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 .
Priority
The present application filed April 20, 2023 is a continuation-in-part (CIP) of US App. No. 16/751,868 (App ‘868) filed January 24, 2020.
Pending claim 1 lines 8-9 recite “cleaning the intermediate workpiece without removing the silicon particles agglomerated on the surface thereof”. App ‘868 is silent to this feature. Therefore, the pending claims are afforded a priority date of the filing of the instant application of April 20, 2023.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed January 16, 2026. Applicant’s affirmation of the election without traverse of Group I and Species I-Bath, claims 1-11 is acknowledged (Remarks p. 7 para. 5).
Claims Filing Date
January 16, 2026
Amended
1, 2
New
21-27
Cancelled
10, 15-20
Withdrawn
12-14
Under Examination
1-9, 11, 21-27
Withdrawn Drawing Objection
The following drawings objection is withdrawn due to specification [0047] amendment:
Reference numeral 405 referring to 1) agglomerated silicon particles in [0047] and 2) a surface in [0054] and [0059]-[0061].
Withdrawn Specification Objection
The following specification objection is withdrawn due to persuasive applicant argument:
Inconsistency regarding removal or not of the agglomerated silicon particles. Applicant’s specification at [0007], [0057], [0064], and [0065] disclose etching does not remove agglomerated silicon particles before conversion coating, while [0061] discloses removing agglomerated silicon particles before conversion coating in reference to Figs. 2-4 to “improve adherence of coating materials”.
The applicant persuasively argues [0061] describes an optional embodiment (Remarks p. 8 paras. 2-5).
Withdrawn Claim Objection
The following objection is withdrawn due to claim amendment:
Claim 11 lines 1-2 “applying the conversion coating onto the surface of the intermediate workpiece immersing the intermediate workpiece”.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejection is withdrawn due to claim cancellation:
Claim 10 lines 1-2 “the stress-relief temperature environment”.
Response to Remarks filed January 16, 2026
Wu in view of Revilla
Applicant’s arguments, see Remarks p. 2 paras. 2-3, filed January 16, 2026, with respect to Wu in view of Revilla have been fully considered and are persuasive. The rejection of Wu in view of Revilla has been withdrawn.
The applicant persuasively argues Revilla cleans by ultrasonics and does not etch prior to conversion coating (Remarks p. 9 para. 3).
Wu in view of Coates
Applicant’s arguments, see Remarks para. spanning pp. 9-10, filed January 16, 2026, with respect to Wu in view of Coates have been fully considered and are persuasive. The rejection of Wu in view of Coates has been withdrawn.
The applicant persuasively argues Coates produces a bare anodized surface with exposed silicon particles to achieve a sparkling, erasable writing surface, such that applying an organic coating over the anodized layer would defeat the stated purpose of Coates (Remarks para. spanning pp. 9-10).
Wu in view of Edakawa
Applicant’s arguments, see Remarks para. spanning pp. 10-11, filed January 16, 2026, with respect to Wu in view of Revilla have been fully considered and are persuasive. The rejection of Wu in view of Revilla has been withdrawn.
The applicant persuasively argues Edakawa fluoride-ion etches to remove silicon form the surface for subsequent metal substitution reactions and plating, where the dissolution of silicon necessarily produces smut, which must be removed using nitric acid or mechanical treatment (Remarks para. spanning pp. 10-11).
Edakawa discloses that the etching reduces the silicon concentration on the surface of the material and that smut remains when silicon is dissolved (Remarks p. 2 para. 1).
New Claim 21
Applicant’s arguments, see Remarks p. 11 para. 5, filed January 16, 2026, with respect to New Claim 21 have been fully considered and are persuasive. New claim 21 was not rejected over Wu in view of Revilla, over Wu in view of Coates, or over Wu in view of Edakawa.
The applicant argues the cited prior art does not teach the combination of features of claim 21 (Remarks p. 11 para. 5).
New Grounds
In light of claim amendment upon and upon further consideration a new grounds of rejection is made over Wu in view of Yamamoto.
Claim Objection
Claim 11 is objected to because of the following informality:
Line 1 status identifier “(Proposed Amendment)” does not appear to be a proper status. According to 37 C.F.R. 1.121, all claims being currently amended in an amendment paper shall be presented in the claim listing, indicate a status of “currently amended”. MPEP 714.
Appropriate correction is required.
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.
Claims 1-9, 11, and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (WO 2019/090398) in view of Yamamoto (JP H02-101181 machine translation).
Regarding claim 1, Wu discloses a method for forming a workpiece (component) ([001]), the method comprising:
fabricating, employing an additive manufacturing process (selective laser melting, SLM), a raw workpiece from aluminum alloy that includes silicon (Al-Si-Mg alloy) ([005]-[006], [028], [039]); and
(solution) heat-treating the raw workpiece to produce an intermediate workpiece, including subjecting the raw workpiece to a first temperature environment (500°C to 550°C), wherein the first temperature environment agglomerates silicon particles disposed on a surface of the raw workpiece (Si particles grow at the expense of adjacent smaller Si particles) ([005], [010]-[011], [030]).
