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 Status
An amendment, filed 8/5/2026, is acknowledged. Claims 1-3, 5, 8-9, 11, 13-15, 18, and 19 are amended; Claims 4 and 20 are canceled; claim 21 is newly added. Claims 1-3, 5-19, and 21 are currently pending.
The rejection of claims 1-4 and 6-20 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
The rejection of claim 4 under 35 U.S.C. 112(d) is withdrawn in view of Applicant’s amendments to the claims.
Drawings
The replacement drawings, filed 8/5/2026, are acceptable.
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 5 is 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 5 recites “wherein the maximum pressure during the warm isostatic pressing cycle is 110 MPa or more.” Thus, the claim recites a “maximum” value that is open ended, resulting in an infinite upper bound of a “maximum pressure,” rendering the claim indefinite. It is further noted that the claim does not recite a minimum pressure and therefore unclear whether Applicant intends for the limitation to require a minimum pressure applied or merely limit the allowed maximum to any possible pressure of 110 MPa or more.
Claim Interpretation
Claim 1 now recites “manufacturing a mold or partial mold by an additive manufacturing method.” The instant specification recites “The additive manufacturing step, may consists on the fabrication of a model or a mold. In an embodiment, a model is fabricated using an additive manufacturing technique, the model is subsequently used to fabricate a mold normally with a very flexible material (like rubber, plastisol, neoprene, any other elastomer, . . . ), in this case the first step of the method implying additive manufacturing is employed to fabricate at least a part of a model and then the method comprises an additional step, between the first and the second step.” (para. 507 of PG Pub.).
Thus, the limitation “by an additive manufacturing method,” is interpreted in light of the specification and with a broadest reasonable interpretation to include forming a mold, including partial or intermediate mold parts, by an additive manufacturing technique and then using said mold/mold parts to form a final flexible mold. One of ordinary skill in the art would recognize that forming molds conventionally comprises forming a series of molds to arrive at the final mold and therefore, “manufacturing a mold or partial mold by an additive manufacturing method,” in light of the specification, should properly be interpreted to allow for intermediate mold making steps and so long as one step of mold-making process involves additive manufacturing.
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.
Claims 1-3, 5, 8-9, 11-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Pratt (US 5937265) in view of Hamman (US 2007/0196230).
With respect to Claim 1, Pratt teaches a method of manufacturing a metal-based article such as a tooling die comprising internal cooling channels, the method comprising using a free form rapid prototyping technique (e.g. “stereolithography, ink-jet printing, fused-deposition modeling, laser sintering, laminated object manufacturing,” col. 5, ln. 15-20 and thus, comprises an additive manufacturing method) to manufacture an intermediate mold then forming a flexible mold from the intermediate mold, followed by filling at least part of the flexible mold with a powder comprising a metal or metal-containing material (e.g. steel). (col. 3, ln. 18 to col. 4, ln. 22; col. 5, ln. 13-30; col. 6, ln. 49 to col. 7, ln. 34; Figs. 1-8). Thus, Pratt teaches an additive manufacturing process to form an intermediate mold used to form a flexible mold then filling the metal powder in the flexible mold, wherein the sequence is deemed meet the claim limitations of “manufacturing a mold or partial mold by an additive manufacturing method” and “filling at least part of the mold with particulate material comprising at least one metallic phase.” (see also claim interpretation section above).
Pratt further teaches wherein the method comprises capping or sealing the mold, subjecting the sealed and filled mold to an isostatic pressing step comprising cold isostatic pressing or warm isostatic pressing to form a green part, removing the mold (constituting “elimination of the mold”), then hot pressing and sintering the green part to obtain a fully densified article. (col. 3, ln. 18 to col. 4, ln. 22; col. 5, ln. 13-30; col. 6, ln. 49 to col. 7, ln. 34; Figs. 1-8).
Finally, as detailed above Pratt teaches using a cold or warm isostatic pressing step; however, the reference is silent as to a specific temperature for the step.
Hamman teaches a method of providing metal particulate material into a mold (e.g. rubber mold), and isostatically pressing the metal particulate-containing mold at a temperature of less than about 200°C. (para. 1-12, 34). Thus, Hamman teaches an isostatic pressing step encompassing techniques conventionally referred to as both “cold” and “warm” isostatic pressing as the disclosed temperature range includes room temperature and up to 200°C.
