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
Restriction/Election
Applicant’s election without traverse of Group II in the reply filed on 09/30/2025 is acknowledged. Claims 19 – 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/30/2025.
Response to Amendments
The amendments filed on 9/30/2025 have been entered. Claims 1 – 20 remain pending. The amendments find support in at least the original claim set. Claims 1 – 12 now depend on claim 13. As such, claims 1 – 18 are under examination and claims 19 – 20 are withdrawn.
Claim Rejections – U.S.C. § 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.
Claims 4, 6 – 8, and 15 are 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.
Claims 7 – 8 recites the limitation "step (d)”. There is insufficient antecedent basis for this limitation in the claim.
Regarding claims 4 and 6, the compositions are indefinite because they do not make clear what units the numbers are (i.e. wt, at, vol). For purposes of examination, the numbers will be interpreted as weight.
The term “vigorous” in claim 15 is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purposes of examination, any form of mixing will be interpreted to meet the claimed limitation.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14, which depends upon claim 13, require a first and second element which are different. However, claim 13 requires printing of a thixotropic alloy. An “alloy” by definition is a mixture of at least two elements and therefore, claim 14 does not appear to further limit the requirements of claim 13.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections – U.S.C. §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 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 13 – 14 and 16 – 18 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mironets (US 11,679,439)
Regarding claim 13, Mironets teaches a method of direct deposition of thixotropic alloys [Title]. Mironets teaches that the method includes the step of:
Forming a molten metal [Col 4, line 27 – 28] and then injecting gas to form a semi-solid slurry composition [Col 4, line 3, line 62 – 67 and Col 4, line 6] with solid nuclei [Col 4, line 38 – 40], meeting the claimed limitation of forming a two-phase slurry of β-phase grain and molten α-phase.
The slurry is deposited through an extruder of a three-dimensional printing system [Col 4, line 32], meeting the claimed limitation of feeding the slurry to an extruder
Mironets teaches using a low melting point alloy [Col 4, line 3], wherein metal alloys contain at least two different elements, meeting the claimed limitation of claim 14.
Regarding claim 16, Mironets teaches the invention as applied in claim 13. Mironets teaches that the extruder has a shot sleeve (labeled “230”) with a heater and a nozzle with a heater that are independently controlled [Fig 2B; Col 7, line 17 – 20].
Wherein independently controlled means that the first heater (the shot sleeve heater) could be warmer than the second heater (the nozzle heater) or colder than the second heater, or they could be the same temperature. As such, an ordinarily skilled artisan could at once envisaged an embodiment in which the shot sleeve heater is hotter than the nozzle heater, thus meeting the claimed limitation of heating the slurry at a first temperature and then a second, lower temperature.
“A reference disclosure can anticipate a claim when the reference describes the limitations but "'d[oes] not expressly spell out' the limitations as arranged or combined as in the claim, if a person of skill in the art, reading the reference, would ‘at once envisage’ the claimed arrangement or combination." Kennametal, Inc. v. Ingersoll Cutting Tool Co., 780 F.3d 1376, 1381, 114 USPQ2d 1250, 1254 (Fed. Cir. 2015)” (MPEP 2131.02)
Regarding claims 17 – 18, Mironets teaches the invention as applied in claim 16. Mironets teaches that the three-dimensional printing system has a nozzle with a heater that is controllable [Col 6, line 62 – 64].
Claim Rejections – U.S.C. §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.
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 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Mironets (US 11,679,439), as applied to claim 13 and 14 above.
Regarding claim 15, Mironets teaches the invention as applied in claim 14. Minorets teaches that the method includes the steps of:
Forming a molten metal and injecting a gas into the molten metal to form solid nuclei [Col 5, line 16 – 30], meeting the claimed limitation of melting a first element, adding a second element to the melt, and mixing them together to form a slurry
Mironets teaches that the gas addition and probe are used to control the cooling the molten metal [Col 5, line 22 – 30] and that the slurry is fed to a shot sleeve with a heater for controlling temperature [Col 6, line 10 – 15] but does not explicitly teach cooling to about 50°C.
However, the temperature to which the molten material would be cooled depends upon the alloy being used as well as the solid fraction/solid nuclei amount desired in the melt [Col 6, line 1 – 5]. As such, it would have been routine experimentation to determine the temperature needed based on the alloy being used and the desired solid fraction. Moreover, a temperature of “about 50°C” has not been shown to be critical or achieve unexpected results, as such, a prima facie case of obviousness exists. Lastly, Mironets discloses that the heating temperatures achieved can be up to 2204°C [Col 5, line 5 – 8] and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results when setting the heating/cooling temperature to about 50°C in the method.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)(MPEP 2144.05 II A)
Regarding claim 16, Mironets teaches the invention as applied in claim 13. Mironets teaches that the extruder has a shot sleeve (labeled “230”) with a heater and a nozzle with a heater that are independently controlled [Fig 2B; Col 7, line 17 – 20].
