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 06/03/26 has been entered. Claims 8 and 12 are canceled. Claim 32 is newly added and finds support in at least the original claim set and [0022, 0028]. Claims 1 – 7, 9 – 11, and 13 – 32 are pending. Claims 19 – 31 remain withdrawn. Claims 1 – 7, 9 – 11, 13 – 18, and 32 are under examination.
Applicant’s amendment to the title has overcome the previous specification objection.
Applicant’s amendments have overcome the previous non-statutory double patenting provisional rejection. The rejection is withdrawn.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 (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.
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 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.
Claim 32 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324)
Regarding claim 32, Perez discloses a powder composition for additive manufacturing [Title, Abstract]. The examiner notes that the language used in the preamble is directed to intended use of the claimed powder composition and is not interpreted to impart additional structure to the claim language (MPEP 2111.02 II). For purposes of compact prosecution, Perez discloses the powder compositions use in binder jetting [Page 10, line 7].
Perez teaches that the powder composition can be sintered cemented carbide [Page 3, line 24 – 25] with a metallic binder present in a range of 5 – 15 wt% [Table IV], which overlaps with the claimed range.
Perez teaches that the powder composition can be bimodal in which coarse and fine particles are provided. The particles can be spherical and have the same shape [Page 6, line 12 – 13], meeting the claimed limitation of spherical sintered cemented carbide particles.
Perez teaches that the coarse particles can have a D50 of 25 – 50 µm, which overlaps with the claimed range and the fine particles can have D50 of less than 10 µm [Page 6, line 11 – 12], which overlaps with the claimed range.
Perez expressly states that in the bimodal powder mixture the ratio of coarse particles to fine particles can be provided in any range/ratio (i.e., ~99:1 to 1:99), which reasonably suggests an overlapping ratio range to claim 32. “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).
Additionally, "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP 2144.05 II A). In this case, Perez suggests an overlapping ratio range to the claimed ratio and as such, an ordinarily skilled artisan would have had a reasonable expectation of success as well as motivation to determine the optimum ratio range of coarse particles to fine particles. Moreover, the applicant has not established that the claimed ratio range is critical or achieves unexpected results.
"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).
Claims 1 – 2, 4, 7, 11, and 13 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone, or alternatively in view of Wang (US2020/0346365)
Regarding claim 1, Perez discloses a powder composition for additive manufacturing [Title, Abstract]. The examiner notes that the language used in the preamble is directed to intended use of the claimed powder composition and is not interpreted to impart additional structure to the claim language (MPEP 2111.02 II). For purposes of compact prosecution, Perez discloses the powder compositions use in binder jetting [Page 10, line 7].
Perez teaches that the powder composition can be sintered cemented carbide [Page 3, line 24 – 25] with a metallic binder present in a range of 5 – 15 wt% [Table IV], which overlaps with the claimed range.
Perez teaches that the powder composition can be bimodal in which coarse and fine particles are provided. The particles can be spherical and have the same shape [Page 6, line 12 – 13], meeting the claimed limitation of spherical sintered cemented carbide particles.
Perez teaches that the coarse particles can have a D50 of 25 – 50 µm, which overlaps with the claimed range and the fine particles can have D50 of less than 10 µm [Page 6, line 11 – 12]. Wherein the instant application explicitly states that all quantities are modified by the term “about” [0057]. As such, the range of Perez of “less than 10 µm” is interpreted to overlap with the claim 1 range of “about” 10 – 20 µm.
Perez expressly states that in the bimodal powder mixture the ratio of coarse particles to fine particles can be provided in any range/ratio (i.e., ~99:1 to 1:99), which reasonably suggests an overlapping ratio range to claim 1. “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).
Additionally, "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP 2144.05 II A). In this case, Perez suggests an overlapping ratio range to the claimed ratio and as such, an ordinarily skilled artisan would have had a reasonable expectation of success as well as motivation to determine the optimum ratio range of coarse particles to fine particles. Moreover, the applicant has not established that the claimed ratio range is critical or achieves unexpected results commensurate with the scope of the claims.
"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).
Alternatively, Perez teaches that the bimodal powder mixture can be that described by US patent application 16402530 (i.e., Wang US2020/0346365) [Page 6, line 10].
Wang teaches examples in which the first mode (i.e., coarse powder with a D50 of 20 µm or greater) and second mode (i.e., fine powders D50 of less than 10 µm) are present in ranges of 60 – 80 wt% and 20 – 40%, respectively. Wherein 60:40 overlaps with the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Perez and Wang (as explicitly suggested in Perez) such that the powders in Perez had weight ratio ranges of the first and second mode powders described in Wang. Perez explicitly teaches that the bimodal powders used can be those described by Wang and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Regarding claim 2, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the carbide particles are tungsten carbide [Page 6, line 27] and metallic binder can comprise cobalt [Page 7, line 16].
