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 10/27/2025, is acknowledged. Claims 1, 6, and 11-12 are amended; Claims 13-16 are newly added. No new matter is present. Claims 1-16 are currently pending, claims 5 and 9-12 are withdrawn.
Election/Restrictions
Applicant's election with traverse of Group I and the species drawn to intentionally added Mg, corresponding to Claims 1-4, 6-8, and newly added claims 13-16, in the reply filed on 10/27/2025 is acknowledged. The traversal is on the ground(s) that the instant claims use the closed transitional phrase “consisting of” and prior art Rometsch requires Sc, which is not a claimed element. This argument is not found persuasive because Claim 1 allows for up to 0.5 weight% of “inevitable impurities,” and neither the claim nor specification provide a specific definition of an “inevitable impurity.” In fact, the specification states “Iron and silicon are considered impurities.” (para. 6 of the PG Pub.) Therefore, while one of ordinary skill in the art would interpret “inevitable impurities,” in some circumstances or arts, as referring to elements such as oxygen, nitrogen, and sulfur, the instant specification makes clear that common intentionally added elements, such as Fe and Si, may also be considered to be inevitable impurities. Therefore, the claim is interpreted to allow for any additional element such that the total of such additional elements 0.5 weight% or less. As the scandium content of Rometsch may be below 0.5 wt%, it is deemed to meet the instant claim. The requirement is still deemed proper and is therefore made FINAL.
Claims 5 and 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Groups and/or species, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 10/27/2025.
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 and each figure is incorrectly labeled as “Figure 1,” “Figure 2,” etc. rather than labeled as “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 § 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, and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Rometsch et al. (US 2020/0362440).
With respect to Claim 1, Rometsch teaches a pre-alloyed powder useful for additive manufacturing techniques, the alloy having a composition, by weight%, as follows (para. 1, 6-10, 14-15):
Claim 1
Rometsch
Mn
3-5.5
2.01-15.0
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 0-0.5 of inevitable impurities
Balance with incidental impurities
Other
-
Sc: 0.3-2.0
*up to 15% total
**up to 15% total
Compositional ranges including zero (e.g. the claimed ranges of Mg, Fe, Si, and O) are interpreted as optional elements. It is noted that the claim used the closed transitional phrase “consisting of” excluding additional elements; however, as the claim allows for up to 0.5 weight% of “inevitable impurities,” and neither the claim nor specification provide a specific definition of an “inevitable impurity,” the claim is interpreted to allow for any additional element such that the total of such additional elements 0.5 weight% or less.
Accordingly, the reference is deemed to teach a pre-alloyed powder with a composition overlapping each of the instantly required ranges and which does not require any element outside those claimed in an amount totaling greater than 0.5 weight%. 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 Claims 2-4, Rometsch teaches compositional ranges of Zr, Cr, Fe, and Si overlapping the respectively claimed ranges. (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 6, Rometsch teaches compositional ranges of Mn, Zr, and Cr in amounts overlapping the claimed combined total. (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. 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).
With respect to Claim 15, Rometsch teaches the required addition of 0.3 wt% Sc or more, constituting an “impurity” as detailed with respect to claim 1 above. The range of the reference and the claimed range of “below 0.3 wt%,” while not technically overlapping, are deemed sufficiently close to establish a prima facie case of obviousness. MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rometsch et al. (US 2020/0362440) as applied to claim 1 above, in view of Larouche et al. (US 2021/0178468).
With respect to Claim 8, 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 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.
Claim(s) 1-4, 6-7, and 13-16 are 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).
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
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 0-0.5 of inevitable impurities
Balance with incidental impurities
*preferably 10 wt% total or less
Compositional ranges including zero (e.g. the claimed ranges of Mg, Fe, Si, and O) are interpreted as optional elements. Thus, Tonn teaches an Al-Mn based alloy with a composition overlapping each of the instantly required ranges and which does not require any element outside those claimed. 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.
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 Claims 15-16, 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 Schaedler et al. (US 2020/0199716).
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Chebab (US 2021/0156005) drawn to an aluminum alloy powder for additive manufacturing, but requiring Si and Fe in excess of the claimed ranges.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735