Wherein independently controlled means that the first heater (the shot sleeve heater) could be warmer than the second heater (the nozzle heater) or colder than the second heater (the nozzle heater), or they could be the same temperature.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have selected a combination of the first heater/shot sleeve heater being hotter than the second heater/nozzle heater in the method of Mironets to achieve predictable results. Mironets states that the heaters can be independently controlled and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in setting them at different temperatures such that the first heater was hotter than the second heater.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01)
Regarding claims 17 – 18, Mironets teaches the invention as applied in claim 16. Mironets teaches that the three-dimensional printing system has a nozzle with a heater that is controllable [Col 6, line 62 – 64].
Claims 1 – 2 and 7 – 12 are rejected under 35 U.S.C. 103 as being unpatentable over Mironets (US 11,679,439), as applied to claim 13 above, in further view of Yamazaki (US2020/0122407) and Liu (CN109604588, using espacenet translation)
Regarding claims 1 – 2, Mironets teaches the invention as applied in claim 13. Mironets teaches that the method includes providing a three-dimensional printing system including an extruder with a screw feed [Fig 2B; Col 7, line 4 – 7] and a nozzle [Fig 2B, “212”, Col 6, line 60 – 62], meeting the claimed limitation of providing a thixotropic mixer having a discharge nozzle above a substrate. The slurry is providing to the extruder through an inlet duct [Fig 2B; Col 7, line 13 – 15] and discharged through the nozzle, meeting the claimed limitation of adding a slurry to the mixer and extruding the alloy through the nozzle onto a substrate.
Mironets does not explicitly teach the distance between the nozzle and the substrate/build plate. Mironets teaches that the diameter of nozzle depends upon a balance of the printing/deposition rate and surface finish/feature resolution [Col 6, line 65 – Col 7, line 3], but does not explicitly teach the size.
Yamazaki teaches a three-dimensional printing system in which a material is extruded through a nozzle [Title, Fig 2]. Yamazaki teaches that the gap between the nozzle end and substrate/layer is 1.1 – 1.5 the diameter of the nozzle/orifice [0065].
While Mironets nor Yamazaki teaches a specific nozzle diameter, Liu teaches a method for extruding molten material out of a print head in which the material is a semi-solid [0021]. Liu teaches that the extrusion device has an orifice diameter of 0.2 – 0.8 mm [0041], wherein the distance based on the disclosed ratio by Yamazaki would be ~0.22 – 1.2 mm, which 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 taken the method of Mironets and controlled the diameter and distance of the nozzle to the range and ratio disclosure by Liu and Yamazaki, respectively. Mironets, Liu, and Yamazaki are in the same field of endeavor of extrusion based additive manufacturing. Moreover, Mironets expressly recognizes that the diameter of the nozzle can be changed depending on the desired deposition rate and/or feature resolution and the extruder is attached to an arm [Fig 2A] that can control its position in three dimensions. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the orifice size to the method of Mironets as well as the ratio of the nozzle size to the distance from the printing surface.
Lastly, an ordinarily skilled artisan would have been motivated to control the ratio of the nozzle size to the distance, as taught by Yamazaki, because Yamazaki teaches that this ratio range results in preventing the cross-sectional shape of the deposited material from being broken, such that surface roughness is reduced, as well as preventing positional deviation of the discharged material with respect to where it is intended to be deposited [0065].
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Regarding claims 7 – 8, Mironets in view of Yamazaki and Liu teaches the invention as applied in claim 1. Mironets teaches that the molten material is melted, flowed to the shot sleeve, and deposited as a slurry as it is stirred [Fig 2A, 2B; Col 8, line 35 – 38], meeting the claimed limitation of the extruding the slurry in a thixotropic state and extruding through the nozzle in the absence of total solidification.
Regarding claim 10, Mironets in view of Yamazaki and Liu teaches the invention as applied in claim 1. Mironets teaches a three-dimensional printing system with:
A screw feeder that is coupled to a motor [Fig 2B; Col 7, line 4 – 7], meeting the claimed limitation of an augur bit connected to a drive train.
A crucible and inlet duct for holding the molten alloy material and transferring it the screw feeder (i.e. augur bit) [Fig 2A, 2B, “130” and “240”; Col 7, line 20 – 35], meeting the claimed limitation of a hopper for receiving alloy material and depositing the material to the augur bit.
An extruder/shot sleeve for housing the screw feeder which receives molten material from the inlet duct/crucible [Fig 2B; Col 7, line 13 – 15], meeting the claimed limitation of a material transfer channel housing the augur bit and configured to received material from the hopper.
The shot sleeve contains a controlled heater [Col 7, line 16 – 17], meeting the claimed limitation of a first heating zone in the material transfer channel.
