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 06/09/26 has been entered. Claim 3 has been canceled. Claims 1 – 2, 4 – 13, 16 – 17, and 19 – 21 remain pending. Claims 16 – 17 and 19 – 21 remain withdrawn. Claims 1 – 2 and 4 – 13 are under examination.
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 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 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 1 – 2, 4, and 7 – 11 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2020/052527, using espacenet translation) in view of Zepon (“Processing Aspect in Spray Forming”, 2017) and Forbes (US2014/0260478)
Regarding claim 1, Yang discloses a dual-purpose method for both spray forming and atomizing powder [0006], meeting the claimed limitation producing a metallic ingot and metallic powder.
Yang teaches that a nozzle is provided that sprays metal in a spray chamber [0006, 0016], meeting the claimed limitation of forming one or more streams from a metal/metal alloy source.
The spray is directed to a turntable where a body is formed via spray forming [Fig 1, 0021], meeting the claimed limitation of directing the spray of droplets to a rotatable hot body and depositing them to form an ingot.
Yang further discloses that a powder collection box is provided in the lower part of the apparatus that collects powder produced during the spray forming process but not deposited into/onto the spray formed body process [0021, 0023] (known in the art as “overspray”).
Yang does not expressly disclose that the spray is formed via gas atomization (though does state that the powders are atomized [0016]. Yang does not expressly teach the overspray to yield distribution.
Zepon discusses the process of spray forming [Title]. Zepon expressly discloses that free-fall atomization (a form of gas atomization) is widely used for spray forming [page 6]. Zepon teaches that the process uses nozzles to control the spray cone and has various benefits including being a robust process that can maintain constant melt flow for long periods of time and has high production rates [page 6]. Zepon teaches that free-fall atomization produces droplets on average from 80 – 200 µm [page 6], meeting the claimed limitation of collecting powder in a size distribution. Zepon further discloses that the metal/metal alloy temperature is a controlled parameter in the process (i.e. “melt temperature”) [Fig 8.5].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used gas atomization (as discussed by Zepon) as the spray/atomization step in the method of Yang. Yang and Zepon are in the same field of endeavor of spray forming and as such, an ordinarily skilled artisan would have considered the teachings of Zepon to be pertinent to the method of Yang. Further still, Zepon makes clear that gas atomization is a well-recognized step in spray forming and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in using gas atomization to form the sprays. Lastly, Zepon teaches that various forms of gas atomization can be used and that free-free atomization in particular has the benefit of being a robust process that can maintain constant melt flow for long periods of time and has high production rates. For these reasons, an ordinarily skilled artisan would have been motivated to apply the teachings of Zepon to Yang.
Yang in view of Zepon does not expressly teach a particular overspray to yield distribution. However, Yang explicitly acknowledges that the spray formed body and the collected powder are desired products of the method and would naturally result from performing the process. Moreover, Zepon acknowledges that the formation of overspray is unavoidable in spray forming [Page 24] and expressly shows that distance as well as pressure are parameters that control/affect the average yield percentage (i.e. ingot yield) and, inversely, the overspray yield (i.e. powder yield) [Fig 8.6].
As such, the particular yield amount of ingot/body and powder would depend upon the desires of an ordinarily skilled artisan (that is, how much product is formed into ingot and how much is formed into powder) and as such, it would have been obvious to have conducted routine experimentation to achieve the desired % of ingot yield and % of powder yield. "[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)
Moreover, Zepon explicitly shows that process parameters such as distance between spray and body, as well as the gas pressure of the nozzle (i.e. speed of the droplets) directly affects the yield (i.e. the ingot % and powder %) [Fig 8.6] and as such, an ordinarily skilled artisan would have been motivated to control these parameters in order to attain the desired balance of ingot yield and powder yield. “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process” (MPEP 2144.05 II B).
Additionally, Zepon shows that a yield (i.e. % ingot) of up to 95% can be achieved and increasing the distance or reducing the pressure are at least two parameters which can reduce it. Wherein 95% or less overlaps with the claimed range and 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)”
Lastly, applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "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). However, Applicant has not provided evidence to show that the particular range(s) claimed is/are critical and achieve results which are unexpectedly better.
