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
Claims 21-34 are canceled in view of applicant’s preliminary amendments filed 2/28/2024. Therefore, claims 1-20 are currently under examination.
Claim Interpretation
Claim 6 recites “a single track of deposited solid-state additive manufactured aluminum lithium alloy product”. The claimed “single track” is interpreted to mean a single layer of solid state manufactured Al alloy layer on the surface of a substrate, as supported by instant specification{0056-0057].
Claim 7 recites “a plurality of overlapping tracks of deposited solid-stage additive manufactured aluminum alloy product”. The claimed “plurality of overlapping tracks” is interpreted to mean multiple layers of solid-state manufactured Al alloy layers on the surface of a substrate, as supported by the instant specification[0056-0057].
Claim 11 recites “A solid state additive manufactured aluminum alloy produced by adding an aluminum alloy to a surface of a substrate using a solid state additive manufacturing process, wherein the aluminum alloy is added in a solid state as a first aluminum alloy layer to the surface of the substrate at a first tool temperature between 330 degrees Celsius to 560 degrees Celsius, and wherein the aluminum alloy comprises an aluminum lithium alloy or an aluminum copper alloy or an aluminum lithium copper alloy.”
Instant claim 11 is a produce-by-process claim, which defines a product. The bolded portion of the claim language as seen above are process limitations directed to how the solid state additive manufactured aluminum alloy is made, and does provide any material limitation to the claimed solid state additive manufactured aluminum alloy. Therefore, the scope of claimed solid state additive manufactured aluminum alloy is interpreted to comprise an aluminum lithium alloy or an aluminum copper alloy or an aluminum lithium copper alloy, and does not include the claimed substrate.
Claim 16 recites “a single track of deposited solid-state additive manufactured aluminum lithium alloy”. The claimed “single track” is interpreted to mean a single layer of solid state manufactured Al alloy layer on the surface of a substrate as supported by instant specification{0056-0057].
Claim 17 recites “a plurality of overlapping tracks of deposited solid-stage additive manufactured aluminum alloy”. The claimed “plurality of overlapping tracks” is interpreted to mean multiple layers of solid-state manufactured Al alloy layers on the surface of a substrate as supported by instant specification{0056-0057].
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-10 and 19 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 1 recites “A solid-state additive manufactured aluminum alloy product, wherein at least 60% percent by volume of the aluminum in the additive manufactured aluminum alloy product are present as equiaxed grains, with aspect ratios less than 2:1, after heat treatment of the solid-state additive manufactured aluminum alloy product, wherein there is minimal void space between metal atoms of the solid-state additive manufactured aluminum alloy product, …”.
It is unclear if the claimed aspect ratio is directed to the claimed Al alloy product or the aluminum equiaxed grains. The instant specification also has not provided further disclosure regarding the aspect ratio. Additionally, the scope of the claimed minimal void space between metal atoms is not clearly defined in the claim. There is no further disclosure in the instant specification to clarify how much void space between metal atoms is considered minimal void space. Therefore, instant claim 1 is vague and indefinite.
For the purpose of the present Office Action, the examiner is interpreting the claimed aspect ratio and the claimed minimal void space based on the broadest reasonable interpretation. Claimed aspect ratio is interpreted to be directed to either the Al alloy product or the equiaxed grains. The claimed minimal void space is interpreted to include any prior art disclosure wherein small void space between metal atoms is mentioned regardless the size of the void space.
Claim 9 recites “The solid-state additive manufactured aluminum alloy product of claim 1, further comprising a substrate that receives the solid-state additive manufactured aluminum alloy product”. Claim 9 is indefinite because the claimed solid-state additive manufactured aluminum alloy product cannot also include a substrate in its product if it is to be positioned on a substrate.
For the purpose of the present Office Action, claim 9 is interpreted as a solid-state additive manufactured aluminum alloy product without the substrate.
