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/Restrictions
Applicant’s election without traverse of Group I and the species drawn to cold-spraying, corresponding to claims 1, 3-4, 6-8, 10-11, 13-14, 16-17, and 20 in the reply filed on 12/1/2025 is acknowledged.
Claims 2, 21, 23-24, and 27-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group(s) and/or species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/1/2025.
Drawings
The drawings are objected to because according to 37 CFR 1.84(u)(1), when there is more than one figure, each figure should be labeled with the abbreviation “FIG.” with a consecutive Arabic numeral (e.g. FIG. 1, FIG. 2, etc.) or an Arabic numeral and capital letter in the English alphabet (e.g. FIG. 1A, FIG. 1B, etc.). MPEP 507.
The current application contains more than one figure, improperly labeled as (Figure 1, Figure 2, etc.) rather than the proper form (FIG. 1, FIG. 2, etc.) as required by 37 CFR 1.84(u)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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, 3-4, 6-8, 10-11, 13-14, 16-17, and 20 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.
Claim 1 requires “a plurality of recessed and/or protruding surface features having elongated non-vertical walls.” It is unclear if the term “elongated” refers to the depth/height direction of the wall or that the feature extends along the surface of the substrate in an elongated manner and the term elongated refers to a length direction (e.g. the length of an elongated groove rather than its depth). Claims 3-4, 6-8, 10-11, 13-14, 16-17, and 20 are indefinite based on their dependency.
Claim 3 requires “moving the metal applicator or energetic beam, relative to the profiled surface, in a direction which is substantially orthogonal to the elongated non-vertical walls.” It is unclear what dimension or direction with respect to the non-vertical walls is being considered and as a result, unclear what direction of movement is required such that is substantially orthogonal to the non-vertical walls. Claim 4 is also indefinite based on its dependency to claim 3.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 requires that “wherein each successive deposition layer conforms sufficiently to the profile of its preceding deposition layer to propagate a surface profile corresponding to the profiled surface of the substrate through the first thickness or a substantial portion thereof.” Claim 1 is interpreted to require that the surface profile is propagated through the entire first thickness of substantially all of the first thickness. Claim 10, dependent on claim 1, requires “wherein the surface profile corresponding to the profiled surface of the substrate is propagated only partway through the first thickness of the metallic structure such that a top surface…is substantially flat.” Claim 10 directly contradicts the requirements of claim 1 as “only partway” is interpreted to require a significantly smaller portion of the first thickness than “a substantial portion” of the first thickness and therefore, fails to include all of the limitations of a claim upon which it depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim(s) 1, 3, 5-8, 10-11, 13-14, 16-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Gulizia (US 2015/0165697) in view of Bunker (US 2015/0147479).
With respect to Claim 1, Gulizia teaches a method of making a metallic structure, in particular, a metal faceplate for a lay up tool, the method comprising providing a deposition-receptive substrate comprising a profiled surface, wherein the profiled surface may comprise a repeating pattern of grooves or channels with a cross-sectional shape such as V-shaped or U-shaped, and wherein the grooves improving overall bond strength with cold-sprayed particles. (abstract; para. 59-66). Thus, Gulizia, teaches a method step of providing a substrate with a profiled surface comprising a plurality of recessed and/or protruding surface features having elongated non-vertical walls. The reference teaches the metallic material faceplate preferably has a thickness of 2-10 mm and the grooves have a pitch of, for example, 1.0 mm and examples wherein the substrate surface features have a depth in excess of 1.5 mm based on the disclosed faceplate thickness. (para. 14, 63; figs. 1, 3). Accordingly, Gulizia is deemed to teach non-vertical walls (e.g. V- or U-shaped grooves) having a set of parameters encompassing a depth of at least 0.5 mm relative to a base plane of the substrate. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Moreover, selection of groove surface dimensions, including the claimed depth, requires only an obvious modification of the basic size of the article and would have been prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Gulizia teaches that the method further comprises a step of depositing a metallic material on the substrate by cold spraying, an additive manufacturing technique, to produce a first deposition layer which conforms to the profiled surface including the elongated non-vertical walls. (para. 59-66; Figs. 1-3). The reference teaches forming, by cold spraying additive technique, a metal structure conforming to the profile of the substrate profile to a desired final thickness (Id.) but does not explicitly discuss whether such cold spraying requires multiple successive steps/passes of the cold spraying means.
