloses the aluminum alloy comprises:
- Zr, in a mass fraction of 0.60 to 1.40% (0.2 to 5 wt%);
- Mn, in a mass fraction of 2.00 to 5.00% (0.3 to 10 wt%);
- Ni, in a mass fraction of 1.00 to 5.00% (0.5 to 3 wt%);
- optionally Fe, in a mass fraction less than or equal to 1.00% (0.3 wt% or less);
- optionally Si, in a mass fraction less than or equal to 1.00%;
- Cu, in a mass fraction of 1.00 to 5.00% (0.5 to 5 wt%) ([0046]-[0047], [0058]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 7, Adachi ‘241 discloses following the formation of the layers,
- a thermal treatment optionally at a temperature of at least 100°C and at most 500°C (T6 processing including aging at a temperature equivalent to 300°C) ([0137]-[0139], [0151]-[0152]); and/or,
- a hot isostatic compression.
Regarding claim 8, Adachi ‘241 discloses addition of La, Bi, Mg, Er, Yb, Y, Sc and/or Zn is less than 0.05% ([0046]-[0047], [0058]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 9, Adachi ‘241 discloses the aluminum alloy also comprises at least one of AlTiC and AlTiB2 element to refine grains, according to a quantity less than or equal to 50 kg/ton each, and less than or equal to 50 kg/ton in total (0 kg/ton) ([0046]-[0047], [0058]).
Regarding claim 13, Adachi ‘241 discloses the filler metal comprises a mass fraction of at least 80% of aluminum (Al alloy with up to 99.7 wt% Al) ([0046]-[0047], [0058]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 14, Adachi ‘241 discloses from 50 to 100% of the exposed powder becomes molten ([0085]-[0086], [0146], [0150]). Differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Regarding claim 15, Adachi ‘241 discloses the alternative thermal (heat) treatment (aging) ([0137]-[0139], [0151]-[0152]) of claim 7, where the hot isostatic compression is an alternative that is not required.
Regarding claim 16, Adachi ‘241 discloses wherein the aluminum alloy comprises:
- Zr, in a mass fraction of 0.60 to 1.40% (0.2 to 5 wt%);
- Ni, in a mass fraction of 2.50 to 3.50% (0.5 to 3 wt%);
- Mn, in a mass fraction of 2.00 to 5.00% (0.3 to 10 wt%); and
- Cu, in a mass fraction of 1.00 to 3.00% (0.5 to 5 wt%) ([0046]-[0047], [0058]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 17, Adachi ‘241 discloses the aluminum alloy comprises:
- Zr, in a mass fraction of 0.70 to 1.30% (0.2 to 5 wt%);
- Ni, in a mass fraction of 2.50 to 3.50% (0.5 to 3 wt%);
- Mn, in a mass fraction of 3.00 to 5.00% (0.3 to 10 wt%); and
- Cu, in a mass fraction of 1.00 to 3.00% (0.5 to 5 wt%) ([0046]-[0047], [0058]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 18, Adachi ‘241 discloses the aluminum alloy comprises:
- Zr, in a mass fraction of 0.80 to 1.20% (0.2 to 5 wt%);
- Ni, in a mass fraction of 2.50 to 3.50% (0.5 to 3 wt%);
- Mn, in a mass fraction of 3.00 to 5.00% (0.3 to 10 wt%); and
- Cu, in a mass fraction of 1.00 to 3.00% (0.5 to 5 wt%) ([0046]-[0047], [0058]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Adachi ‘241 (US 2020/0063241) as applied to claim 1 above, and further in view of Song (CN 107812941 machine translation).
Regarding claim 3, Adachi ‘241 is silent to the part being produced at a temperature from 50 to 130°C.
Song discloses a part is produced ([0002]) at a temperature from 50 to 130°C (100 to 200°C) ([0017]).
It would have been obvious to one of ordinary skill in the art in the process of Adachi ‘241 to produce the part at 100 to 200°C to minimize the temperature gradient between the part and the powder, preventing defects, such as pores and cracking, due to thermal mismatch caused by the small heat accumulation and high cooling rate of aluminum (Song [0020]), such that the resulting alloy is high-strength, crack-free, and high-performance (Song [0023]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Adachi ‘241 (US 2020/0063241) as applied to claim 1 above, and further in view of Kulovits (WO 2019/245784).
Regarding claim 7, Adachi ‘241 discloses pressing after additive manufacturing ([0151], [0153]), but is silent to hot isostatic compression.
Kulovits discloses producing an aluminum alloy part ([0001], [003]-[0021]) with a hot isostatic compression (additively manufactured aluminum alloy product may be deformed by compressing by hot isostatic pressing, hipping, to reduce porosity) ([0038], [0041]).