Wu is silent to etching the intermediate workpiece without removing the silicon particles agglomerated on the surface thereof and without creating smut; applying a conversion coating onto the surface of the intermediate workpiece; and applying an organic coating on the conversion coating.
Yamamoto discloses forming a workpiece from an aluminum alloy that includes silicon (p. 2 para. 2, para. spanning pp. 2-3);
etching the intermediate workpiece without removing the silicon particles agglomerated on the surface thereof and without creating smut (silicon crystal grains are exposed with a relatively large amount of protrusion due to the etched treatment) (p. 2 para. 2, p. 3 para. 2);
applying a conversion coating onto the surface of the intermediate workpiece (oxide layer by anodizing) (p. 2 para. 2, p. 3 para. 2); and
applying an organic coating on the conversion coating (fluororesin) (p. 2 para. 2, p. 3 para. 2).
It would have been obvious to one of ordinary skill in the art to etch, conversion coat, and organic coat the workpiece of Wu for good wear resistance (Yamamoto p. 1 para. 1) by exposing the Si crystal grains and suppressing the falling off of the exposed Si crystal grains (Yamamoto p. 2 para. 2).
Regarding claim 2, Wu in view of Yamamoto discloses the etching of the intermediate workpiece includes employing a low-fluoride concentration etchant to the surface of the intermediate workpiece such that the silicon particles agglomerated on the surface thereof are retained (etching by applying a mixed aqueous solution containing 15% by volume of 70% pure nitric acid and 80% by volume of 80% pure phosphoric acid the remainder being water, where the absence of fluoride reads on a low-fluoride concentration) (Yamamoto p. 3 para. 2).
Regarding claim 3, Wu discloses subjecting the raw workpiece to a first temperature environment of 400°C to 550°C (500°C to 550°C) for 1 to 10 hours (0.25h to 12h) ([005], [010]-[011], [030]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 4, Wu discloses hardening (quenching) the raw workpiece ([005], [012], [031]). According to applicant’s specification at [0062], “hardening the raw workpiece includes quenching”.
Regarding claim 5, Wu discloses subjecting the raw workpiece to an (artificial) aging process ([005], [014], [032]).
Regarding claim 6, Wu discloses subjecting the raw workpiece to a temperature environment of 1250C to 2000C (150°C to 190°C) for a period of 4 to 16 hours (2h to 16h) ([005], [014], [032]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 7, Wu discloses subjecting (solution heat treating) the raw workpiece to a temperature environment of 4000C to 5500C (500°C to 550°C) for 1 to 10 hours (0.25h to 12h); hardening (quenching) the raw workpiece; and subjecting the raw workpiece to an (artificial) aging process ([005], [010]-[014], [030]-[032]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 8, Wu discloses fabricating the raw workpiece employing a laser powder bed process (selective laser melting, SLM) ([004]-[006], [028], [039]).
Regarding claim 9, Wu discloses employing a laser powder bed process to fabricate the raw workpiece from an aluminum alloy having a metal matrix (selective laser melting, SLM) ([004]-[006], [028], [039]) wherein the silicon is composed as agglomerated silicon particles that are dispersed within the metal matrix (Si particles grow at the expense of adjacent smaller Si particles) ([011]).
Regarding claim 11, Wu in view of Yamamoto discloses applying the conversion coating onto the surface of the intermediate workpiece comprises immersing the intermediate workpiece in a bath containing a coating material (anodizing using an electrolyte solution with a sulfuric acid concentration of 15% at a current density of 20 OA/n) (p. 3 para. 2, Fig. 5).
Regarding claim 21, Wu discloses a method for forming a workpiece (component) ([001]), the method comprising:
fabricating, employing an additive manufacturing process (selective laser melting, SLM), a raw workpiece from aluminum alloy that includes silicon (Al-Si-Mg alloy) ([005]-[006], [028], [039]);
(solution) heat-treating the raw workpiece to produce an intermediate workpiece, including subjecting the raw workpiece to a first temperature environment (500°C to 550°C), wherein the first temperature environment agglomerates silicon particles disposed on a surface of the raw workpiece (Si particles grow at the expense of adjacent smaller Si particles) ([005], [010]-[011], [030]).
Wu is silent to etching the intermediate workpiece without creating smut; applying a conversion coating onto the surface of the intermediate workpiece; and applying an organic coating on the conversion coating.
Yamamoto discloses forming a workpiece from an aluminum alloy that includes silicon (p. 2 para. 2, para. spanning pp. 2-3);
etching the intermediate workpiece without creating smut (silicon crystal grains are exposed with a relatively large amount of protrusion due to the etched treatment) (p. 2 para. 2, p. 3 para. 2);
applying a conversion coating onto the surface of the intermediate workpiece (oxide layer by anodizing) (p. 2 para. 2, p. 3 para. 2); and
applying an organic coating on the conversion coating (fluororesin) (p. 2 para. 2, p. 3 para. 2).