Pratt and Hamman are both drawn to methods of providing a metal particulate into a mold, including a flexible/rubber mold, and isostatically pressing. It would have been obvious to one of ordinary skill in the art to select an isostatic pressing temperature of up to 200°C, as taught by Hamman, in order mold and/or consolidate the metal particulate into the desired form. In other words, it would have been obvious to one of ordinary skill in the art practicing the invention of Pratt, to select a known isostatic pressing temperature, including that of Hamman, in order to carry out an isostatic pressing (cold and/or warm) of a metal particulate in a mold with a predictable result of success. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 2, Pratt teaches a step of assembling the additively manufactured mold including adding a cap or seal (i.e. other parts) and further teaches assembling additively manufactured mold parts/partial molds for forming a flexible mold and thus, meets the instant claim. (Figs. 1, 4; col. 7, ln. 5-8).
With respect to Claim 3, Pratt teaches wherein the flexible mold may be formed of a flexible material, having a Shore A hardness value of about 30-80, overlapping the instantly claimed range. (col. 6, ln. 13-30). Pratt further teaches wherein the flexible mold is capped or plugged to seal the mold. (col. 7, ln. 6-8). It would have been obvious to one of ordinary skill in the art to form a cap or plug out of the same material as the mold, and thus having a Shore A value of 30-80, in order to maintain consistent/uniform properties of the mold and therefore, improve its suitable for the isostatic pressing step. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 5, the claim recites “wherein the maximum pressure during the CIP cycle is 110 MPa or more.” Thus, the claim recites a “maximum” value that is open ended, resulting in no actual maximum. Furthermore, as the claim does not actually recite that the CIP is conducted at the maximum, any pressure is deemed to meet the claim. As Pratt teaches a cold isostatic pressing step (thus, comprising pressure), it is deemed to meet the instant claim.
With respect to Claims 8-9 and 16-19, Pratt teaches forming flexible mold wherein the mold is if formed of a material comprising “those which cure to an elastic or flexible rubbery form and generally have a Shore A durometer value of about 30-80, and reproduce the fine details of the master parts to an acceptable degree of accuracy. To maintain dimensional control, it is preferred that the molding compounds are curable silicone rubbers and urethane resins having little (less than 0.5%) or no post cure shrinkage. Other methods and materials to form a thin-wall mold compatible with the isostatic pressing process will be known to those skilled in the art, such as but not limited to hydroforming, vacuum forming, stamping and blow molding of plastics, sheet metals, foams etc., and may be used without diverging from the spirit of this invention. Any of these techniques that provide a mold that is flexible enough to deform under pressures in excess of 10 MPa (megaPascals) are considered to be `flexible`.” (col. 6, ln. 12-30).
Thus, Pratt teaches a flexible material for forming the mold with a Shore A value overlapping the claimed range of claim 19. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP §2144.05.
Furthermore, with respect to Claims 8-9 and 16-18, Pratt teaches selecting a mold material with mechanical properties optimized for being subjected to pressing and teaches wherein the material drawn to flexibility and a shore A value overlapping the claimed range. It would have been obvious to one of ordinary skill in the art to select a material with mechanical properties, including those recited in claims 8-9 and 16-18, capable of the method of Pratt in view of Hamman (and likewise, the instant claims) with a reasonable expectation of success. See MPEP 2144.05; 2112.01.
With respect to Claims 11-13, Pratt teaches a method of manufacturing a metal article such as a tooling die for injection molding comprising an interior channel network for cooling. (Figs. 1-8; col. 6, ln. 49 to col. 7, ln. 42). The article/structure of Pratt is deemed to comprise “complex internal structures or channels or any other kind of voids” as in claim 11, “the complex internal structures” comprising “cooling channels” as in claim 12, wherein the component is a plastic injection die as in claim 13.
With respect to Claim 14, Pratt teach a method of using additive manufacturing to form a mold for forming a part, such as a tooling die comprising internal channels (see rejection of claims 11-13 above); however, the reference does not specifically teach a hot stamping die. It would have been obvious to one of ordinary skill in the art to form conventional die parts comprising cooling structures, such as a hot stamping die as required by claim 14 with a predictable result of success. Here, the change from an injection die to a hot stamping die does not change the required steps of the method except for the particular molds and resulting densified part and therefore, this mere change in form would have been prima facie obvious to one of ordinary skill in the art. See MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Finally, the limitation “where the die surface is kept below 140°C during the whole cycle” refers to a separate method of hot stamping that is not claimed and is therefore, is interpreted as an intended use of the resulting part that is not provided patentable weight or alternatively, a conditional limitation. “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04.