Claim 19 recites “The solid-state additive manufactured aluminum alloy of claim 11, further comprising a substrate that receives the solid-state additive manufactured aluminum alloy”. Claim 19 is indefinite because the claimed solid-state additive manufactured aluminum alloy is a product, therefore, cannot also include a substrate if the solid-state additive manufactured aluminum alloy is to be positioned on a substrate.
For the purpose of the present Office Action, claim 11 is interpreted as a solid-state additive manufactured aluminum alloy only and does not include a substrate.
Claims 2-8, 10 are also rejected since they depend on vague and indefinite claim 1.
Claims 9 and 19 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
As set forth in the discussion of claims 9, 11 and 19 above, the substrate recited in the instant claims 9 and 11 do not provide any additional material features to the claimed solid-state additive manufactured aluminum alloy product as recited in the parent claim 1 and the claimed solid state additive manufactured aluminum alloy as recited in parent claim 11. Therefore, claims 9 and 11 do not further limit independent claims 1 and 11.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-7 and 9-10 is/are rejected under 35 U.S.C. 102(a)(1) as being antiipated by Martin et al. US 2019/0161835 (Martin).
Martin teaches an additive manufactured aluminum alloy in the form of a three-dimensional component[0017, 0238] (i.e. solid-state) or a portion thereof(i.e. a layer)[0068]. Martin further teaches that the additive manufactured Al alloy has a microstructure with equiaxed grains(i.e. grains roughly equal in length, width and height as shown in Fig. 20 of the instant specification and par[0116, 0290] of Martin) and is substantially free of porous void defects[0028, 0109, 0290].
Regarding claims 1 and 10, Martin further teaches that an aluminum alloy having equiaxed grains means at least 90 vol% of the Al alloy contains grains that are roughly equal in length, width and height[0116], which means the additive manufactured aluminum alloy of Martin has at least 90 vol% equiaxed grains as claimed. Additionally, since the additively manufactured Al alloy of Martin has equiaxed grains, the examiner concludes that the aspect ratio(ratio of length to width) of the grains would have fall within the claimed less than 2:1 due to the fact that equiaxed gains have roughly equal length and width. Martin further teaches that the final additively manufactured Al alloy is substantially free of porous defect[0115] and is substantially crack free[0117], which reads on the minimal void space between metal atoms as claimed. Lastly, Martin teaches that its additively manufactured Al alloy additionally comprises copper[0064] or lithium[0149]. Therefore, the additively manufactured Al alloy of Martin is an aluminum copper alloy or an aluminum lithium alloy as claimed.
Regarding claims 2-5, Martin further teaches that the base aluminum alloy may be 1000 series or 2000 series aluminum alloys[0124], such as 2055, 2099, 2195, etc[0125]. The 1000 series of aluminum alloys as taught by Martin encompasses the claimed 1230, 1420, 1421 and 1430 alloys.
Regarding claim 6, Martin teaches that the additively manufactured aluminum alloy is in the form of a portion(e.g. a layer) of a three-dimensional component[0068], which reads on the claimed single track solid-state additive manufactured aluminum alloy. Additionally, the additively manufactured Al alloy of Martin may comprise lithium[0149](i.e. an aluminum lithium alloy).
Regarding claim 7, Martin further teaches that the additively manufactured Al alloy can be produced by progressively building layers to form a layered structure [0234,0238], which reads on the claimed plurality of overlapping tracks of deposited solid-state additive manufactured aluminum alloy.
Regarding claim 9, Martin further teaches that the final aluminum alloy may be a coating[0251], which implies the presence of claimed substrate. Additionally, claimed substrate is used in a process to produce the aluminum alloy product as claimed, and does not provide additional limitation to materially differentiate the claimed solid-state additive manufactured aluminum alloy from the additively manufactured aluminum alloy of Martin.
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.
Claim(s) 11-17 and 19-20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Martin et al. US 2019/0161835 (Martin).
The teachings of Martin are discussed in section 9 above.
