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 03/12/2026 has been entered. Claims 15 and 2 – 14 remain pending. Claims 2 and 8 – 14 remain withdrawn. Claims 15 and 3 – 7 remain pending and under examination.
Response to Declaration under 1.132
The declaration under 37 CFR 1.132 filed 03/12/26 is sufficient to overcome the previous rejection under U.S.C. §103.
The examiner finds persuasive the declaration of how the volume content ratio of metal is calculated and that, as now claimed, the prior art of Zhu in view of Tadashi does not meet claim 15 as limited. As such, the rejection is withdrawn.
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 15 and 3 – 7 are rejected under 35 U.S.C. 103 as being unpatentable over Sercombe (US2004/0060683) and in view of Tadashi (JPS6070140, using espacenet translation)
Regarding claims 15 and 6, Sercombe teaches a method of making infiltrated preforms [Title]. Sercombe teaches forming a composite preform [0035] including a binder [0032].
Sercombe teaches that the composite preform has a theoretical density of about 50 – 70% [0035], which overlaps with the claimed range.
Sercombe teaches forming a powder mixture [Fig 1] which includes 3 individual powders of different sizes [Fig 2]. The powder can include three or more different metal powders [0028, 0030, and 0037], meeting the claimed limitation of two or more metal powder materials with different sizes. The sizes are between 5 – 150 microns [0028, 0030, and 0037], which falls within the claimed range.
Sercombe discloses molding the mixture and heating in a range of 300 – 500°C [0035, 0036], which meets the claimed limitation of molding the powder mixture and binder followed by calcining in a temperature range of 300 – 800°C. Sercombe teaches that the heating treatment is to remove the binder [0036].
Sercombe does not expressly teach including the binder as limited in the claim and that during heating an organic is removed while an inorganic remains. Sercombe does not teach using pressure to infiltrate to molten metal.
Tadashi is directed to a method of producing an alloy via forming a mold body from a powder(s) and binder material followed by pouring molten metal onto the molded body to penetrate the molded body [2nd paragraph]. Tadashi teaches that the binder material is important because it allows for the individual powders to being bound together with no weak area such that the molten metal does not preferentially penetrate the body [2nd paragraph]. Tadashi teaches that the binder does not affect the material properties of the formed alloy [2nd paragraph] and that ethyl silicate can be the binder (meeting the claimed limitation of silicon alkoxide which is liquid of claim 15 and claim 6) [2nd paragraph]. Wherein given that ethyl silicate decomposes into ethanol and silica and that ethyl silicate is used as the binder in [0067 – 0068] of the instant invention, the ethyl silicate is interpreted as meeting the claimed limitation of heating results in decomposing the organic substance and the inorganic substance functions as binder.
Furthermore, Tadashi teaches using pressurized molten metal to infiltrate the molten material [1st paragraph]. Tadashi discloses the pressure for the infiltration is approximately 500 – 1000 kg/cm2 (~49 – 98 MPa) [1st paragraph], which falls within the claimed range. Tadashi shows examples using the pressure [Page 2 of translation)
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sercombe and used ethyl silicate binder material as taught by Tadashi. Sercombe and Tadashi are in the same field of endeavor of infiltration/impregnation of powder preforms with molten metal. Furthermore, Tadashi teaches that the binder material does not affect the material properties of the formed product and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings and achieving predictable results. Lastly, an ordinarily skilled artisan would have been motivated to combine the teachings and include ethyl silicate binder material because Tadashi states that the inclusion of a binder allows for the powder material to bond with no weak areas and thereby prevent preferentially infiltration of the molten metal.
Moreover, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Sercombe and used pressure for infiltration in a range of 500 – 100 kg/cm2, as disclosed by Tadashi, to achieve predictable results. Sercombe and Tadashi are in the same field of endeavor of infiltration/impregnation of powder preforms with molten metal. Furthermore, Tadashi teaches that pressure infiltration of molten aluminum is known and Sercombe recognizes squeeze casting as an infiltration method to improve dimensional accuracy [0013]. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings and achieving predictable results.
With regards to the overlapping ranges taught, “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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Regarding claim 3, Sercombe in view to Tadashi teaches the invention as applied in claim 15. Wherein Sercombe teaches the titanium powder can be included [0037], meeting the claimed limitation.
Regarding claim 4, Sercombe in view to Tadashi teaches the invention as applied in claim 15. Sercombe teaches that the composite preform has a theoretical density of about 50 – 70% [0035], which overlaps with the claimed range.
“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)”. (MPEP 2144.05 III A).
Regarding claim 5, Sercombe in view to Tadashi teaches the invention as applied in claim 15. Sercombe teaches that one metal powder size is 5 – 150 µm, which overlaps with Metal Powder A [0030], and the particle size of the aluminum powder is 5 – 150 µm, which overlaps with Metal powder B [0028].
Sercombe teaches that one metal powder is 0.4 – 4 mass% [0030], which overlaps with the claimed range and the aluminum powder is 80 – 95 vol% [0027]. While the aluminum powder is disclosed in volume%, given the high volume% (i.e. up to 95 vol%), this would overlap with the claimed mass% range.
“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)”. (MPEP 2144.05 III A).
Regarding claim 7, Sercombe in view to Tadashi teaches the invention as applied in claim 15.
Sercombe in view to Tadashi discloses using pressure for the infiltration step [page 1 and 2 of translation of Tadashi].
Sercombe teaches that one metal powder size is 5 – 150 µm, which overlaps with Metal Powder A [0030], and the particle size of the aluminum powder is 5 – 150 µm, which overlaps with Metal powder B [0028].
Sercombe teaches that one metal powder is 0.4 – 4 mass% [0030], which overlaps with the claimed range and the aluminum powder is 80 – 95 vol% [0027]. While the aluminum powder is disclosed in volume%, given the high volume% (i.e. up to 95 vol%), this would overlap with the claimed mass% range.
“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)”. (MPEP 2144.05 III A).
Response to Arguments
The submitted declaration and applicant’s arguments have overcome the previous rejections.
However, upon further consideration, a new rejection is made of:
Claims 15 and 3 – 7 under 35 U.S.C. 103 as being unpatentable over Sercombe (US2004/0060683) and in view of Tadashi (JPS6070140, cited in the previous OA of 06/27/25)
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2013/0266469 – Forming metal powder preform with two-component binder, removing part of binder component and controlling porosity to determine volume content of infiltrant metal. Infiltration of molten metal to remove second part of binder
US2009/0136377 – Compositing casting with iron-based sintered porous body with aluminum infiltration with 2 stage pressurization
JP2005163145 – Compositing casting with iron-based sintered porous body with aluminum infiltration
Conclusion
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
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