Bunker teaches a method of forming a metallic structure, the method comprising a plurality of cold spraying steps to build up layers of a metallic material on a substrate, including wherein one or more deposited layers conform to a surface profile of the substrate. (para. 35-44; figs. 1-7). Bunker teaches embodiments wherein the substrate has a plurality of recesses for forming channels, wherein the channels have a depth of 0.25-1.5 mm and may have non-vertical walls. (para. 26, 43-45; Fig. 5).
Thus, Gulizia and Bunker are both drawn to methods of making metallic articles by cold spraying a metallic material onto a profiled substrate in order to build up the metallic structure. It would have been obvious to one of ordinary skill in the art to modify the method of Gulizia to perform the cold spraying of metallic material via a plurality of successive cold spraying deposition steps, as taught by Bunker, in order to form a metallic structure with a desired thickness. Further, it would have been obvious to one of ordinary skill in the art, in view of the teachings of Gulizia and Bunker to perform such plurality of depositions steps wherein each successive deposition layer conforms sufficiently to the profile of its preceding deposition layer to propagate a surface profile corresponding to the profiled surface of the substrate through the first thickness or a substantial portion thereof, in order to build up the desired metallic structure according to the desired application, for example, a metal faceplate for a lay up tool as taught by Gulizia.
With respect to Claim 3, Gulizia teaches tailoring the operating parameters of the cold spray process, including controlling the spray angle and stand-off distance as the cold spray nozzle moves along the substrate. (para. 34-35). Bunker teaches depositing metallic material with a cold spraying process wherein the movement of the spray means is controlled along the X, Y, and Z axes. (para. 42-43). Accordingly, it would have been obvious to one of ordinary skill in the art in view of the teachings of Gulizia and Bunker to move the cold spray nozzle (i.e. metal applicator) relative to the profiled surface in a direction which is substantially orthogonal to the elongated non-vertical walls, in order to deposit metallic material along the surface and conforming to the surface as well as to build up the metallic material to a desired thickness.
With respect to Claim 5 and 6, Gulizia in view of Bunker teach a method wherein the additive manufacturing technique comprises cold spray deposition. (see rejection of claim 1 above).
With respect to Claim 7, Gulizia teaches a metallic material faceplate having a thickness of 2-10 mm and the grooves have a pitch of, for example, 1.0 mm and examples wherein the substrate surface features have a depth in excess of 1.5 mm based on the disclosed faceplate thickness. (para. 14, 63; figs. 1, 3). Bunker teaches examples of surface features, such as channels, having a depth of 1.5 mm. (para. 26). It would have been obvious to one of ordinary skill in the art to modify the method of Gulizia in view of Bunker to form surface features having a depth of at least 1.5 mm relative to the base plane of the substrate, as taught by Gulizia and/or Bunker in order to form a metallic article with desired grooves and/or channels for a desired application. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Moreover, selection of groove/channel surface dimensions, including the claimed depth, requires only an obvious modification of the basic size of the article and would have been prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
With respect to Claim 8, Gulizia in view of Bunker teach a method of forming a metallic article wherein the surface profile of the substrate is propagated through a substantial portion of the deposited layers of the metallic structure (see rejection of claim 1) and is therefore, deemed to meet the instant claim. Alternatively, Bunker teaches embodiments wherein the surface profile is propagated only partway through the metallic structure and the top layer of the metallic structure is substantially flat. (see, e.g., Figs. 4, 5, and 7). It would have been obvious to one of ordinary skill in the art to modify the method of Gulizia in view of Bunker such that the surface profile is propagated only partway through the first thickness of the metallic structure such that a top surface is substantially flat, as taught by Bunker, in order to form a metallic structure with a flat/smooth top surface while maintaining the benefit of improved bonding/adhesion of the deposited metallic material on the substrate due to the grooved substrate, as taught by Gulizia.