It would have been obvious to one of ordinary skill in the art to following the formation of layers in Adachi ‘241 to hot isostatic press to compress the part and reduce porosity (Kulovits [0038], [0041]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Adachi ‘241 (US 2020/0063241) in view of Kulovits (WO 2019/245784) as applied to claim 7 above, and further in view of McCloskey (WO 2016/209652).
Regarding claim 15, Adachi ‘241 in view of Kulovits is silent to the hot isostatic compression temperature, pressure, and time.
McCloskey discloses hot isostatic compression ([004], [0028]) is carried out at a temperature of 250°C to 550°C (bounded by approximately 520°C and approximately 538°C) ([0029]), at a pressure of 500 to 3000 bar (between approximately 90 MPa (900 bar) and approximately 200 MPa (2000 bar)), and for a duration of 0.5 to 10 hours (at least approximately 2 hours and less than or equal to approximately 4 hours) ([0028]).
It would have been obvious to one of ordinary skill in the art for the HIP process of Adachi ‘241 in view of Kulovits to be at about 520 to 538°C, about 900 to 2000 bar, and for about 2 to 4 hours so the resulting part has excellent integrity with a negligible number of voids and no voids and an as-processed density of greater than approximately 98% (McCloskey [0061]).
Claims 1, 8, 9, 13, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2021/056806 machine translation).
Regarding claim 1, Fu discloses a method for producing a part (aluminum alloy product) ([0001], [0006]), comprising production of successive solid metallic layers, which are superimposed on each other, each layer describing a pattern defined using a digital model, each layer being produced by depositing a metal, called filler metal, the filler metal being subjected to a supply of energy so as to become molten and to constitute, upon solidifying, said layer, wherein the filler metal takes the form of a powder, the exposure of which to an energy beam (laser) results in a melting followed by a solidification, so as to form a solid layer (3D printing using laser selective melting) ([0018]-[0021], [0058], Fig. 3),
wherein the part is produced at a temperature from 25 to 150°C ([0021], [0058]); and
wherein the filler metal (powder) is an aluminum alloy comprising at least the following alloy elements:
- Zr, in a mass fraction of 0.60 to 1.60% (0.4 to 1 wt%);
- Sc, in a mass fraction less than 0.10 %;
- Mg, in a mass fraction less than 2.00%;
- Zn, in a mass fraction less than 2.00%;
- Ni, in a mass fraction of 1.00 to 6.00% (3.0 to 5.0 wt%);
- Mn, in a mass fraction of 1.00 to 6.00% (0.5 to 1.0 wt%);
- Cu, in a mass fraction of 1.00 to 6.00% (2.0 to 3.0 wt%);
- optionally Cr in a mass fraction of 0.50 to 7.00% (0.40 to 1.0 wt%);
- optionally at least one element selected from: Hf, Ti, Er, W, Nb, Ta, Y, Yb, Nd, Ce, Co, Mo, Lu, Tm, V and/or mischmetal, in a mass fraction less than or equal to 5.00% each, and less than or equal to 15.00% in total;
- optionally at least one element selected from: Si, La, Sr, Ba, Sb, Bi, Ca, P, B, In and/or Sn, in a mass fraction less than or equal to 1.00% each, and less than or equal to 2.00% in total (Si 0.05 to 4.0 wt%);
- optionally Fe, in a mass fraction of 0.50 to 7.00% according to a first alternative embodiment, or in a mass fraction less than or equal to 1.00%, according to a second alternative embodiment (1.0 to 2.0 wt%);
- optionally at least one element selected from: Ag in a mass fraction of 0.06 to 1.00% and/or Li in a mass fraction of 0.06 to 1.00%;
- optionally impurities in a mass fraction less than 0.05% each, and less than 0.15% in total;
- remainder (rest) being aluminum ([0009], [0057]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitations of the part having a grain structure such that a surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44% and a grain structure such that a surface fraction of columnar grains being greater than or equal to 22% have been considered and determined to recite a structure that results from the claimed composition undergoing the claimed process. The prior art discloses an overlapping composition of an Al alloy (Fu [0009], [0057]) manufactured by a substantially similar process of production of successive metallic layers (Fu [0018]-[0021], [0058], Fig. 3), such that the resulting claimed structure of the part naturally flows from the disclosure of the prior art, including the part having a grain structure such that a surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44% and a grain structure such that the surface fraction of columnar grains being greater than or equal to 22%.
Regarding claim 8, Fu discloses addition of La, Bi, Mg, Er, Yb, Y, Sc and/or Zn is less than 0.05% ([0009], [0057]).