Regarding claims 11, the instant claim is a product-by-process claim, which defines a product. As discussed in section 3 above, under “Claim Interpretation”, the process limitations “produced by adding an aluminum alloy to a surface of a substrate using a solid state additive manufacturing process, wherein the aluminum alloy is added in a solid state as a first aluminum alloy layer to the surface of the substrate at a first tool temperature between 330 degrees Celsius to 560 degrees Celsius” do not provide any additional features that patentably distinguish the claimed solid-state additive manufactured aluminum alloy from the additively manufactured aluminum alloy of Martin. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, since Martin discloses an additively manufactured aluminum alloy that is substantially the same as the solid-state additive manufactured aluminum alloy as claimed, the burden falls upon the application to show that the claimed process limitations result in an additively manufactured aluminum alloy that is materially different from the additively manufactured aluminum alloy of Martin.
Regarding claims 12-15, Martin further teaches that the base aluminum alloy may be 1000 series or 2000 series aluminum alloys[0124], such as 2055, 2099, 2195, etc[0125]. The 1000 series of aluminum alloys as taught by Martin encompasses the claimed 1230, 1420, 1421 and 1430 alloys.
Regarding claim 16, Martin teaches that the additively manufactured aluminum alloy is in the form of a portion(e.g. a layer) of a three-dimensional component[0068], which reads on the claimed single track solid-state additive manufactured aluminum alloy. Additionally, the additively manufactured Al alloy of Martin may comprise lithium[0149](i.e. an aluminum lithium alloy).
Regarding claim 17, Martin further teaches that the additively manufactured Al alloy can be produced by progressively building layers to form a layered structure [0234,0238], which reads on the claimed plurality of overlapping tracks of deposited solid-state additive manufactured aluminum alloy.
Regarding claim 19, Martin further teaches that the final aluminum alloy may be a coating[0251], which implies the presence of claimed substrate. Additionally, claimed substrate is used in a process to produce the aluminum alloy product as claimed, and does not provide additional limitation to materially differentiate the claimed solid-state additive manufactured aluminum alloy from the additively manufactured aluminum alloy of Martin.
Regarding claim 20, Martin further teaches that an aluminum alloy having equiaxed grains means at least 90 vol% of the Al alloy contains grains that are roughly equal in length, width and height[0116], which means the additive manufactured aluminum alloy of Martin has at least 90 vol% equiaxed grains as claimed.
Claim(s) 8 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Martin et al. US 2019/0161835 (Martin).
The teachings of Martin are discussed in sections 9 and 11 above.
Regarding claims 8 and 18, although Martin does not explicitly teach the claimed adjacent tracks overlapping by at least 10%, Martin does teach that the additively manufactured Al alloy can be produced by progressively building layers to form a layered structure [0234,0238] and the final product can be a three-dimensional object [0017], which implies that the adjacent layers(i.e. adjacent tracks) can have significant overlap depending on the shape of the object, encompassing the claimed overlap of at least 10%. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed adjacent track overlap amount from the teachings of Martin would have bene obvious to one of ordinary skill in the art since Martin teaches the same utility in its implicit teaching of the adjacent layer overlap, absent persuasive evidence that the claimed track overlap of at least 10% is significant.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 6-11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380565 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5-11 and 15-20 of the reference application teaches a solid-state additive manufactured Al alloy product having the same amount of Al with equiaxed grains and the same aspect ratio and minimal void space between metal atoms after heat treatment. The Al alloy product as taught by the reference application comprises copper, which, although not as the main alloying element, could still read on an aluminum copper alloy based on the broadest reasonable interpretation. The claimed single track or multiple tracks of Al alloy, the claimed track overlapping and the claimed substrate are also taught by the claims 1, 5-11 and 15-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-5 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380565 in view of Martin.
The teachings of claims 1, 5-11 and 15-20 of copending Application No. 18/380565 are discussed in section 14 above. However, claims 1, 5-11 and 15-20 of copending Application No. 18/380565 do not explicitly teach that the aluminum alloy is 1000 or 2000 series aluminum alloy as claimed.