Moreover, Zepon teaches that the substrate can be cold or preheated [Page 25] and that the substrate can be preheated to achieve a better bond between the substrate and deposit [Page 8]. That is, the temperature is also recognized in the prior art as a process parameters affecting overspray/yield%. Yang in view of Zepon does not expressly disclose an overlapping temperature range for the substrate/ingot, but Zepon shows that temperatures as high as 1475°C can be used [Fig 8.25] which overlaps the claimed range.
Forbes teaches a similar method by which molten material [0031, 0044] is sprayed onto a rotating work piece [Fig 2] (which can also be produced by spray forming [0031]) and the overspray can be collected at the bottom of the chamber [Fig 2, 0044]. Forbes teaches that the workpiece can be heated to at least 1100°F (~593°C) and can exceed 2000°F (~1093°C), where 1093°C or more overlaps with the claimed range [0041].
Selection of overlapping ranges has been held to be a prima facie case of obviousness absent evidence of criticality/unexpected results (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)”
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the workpiece/substrate in the method of Yang in view of Zepon to be at a temperature of at least 1093°C, as taught by Forbes. Yang, Zepon, and Forbes are in the same field of spraying molten metal to form a component and as such, an ordinarily skilled artisan would have considered the teachings of Forbes to be pertinent to the method of Yang in view of Zepon. Furthermore, given that Yang and Forbes are directed to spraying and depositing molten material in/on a rotating body, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Forbes to Yang. Moreover, an ordinarily skilled artisan would have been motivated to do so because Zepon teaches the heating the substrate/workpiece achieves a better bond.
Regarding claims 2 and 10, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1.
Zepon discloses that part of the overspray/yield calculation is geometric overspray which is defined as the spray which extends past the substrate (i.e. does not make contact/non-contact overspray) [Page 24]. As shown in Fig. 8.22, the geometric overspray (i.e. NCOS) is based on spraying distance and diameter of the substrate, and that its percentage can be controlled by varying the distance based on a particle diameter of the substrate. Zepon shows that based on the diameter for a substrate, the distance can be varied such that the yield ranges from ~20-95% (i.e. the geometric overspray being 5 – 80%) [Fig 8.22].
Moreover, Zepon discloses that an additional part of the overspray source is due to particles bouncing off the surface [Page 25], meeting the claimed limitation of contact overspray. Zepon discusses that sticking efficiency is the measurement/control of the amount of material that sticks vs bounces off the surface [Page 26] and that control of the substrate surface temperature is a critical parameter to sticking efficiency [page 28]. Zepon teaches that the sticking efficiency can be at least as low as 0.2 to up to ~0.9 [Fig 8.24 and 8.25].
Wherein, for example, a geometric overspray of 15% and a sticking efficiency of ~0.4, results in an NCOS % of ~32% and COS of 68%, relative to the total overspray (i.e. powder yield), which falls within/overlaps with the claimed range and is within the ranges described by Zepon. As such, Zepon describes ranges which overlap in scope to the claimed ranges.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the method of Yang in view of Zepon and Forbes to have a geometric overspray ratio of ~5 – 80% and a sticking efficiency of 0.2 – 0.9 (as disclosed by Zepon), to achieve predictable results. Yang and Zepon are in the same field of spraying forming molten metal material and Zepon discloses these as attainable ranges in the spray forming process and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings and achieving predictable results.
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)
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 claim 4, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1.
Yang explicitly acknowledges that the spray formed body and the collected powder are desired products of the method and would naturally result from performing the process. As such, the particular yield amount of ingot/body and powder would depend upon the desires of an ordinarily skilled artisan (that is, how much product is formed into ingot and how much is formed into powder) and as such, it would have been obvious to have conducted routine experimentation to achieve the % of ingot yield and % of powder yield desired. "[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)
Zepon explicitly shows that process parameters such as distance between spray and body as well as the gas pressure of the nozzle (i.e. speed of the droplets) directly affects the yield (i.e. the ingot % and powder %) [Fig 8.6] and as such, an ordinarily skilled artisan would have been motivated to control these parameters in order to attain the desired balance of ingot yield and powder yield. “after KSR, the presence of a known result-effective variable would be one, but not the only, motivation for a person of ordinary skill in the art to experiment to reach another workable product or process” (MPEP 2144.05 II B).
