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 & Status of Claims
Claims 1 and 3-7 are examined in the instant action of which claims 1, 3 and 5 were amended in Applicant’s reply.
Claims 8-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 19 AUGUST 2025.
Claim Rejections - 35 USC § 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 1 and 3-7 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, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation "the aluminum powder mixture contains", and the claim also recites "An aluminum powder mixture consisting of" which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 and 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 6,042,631 A of Kondoh (US’631).
Regarding claims 1 and 3-4, as noted above, instant claims recite both an open and closed transitional phrases with respect to the components of the aluminum powder mixture. Claims are interpreted to have the broader open transitional term consistent with broadest reasonable interpretation.
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 the melting point limitations, it is noted that the prior art is silent regarding this limitation. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Although the prior art is silent regarding the volume median diameter (D50) as recited in the instant claims, the prior art teaches that “The minimum grain diameter of the aluminum alloy powder is preferably at least 15 μm.” “The minimum grain diameter of the aluminum alloy powder forming the raw material powder is preferably at least 15 μm.” This means that the prior art teaches that the powder size is at least 15 microns and therefore have a minimum D50 of 15 microns thereby meeting the instant recited limitation. In addition, MPEP provides that with regard to the size, merely changing the size of a prior art product would not be sufficient to distinguish from that prior art product as it has been held that changing the size would require only ordinary skill in the art and hence are considered routine expedients. See MPEP § 2144.04 (IV). Therefore, making the specific powder size D50 as claimed in the instant claims would require only ordinary skill in the art since powder size modification is routine to one skilled in the art.
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 and 3-7 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. As the claims of the reference application teaches a substantially identical composition, it would also have the properties recited in the instant claims. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-7 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. As the claims of the reference application teaches a substantially identical composition, it would also have the properties recited in the instant claims. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive.
Regarding the requirements of the mixture and the various powders, please see above as to how the prior art reads on the claimed limitations.
With respect to the transitional phrases, instant claims recite both an open and closed transitional phrases with respect to the components of the aluminum powder mixture. Claims are interpreted to have the broader open transitional term consistent with broadest reasonable interpretation.
Regarding the melting points, it is noted that the prior art is silent regarding this limitation. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
Regarding the arguments directed at the provisional rejections on the ground of nonstatutory double patenting as being unpatentable over a) claims 1-8 of copending Application No. 18/699,795 and b) claims 1-10 of copending Application No. 18/849,362, Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive.
The claims of the reference applications teach a substantially identical composition and therefore would have the properties recited in the instant claims. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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, KEITH HENDRICKS can be reached at (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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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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