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 .
Status of Claims
Claims 1, 4-5 are pending. Claim 1 is presented for this examination. Claims 4-5 are withdrawn. Claims 2-3 and 6 are cancelled.
Status of Previous Rejection
All prior art rejections are withdrawn in view of amendment filed on 05/14/2026.
Two new grounds of art rejection are rendered as follows.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
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 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (JP2018145516A) in view of APA (Applicant’s admitted prior art).
As for claim 1, instant claimed “for additive manufacturing” is intended use and preamble according to MPEP 2111.02 II.
Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, no patentable weight would be given. See MPEP 2111.02 II or if a Prior Art structure is capable of performing the intended use as recited in the preamble, then it meets the claim.
Chen discloses a maraging steel excellent in toughness comprising overlapping compositions as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Chen et al.
(weight %)
Abstract
Overlap
(weight %)
Ni
14-24
7-15
14-15
Mo
2-8
0.1-2
2
Co
11.5-13
8-12
11.5-12
Al
0.01-2
0.01-0.2
0.01-0.2
Ti
0.1-3
1-3
1-3
O
0.005-0.04
<=0.01
0.005-0.01
N
0.001-0.03
<=0.01
0.001-0.01
C
<=0.1
<=0.02
<=0.02
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Chen does not explicitly disclose the steel is in powder form.
Applicant’s admitted prior art [0002] discloses it is possible to manufacture a metal product having a complicated shape and a long durable life by additive manufacturing using maraging steel as a metal material. The additive manufacturing method would require the maraging steel in a metal powder form to be melted by laser irradiation and solidified layer by layer.
Hence, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Chen in a metal powder form for the benefit of additive manufacturing a metal product having a complicated shape and a long durable life because applicant admitted prior art teaches additive manufacturing method would require the maraging steel in a metal powder form to be melted by laser irradiation and solidified layer by layer.
Claim(s) 1 is rejected under 35 U.S.C. 103 as being unpatentable over Chen (JP2018145516A) in view of Kuse (WO2019082638A1).
As for claim 1, Chen discloses a maraging steel as indicated in rejection over Chen in view of APA above.
Chen does not explicitly disclose the steel is in powder form.
Kuse discloses maraging steel in powder form can be additive manufactured by 3D printing to make shaped objected having a complicated shape.
Hence, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Chen in a metal powder form as suggested by Kuse for the benefit of additive manufacturing a metal product having a complicated shape because Kuse teaches maraging steel in powder form can be additive manufactured by 3D printing to make shaped objected having a complicated shape.
Response to Argument
In response to applicant’s argument filed on 05/14/2026 that none of previously cited prior art discloses instant claim 1 amended feature, argument is moot since all prior art rejections are withdrawn.
In response to applicant’s argument that inventive example demonstrated improved fatigue properties and reduced inclusion per unit weight as compared to comparative example due to claimed O range, it should be noted “Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d) - § 716.02(e)”.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II and MPEP 2144.05 III.
In the instant case, Inventive Example with O at 0.015% is incommensurate in scope with claimed O range 0.005-0.04%. A single O amount is insufficient to demonstrate unexpected result over the entire claimed range.
Second, closest prior art is Chen, not applicant’s Inventive example with O at 0.015%.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (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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/JENNY R WU/Primary Examiner, Art Unit 1733
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