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 .
Election/Restrictions
Claims 15-28 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 22 June 2026.
Drawings
The drawings were received on 29 January 2024. These drawings are accepted.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 5, and 7-14 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 20040188053 A1 (hereinafter “Brice”).
Regarding claim 1, the limitation of being additively manufactured is a product-by-process limitation. Applicant is directed to MPEP 2113. "[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). The claim limitations will be considered only inasmuch as a structure is required to be present in the claim.
Brice teaches an aluminum alloy that is used for slid freeform fabrication or direct deposition (See DETAILED DESCRIPTION OF THE INVENTION). Brice teaches that the aluminum alloy feedstock is deposited in a layer by layer manner to create a part (see [0021]-[0023]). The solid freeform fabrication in a layer by layer manner that is clearly described in Brice meets all structural limitations of an additively manufactured article made by depositing aluminum.
Brice teaches that the alloy includes an overlapping composition to the claimed alloy (see [0024]-[0031] and claims 21-30). Brice teaches that in one embodiment, the alloy includes approximately 3.0% lithium, 4.0% magnesium 0.5% zirconium, and 1.0% scandium by weight (See [0031] or claim 30). The composition of Brice is compared with the claimed composition in the chart below (all values in weight percent).
Element
Claim 1
Brice broad alloy (approximate)
Brice claim 30 (approximate)
Mg
Li
Sc
Ag
Zn
Zr
Ti
Al/impurity
2-7
0.2-3
0.05-1
0-1
0-1
0-1
0-1
balance
3-5
2-4
0.6-1.5
--
--
0.25-1
--
balance
4.0
3.0
1.0
--
--
0.5
--
balance
The lack of a disclosure of Ag, Zn, and Ti reads on essentially zero of these elements. The composition taught by Brice falls entirely within the claimed ranges, anticipating the ranges. Applicant is directed to MPEP 2131.03.
Regarding claim 5, Brice teaches 1.0% Sc (claim 30).
Regarding claim 7, Brice teaches 0.5% or Zr (claim 30).
Regarding claims 8-14, the limitations of being heat treated and aged are product-by-process limitations. See discussion above.
Brice teaches that it is well known in the art to heat treat the aluminum alloys containing lithium to include solutionizing, aging, and precipitating the cubic intermetallic phase (see [0026]). Brice teaches that this structure is present ([0026]-[0030]). Thus the structures that would be present by the heat treated and aged alloy are described as being present in the alloy of Brice. Alternatively, the skilled artisan would clearly envision performing the heat treatment as claimed which is also described by Brice, as Brice makes clear that this treatment is desirable to generate a strong, weldable material (see [0024]-[0031]).
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) 3, 4, and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brice.
Regarding claim 3, Brice does not teach an example of an alloy as claimed. Brice teaches that the alloy includes approximately 0.6-1.0% of Sc (see [0024]-[0031]). The composition of Brice with regard to Scandium overlaps the claimed composition ,establishing a prima facie case of obviousness. It would have been an obvious matter to the skilled artisan at time of filing to have practiced the invention of Brice, and to have selected alloy composition within the claimed ranges, because Brice teaches the specific function of each element in the alloy ([0024]-[0031]). Alternatively, Brice teaches that eth Sc forms a strengthening solid solution ,and precipitates as a nucleation site for the Al-Li dispersoid ([0024]-[0031]). The optimization of the Sc amount in order to obtain a desirable strengthening effect in the invention of Brice would have been prima facie obvious to the skilled artisan based on the thorough teachings of the alloying function. MPEP 2144.05.
Regarding claim 4, Brice does not teach an alloy having such a composition. The optimization of the Sc amount in order to obtain a desirable strengthening effect in the invention of Brice would have been prima facie obvious to the skilled artisan based on the thorough teachings of the alloying function. MPEP 2144.05.
Regarding claim 6, the composition of Brice overlaps the claimed composition, establishing a prima facie case of obviousness.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brice as applied to claim 1 above, and further in view of US 20150376740 A1 (hereinafter “Bovard”).
Regarding claim 2, Brice teaches the broad alloy including overlapping amounts of Mg, Li, and Sc ([0024]-[0031]). Brice does not teach to add Ag to the alloy.
Bovard teaches Al-Mg-Li alloys, which include Sc (see Title, claim 1 and SUIMMARY OF THE INVENTION). Bovard teaches that an addition of silver in amount up to 1% strengthens the alloy, but that greater than 1% silver is expensive (see [0008]). This amount overlaps the claimed range.
It would have been obvious to one of ordinary skill in the art at time of filing to have altered the invention of Brice as by adding silver as taught by Bovard, because Bovard teaches that Ag is a strengthening element in Al-Mg-Li alloys ([0008]). The combination of known elements to yield predictable results would have been prima facie obvious.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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