Regarding claim 4, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the metallic binder can be present in a range of 5 – 15 wt% [Table IV], 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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Regarding claims 7 and 11, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the individual particles porosity can be at least 95% theoretical density (i.e., 5% or less porosity) [Page 4 line 20], which falls within the claimed ranges of claims 7 and 11.
Regarding claims 13 – 14, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez expressly states that in the bimodal powder mixture the ratio of coarse particles to fine particles can be provided in any range/ratio (i.e., ~99:1 to 1:99), which reasonably suggests an overlapping ratio range to claim 1. “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).
Additionally, "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." Peterson, 315 F.3d at 1330, 65 USPQ2d at 1382 (MPEP 2144.05 II A).
In this case, Perez suggests an overlapping ratio range to the claimed ratio and as such, an ordinarily skilled artisan would have had a reasonable expectation of success as well as motivation to determine the optimum ratio range of coarse particles to fine particles. Moreover, the applicant has not established that the claimed ratio range is critical or achieves unexpected results commensurate with the scope of the claims.
"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 15, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the tap density is at least 7.5 g/cm3, which falls within the claimed range [Table II].
Regarding claim 16, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the apparent density is at least 6.5 g/cm3, which falls within the claimed range [Table II].
Regarding claim 17, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the Hausner ratio is 1.1 to 1.25 [Page 4, line 15 – 16], 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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Regarding claim 18, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that powder composition achieves a 99% or more theoretical density [Page 16, line 19], which falls within the claimed range.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone or in view of Wang (US2020/0346365) as applied above in claim 2, as evidenced by Hyperion (NPL).
Regarding claim 3, Perez alone, or in view of Wang teaches the invention as applied in claim 2. Perez teaches that sintered cemented carbide can be WC-Co with 10% Co and 90% WC [Table XIV] and that the powder composition achieves a 99% or more theoretical density [Page 16, line 19]. As evidenced by Hyperion (NPL), the density of WC-Co at 10% Co is greater than 14.3 g/cm3 [Page 1].
This is further supported by the math based on the densities of WC and Co which are 15.7 g/cm3 and 8.9 g/cm3, respectively [Hyperion, Page 1]. The theoretical density is 15.02 g/cm3 ((0.9*15.7)+(0.1*8.9)). Therefore, the powder density suggested by Perez encompasses at least 14.87 g/cm3 (15.02*0.99), 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)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I).
Claims 5 – 6 and 9 – 10 are rejected under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone or in view of Wang (US2020/0346365), as applied to claim 1, in further view of Wang (US2020/0346365)
Regarding claims 5 – 6 and 9 – 10, Perez alone, or in view of Wang teaches the invention as applied in claim 1. Perez teaches that the bimodal powder mixture can have the distribution of US patent application 16402530 (i.e., Wang US2020/0346365) [Page 6, line 10], but does not expressly disclose the D10 or D90 or the first and/or second mode.
Wang teaches examples in which the first mode (i.e., coarse powder with a D50 of 20 µm or greater) has a D10 of 8.1 µm and 29.1 µm, and a D90 of 49.5µm and 50 µm [Table IV]. This reasonably suggests a D10 range of 8.1 – 29.1 µm, which overlaps with the claimed range of claim 5, and a D90 range of 49.5 – 50 µm, which falls within the claimed range of claim 6. The examples of Wang also discloses a second mode (i.e., fine powders with a D50 of less than 10 µm) in which the D10 is 1.8 µm and 0.9 µm, and the D90 is 14.0 µm and 13.5 µm [Table IV]. This reasonably suggests a D10 range of 0.9 – 1.8 µm, which overlaps with the claimed range of claim 9, and a D90 range of 13.5 – 14 µm, which falls within the claimed range of claim 10.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Perez and Wang (as explicitly suggested in Perez) such that the powders in Perez had the d10 and d90 ranges of the first and second mode powders described in Wang. Perez explicitly teaches that the powder distribution of the powders used can be those described by Wang and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Response to Arguments
Applicant's amendments and arguments thereto have overcome the previous rejections under 103 in view of Wang (US2020/0346365). The pending rejections do not rely upon the example of Wang used in the previous rejection and as such, the remarks have been considered but are moot.
However, upon further consideration, new rejections are made of:
Claim 32 under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324)
Claims 1 – 2, 4, 7, 11, and 13 – 18 under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone, or alternatively in view of Wang (US2020/0346365)
Claim 3 under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone or in view of Wang (US2020/0346365) as applied above in claim 2, as evidenced by Hyperion (NPL).
Claims 5 – 6 and 9 – 10 under 35 U.S.C. 103 as being unpatentable over Perez (WO2021126324) alone or in view of Wang (US2020/0346365), as applied to claim 1, in further view of Wang (US2020/0346365)
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/AUSTIN POLLOCK/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
Prosecution Insights