It would have been obvious to one of ordinary skill in the art to etch, conversion coat, and organic coat the workpiece of Wu for good wear resistance (Yamamoto p. 1 para. 1) by exposing the Si crystal grains and suppressing the falling off of the exposed Si crystal grains (Yamamoto p. 2 para. 2).
Regarding claim 22, Wu discloses the fabricating, employing the additive manufacturing process, the raw workpiece comprises fabricating the raw workpiece employing a laser powder bed process (selective laser melting, SLM) ([004]-[006], [028], [039]).
Regarding claim 23, Wu discloses the heat-treating of the raw workpiece comprises subjecting the raw workpiece to a first temperature environment of 400°C to 550°C (500°C to 550°C) for 1 to 10 hours (0.25h to 12h) ([005], [010]-[011], [030]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 24, Wu discloses the heat-treating of the raw workpiece further comprises hardening (quenching) the raw workpiece ([005], [012], [031]). According to applicant’s specification at [0062], “hardening the raw workpiece includes quenching”.
Regarding claim 25, Wu discloses the heat-treating of the raw workpiece further comprises subjecting the raw workpiece to an (artificial) aging process ([005], [014], [032]).
Regarding claim 26, Wu discloses the raw workpiece to the (artificial) aging process comprises subjecting the raw workpiece to a temperature environment of 125°C to 200°C (150°C to 190°C) for a period of 4 to 16 hours (2h to 16h) ([005], [014], [032]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Regarding claim 27, Wu discloses subjecting the raw workpiece to a stress-relief temperature environment prior to the heat-treating of the raw workpiece ([005], [007]-[008], [028]-[029]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (WO 2019/090398) in view of Yamamoto (JP H02-101181 machine translation) as applied to claim 1 above, and further in view of Shockley (US 3,333,579) and Kuroda (US 2014/0158335).
Regarding claim 2, Wu in view of Yamamoto discloses the etching of the intermediate workpiece (Yamamoto p. 3 para. 2).
Shockley discloses a silicon aluminum alloy (1:69 to 2:25) processed by etching including employing a low-fluoride concentration etchant to the surface of the intermediate workpiece such that the silicon particles agglomerated on the surface thereof are retained (preferential removal of aluminum from the alloy and exposure of the silicon using a solution of nitric acid and hydrofluoric acid) (3:27-50, 64-70).
Kuroda discloses etching including employing a low-fluoride concentration etchant to the surface of the intermediate workpiece such that the silicon particles agglomerated on the surface thereof are retained (0.5% HF (hydrofluoric acid) for Si grain observation) ([0067]).
It would have been obvious to one of ordinary skill in the art in the process of Wu in view of Yamamoto to etch using a solution of nitric acid and hydrofluoric acid with 0.5% HF because this achieves the goal of preferentially removing aluminum while exposing silicon (Yamamoto p. 2 para. 2, p. 3 para. 2; Shockley 3:27-50, 64-70; Kuroda [0067]).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (WO 2019/090398) in view of Yamamoto (JP H02-101181 machine translation) as applied to claim 1 above, and further in view of Coates (US 3,400,057).
Regarding claim 11, Wu in view of Yamamoto discloses applying the conversion coating onto the surface of the intermediate workpiece (anodizing using an electrolyte solution with a sulfuric acid concentration of 15% at a current density of 20 OA/n) (p. 3 para. 2, Fig. 5).
Coates discloses immersing the intermediate workpiece in a bath containing a coating material (using conventional baths and anodizing conditions) (2:61-70).
It would have been obvious to one of ordinary skill in the art in the anodizing of Wu in view of Yamamoto to use a bath because that is a conventional process (Coates 2:61-70).
Related Art
Li (Li et al. Effect of heat treatment on AlSi10Mg alloy fabricated by selective laser melting: Microstructure evolution, mechanical properties and fracture mechanism. Materials Science & Engineering A 663 (2016) 116-125.)
Li discloses fabricating of AlSi1-Mg specimens by SLM (2.1. AlSi10Mg specimens fabricated by SLM) following by solution heat treatment at 450°C, 500°C, or 550°C for 2 h, water quenching, then artificial aging at 180°C for 12 h (2.2 Heat treatment of SLM-produced AlSi10Mg specimens).
Oketani (US 6,428,909)
Oketani discloses an aluminum-silicon alloy (1:58-67, 2:61-67, 3:1-9), etching to expose silicon gains (3:22-47), then forming a coating layer (2:1-3, 3:42-51), where the silicon grains provide sufficient wear (2:4-17, 3:52-57).
Kuroda (US 5,980,722)
Kuroda discloses an aluminum alloy containing silicon (1:7-17) manufactured by electrolytic etching to protrude the silicon from the surface (3:21-45) using phosphoric acid, sulfuric acid, sulfamic acid and the like (3:55-56, 5:17 to 6:65), anodizing (3:46-49), then plating (3:50-54, 7:1-20) with excellent adhesion die to the protruding silicon crystals (4:5-7, 53-67).
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.
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/STEPHANI HILL/Examiner, Art Unit 1735