With respect to Claim 11, Gulizia teaches wherein the substrate may be removed, but appears to be silent as to the material of the substrate. (para. 48). Bunker teaches wherein the substrate may be formed of ceramics, metal-based materials, or composites. (para. 24). It would have been obvious to one of ordinary skill in the art to modify the method of Gulizia in view of Bunker to select a substrate material having a differing composition than the deposited metallic material, for example, a ceramic, the support composition thus having a different coefficient of thermal expansion, in order to allow for easier separation/removal of the substrate via thermal treatment.
With respect to Claim 13, Gulizia teaches wherein the elongated non-vertical walls may form V-shaped or U-shaped grooves or channels and alternatively teaches rectangular shaped grooves. (para. 63) Thus, Gulizia is deemed to teach elongated surface features that form an angle range from 90 to 180° relative to the base plane of the substrate, overlapping the claimed range. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 14, Gulizia in view of Bunker teach a method wherein the surface features from grooves. (see rejection of claim 1 above).
With respect to Claim 16, Gulizia teaches wherein the metallic material comprises a nickel-iron alloy. (abstract; para. 14-15).
With respect to Claim 17, Gulizia teaches wherein the deposited metallic material forming a faceplate may have a thickness of 2-10 mm, overlapping the claimed range. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 20, the claim does not specify how the plurality of recessed and/or protruding top surface features are formed, does not distinguish the surface features of the substrate and the recited “top layer,” and does not distinguish the composition of the deposited metallic material in claim 20 from that of claim 1. As detailed with respect to claim 1, Gulizia in view of Bunker teach a method of additively manufacturing a metallic structure, the method comprising a plurality of additive deposition steps of a metallic material, wherein each deposition step forms a layer of metallic material that may substantially conform to a substrate having a profiled surface comprising a plurality of recessed features forming elongated grooves with non-vertical walls.
One of ordinary skill in the art would recognize that the method of Gulizia in view of Bunker is not limited in the number of deposition steps that may be performed so long as the final metallic structure obtains the desired dimensions. Accordingly, a first plurality of deposition steps may be considered as forming a “first thickness,” of a metallic structure wherein the top layer retains a plurality of recessed top surface features propagated through the layers from the substrate to the top layer of the first thickness (and thus meets the limitation “forming a plurality of recessed and/or protruding top surface features…”), and additional steps of depositing metallic material may be performed on this first thickness top layer, the successive deposition steps extending the thickness of the metallic structure to a “second thickness” and conforming to the preceding layer(s) and meeting each of the instantly claimed limitations of claim 20.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Gulizia (US 2015/0165697) in view of Bunker (US 2015/0147479), as applied to Claim 3 above, further in view of Nault (US 2024/0058867).
With respect to Claim 4, Gulizia in view of Bunker teach a method wherein the metallic material is deposited by moving a metal applicator relative to the profiled surface (see rejection of claim 3 above), but the references are silent as to whether such movement comprises a raster pattern across the substrate.
Nault teaches a method of additively manufacturing a metallic article, the method comprising moving a cold spray means along a raster pattern to form deposits of a uniform thickness. (para. 5, 7, 42-44, 64).
Thus, Gulizia and Nault are both drawn to methods of cold spraying a metallic material to form a metallic structure. It would have been obvious to one of ordinary skill in the art to modify the method of Gulizia in view of Bunker to perform the steps of depositing metallic material by moving a cold spray metal applicator relative to the profiled surface in a raster pattern across the substrate, as taught by Nault, in order to deposit metallic material layers with uniform thickness across the substrate.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735