The teachings of Martin are discussed in sections 9 and 11-12 above, wherein Martin further teaches that the base aluminum alloy may be 1000 series or 2000 series aluminum alloys[0124], such as 2055, 2099, 2195[0125].
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated the 1000 and 2000 series aluminum alloy as taught by Martin into the aluminum alloy descripted by the claims of copending Application No. 18/380565 with expected success, since Martin teaches 1000 and 2000 series aluminum alloys are suitable material for additive manufacturing of an Al alloy.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 6-11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380570 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5-11 and 15-20 of the reference application teaches a solid-state additive manufactured Al alloy product having the same amount of Al with equiaxed grains and the same aspect ratio and minimal void space between metal atoms after heat treatment. The Al alloy product as taught by the reference application comprises copper, which, although not as the main alloying element, could still reads on an aluminum copper alloy based on the broadest reasonable interpretation. The claimed single track or multiple tracks of Al alloy, the claimed track overlapping and the claimed substrate are also taught by the claims 1, 5-11 and 15-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-5 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380570 in view of Martin.
The teachings of claims 1, 5-11 and 15-20 of copending Application No. 18/380565 are discussed in section 14 above. However, claims 1, 5-11 and 15-20 of copending Application No. 18/380570 do not explicitly teach that the aluminum alloy is 1000 or 2000 series aluminum alloy as claimed.
The teachings of Martin are discussed in sections 9 and 11-12 above, wherein Martin further teaches that the base aluminum alloy may be 1000 series or 2000 series aluminum alloys[0124], such as 2055, 2099, 2195[0125].
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated the 1000 and 2000 series aluminum alloy as taught by Martin into the aluminum alloy descripted by the claims of copending Application No. 18/380570 with expected success, since Martin teaches 1000 and 2000 series aluminum alloys are suitable material for additive manufacturing of an Al alloy.
This is a provisional nonstatutory double patenting rejection.
Claims 1, 6-11 and 16-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380572 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1, 5-11 and 15-20 of the reference application teaches a solid-state additive manufactured Al alloy product having the same amount of Al with equiaxed grains and the same aspect ratio and minimal void space between metal atoms after heat treatment. The Al alloy product as taught by the reference application is a 6000 series aluminum alloy. Although not as the main alloying element, copper may be present in 6000 series aluminum alloy. Therefore, the 6000 series aluminum alloy still reads on an aluminum copper alloy based on the broadest reasonable interpretation. The claimed single track or multiple tracks of Al alloy, the claimed track overlapping and the claimed substrate are also taught by the claims 1, 5-11 and 15-20 of the reference application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 2-5 and 12-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-11 and 15-20 of copending Application No. 18/380572 in view of Martin.
The teachings of claims 1, 5-11 and 15-20 of copending Application No. 18/380572 are discussed in section 14 above. However, claims 1, 5-11 and 15-20 of copending Application No. 18/380570 do not explicitly teach that the aluminum alloy is 1000 or 2000 series aluminum alloy as claimed.
The teachings of Martin are discussed in sections 9 and 11-12 above, wherein Martin further teaches that the base aluminum alloy may be 1000 series or 2000 series aluminum alloys[0124], such as 2055, 2099, 2195[0125].
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated the 1000 and 2000 series aluminum alloy as taught by Martin into the aluminum alloy descripted by the claims of copending Application No. 18/380572 with expected success, since Martin teaches 1000 and 2000 series aluminum alloys are suitable material for additive manufacturing of an Al alloy.
This is a provisional nonstatutory double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Hardwick et al. US 2020/0306869 teaches a solid-state additive manufactured aluminum alloy product (example 4), wherein product is built layer by layer by additive manufacturing[0003-0004], wherein layer or track thickness is used to control the grain size[0168].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 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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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/ Primary Examiner, Art Unit 1733