With respect to Claim 15, Pratt teach a method of using additive manufacturing to form a mold for forming a part, such as a tooling die comprising internal channels (see rejection of claims 11-14 above); however, the reference is silent as to a hot stamping die with internal heating. It would have been obvious to one of ordinary skill in the art to form conventional die parts comprising internal structures, such as a hot stamping die as required by claim 15 with a predictable result of success. Furthermore, while the internal passages of Pratt are described as cooling passages, they could equally be used as heating passages. The change from an injection die with internal cooling passages to a hot stamping die with internal heating does not change the required steps of the method except for the particular molds and resulting densified part and therefore, this mere change in form would have been prima facie obvious to one of ordinary skill in the art. See MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
With respect to Claim 21, Pratt teaches wherein the mold comprises negative features of complex internal structures, channels, and/or voids in order to form a tooling die for forming complex parts. (see col. 1, ln. 14-35; col. 2, ln. 38-51; col. 6, ln. 49 to col. 7, ln. 42; see also rejection of claims 11-13 above).
Claim(s) 5 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Pratt (US 5937265) in view of Hamman (US 2007/0196230) as applied to claim 1 above, in view of Liu (US 2004/0137218)(previously cited).
With respect to Claim 5, Pratt in view of Hamman teach a step of warm isostatic pressing deemed to meet the claim as recited. (see 103 rejection above). In the alternative, if the claim is interpreted to require a pressure of 110 MPa or more, the reference is silent as to the specific pressure applied in the step.
Liu teaches a method of making a metal near net shape article, the method comprising molding a metal-containing powder with cold isostatic pressing at a pressure of 200-1000 MPa to form a green compact, followed by a densification step comprising sintering. (para. 21, 23, 47, 50, 53).
Thus, both Pratt and Liu are drawn to conventional powder metallurgy steps of forming a green compact using isostatic followed by sintering to densify/consolidate the green compact. It would have been obvious to one of ordinary skill in the art to modify the method of Pratt in view of Hamman to select a known isostatic pressing pressure capable of forming a metal-containing green compact for sintering of 200-1000 MPa, as taught by Liu, in order to obtain a green compact with sufficient density, strength, and/or uniformity to result in a desired densified article after a sintering step. Furthermore, as evidenced by Hamman, one of ordinary skill in the art would recognize the shared applicability of cold and warm isostatic pressing to the same techniques, as the temperature range of cold isostatic pressing may be considered to encompass or overlap warm isostatic pressing.
With respect to Claim 10, Pratt teaches milling additives to 30 microns or less (col. 6, ln. 58-61), but is silent as to the particle size of the powder or powder mixture.
Liu teaches a method of making a metal near net shape article, the method comprising molding a metal-containing powder with cold isostatic pressing to form a green compact, followed by a densification step comprising sintering. (para. 21, 23, 47, 50, 53). The reference teaches wherein the powder may comprise aluminum powder with an average particle size of 10-210 microns and reinforcing particles with an average particle size of 0.1-100 microns. (para. 23). Thus, Liu teaches wherein the particulate material has a powder or powder mixture deemed to fall within or overlap a D50 of 380 microns, as required by claim 10.
Thus, both Pratt and Liu are drawn to conventional powder metallurgy steps of forming a green compact using CIP followed by sintering to densify/consolidate the green compact. It would have been obvious to one of ordinary skill in the art to modify the method of Pratt in view of Hamman to select a known powder/powder mixture particle size range suitable for use in a CIP/WIP and sintering method, as taught by Liu, in order to obtain a green compact and resulting sintered article with suitable density, strength, and/or mechanical properties. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 6-7 rejected under 35 U.S.C. 103 as being unpatentable over Pratt (US 5937265) in view of Hamman (US 2007/0196230) as applied to claim 1 above, in view of Hammond (US 8062582)(previously cited).
With respect to Claims 6-7, Pratt teaches a densification step comprising hot pressing and sintering (see rejection of claim 1 above); however, the reference is silent as to a specific sintering temperature.
Hammond teaches a method of making a sintered stainless steel article, the method comprising forming a green compact of a stainless steel powder, then sintering the green compact. (Claim 6). Hammond teaches, generally, “In pressed powder metallurgy, a substantially dry metal powder composition is charged into a die cavity of a die press and compressed to form a green compact. Pressing causes the metal powder particles in the metal powder composition to mechanically interlock and form cold-weld bonds that are strong enough to allow the green compact to be handled and further processed. After pressing, the green compact is removed from the die cavity and sintered at a temperature that is below the melting point of the major metallic constituent of the metal powder composition, but sufficiently high enough to strengthen the bond between the metal powder particles, principally through solid-state diffusion. Some metal powder compositions include minor amounts of other metals and/or alloying elements that melt during sintering to facilitate liquid phase sintering of the non-melting major constituent of the metal powder composition. This increases the bonding strength between the major metallic constituent of the metal powder composition and typically increases the final density of the sintered part.” (col. 1, ln. 10-28).
