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 Objections
Claim 20 is objected to because of the following informalities: claim 20 line 3 recites “slid-state” which appears to be a typographical error. It is possible that “solid state” was intended. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 1-20 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.
The term “minimal void space” in claims 1, 11 is a relative term which renders the claim indefinite. The term “minimal void space” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the boundary implied by the relative term “minimal”.
Claim 7 (which is dependent on claim 6) recites the limitation "adjacent tracks" in line 2. There is insufficient antecedent basis for this limitation in the claim. It is unclear how claim 7’s “adjacent tracks overlap by at least 10%” relates to claim 6’s “a plurality of overlapping tracks”. Appropriate explanation/correction is required.
Concerning claim 1, it is unclear if claim 1 is drawn to an aluminum alloy product with ≥60 vol% equiaxed grains with aspect ratios <2:1, or if said equiaxed grains with said aspect ratio are potential properties/the instant aluminum alloy product is capable of “after heat treatment”. Claim 1 contains product by process limitation “after heat treatment of the solid-state additive manufactured aluminum alloy product”. However, said claim does not clearly/actively recite a product by process step of heat treating (or that said product is heat treated), but details properties that occur under the condition “after heat treatment”. For the purposes of the office action, the instant product claims are held to be capable of said equiaxed grains, when subjected to said aforementioned condition of “heat treatment”. Appropriate explanation/correction is required.
Concerning independent claims 1 lines 7-8 and claim 11 lines 9-10, it is unclear if “no more than 0.5 weight percent of silicon, titanium, chromium, iron or manganese” refers to the individual amounts of each element, or the total/combined amounts of these elements. For the purposes of this office action, “no more than 0.5 weight percent” maximum is held to refer to individual elements (rather than total of all combined elements). Appropriate correction/explanation is required.
Claim 11 recites the limitation "the added, heat treated first aluminum alloy layer" in lines 5-6 (and again in lines 7-8). There is insufficient antecedent basis for this limitation in the claim. Claims dependent on the above rejected claims are likewise rejected under this statue. Appropriate correction is required.
Claim 18 (dependent on independent claim 11) recites the limitation “further comprising a substrate that receives the solid-state additive manufactured aluminum alloy”, however, “a substrate” is already mentioned in independent claim 11. It is unclear how the “further…substrate” mentioned in claim 18 relates to the substrate recited in claim 11. Appropriate correction/explanation is required.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over “Deformation-based additive manufacturing of 7075 aluminum with wrought-like mechanical properties” by Yoder et al (hereinafter, Yoder et al. cited on IDS filed 8/20/24) in view of teaching reference “ASM Handbook Vol 2B” p 432-438 (cited herein).
Yoder et al teaches an aluminum alloy product formed by solid state additive manufacturing (see Yoder at p 2, 2nd paragraph), said aluminum alloy product being formed from aluminum alloy 7075. “ASM Handbook Vol 2B” (p 432, Table 1) teaches the alloying ranges of 7075 consist of:
Claims 1, 11
7075
Zn
5-6
5.1-6.1
Mg
2.1-2.9
2.1-2.9
Cu
1.2-2
1.20-2.0
Si
-0.5
-0.40
Ti
-0.5
-0.20
Cr
-0.5
0.15-0.28
Fe
-0.5
-0.50
Mn
-0.5
-0.30
balance
Al and incidental impurities
Aluminum+
other 0.05% ea
other ≤0.15% total
Table 1: alloying ranges of instant claims 1 and 11 vs. 7075
which significantly overlaps the presently claimed alloying ranges of Zn, Mg, Cu, Si, Ti, Cr, Fe, Mn, balance aluminum and impurities/other elements. Yoder teaches no surface or interface porosity and a fully dense material (p 2 column 1), which one of skill in the art would expect to have “minimal void space between metal atoms” as presently claimed, by virtue of fully dense/low porosity structure (see also 112(b) rejection above). Yoder et al teaches the 7075 solid state additive manufactured product was printed on a substrate (p 2, 2nd paragraph) and further subjected to solution treatment, quenching, and aging (p 2, 3rd paragraph), thereby forming a microstructure consisting of small equiaxed grains with an average size of 3.5±1µm (p 2, 4th paragraph). Said average size of 3.5±1µm meets the instant equiaxed grain limitation and overlaps the claimed aspect ratio of <2:1. More particularly concerning the aspect ratio of the product taught by Yoder, an average grain size of 3.5±1µm indicates a range of 2.5-4.5 µm. Grains ranging for 2.5-4.5 µm in size lead to aspect ratio:
2.5
µ
m
4.5
µ
m
-
4.5
µ
m
2.5
µ
m
=0.55-1.8
which meets the instant aspect ratio of ≤2.0. Therefore, Yoder teaches a solid-state additive manufactured aluminum alloy product with overlapping alloying ranges (verified by teaching reference “ASM Vol. 2B”) and with equiaxed grains with aspect ratios <2.0 (and therefore meet said limitation), it is held that Yoder together with teaching reference “ASM Vol. 2B” has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 2-4, 12-14, Yoder teaches YS=477MPa, UTS=541MPa, and elongation =8.2%, which meet the instant mechanical property minimums.
Concerning claims 5-7, 15-17, Yoder does not specify the product-by-process limitations of making said solid state additive manufactured aluminum alloy product by overlapping tracks (cl. 6) adjacent tracks that overlap by at least 10% (cl. 7) and/or single track (cl. 5). However, with respect to said product by process limitations, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
"[E]ven 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 claim 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
In the instant case, because the alloy product structure taught by Yoder and “ASM Handbook Vol 2B” is substantially identical to that of the instant invention, it is held that Yoder and “ASM Handbook Vol 2B” has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 8, 18, Yoder et al teaches the 7075 solid state additive manufactured product was printed on a substrate (p 2, 2nd paragraph), which meets said limitation. See also 112(b) rejection above concerning claim 18.
Concerning claims 9, 10, 19 , and 20, as discussed above, Yoder teaches the microstructure of said product consists of equiaxed grains (see Yoder at p 1), which meets the claimed limitations.
Concerning claim 11, as set forth above, Yoder et al teaches the 7075 solid state additive manufactured product was printed on a substrate (p 2, 2nd paragraph) and further subjected to solution treatment, quenching, and aging (p 2, 3rd paragraph), thereby forming a microstructure consisting of small equiaxed grains with an average size of 3.5±1µm (p 2, 4th paragraph), which imply aspect ratios 0.55-1.8 (see discussion above) which meets the claimed equiaxed grains and aspect ratio limitations. Yoder does not specify the product-by-process limitation “the aluminum alloy is added in a solid state as a first aluminum alloy layer… at a first tool temperature between 360 degrees Celsius to 485 degrees Celsius” of making said solid state additive manufactured aluminum alloy product. However, with respect to said product by process limitations, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps.
"[E]ven 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 claim 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." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
In the instant case, because the aluminum alloy product formed by solid state additive manufacturing taught by Yoder and “ASM Handbook Vol 2B” exhibits a product form and microstructural properties that meet the claimed product configuration and properties, it is held that Yoder and “ASM Handbook Vol 2B” has created a prima facie case of obviousness of the presently claimed invention.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 4/2/26
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