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 .
Applicant’s election without traverse of Group I, claims 1-4 in the reply filed on July 17, 2025 is acknowledged. Claims 5-12 are withdrawn from consideration as directed to a non-elected invention.
Rejections -- 35 U.S.C. 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1 and 2 are rejected under 35 U.S.C. 112(a) because the specification, while being enabling for certain aluminum alloy powder materials within the scope of the claims, does not reasonably provide enablement for all such combinations. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention commensurate in scope with these claims.
5. There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
6. The broadest reasonable interpretation of claims 1 and 2 encompasses powder materials made of an aluminum alloy and which comprise at least one of three common elements (Ti, Zr, P) in any quantity for claim 1 and which further contain at least one of six other common elements (Si, Mg, Zn, Fe, Ni, Mn) in any quantity for claim 2. (The phase “for additive manufacturing using a 3D printer” is considered to define nothing more than a potential use of the claimed material, and does not meaningfully limit the scope of materials covered by the claims). The specification discloses sufficient information for one of ordinary skill in the art to make and use certain combinations and quantities of those elements; see, for instance, p. 3, l. 1 thru p. 5, l. 5 of the specification as filed. However, the specification does not provide direction on how to make and use other combinations and quantities of elements. At the time of filing, the state of the art was such that one skilled in the art understood that different compositions would present different properties, and that different combinations of elements in varying quantities would likewise result in materials with different properties. The actual properties of a given combination would have been difficult to predict. Thus, the disclosed combinations of materials in the specification do not bear a reasonable correlation to the full scope of the claim. Taking these factors into account, undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1 and 2.
7. Applying each of the Wands factors enumerated above to the present case, the examiner notes the following:
(A) The breadth of the claims--The claims have extreme breadth, encompassing all possible combinations and quantities of Al alloys with Ti, Zr and/or P (for claim 1) and further containing any possible combination and quantities of Si, Mg, Zn, Fe, Ni, and/or Mn (for claim 2).
(B) The nature of the invention-- The invention is directed to powder materials comprising certain combinations of elements.
(C) The state of the prior art-- The prior art in the field of the claimed invention includes aluminum alloys having numerous combinations of alloying elements and relative proportions of those elements. Persons skilled in the art apply specific combinations of those elements in order to achieve particularly desired properties expressed in such combinations.
(D) The level of one of ordinary skill-- One skilled in the art pertinent to the invention has a general knowledge of materials science in general and of powder metallurgy in particular.
(E) The level of predictability in the art-- This art is highly unpredictable, as evidenced by the many and varied combinations of alloy materials developed for particular purposes due to their superior combinations of properties.
(F) The amount of direction provided by the inventor-- The present specification provides a summary of the invention including disclosure substantially equivalent to present claim 1 (see p. 1, ll. 31-33) and states that one wants a material which “enables crystal grain refinement”, but without any discussion of how much such refinement must occur or under what circumstances.
(G) The existence of working examples-- The specification includes three working examples in Table 1, all of which are comprise combinations of elements within the bounds of instant claims 3 and 4 (which are NOT subject to this rejection).
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure-- Other than the specific combinations referred to above as disclosed on pp. 3-5 of the specification, the specification presents no guidance to the artisan as to what combinations of elements or what proportions of those elements to try in order to exemplify the claimed invention. Therefore the quantity of experimentation needed is considered very high.
8. The examiner concludes that factors (A), (E), (F), (G) and (H) above all lean strongly toward a finding that undue experimentation would be required for one skilled in the art to discover what combinations of materials would result in a powder material adequate for the purposes of the invention. The remaining factors ((B), (C), (D)) can be considered neutral. Applying the Wands factors as a whole, the examiner concludes that undue experimentation would be required by one of ordinary skill in the art to practice the full scope of claims 1 and 2.
Rejections -- 35 U.S.C. 102
9. 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.
10. Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being clearly anticipated by any of Chehab (US 2021/0276099), Kita (JPH 08-283921, and its translation attached hereto), Xia et al. (CN 106870333, and its translation attached hereto), Li et al. (CN 107695338, and its translation attached hereto), Li et al. (CN 111155007, and its translation as supplied by Applicant), Li et al. (CN 111593238, and its translation attached hereto) or Yu et al. (CN 111822703, and its translation attached hereto).
The prior art discloses specific examples of powder metal aluminum alloys comprising at least one of Ti, Zr and P and which further contain at least one of Si, Mg, Zn, Fe, Ni and Mn as follows:
a) Chehab para [0122-0123],
b) Kita Table 1
c) Xia Examples 1-4,
d) Li ‘338 Table 1,
e) Li ‘007 Embodiments 1-14,
f) Li ‘238 Embodiments 1-4, or
g) Yu Embodiments 1-3.
The phase “for additive manufacturing using a 3D printer” is considered to define nothing more than an intended use of the claimed material, and does not set forth any actual limitation of the structure of the claimed material.
Thus the disclosures of any of Chehab, Kita, Xia et al., Li et al. ‘338, ‘007 or ‘238, or Yu et al. are each held to anticipate the claimed invention.
Rejections -- 35 U.S.C. 103
11. 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.
12. Claims 3 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Xia et al. (and its translation).
Xia discloses aluminum alloy powders containing amounts of Ti, Si, Cu, Mn, Mg, Ni, Zn and Fe overlapping the amounts of those elements recited in the instant claims; see the first paragraph on p. 3 of the translation of Xia. (The instant claims recite certain percentages of Zr, P and Cr “or less” and thus encompass materials containing 0% of those elements).
Xia does not disclose any specific examples of materials fully meeting all of the compositional requirements of the instant claims. However, the overlap in composition between the prior art and the claimed invention creates a prima facie case of obviousness of a material as claimed, because the prior art indicates substantial utility over the entirety of the compositional ranges set forth therein, including those portions of the ranges which overlap those of the present claims.
Thus the disclosure of Xia et al. is held to create a prima facie case of obviousness of a material as presently claimed.
Nonstatutory Double Patenting
13. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
14. Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/123697 or over claims 1 and 2 of copending Application No. 18/126072.
Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and those of the ‘697 and ‘072 applications are each directed to powder metal materials for additive manufacturing made of an aluminum alloy containing certain elements. Further, the actual compositions recited in claims 5-8 of the ‘697 application and in claim 2 of the ‘072 application significantly overlap those defined in instant claims 3 and 4. Because of the overlap, the claimed material is considered to define nothing more than obvious variants of the materials claimed in the ‘697 or ‘072 applications.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
15. The remainder of the art cited on the attached PTO-892 and SB/08 forms is of interest. This art is held to be no more relevant to the claimed invention than the art as applied in the rejections supra.
16. Any inquiry concerning this communication or earlier communications from the examiner should be directed to GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE WYSZOMIERSKI/Primary Examiner, Art Unit 1733 July 7, 2025