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 .
Status of Claims
Newly submitted claim 11 is directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: as claim 11 is directed to a method of additive manufacturing while claim 2 is directed to a method of preparing a titanium alloy powder. These groups are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination in claim 2 has separate utility such as preparing a Ti alloy powder suitable for use in a metal injection molding method. See MPEP § 806.05(d).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claim 11 is withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
As such, claims 2 and 4 are examined in this office action as claims 1 and 7-11 are withdrawn, claims 2 and 4 were amended and claims 3 and 5-6 were canceled in the reply dated 3/6/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 2 and 4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 2 has been amended to recite “mixing a titanium sponge and vanadium-aluminum master alloys according to an element stoichiometric ratio to obtain a mixture, wherein Al is 2.0 to 4.0%, V is 4.0 to 4.5%,” in step 1-1 of claim 2. Regarding the claimed subject matter of “mixture” wherein Al is 2.0 to 4.0%, V is 4.0 to 4.5% , the specification teaches that the finished powder has a composition of Al accounts for 2.0 to 4.5%, V accounts for 4.0 to 4.5% (Specification, paragraph [0010]), but does not teach where the mixture of the titanium sponge and vanadium-aluminum master alloys has this composition. While the composition at the end of the method of the powder is provided, this does not necessarily mean that the composition is maintained throughout the process. Therefore, the specification does not describe the claimed subject matter of “a mixture, wherein Al is 2.0 to 4.0%, V is 4.0 to 4.5%” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Claim 4 is also rejected as it depends from claim 2 and does not solve the above issue.
Claims 2 and 4 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 2 recites the limitation “wherein the titanium alloy powder comprises by weight: Fe ≤0.25%, C ≤0.08%, N ≤0.05%, H≤0.015, O≤0.13%”. So the claim both requires a “titanium alloy powder” while not reciting any compositional amount or balance of titanium. Thus, it is not clear whether the claim requires this composition to merely include titanium, whether the composition includes titanium as the largest element, whether it requires a balance of titanium, or some other meaning. Claim 4 is also rejected as it depends from claim 2 and does not solve the above issue.
Claim 2 recites the limitation “mixing a titanium sponge and vanadium-aluminum master alloys according to an element stoichiometric ratio to obtain a mixture, wherein Al is 2.0 to 4.0%, V is 4.0 to 4.5%, and a proportion of vanadium in the vanadium-aluminum master alloys is within a range of 40% to 70%” in step 1-1 of claim 2. It is not clear whether these are mass percentages, atomic percentage, volume percentage, or some other ratio. Claim 4 is also rejected as it depends from claim 2 and does not solve the above issue.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over GB 2577490 A of Enrique in view of CN 111515381 A (cited in IDS dated 7/13/23) and its English machine translation of Ji , CN 111331141 A and its English machine translation of Chen, CN 111230131 A and its English machine translation of Yao.
As to claim 2, the claim preamble must be read in the context of the entire claim. The determination of whether preamble recitations are structural limitations or mere statements of purpose or use "can be resolved only on review of the entirety of the [record] to gain an understanding of what the inventors actually invented and intended to encompass by the claim" as drafted without importing "'extraneous' limitations from the specification." Corning Glass Works, 868 F.2d at 1257, 9 USPQ2d at 1966. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999), see MPEP § 2111.02(II). In the instant case, the statement “for selective laser melting 3D printing” is merely an intended use for the manufactured powder and does not imply any structure beyond what is fully claimed below. Nevertheless, Enrique discloses an atomized powder for selective laser melting (Enrique, pg. 15, 3rd paragraph).
It is not clear what is required by titanium alloy powder, nor what the proportion of vanadium in the master alloy is, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring these amounts in weight percent as weight percent is used for the other elements as well as requiring titanium to be present in an amount larger than any other element as otherwise it would not be a titanium alloy. Enrique discloses a titanium-based alloy composition consisting in weight percent of between 3.0 and 7.0 % aluminium (overlapping claimed range of 2.0 to 4.0% Al), between 3.0 and 10.0% vanadium (overlapping claimed range of 4.0 to 4.5% V), between 0 and 0.5% iron (overlapping claimed range of Fe≤0.25%), between 0.0 and 0.5% carbon (overlapping claimed range of C≤0.08%), and balance titanium (Enrique, claim 1). As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the alloy composition is suitable for additive manufacturing (Enrique, pg. 1, 2nd paragraph) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I. While Enrique discloses where the powder is produced by atomization of an ingot (Enrique, pg. 15, 3rd paragraph), Enrique does not explicitly disclose how the atomization is carried out.
Ji relates to the same field of endeavor of methods of forming titanium alloy powder for laser additive manufacturing (Ji, paragraph [0001]). Ji teaches where sponge titanium and aluminum-vanadium master alloys are used as raw materials (Ji, paragraph [0015]) and Ji discloses where the raw materials are mixed according to the required alloy composition (Ji, paragraph [0012]), meeting the claim limitation of preparation of a bar for powder-making: sponge titanium and vanadium-aluminum master alloys are mixed according to the element stoichiometric ratio and thus where the Al is 2.0 to 4.0% and V is 4.0 to 4.5% as the ratio in Enrique would be reflected in Ji’s method of manufacture. Ji discloses that the mixed raw materials are pressed into electrodes and vacuum self-consumable melted into ingots and forged into bars (Ji, paragraph [0023]), meeting the limitation where the mixed powders are pressed into a block, and then used as a smelting electrode for vacuum smelting to obtain a titanium alloy ingot, and then the titanium alloy ingot is forged into the bar for powder-making. Ji discloses where the ingots are forged into titanium alloy bars using a high-speed forging machine and a precision forging machine (Ji, paragraph [0013]), meeting the limitation (1-3) of performing two passes of free forging on the titanium alloy ingot using a forging press to obtain the bar for powder-making.