Additionally, Zepon shows that a yield (i.e. % ingot) of up to 95% can be achieved in spray forming and increasing the distance and/or reducing the pressure are at least two parameters which can reduce it. Wherein 95% or less overlaps with the claimed range and 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)”
Lastly, applicants can rebut a prima facie case of obviousness by showing the criticality of the range. "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). However, Applicant has not provided evidence to show that the particular range(s) claimed is/are critical and achieve results which are unexpectedly better.
Alternatively, Forbes teaches a similar method in which molten material [0031, 0044] is sprayed onto a rotating work piece [Fig 2] (which can also be produced by spray forming [0031]) and the overspray can be collected at the bottom of the chamber [Fig 2, 0044]. Forbes teaches that the deposition yield (i.e. the ingot yield of claimed invention) can be selected to range from 25 – 75% and parameters such as temperature, pressure, and distance between nozzle and target can be controlled [0046].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the deposition yield (i.e. the ingot yield in the claimed invention) in the method of Yang in view of Zepon to be 25 – 75%, as taught by Forbes. Yang, Zepon, and Forbes are in the same field of spraying molten metal to form a component and as such, an ordinarily skilled artisan would have considered the teachings of Forbes to be pertinent to the method of Yang in view of Zepon. Furthermore, given that Yang and Forbes are directed to spraying and depositing molten material in/on a rotating body, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the deposition yield of Forbes to Yang. Moreover, an ordinarily skilled artisan would have been motivated to do so in order to control the amount of ingot created and powder created in the method of Yang.
Regarding claim 7, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Zepon teaches that the substrate can be cold or preheated [Page 25] and that the substrate can be preheated to achieve a better bond between the substrate and deposit [Page 8]. Yang in view of Zepon does not expressly disclose an overlapping temperature range for the substrate/ingot, but Zepon shows that temperatures as high as 1475°C can be used [Fig 8.25], which overlaps.
Forbes teaches a similar method by which molten material [0031, 0044] is sprayed onto a rotating work piece [Fig 2] (which can also be produced by spray forming [0031]) and the overspray can be collected at the bottom of the chamber [Fig 2, 0044]. Forbes teaches that the workpiece can be heated to at least 1100°F (~593°C) and can exceed 2000°F (~1093°C), where 1093°C or more overlaps with claimed range [0041].
Selection of overlapping ranges has been held to be a prima facie case of obviousness absent evidence of criticality/unexpected results (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 claim 8, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Yang does not expressly teach a numerical range for the distance between the nozzle and substrate/workpiece, though Zepon notes that it influences yield % [Fig 8.6].
Forbes teaches a similar method by which molten material [0031, 0044] is sprayed onto a rotating work piece [Fig 2] (which can also be produced by spray forming [0031]) and the overspray can be collected at the bottom of the chamber [Fig 2, 0044]. Forbes teaches that the distance between the spraying nozzle and workpiece can be 1 – 72 inches (~25 – 1828 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 controlled the nozzle and workpiece/substrate in the method of Yang in view of Zepon and Forbes to be at a distance of 1 – 72 inches, as taught by Forbes. Yang, Zepon, and Forbes are in the same field of spraying molten metal to form a component and as such, an ordinarily skilled artisan would have considered the teachings of Forbes to be pertinent to the method of Yang in view of Zepon. Furthermore, given that Yang and Forbes are directed to spraying and depositing molten material in/on a rotating body, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Forbes to Yang to achieve predictable results.
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)
Selection of overlapping ranges has been held to be a prima facie case of obviousness absent evidence of criticality/unexpected results (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 claim 9, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Zepon teaches that gas atomization spray forming can produce ingot bodies with a diameter of 120 – 450 mm, (0.12 – 0.45 m) [Page 8], which overlaps with the claimed range (shared endpoints), and larger diameters (i.e. >450 mm) can be produced by a twin atomizing system [page 8], which overlaps with the claimed range. 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)”.