A removable nozzle [Fig 2B, “210”; Col 6, line 60 – 62], meeting the claimed limitation of a nozzle downstream of the augur bit to discharge the material.
A heater for the nozzle [Fig 2B, “212”, Col 6, line 60 – 62], meeting the claimed limitation of a second heating zone in the material transfer channel
The shot sleeve heater and nozzle heater can be independently controlled [Col 7, line 18 – 20], meeting the limitation of a first and second temperature which are different.
Regarding claim 11, Mironets teaches in view of Yamazaki and Liu the invention as applied in claim 10. Mironets teaches that the extruder has a shot sleeve (labeled “230”) with a heater and a nozzle with a heater (labeled “210”) that are independently controlled [Fig 2B; Col 7, line 17 – 20].
Wherein independently controlled means that the first heater (the shot sleeve heater) could be warmer than the second heater (the nozzle heater) or colder than the second heater (the nozzle heater), or they could be the same temperature.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date to have selected a combination of the first heater/shot sleeve heater being hotter than the second heater/nozzle heater in the method of Mironets to achieve predictable results. Mironets states that the heaters can be independently controlled and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in setting them at different temperatures such that the first heater was hotter than the second heater.
"[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom." In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) (MPEP 2144.01)
Regarding claims 9 and 12, Mironets in view of Yamazaki and Liu teaches the invention as applied in claim 10. Mironets teaches that the three-dimensional printing system has a nozzle with a heater that is controllable [Col 6, line 62 – 64], meeting the claimed limitation of heating the nozzle and the nozzle having a nozzle heater.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Mironets (US 11,679,439), as applied to claim 13 above, in further view of Shi (CN109848409, using espacenet translation)
Regarding claims 3 and 5, Mironets teaches the invention as applied in claim 13. Mironets teaches using low-melting points alloys [Col 4, line 1 – 5], but does not explicitly teach a In-Ga alloy or Bi-Pb alloy.
Shi teaches alloy for 3D printing including for fused deposition modeling printing [0004]. Shi teaches that the metal alloys used for the 3D printing can be low melting temperature alloys [0010 – 0012]. Shi discloses that the metal alloys that can be used for the low-melting temperature alloys can be alloys of gallium in combination with indium [0026], meeting claim 3, and/or an alloys of bismuth in combination with lead [0026], meeting claim 5.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have selected an indium-gallium alloy or bismuth-lead alloy, as disclosed by Shi, as the metal alloy in the method of Mironets. Both Mironets and Shi are directed to the same field of endeavor of additive manufacturing and Mironets discloses the low melting point alloys can be used. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results with no change in the respective functions of the teachings of Mironets or Shi.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
Claims 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mironets (US 11,679,439) in view of Shi (CN109848409, using espacenet translation) as applied to claims 3 and 5 above, in further view of Wang (CN104889397, using espacenet translation).
Regarding claims 4 and 6, Mironets in view of Shi teaches the invention as applied in claims 3 and 5. Mironets in view of Shi does not explicitly teach the content of indium/gallium or bismuth/lead.
Wang teaches alloy for 3D printing including for fused deposition modeling printing/deposition of a metal filament [0006]. Wang teaches that the alloys can be low-melting-point metal alloys including indium based and bismuth-based [0009] and that the indium based alloys can have indium ranging from 50 – 100 wt% and bismuth based alloys can have bismuth ranging from 50 – 100 wt% [0009], which overlaps with the respective amounts in claims 4 and 6.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the indium-gallium alloy or bismuth-lead alloy as disclosed in Maronets in view of Shi, and controlled indium to be 50 – 100 wt% in the indium alloy and bismuth to be 50 – 100 wt% in the bismuth alloy (wherein Ga and Pb would make up the remainder in their respective alloys, meeting the compositions) to achieve predictable results. Mironets, Shi, and Wang are directed to the same field of endeavor of additive manufacturing and Mironets discloses the low melting point alloys can be used. As such, an ordinarily skilled artisan would have a reasonable expectation of success in achieving predictable results when combining Mironets in view of Shi with the teachings of Wang with no change in the respective functions of the teachings of Mironets, Shi, or Wang.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). “The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art”. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976)
With regards to the overlapping ranges taught, it would have been obvious to an ordinarily skilled artisan before the effective filing date of the claimed invention to have selected overlapping ranges as disclosed. Selection of overlapping ranges has been held to be a prima facie case of obviousness (See MPEP § 2144.05 I). “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)”
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2022/0168816 – Manufacture of thixotropic metal alloys via extrusion-based additive manufacturing
US2020/0361145 – Deposition of molten metal via extrusion
US2018/0290194 – Semi-solid extrusion of metal alloy in 3D printing
US 9,993,996 – 3D printing of liquid-metal based thixotropic fluid without mold
US 7,942,987 – Extrusion based additive manufacturing of metal alloys in the semi-solid state
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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 on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738