Ji discloses where the bar is melted and atomized as part of crucibleless induction melting gas atomization method to produce a powder (Ji, paragraph [0024]), meeting the limitation the bar for powder-making is melted and atomized to obtain the titanium alloy powder. Ji discloses where the composition by weight percentage for the titanium alloy powder is Al:4.5-7.5%, V:1-3%, and balance being Ti with unavoidable impurity elements (Ji, paragraph [0022]), overlapping the claimed range of 2.0 to 4.5% of Al, 3.0 to 4.5% of V, with the balance being Ti and inevitable impurities. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches that the powder has high-strength and high-toughness (Ji, paragraph [0022]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
Ji discloses hanging the rod in the crucibleless induction melting gas atomization apparatus (Ji, paragraph [0024]), meeting the limitation of (2-1) placing the bar for powder-making in a power atomization equipment. Ji discloses an atomization pressure 20～50 bar and gas flow rate 1000～1100 m3/Hr that this process produces atomized powder (Ji, paragraph [0024]), therefore it is discloses step (2-2) of heating and melting the bar for powder-making, wherein molten metal liquid falls into the atomizer nozzle and continuously flows out of the atomizer nozzle; and introducing high-pressure inert gas into the atomizer nozzle so that the molten metal liquid is atomized and crushed into many fine droplets, wherein the droplets are cooled and solidified in the atomization chamber, and then formed into metal powders under the action of surface tension as for a powder to be formed, the molten metal is falling into a nozzle and if being atomized by the gas into droplets which cool and solidify into metal powders under surface tension. Ji discloses where the electrodes are subjected to three vacuum consumable melting processes to obtain ingots (Ji, paragraph [0028]), meeting the limitation the number of smelting times is at least three times.
Ji discloses an atomization pressure of 20-50 bar, a power of 15-20 kW, and a feed rate of 30-50 mm/min (Ji, paragraph [0024]), overlapping the claimed ranges of the working pressure of the high-pressure inert gas of the atomizing nozzle is 35 to 45 bar, the feeding rate of the bar for powder-making is 40 to 60 mm/min, and the heating and melting power of the bar for powder-making is 20 to 40KW.
Chen teaches pickling the titanium ingot to remove the surface ration layer followed by cleaning and drying (Chen, paragraph [0010]), meeting the claim limitation of cleaning and drying the ingot. Chen discloses where anhydrous ethanol is used in the cleaning (Chen, paragraph [0039]), meeting the limitation of where the cleaning medium is alcohol. While Chen does not explicitly disclose cleaning the bar for 15-30 minutes nor drying at 120°C for 2 hours. However, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the exposure time for cleaning and temperature and time for drying to carry out these steps as these are known result effective variables for these processes and it would be obvious to select an amount of time needed for cleaning as well as a time and temperature to effectively dry the alcohol from the cleaned bar. Discovery of optimum ranges of a result effective variable in a known process is ordinarily within the skill of art and selection of the optimum ranges within the general condition is obvious see MPEP § 2144.05(II)(A).
Yao relates to the same field of endeavor of crucibleless electrode induction melting gas atomization process for titanium powders (Yao, paragraph [0043]). Yao teaches using argon as a protective gas with a purity of ≥99.999 wt% (Yao, paragraphs [0044] – [0045]). Yao discloses that fine droplets solidify into particles during flight producing a low-oxygen titanium powder (Yao, paragraph [0017]). Yao teaches sieving the powder to have a size ≤ 45µm (Yao, paragraph [0053]), overlapping the claimed range of 15-53 µm.
As Enrique discloses that the powder is formed by atomizing an ingot, one of ordinary skill would naturally look to the art to determine an appropriate method for carrying out said atomization. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add the atomization disclosed in Ji as well as the pickling and cleaning disclosed in Chen as well as the sieving disclosed in Yao, thereby carrying out an atomization and preventing the contamination of the powder by other elements (Chen, paragraph [0039]) while producing a low-oxygen titanium powder (Yao, paragraph [0017]).
As to claim 4, Ji discloses where the bar stock have a diameter of 110-120mm while the forged bars have a diameter of 40-70mm (Ji, paragraph [0016]), overlapping the claimed ranges of the diameter of the obtained bar stock is 120 mm, and the diameter of the obtained bar blank is 53 mm. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I). Further, the MPEP notes that in Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (emphasis added), see MPEP § 2144.04(IV)).
Response to Arguments
With respect to the amendment to the abstract, applicant’s amendments cure the previous issue and the objection is withdrawn.
With respect to the 112(b) rejections of claims 5-6, it is agreed that applicant’s deletion of these claims renders these rejections moot. However, see new 112(b) rejections above.
Applicant’s arguments, see page 8, last paragraph, filed 3/6/26, with respect to the rejection(s) of claim(s) 2-6 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Enrique, Ji , Chen, and Yao.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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