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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/7/26 has been entered.
Status of Claims
Claims 1 and 13-14 are examined in this office action as claim 1 was amended, claims 4-7 are withdrawn as directed to a nonelected invention, and claims 13-14 are new in the reply dated 7/7/26.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 13-14 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by WO 2020/041925 A1 and its English translation of Huang.
As to claim 1, Huang discloses a copper alloy powder (Huang, paragraph [0033]), meeting the claim limitation of being a metal powder. The preamble of the claim reciting that the metal powder is “for additive manufacturing” is an intended use and as this copper alloy powder disclosed in Huang is capable of being used in some form of additive manufacturing, it meets the intended use limitations. To satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim, see MPEP § 2111.02(II). See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997).
Huang discloses in Example 2 the mass fractions for the elements in the powder is copper 58.0%, manganese 6.0%, aluminum 2.6%, iron 2.2%, silicon 0.8%, nickel 0.5%, with the balance being zinc and unavoidable impurities (Huang, Table 1), meeting the limitations as the Mn content being 6 mass% is one of the required elements being between 5 mass% and 13 mass%, where the Fe content is not less than 0.08% by mass and less than 4.5 % by mass, where the silicon content is less than 1% by mass, and where the total of Fe, Mn, Cr, Ni, and Zr is 8.7 mass% falling within the claimed range of not less than 5% by mass and not more than 13% by mass and where the metal powder comprises aluminum with its 2.6 mass% of Al. As Huang discloses a metal powder which in Example 2 has a composition which is within the claimed range for the composition, Huang anticipates the metal powder. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
As to claim 13, Huang discloses in Example 2 the mass fraction for manganese is 6.0% (Huang, Table 1), meeting where the at least one alloy element is manganese. Further, as Example 2 in Huang includes no chromium, it meets the claim limitation of the chromium content in the metal powder being less than 2% by mass.
As to claim 14, Huang discloses in Example 2 the mass fractions for silicon is 0.8% (Huang, Table 1), meeting the limitation where the silicon content is not less than 0.04% and less than 1% by mass.
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 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2019/155165 A1 (with reference to English equivalent US 2021/0032727 A1) of Chehab.
As to claim 1, it is not clear what the content for iron is, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring iron to be in an amount of less than 4.5% by mass. Further, in the limitation “A metal powder for additive manufacturing” the use of “for additive manufacturing” is an intended use and additive manufacturing does not result in a structural difference in the claimed powder as the powder as claimed is capable of use in additive manufacturing, see MPEP § 2111.02(II). Nevertheless, Chehab discloses alloys that are used in conjunction with selective laser melting (Chehab, paragraph [0061]), meeting the limitation of a metal powder for additive manufacturing as selective laser melting is a form of additive manufacturing. Chehab discloses a specific aluminum alloy example with a composition of Mn 1.0 wt%, Cr 5 wt% and Zr 2 wt% (Chehab, paragraphs [0038] and [0087] and Table 3), meeting the claim limitations as Cr falls within the range of 5 – 13 mass% and by being an aluminum alloy, the Chehab alloy contains aluminum, meeting the limitations. Further, the total content of Fe, Mn, Cr, Ni, Zr in Chehab in this example is 8 mass%, meeting the limitation of the total content of those elements being not less than 5 mass% and not more than 13 mass%. Further, by not disclosing the inclusion of silicon, this meets the claim limitations of where the where the powder contains less than 1% by mass of silicon as by not disclosing their inclusion, this would be understood as being 0%.
However, the example in Chehab does not disclose where the Fe content is not less than 0.08% by mass and less than 4.5% by mass. Nevertheless, Chehab also teaches where Fe can be added to the alloy in an amount of at least 0.5% and no more than 1% (Chehab, paragraph [0036]), meeting the limitation where Fe is not less than 0.08% by mass and less than 4.5% by mass. Chehab teaches that this provides additional hardening by the formation of dispersoids (Chehab, paragraph [0036]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add at least 0.5% and no more than 1% Fe to the other example composition in Chehab as this provides additional hardening by the formation of dispersoids (Chehab, paragraph [0036]).
As to claim 14, the example in Chehab does not disclose where the Si content is not less than 0.04% by mass and less than 1% by mass. Nevertheless, Chehab also teaches where Si can be added to the alloy in an amount of at least 0.5% and no more than 1% (Chehab, paragraph [0036]), meeting the limitation where Si is not less than 0.04% by mass and less than 1% by mass. Chehab teaches that this provides additional hardening by the formation of dispersoids (Chehab, paragraph [0036]). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add at least 0.5% and no more than 1% Si to the other example composition in Chehab as this provides additional hardening by the formation of dispersoids (Chehab, paragraph [0036]).
Response to Arguments
With respect to the 112(b) rejection, applicant’s amendment to remove iron from the group of elements that can be selected to be in a quantity of not less than 5% by mass cures the previous issue and the rejection is withdrawn.
With respect to the 102 rejection over Chehab, Applicant argues that the instant claim limitations require at least 0.08% of iron and the example cited in Table 3 of Chehab does not disclose the inclusion of either iron or silicon (Applicant’s remarks, pg. 5 2nd – last paragraphs).
It is agreed with applicant’s argument that the specific examples disclosed in Chehab do not anticipate the claim limitations. Therefore the 102 rejection is withdrawn. However, as Chehab teaches that Fe and Si can be included to provide additional hardening by the formation of dispersoids (Chehab, paragraph [0036]), it would be obvious to include these elements in amounts that meet the claim limitations to increase the hardness of the material. Thus, a 103 rejection is made over Chehab with respect to claims 1 and 14.
Applicant also argues that Chehab requires that the aluminum alloy material must include at least 2% chromium and thus new claim 13 distinguishes the claimed invention from the prior art (Applicant’s remarks, pg. 6, 1st full paragraph).
It is agreed with applicant that Chehab requires at least 2% Cr in its composition, see claim 1 of Chehab. Therefore claim 13 is not rejected over Chehab. However, see new 102 rejection over Huang above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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