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 .
Claim Status
An amendment, filed 5/25/2026, is acknowledged. Claims 1 and 16 are amended; Claim 15 is canceled; claim 17 is newly added. No new matter is present. Claims 1-14 and 16-17 are currently pending, claims 5 and 9-12 are withdrawn.
Drawings
The replacement drawings, filed 5/25/2026, are acceptable.
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) 1-4, 6-7, 13-14, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Tonn et al. WO 2008/138614)(previously cited) in view of Rometsch et al. (US 2020/0362440)(previously cited) and as evidenced by Mondolfo, “Aluminum Alloys: Structure and Properties,” published 1976.
With respect to Claim 1, Tonn teaches an aluminum alloy with a composition, by weight%, as follows (pgs. 1, 3 of translation):
Claim 1
Tonn
Mn
3.5-5.5
2.1-5
Zr
0.2-2
0-4*
Cr
0.2-1.4
0-4*
Mg
0-2
0-4*
Fe and Si
0-0.7 total of Fe and Si
Fe: 0-4*
Si: 0-4*
O
0-0.7
-
Al
Balance with 0-0.2 of inevitable impurities
Balance with unavoidable impurities
*preferably 10 wt% total or less
Compositional ranges including zero (e.g. the claimed ranges of Mg, Fe, Si) are interpreted as optional elements. Thus, Tonn teaches an Al-Mn based alloy with a composition overlapping each of the instantly required ranges, with the exception that Tonn is silent as to specific oxygen impurity content, wherein the composition not require any element outside those claimed. (see also rejection of claim 16 below, incorporated here by reference, discussing the content of impurity elements). 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.
With respect to the claimed oxygen content, the claim requires that oxygen be present but with no specific lower limit. Therefore, any amount of oxygen impurity (e.g. single atom) would be sufficient to meet the instant limitation. Tonn teaches an aluminum alloy comprising unavoidable impurities (see above). One of ordinary skill would expect that an alloy based on aluminum, known by one of ordinary skill in the art to exhibit a high oxidation potential, would be expected to comprise among unavoidable impurities at least a very minor content of oxygen, meeting the instant claim. (as evidenced by Mondolfo, teaching commercially pure aluminum, including refined aluminum to remove impurities, still comprises minor contents of unavoidable impurities including oxygen, Table 1.2). Further, it is noted that as Tonn is not drawn to a high purity/refined composition, the impurity content would be expected to exceed that evidenced by Mondolfo.
Tonn is drawn to an Al-Mn having high thermal stability and strength (abstract), but is silent as to providing the alloy composition in the form of a powder.
Rometsch teaches pre-alloyed Al-Mn-based powder useful for additive manufacturing techniques, the alloy having a composition substantially overlapping that of Tonn and the instant claims. (para. 1, 6-10, 14-15). Rometsch teaches that the pre-alloyed powder exhibits properties including superior corrosion resistance, thermal stability, and mechanical properties such as thigh strength. (para. 13).
Thus, both Tonn and Rometsch are drawn to Al-Mn-based alloys having superior thermal stability and strength. It would have been obvious to one of ordinary skill in the art to use the aluminum alloy of Tonn to form a pre-alloyed powder, as taught by Rometsch, in order to form a powder useful for applications such as additive manufacturing. In other words, Rometsch teaches the utility of Al-Mn alloys with high strength and thermal stability in the form of a powder for additive manufacturing. Thus, it would have been obvious to one of ordinary skill in the art to provide the alloy of Tonn in the form of a pre-alloyed powder to enhance the utility of the composition for use in applications such as additive manufacturing. Moreover, a mere change in form, such as a change from a bulk alloy to a powder 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 Claims 2-4, Tonn teaches compositional ranges of Zr, Cr, Fe, and Si overlapping the respectively claimed ranges. (see rejection of claim 1 above; pg. 3 of translation). 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 6, Tonn teaches compositional ranges of Mn, Zr, and Cr in amounts overlapping the claimed combined total. (see rejection of claim 1 above; pg. 3 of translation). 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. Furthermore, regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition formula, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 7, the claim recites limitations drawn to the method in which the claimed product is made and therefore, constitute product-by-process limitations. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, the claimed structure comprises a composition in the form of a pre-alloyed powder and the product-by-process claims do not introduce any additional structure. As the reference teaches a pre-alloyed powder meeting the limitations of Claim 1, it is deemed to meet the instant claim.
Moreover, Rometsch specifically teaches wherein the powder is produced by melting materials with the desired composition and performing gas atomization. (see para. 20, 22). Accordingly, it would have been obvious to one of ordinary skill in the art to produce the pre-alloyed powder of Tonn in view of Rometsch via melting materials with the desired composition and performing inert gas atomization of the melt, in order to obtain a powder with a desired composition.
With respect to Claims 13-14, Tonn does not require any scandium, erbium, thulium, ytterbium or lutetium and therefore, is deemed to be free of the intentionally added content of said elements. (see pg. 3 of translation).
