DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-7, drawn to an aluminum powder mixture.
Group II, claims 8-12, drawn to a method for producing an aluminum sintered body.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of an aluminum powder mixture, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of US 6,042,631 A of Kondoh (US’631).
US’631 teaches {abstract, Fig. 1-6, col 1:5-18, col 2: 11 – col 3:67, col 6:16 – col 15:54} “In a method of preparing an AlN dispersed powder aluminum alloy according to an aspect of the present invention, a first step involves preparing a mixed powder of a first aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and less than 0.01 percent by weight of a nitriding suppressive element with the rest or remainder substantially composed of Al (herein "substantially composed of Al" means Al and trivial amounts of natural or unavoidable impurities or other additives) and a second aluminum alloy powder containing less than 0.05 percent by weight of a nitriding accelerative element with the remainder substantially composed of Al.” “In a method of preparing an AlN dispersed powder aluminum alloy according to another aspect of the present invention, a first step involves preparing a mixed powder of a first aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and less than 0.01 percent by weight of a nitriding suppressive element with the rest or remainder substantially composed of Al, and a third aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and at least 0.01 percent by weight and not more than 2 percent by weight of a nitriding suppressive element with the remainder substantially composed of Al.” “In more concrete terms, the term "nitriding suppressive element" indicates a high vapor pressure element such as Sn, Pb, Sb, Bi or S.” “The nitriding accelerative element is preferably selected from a group consisting of Mg, Ca and Li.” “The essential compositions of the nitriding accelerative Al powder, the non-nitrided Al powder and the nitriding suppressive Al powder serving as raw powder materials are as follows: 1 Nitriding Accelerative Al Powder: nitriding accelerative element≧0.05%, nitriding suppressive element<0.01%, rest or remainder: Al 2 Non-Nitrided Al Powder: nitriding accelerative element <0.05%, rest or remainder: Al 3 Nitriding Suppressive Al Powder: nitriding accelerative element≧0.05% nitriding suppressive element≧0.01%, rest or remainder: Al” “The above numerical values are expressed in terms of weight, while the nitriding accelerative element is an element selected from Mg, Ca and Li and the nitriding suppressive element is a high vapor pressure element consisting of Sn, Pb, Sb, Bi or S as described above.” “It is possible to add an element other than or in addition to the nitriding accelerative element consisting of Mg, Ca or Li and the nitriding suppressive element, i.e., the high vapor pressure element such as Sn, Pb, Sb, Bi or S to the aluminum alloy powder employed in the present invention. In order to improve the wear resistance or heat resistance of the alloy, for example, it is possible to add at least one element selected from the group of Si, Fe, Ni, Cr, V, Ti, Cu, Zr, Mn, Mo, Zn and the like as needed. Particularly when Si, which has an effect of promoting formation of AlN coating layers, is introduced into the nitriding accelerative Al powder in an amount of at least 1%, the AlN coating layers can be readily formed in the sintering process.” thereby reading on the instant technical feature thereby making the instant technical feature not a special technical feature.
During a telephone conversation with MITSUHIRO HARAGUCHI on 19 AUGUST 2025 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-7, drawn to an aluminum powder mixture. Affirmation of this election must be made by applicant in replying to this Office action. Claims 8-12 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
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 1-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Instant claims, namely independent claim 1, was amended to recite as follows (amendments emphasized).
1. An aluminum powder mixture comprising:
and
an aluminum alloy powder, wherein
the aluminum powder mixture contains the aluminum alloy powder in a range of [[with]] 5% by mass or more and 30% by mass or less,[[of an]]
the aluminum alloy powder [[that]] has a lower melting point than the pure aluminum or the aluminum alloy, and
However, instant specification teaches “an aluminum powder mixture according to the present invention is an aluminum powder mixture obtained by mixing a starting material powder, which is composed of pure aluminum or an aluminum alloy, with 5% by mass or more and 30% by mass or less of an aluminum alloy powder that has a lower melting point than the pure aluminum or the aluminum alloy, and the aluminum alloy powder is composed of an aluminum alloy which has a composition that contains 5% by mass or more and 20% by mass or less of one or two of Si and Cu, and 0.2% by mass or more and 2.0% by mass or less of Mg, with a balance of aluminum and unavoidable impurities.” and therefore does not teach the powder mixture to have the presence of anything other than “a starting material powder which is composed of pure aluminum or an aluminum alloy” and “5% by mass or more and 30% by mass or less of an aluminum alloy powder that has a lower melting point than the pure aluminum or the aluminum alloy, wherein aluminum alloy powder is composed of an aluminum alloy which has a composition that contains 5% by mass or more and 20% by mass or less of one or two of Si and Cu, and 0.2% by mass or more and 2.0% by mass or less of Mg, with a balance of aluminum and unavoidable impurities”. In other words, the instant specification limits the powder mixture to have a) a first powder which is “the starting material powder” above and b) 5-30 mass% of a second powder which is an aluminum alloy powder with the specific composition above and does not allow other unrecited components as inferred by the amendment/addition of the transitional term “comprising” to the instant claims. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP § 2111.03.
Therefore, instant claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1-7 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.