Thus, Hammond makes clear that selecting a sintering temperature in the range of the melting temperature of at least one of the constituent particles to the lowest temperature at which sintering may occur would have been obvious to one of ordinary skill in the art. In other words, Hammond teaches a densification temperature ranging up to about 1.0*Tm of the particulate material with the highest weight fraction and/or lowest melting point, overlapping the claimed ranges.
It would have been obvious to one of ordinary skill in the art to modify the method of Pratt in view of Hamman to select a densification sintering temperature of up to about 1.0*Tm of the particulate material with the highest weight fraction and/or lowest melting point, as taught by Hammond, in order to obtain a densified article with desired mechanical properties. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP §2144.05.
Response to Arguments
Applicant’s arguments, filed 8/5/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 102 and/or 103 over Fuji have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Fuji is drawn to a method comprising additively manufacturing a wax-based mold and therefore, teaches away from a warm isostatic pressing step at a temperature of 62°C or more.
Applicant’s arguments, filed 8/5/2026, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 102 and/or 103 over Pratt have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Specifically, Claim 1 was drawn to a cold isostatic pressing step, materially distinct from a warm isostatic pressing step and therefore, claim 1 and its dependent claims were to interpreted to require a cold isostatic pressing step. Claim 1 has been amended to delete the cold isostatic pressing step and instead, require a warm isostatic pressing step as well as densification step of the particulate material. While Pratt teaches a warm isostatic pressing step, it is silent as to a specific temperature for said step. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Pratt in view of Hamman, as detailed above.
With respect to Pratt, Applicant argues that “Pratt does not disclose the step of using an additive manufacturing method to manufacture the mold or partial mold that is filled with the particulate material and subjected to the warm isostatic pressing step.” (Remarks, p. 4). Applicant argues that Pratt teaches using additive manufacturing only to fabricate master parts and thus, fails to meet the amended limitations. Applicant also argues that the disclosure of paragraph 507 of the instant specification is drawn to an alternative embodiment. These arguments have been fully considered but are not found persuasive.
Claim 1 was amended to recite “manufacturing a mold or partial mold by an additive manufacturing method.” The instant specification recites “The additive manufacturing step, may consists on the fabrication of a model or a mold. In an embodiment, a model is fabricated using an additive manufacturing technique, the model is subsequently used to fabricate a mold normally with a very flexible material (like rubber, plastisol, neoprene, any other elastomer, . . . ), in this case the first step of the method implying additive manufacturing is employed to fabricate at least a part of a model and then the method comprises an additional step, between the first and the second step.” (para. 507 of PG Pub.).
Thus, the limitation “by an additive manufacturing method,” is interpreted in light of the specification and with a broadest reasonable interpretation to include forming a mold, including partial or intermediate mold parts, by an additive manufacturing technique and then using said mold/mold parts to form a final flexible mold. One of ordinary skill in the art would recognize that forming molds conventionally comprises forming a series of molds to arrive at the final mold and therefore, “manufacturing a mold or partial mold by an additive manufacturing method,” in light of the specification, should properly be interpreted to allow for intermediate mold making steps and so long as one step of mold-making process involves additive manufacturing.
Thus, Pratt teaches an additive manufacturing process to form an intermediate mold used to form a flexible mold then filling the metal powder in the flexible mold, wherein the sequence is deemed meet the claim limitations of “manufacturing a mold or partial mold by an additive manufacturing method” and “filling at least part of the mold with particulate material comprising at least one metallic phase.”
Applicant also argues that Pratt fails to teach “elimination” of the mold as the reference discloses that mold parts may be reused. This argument too narrowly interprets the claims and is not found persuasive.
Elimination of the mold may be properly interpreted, in the context of the method claim, as removal of the mold for the subsequent processing step of densification and it would not be a reasonable interpretation to require such a step to consist only of destroying the mold.
Finally, Applicant’s arguments that Pratt teaches different advantages of the method are not found persuasive as they have no bearing on the claim limitations nor the rejection.
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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN A HEVEY/Primary Examiner, Art Unit 1735
Prosecution Insights