With respect to Claim 16, Tonn does not require the addition of any “further inevitable impurities,” teaching that the alloy “may contain minor amounts of further alloying constituents and also unavoidable impurities.” (pg. 3 of translation). Tonn teaches intentionally added components with contents as low as 0.0001 wt% and therefore, the scope of “minor amounts” of inevitable impurities is deemed to fall within or overlap the instantly claimed ranges of claims 15 and 16. 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. Furthermore, as the reference is drawn to only minor amounts of impurities, it would have been obvious to one of ordinary skill in the art to minimize the content of such impurities, including to a level below the claimed range, in order to improve the consistency and quality of the alloy.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tonn et al. WO 2008/138614) in view of Rometsch et al. (US 2020/0362440), as applied to claim 1 above, further in view of Larouche (US 2021/0178468)(previously cited).
With respect to Claim 8, Tonn in view of Rometsch teaches wherein the pre-alloyed Al-based powder is suitable for additive manufacturing, but is silent as to the particle size of the powder.
Larouche teaches an Al-based alloy powder for additive manufacturing formed via atomization, wherein the powder is sieved to control the powder particle size distribution of, for example 10-53 microns, and thus, eliminating or substantially eliminating particles with a size outside the desired range. (para. 76-77). Thus, Larouche is deemed to teach selecting a particle size range of 10-53 microns with less than 10% of particles falling outside the range. Furthermore, the reference teaches selecting a powder with good sphericity and narrow particle size distribution improves properties of the powder such as improved flowability, enhancing its utility in additive manufacturing applications. (para. 1-5, 52-53, 64).
It would have been obvious to one of ordinary skill in the art to modify the Al-based powder of Tonn in view of Rometsch to comprise a particle size distribution of 10-53 microns with less than 10% of particles falling outside the range, as taught by Larouche, in order to enhance the properties of the powder for use in additive manufacturing.
Allowable Subject Matter
Claim 17 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record, including Tonn and Rometsch, fail to teach a pre-alloyed Al-based powder according to claim 1, wherein the oxygen (O) content is 0.35-0.7% by weight.
Response to Arguments
Applicant’s arguments, filed 5/25/2026, with respect to the rejection(s) of claim(s) 1-4, 6-7, and 15 under 35 U.S.C. 102 over Rometsch and claim 8 over Rometsch in view of Larouche have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Rometsch requires a content of scandium outside the claimed limit of impurity elements and therefore, fails to meet claim 1 as amended. Therefore, the rejection has been withdrawn.
Applicant’s arguments, filed 5/25/2026, with respect to the rejection(s) of claims 1-4, 6-7, 13-16 under 35 U.S.C. 103 over Tonn in view of Rometsch and claim 8 over Tonn in view of Rometsch and Schaeler have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, the rejections do not address an oxygen impurity content, now required by the amended claim 1. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Tonn in view of Rometsch and as evidenced by Mondolfo, as detailed above.
Applicant argues with respect to Tonn in view of Rometsch that as Rometsch requires a content of an element outside those claimed (scandium) and exceeding the amended limit of impurity elements, the combination fails to meet the claimed composition. Applicant also argues that Tonn is not drawn to an Al-based powder suitable for additive manufacturing and argues that Rometsch “is not a generic disclosure of aluminum powders suitable for additive manufacturing.” These arguments have been fully considered but are not found persuasive.
First, the claim 1 requires only an “Al-based powder suitable for additive manufacturing.” This limitation is drawn to the intended use of the powder and does not require any specific structure. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. So long as the prior art teaches an Al-based alloy in the form of a powder conceivably capable of use in any of the myriad of additive manufacturing techniques, the prior art meets the claimed limitation.
Rometsch is not relied upon to teach the claimed composition and therefore, Applicant’s arguments drawn to the composition of Rometsch are not found persuasive. Furthermore, Applicant’s arguments that Rometsch does not teach a generic disclosure of Al-based powders suitable for additive manufacturing is a mischaracterization of the references and rejection and ignores the substantial overlap the respective compositions.
Tonn and Rometsch are both drawn to Al-Mn-based alloys having superior thermal stability and strength. It would have been obvious to one of ordinary skill in the art to use the aluminum alloy of Tonn to form a pre-alloyed powder, as taught by Rometsch, in order to form a powder useful for applications such as additive manufacturing as well as the wide range of other powder-based metallurgical techniques with a predictable result of success. Rometsch teaches the utility of, specifically, Al-Mn-based alloys with high strength and thermal stability in the form of a powder for additive manufacturing. Thus, it would have been obvious to one of ordinary skill in the art to provide the alloy of Tonn in the form of a pre-alloyed powder to enhance the utility of the composition for use in applications such as additive manufacturing.
Such a combination does not require the particulars of Rometsch as forming a powder from a known alloy would have been prima facie obvious to one of ordinary skill in the art. A mere change in form, such as a change from a bulk alloy to a powder would have been prima facie obvious to one of ordinary skill in the art See 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.").
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 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
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