Moreover, changes to/differences in size and/or shape are a prima facie case of obviousness, absent evidence of criticality or unexpected results (MPEP 2144.04 IV A and B).
Regarding claim 11, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Zepon teaches that free-fall atomization produces droplets on average from 80 – 200 µm [page 6], overlaps with the claimed range. 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)”
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2020/052527, using espacenet translation) in view of Zepon (“Processing Aspect in Spray Forming”, 2017) and Forbes (US2014/0260478) as applied to claim 1, in further Zhang (CN1081154145, using espacenet translation).
Regarding claim 5, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Zepon shows that the atomization pressure can be 0.6 – 1.6 MPa (6 – 16 bar) [Fig 8.6], 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 controlled the method of Yang in view of Zepon and Forbes to have an outlet pressure of 0.6 – 1.6 MPa (as disclosed by Zepon), to achieve predictable results. Yang and Zepon are in the same field of spraying forming molten metal material and Zepon discloses this as a known gas pressure range in the spray forming process and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings to achieve predictable results.
The combination of prior art elements to yield predictable results is a prima facie case of obviousness (See MPEP 2143 A). 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)”.
Yang in view of Zepon and Forbes does not expressly disclose an inlet pressure.
Zhang teaches a method for producing metal powder using gas atomization [0008]. Zhang teaches that the gas pressure in the melting chamber prior to atomization is kept at 0 – 2 MPa (0 – 20 bar), which overlaps with the claimed range [0023]. Zhang teaches that keeping the pressure in this range allows for control over the melt jet so that a particular velocity can be achieved [0052].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the method of Yang in view of Zepon and Forbes to have an inlet pressure of 0 – 2 MPa for the nozzle (as disclosed by Zhang), to achieve predictable results. Zhang is directed to metal atomization which involves the spraying of molten metal using gas atomization. As such, an ordinarily skilled artisan would have considered the teachings of Zhang to be pertinent to the method of Yang in view of Zepon and Forbes. Moreover, because the method of Yang in view of Zepon and Forbes also results in forming molten metal and spraying it to achieve spray forming and powder creation, an ordinarily skilled artisan would have had a reasonable expectation of success in combining the teachings to achieve predictable results. Additionally, an ordinarily skilled artisan would have been motivated to control the inlet pressure of the spraying because Zhang teaches that this controls the melt velocity which an ordinarily skilled artisan would understand would also control the flow rate of molten material in the process.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2020/052527, using espacenet translation) in view of Zepon (“Processing Aspect in Spray Forming”, 2017) and Forbes (US2014/0260478) as applied to claim 1, in further view of Fan (CN101352726, using espacenet translation).
Regarding claim 6, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Yang discloses that the turntable with the body/ingot gradually rotates and descends but does not expressly teach the rotation speed [0016].
Fan teaches a method of spray forming an alloy material [Fig 4]. Fan teaches that the substrate on which the ingot is formed on, is able to rotate and descend [Fig 4], and expressly teaches that the rotation speed can be 10 – 120 rpm (1.05 – 12.57 rad/s), which overlaps with the claimed range [0014].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the workpiece/substrate in the method of Yang in view of Zepon and Forbes to descend at a speed of 10 – 120 rpm, as taught by Fan, to achieve predictable results. Yang, Zepon, Forbes and Fan are in the same field of spraying forming molten metal material and as such, an ordinarily skilled artisan would have considered the teachings of Fan to be pertinent to the method of Yang in view of Zepon and Forbes. Furthermore, given that Yang also has a rotating and descending body/substrate during forming, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Fan to Yang to achieve predictable results.
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).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2020/052527, using espacenet translation) in view of Zepon (“Processing Aspect in Spray Forming”, 2017) and Forbes (US2014/0260478) as applied to claim 1, in further view of Lee (KR20130099721, using espacenet translation)
Regarding claim 12, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Yang discloses that the turntable with the body/ingot gradually rotates and descends but does not expressly teach the speed [0016].