Regarding claims 1-7, claim 1 recites “An aluminum powder mixture comprising: a starting material powder, which is composed of pure aluminum or an aluminum alloy; and an aluminum alloy powder” and further recites limitations directed to the aluminum alloy powder. However, the starting material powder can be of an aluminum alloy meaning that that also can be an aluminum alloy powder. Therefore, it is unclear whether the limitations apply to all recitations of aluminum alloy powder or if it only applies to the second and explicit recitation of “an aluminum alloy powder”. Claims 2-7 depend on claim 1, do not resolve the issue and thereby also indefinite.
Claim Rejections - 35 USC § 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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,042,631 A of Kondoh (US’631).
Regarding claims 1-4, US 6,042,631 A of Kondoh (US’631) teaches {abstract, Fig. 1-6, col 1:5-18, col 2: 11 – col 3:67, col 6:16 – col 15:54} “In a method of preparing an AlN dispersed powder aluminum alloy according to an aspect of the present invention, a first step involves preparing a mixed powder of a first aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and less than 0.01 percent by weight of a nitriding suppressive element with the rest or remainder substantially composed of Al (herein "substantially composed of Al" means Al and trivial amounts of natural or unavoidable impurities or other additives) and a second aluminum alloy powder containing less than 0.05 percent by weight of a nitriding accelerative element with the remainder substantially composed of Al.” “In a method of preparing an AlN dispersed powder aluminum alloy according to another aspect of the present invention, a first step involves preparing a mixed powder of a first aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and less than 0.01 percent by weight of a nitriding suppressive element with the rest or remainder substantially composed of Al, and a third aluminum alloy powder containing at least 0.05 percent by weight of a nitriding accelerative element and at least 0.01 percent by weight and not more than 2 percent by weight of a nitriding suppressive element with the remainder substantially composed of Al.” “In more concrete terms, the term "nitriding suppressive element" indicates a high vapor pressure element such as Sn, Pb, Sb, Bi or S.” “The nitriding accelerative element is preferably selected from a group consisting of Mg, Ca and Li.” “The essential compositions of the nitriding accelerative Al powder, the non-nitrided Al powder and the nitriding suppressive Al powder serving as raw powder materials are as follows: 1 Nitriding Accelerative Al Powder: nitriding accelerative element≧0.05%, nitriding suppressive element<0.01%, rest or remainder: Al 2 Non-Nitrided Al Powder: nitriding accelerative element <0.05%, rest or remainder: Al 3 Nitriding Suppressive Al Powder: nitriding accelerative element≧0.05% nitriding suppressive element≧0.01%, rest or remainder: Al” “The above numerical values are expressed in terms of weight, while the nitriding accelerative element is an element selected from Mg, Ca and Li and the nitriding suppressive element is a high vapor pressure element consisting of Sn, Pb, Sb, Bi or S as described above.” “It is possible to add an element other than or in addition to the nitriding accelerative element consisting of Mg, Ca or Li and the nitriding suppressive element, i.e., the high vapor pressure element such as Sn, Pb, Sb, Bi or S to the aluminum alloy powder employed in the present invention. In order to improve the wear resistance or heat resistance of the alloy, for example, it is possible to add at least one element selected from the group of Si, Fe, Ni, Cr, V, Ti, Cu, Zr, Mn, Mo, Zn and the like as needed. Particularly when Si, which has an effect of promoting formation of AlN coating layers, is introduced into the nitriding accelerative Al powder in an amount of at least 1%, the AlN coating layers can be readily formed in the sintering process.” 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 5, the prior art teaches “Namely, the inventors have succeeded in working out such a nitriding mechanism that, when heating Al powder containing at least 0.05 percent by weight of Mg in a nitrogen gas atmosphere, the Mg dispersed in the powder moves from the interior to the grain surfaces due to the high vapor pressure and strong affinity with oxygen contained in the aluminum oxide films formed on the grain surfaces, and the aluminum oxide films formed on the grain surfaces are decomposed by reduction of Mg when the temperature exceeds a level of about 450° C. to form metallic Al, which in turn reacts with nitrogen contained in the heating atmosphere to form AlN coating layers that do not contain impurity oxygen on the grain surfaces or grain boundaries.” teaches “The aluminum alloy powder serving as the raw material powder is generally prepared by atomization, so that oxygen (O) contained in the atomization atmosphere reacts with aluminum (Al) to form aluminum oxide (Al2O3) films on the grain surfaces.” Therefore, a person having ordinary skill in the art to which the claimed invention pertains would have expected the powder of US’631 to not have free oxygen and therefore reading on the instant claimed range.
Regarding claim 6, the prior art teaches a sintered body made with the powders therefore reads on the intended use recited in the instant claims.
Regarding claim 7, the prior art does not teach that the powder is “a raw material powder for metal additive manufacturing”. The limitation is an intended use of the powder. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See MPEP § 2111.02 II. In the instant case, the prior art teaches a substantially identical mixture and therefore would be capable of performing the intended use of the instant claim. In the alternative, it 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 to take the powder mixture of US’631 and use it for additive manufacturing as additive manufacturing using aluminum powder is well known and routine in the art.
Double Patenting
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.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of copending Application No. 18/699,795 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teach an aluminum powder mixture with substantially identical composition and melting point.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/849,362 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application teach an aluminum powder mixture with substantially identical composition and melting point. With respect to the melting point, the properties would naturally flow from the substantially identical product taught by the claims of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733