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 .
Status of Claims
Claim 1 is examined in this office action as claim 1 was amended, claims 4-7 are withdrawn as directed to a nonelected invention, and claims 2-3 and 8-12 were canceled in the reply dated 3/16/26.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “at least one alloy element other than the aluminum in a quantity of not less than 5% by mass and not more than 13% by mass, the at least one alloy element being selected from a group consisting of iron, manganese, chromium, nickel and zirconium, wherein an iron content in the metal powder is less than 4.5% by mass” in lines 4-8. As the iron content is required to be less than 4.5% by mass, it is not clear how iron can be present in an amount of not less than 5% by mass and not more than 13% by mass as required in claim 1. Thus, given the two conflicting requirements for the composition of iron, it is not clear what amount of iron is required to be in the powder.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by 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 iron or silicon, this meets the claim limitations of where the iron content in the metal powder is less than 4.5% by mass and where the powder contains less than 1% by mass of silicon as by not disclosing their inclusion, this would be understood as being 0%.
Response to Arguments
With respect to the objections and 112(b) rejections, applicant’s amendments and cancellation of claims cures the previous issues, however see new 112(b) rejection above.
With respect to the 102 rejection over Chehab, applicant notes that the claims have been amended to recite a narrower range for the total content of iron, manganese, chromium, nickel, and zirconium and this in conjunction with the other limitations concerning the iron and silicon content produce benefits in the part (Applicant’s remarks, pg. 7, next to last paragraph – pg. 8, 4th paragraph). Further, applicant argues that Chehab does not teach or suggest a metal powder with at least one alloy element in a quantity of not less than 5% by mass, and which is selected from a group consisting of (limited to) iron, manganese, chromium, nickel, and zirconium, and in which the total content of iron, manganese, chromium, nickel, and zirconium (including separate from the identified alloy element) in the metal powder is not less than 5% by mass and not more than 13% by mass, as set forth in amended independent claim 1 (Applicant’s remarks, pg. 8 last paragraph – pg. 9 1st paragraph).
However Chehab, as noted in the rejection above, recites a specific example that includes 5 wt% Cr, meeting the limitation of at least one alloy element other than the aluminum in a quantity of not less than 5% by mass and not more than 13% by mass (emphasis added). Further, as this specific example also includes 2 wt% Zr and 1 wt% Mn, the total for the required elements is 8%, meeting the limitation of where a total content of iron, manganese, chromium, nickel, and zirconium in the metal powder is not less than 5% by mass and not more than 13% by mass. Applicant’s limitations merely require that one of the elements is between 5 and 13% and that the total of the elements together is also within 5 to 13% and Chehab discloses this feature.
Also, in response to applicant's argument that the control of iron and silicon results in reduced brittleness and delamination and improved strength and ductility, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Further, as Chehab discloses an anticipatory composition, these properties would flow from having the same composition. “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Applicant also asserts that the examiner did not address the total content of Fe, Mn, Cr, Ni, and Zr meet the claim requirements in the Non-Final office action (Applicant’s remarks, pg. 9, 1st full paragraph).
However, the claim requirement is merely that the total content of these elements is within the claimed range. This was demonstrated on pgs. 4-5 of the Non-Final office action as well as above both by showing the individual amounts as well as how the elements add up to meet the claim limitations. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
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 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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