Regarding claim 9, Fu discloses the aluminum alloy also comprises at least one of AlTiC and AlTiB2 element to refine grains, according to a quantity less than or equal to 50 kg/ton each, and less than or 50 kg/ton in total (0 kg/ton each and total) ([0009], [0016], [0057], [0066]-[0068]).
Regarding claim 13, Fu discloses the filler metal comprises a mass fraction of at least 80% of aluminum (83 to 93 wt%) ([0009], [0057]).
Regarding claim 14, Fu discloses from 50 to 100% of the exposed powder becomes molten (selective laser melting, SLM, melts the metal powder) ([0021], [0058]). Differences in concentration will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2021/056806 machine translation) as applied to claim 1 above, and further in view of Song (CN 107812941 machine translation).
Regarding claim 3, Fu is silent to the part being produced at a temperature from 50 to 130°C.
Song discloses a part is produced ([0002]) at a temperature from 50 to 130°C (100 to 200°C) ([0017]).
It would have been obvious to one of ordinary skill in the art in the process of Fu to produce the part at 100 to 200°C to minimize the temperature gradient between the part and the powder, preventing defects, such as pores and cracking, due to thermal mismatch caused by the small heat accumulation and high cooling rate of aluminum (Song [0020]), such that the resulting alloy is high-strength, crack-free, and high-performance (Song [0023]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Claims 7 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2021/056806 machine translation) as applied to claim 1 above, and further in view of Deng (CN 111593234 machine translation).
Regarding claim 7, Fu discloses following the formation of the layers,
- a thermal (heat) treatment ([0066]); and/or,
- a hot isostatic compression.
Fu is silent to the thermal treatment temperature.
Deng discloses producing an aluminum alloy part ([0002], [0007]-[0011], [0045]) with a thermal treatment at a temperature of at least 100°C and at most 500°C (220 to 350°C) ([0038], [0041]).
It would have been obvious to one of ordinary skill in the art for the heat treatment of Fu to be at 220 to 350°C for aging (Deng [041]) to achieve desired mechanical properties, such as tensile strength, yield strength, and elongation (Deng [0046]).
Regarding claim 15, Fu in view of Deng discloses the alternative thermal (heat) treatment (aging) (Fu [0066]; Deng [0038], [0041]) of claim 7, where the hot isostatic compression is an alternative that is not required.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2021/056806 machine translation) as applied to claim 1 above, and further in view of Kulovits (WO 2019/245784).
Regarding claim 7, Fu is silent to a hot isostatic compression.
Kulovits discloses producing an aluminum alloy part ([0001], [003]-[0021]) with
- a thermal treatment optionally at a temperature of at least 100°C and at most 500°C, optionally from 300 to 450°C; and/or,
- a hot isostatic compression (additively manufactured aluminum alloy product may be deformed by compressing by hot isostatic pressing, hipping, to reduce porosity) ([0038], [0041]).
It would have been obvious to one of ordinary skill in the art to following the formation of layers in Fu to hot isostatic press to compress the part and reduce porosity (Kulovits [0038], [0041]).
Claim 15 is rejected under 35 U.S.C. 103 as being unpatentable over Fu (WO 2021/056806 machine translation) in view of Kulovits (WO 2019/245784) as applied to claim 7 above, and further in view of McCloskey (WO 2016/209652).
Regarding claim 15, Fu in view of Kulovits is silent to the hot isostatic compression temperature, pressure, and time.
McCloskey discloses hot isostatic compression ([004], [0028]) is carried out at a temperature of 250°C to 550°C (bounded by approximately 520°C and approximately 538°C) ([0029]), at a pressure of 500 to 3000 bar (between approximately 90 MPa (900 bar) and approximately 200 MPa (2000 bar)), and for a duration of 0.5 to 10 hours (at least approximately 2 hours and less than or equal to approximately 4 hours) ([0028]).
It would have been obvious to one of ordinary skill in the art for the HIP process of Fu in view of Kulovits to be at about 520 to 538°C, about 900 to 2000 bar, and for about 2 to 4 hours so the resulting part has excellent integrity with a negligible number of voids and no voids and an as-processed density of greater than approximately 98% (McCloskey [0061]).
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.