Lee teaches a method of spray forming an alloy material [0012, Fig 2]. Lee teaches that the substrate on which the ingot is formed, is able to rotate and descend and expressly teaches that the descending speed can be 0.5 – 1.5 mm/s (30 – 90 mm/min), which overlaps with the claimed range [0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have controlled the workpiece/substrate in the method of Yang in view of Zepon and Forbes to descend at a speed of 0.5 – 1.5 mm/s, as taught by Lee, to achieve predictable results. Yang, Zepon, and Forbes and Lee are in the same field of spraying forming molten metal material and as such, an ordinarily skilled artisan would have considered the teachings of Lee to be pertinent to the method of Yang in view of Zepon and Forbes. Furthermore, given that Yang also has a rotating and descending body/substrate during forming, an ordinarily skilled artisan would have had a reasonable expectation of success in applying the teachings of Lee to Yang to achieve predictable results.
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).
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Yang (WO2020/052527, using espacenet translation) in view of Zepon (“Processing Aspect in Spray Forming”, 2017) and Forbes (US2014/0260478) as applied to claim 1, in further view of Pittenger (“Sampling and Classification of Powders”, 2015)
Regarding claim 13, Yang in view of Zepon and Forbes teaches the invention as applied in claim 1. Zepon teaches that the free-fall atomization produces droplets on average from 80 – 200 µm [page 6], overlaps with the claimed range. 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)”
Yang teaches that the method produces both a spray-formed body and atomized powder which is collected at the bottom, but does not expressly teach that the powder is sorted to obtain particle size distributions.
Pittenger discusses sampling and classification of powders [Title]. Pittenger states that classification of powders is beneficial because it allows for the exclusion of undesired powder sizes and to obtain particular powder size distributions [page 1, left column]. Pittenger further teaches that sieving methods are particularly useful for generating narrow particle size distributions [page 8, left col].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the method of Yang in view of Zepon and Forbes and subjected the collected atomized-powder to classification and in particular, sieving, in order to attain a desired particle size distribution as disclosed by Pittenger. Given that Pittenger’s teachings are directed to metal powder and their use, an ordinarily skilled artisan would have considered the teachings relevant to the method of Yang in view of Zepon and Forbes and would have had a reasonable expectation of success in applying a classification/sieving step to the method. Moreover, an ordinarily skilled artisan would have been motivated to do so in order to attain a desired particle size distribution for the powders intended use.
Response to Arguments
Applicant's arguments filed 06/09/26 have been fully considered but they are not persuasive.
Applicant argues that the cited prior art teaches away from the claimed co-production of metallic powder and ingot. Applicant argues that Yang and Zepon discuss/imply minimizing the overspray (page 4, bottom and page 6, middle). This is respectfully not found persuasive. To the contrary, Yang expressly recites “A dual-purpose apparatus for spray forming and atomization-based powder manufacturing” [Title]. That is, Yang is explicitly directed to dual formation of a powder and an ingot in a simultaneously process from the same metallic source. Applicant’s arguments directed to this are therefore unpersuasive.
Applicant argue also that the Office has improperly relied upon hindsight because there is no motivation to preserve nor increase the powder formation. This is unpersuasive because Yang expressly recites “A dual-purpose apparatus for spray forming and atomization-based powder manufacturing” [Title]. An ordinarily skilled artisan possessing ordinary creativity would readily understand from the disclosure of Yang that two products (ingot and powder) are produced in the process/apparatus of Yang. The secondary references relied upon show that a person of ordinary skill in the art would reasonably understand that the process parameters, including those claimed, can be controlled/altered to adjust the overspray percentage, which Yang expressly recognizes as forming powder and collecting to be used. To this, the particular yield amount of ingot/body and powder would depend upon the desires of an ordinarily skilled artisan (that is, how much product is formed into ingot and how much is formed into powder) and as such, it would have been obvious to have conducted routine experimentation of the process parameters to achieve the desired % of ingot yield and % of powder yield. "[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)
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
/SALLY A MERKLING/SPE, Art Unit 1738
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