Claims 1, 3, 6-9, and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 6-7, 9-13, and 15-17 of copending Application No. 17/257,443 (App ‘443, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘443 discloses an overlapping method of manufacturing a part including a formation of successive solid metal layers (claims 1, 10) using an aluminum alloy composition that overlaps with that claimed (claims 1, 3, 4, 9, 12, 13, 17), at least one element for refining the grains (claims 6, 15), and hot isostatic compression following the formation of the layers (claims 7, 11, 16). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitations of the part having a grain structure such that a surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44%; and a grain structure such that a surface fraction of columnar grains being greater than or equal to 22% have been considered and determined to recite a structure that results from the claimed composition undergoing the claimed process. The prior art discloses an overlapping composition of an Al alloy (App ‘443 claims 1, 3, 4, 9, 12, 13, 17) manufactured by a substantially similar process of production of successive metallic layers (App ‘443 claims 1, 10), such that the resulting claimed structure of the part naturally flows from the disclosure of the prior art, including the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44%; and a grain structure such that the surface fraction of columnar grains being greater than or equal to 22%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 6-9, and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-12, and 14-19 of copending Application No. 17/424,671 (App ‘671, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘671 discloses an overlapping method of manufacturing a part (claim 9) including a formation of successive solid metal layers (claims 1, 7) using an aluminum alloy composition that overlaps with that claimed (claims 1, 3, 10, 14-19) and heat treatment following the formation of the layers (claims 5, 6). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitations of the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 um2 being less than 44%; and a grain structure such that the surface fraction of columnar grains being greater than or equal to 22% have been considered and determined to recite a structure that results from the claimed composition undergoing the claimed process. The prior art discloses an overlapping composition of an Al alloy (App ‘671 claims 1, 3, 10, 14-19) manufactured by a substantially similar process of production of successive metallic layers (App ‘671 claims 1, 7), such that the resulting claimed structure of the part naturally flows from the disclosure of the prior art, including the part having a grain structure such that a surface fraction of the equiaxial grains each having an area less than 2.16 um2 is less than 44%; and a grain structure such that the surface fraction of columnar grains is greater than or equal to 22%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3, 6-9, and 13-18 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-11 of copending Application No. 18/562,746 (App ‘746, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘746 discloses an overlapping method of manufacturing a part (claim 11) including a formation of successive solid metal layers (claims 1-3, 10) using an aluminum alloy composition that overlaps with that claimed (claims 6-9) and heat treatment following the formation of the layers (claims 1, 4-5). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
The limitations of the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 pm2 is less than 44%, optionally less than 40%, optionally less than 36%; and a grain structure such that the surface fraction of columnar grains is greater than or equal to 22%, optionally greater than or equal to 25%, optionally greater than or equal to 30% have been considered and determined to recite a structure that results from the claimed composition undergoing the claimed process. The prior art discloses an overlapping composition of an Al alloy (App ‘746 claims 6-9) manufactured by a substantially similar process of production of successive metallic layers (App ‘746 claims 1-3, 10), such that the resulting claimed structure of the part naturally flows from the disclosure of the prior art, including the part having a grain structure such that the surface fraction of the equiaxial grains each having an area less than 2.16 pm2 is less than 44%, optionally less than 40%, optionally less than 36%; and a grain structure such that the surface fraction of columnar grains is greater than or equal to 22%, optionally greater than or equal to 25%, optionally greater than or equal to 30%.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Related Art
Applicant’s following pending applications are acknowledged: 17/282,262, 17/424,285, and 17/430.589.
Applicant’s following allowed patent is acknowledged: US 12,152,291.
Buttard (Buttard et al. Influence of microstructure heterogeneity on the tensile response of an Aluminum alloy designed for laser powder bed fusion. Acta Materialia 269 (2024) 119786.)
Buttard discloses L-PBF (laser powder bed fusion, additive manufacturing) of an Al-4Mn-3Ni-2Cu-1At (in wt%) alloy with a preheating temperature of 100°C and a stress relief (SR) heat treatment then aging following manufacturing (2.1. Materials and heat treatments).
Ueda (JP 2020-037730 machine translation)
Ueda discloses an aluminum alloy containing one or more of Cu and Mn and one or more of Zr ([0001]) produced by rapid solidification then heat treatment ([0011]) to provide an aluminum alloy with high strength at room temperature and high temperatures ([0014]), where a molten alloy is prepared then rapidly solidified such as by powder additive manufacturing ([0065]). In Ueda the Cu content is more preferably 0.1 to 1 mass% ([0020]), the Mn content is more preferably 0.1 to 1 mass% ([0023]), the Ni content is more preferably 1 to 10 mass% ([0028]), and the Zr content is more preferably 0.1 to 5 mass% ([0029]).
Shimizu (JP S62-047449 machine translation)
Shimizu discloses a heat-resistant aluminum powder metallurgy alloy (p. 1 para. 1) comprising 1 to 10 wt% Zr, 5 to 30 wt% Ni, and 1 to 7 wt% of at least one of Fe, Mn, Cr, W, Co, Mo, and Ti (para. spanning pp. 1-2).
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.
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/STEPHANI HILL/Examiner, Art Unit 1735