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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-20, drawn to a method, classified in B22F 3/10.
II. Claims 21-24, drawn to a composite, classified in B22F 10/10.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, the product as claimed can be made by another and materially different process.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
The composite as claimed may be made without sintering and with cold compaction.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these 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.
During a telephone conversation with Erik Ericksen on 28 May 2026 a provisional election was made without traverse to prosecute the invention of I, claims 1-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 21-24 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Information Disclosure Statement
The information disclosure statement filed 11/07/2024 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because item number “3” in the non-patent literature section has no date. It has been placed in the application file, but the information referred to therein has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
Drawings
The drawings were received on 02/05/2024. These drawings are accepted.
Specification
The abstract of the disclosure is objected to because it is more than one paragraph. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
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.
Claim 19 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.
In Claim 19 it is not clear if the phrase within the parentheses, “measured in any direction,” is a required or an optional claim limitation. Correction 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.
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.
Claims 1-5, 7-12, 14, 15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Kasperchik et al (US 2019/0270135 A1) in view of Svanidze et al in Science Advances and evidenced by Murry in Bulletin of Alloy Phase Diagrams.
Kasperchik et al teaches a forming a granular material build material composed of primary metal particles and a temporary binder [0015] that are densified to form a green part [0018]. The primary metal particles include iron, steel, stainless steel, copper, bronze, aluminum, tungsten, molybdenum, silver, gold, platinum, titanium, nickel, cobalt, non-shape memory alloys of any of these metals, and combinations thereof [0040]. Sintering can occur in a reducing atmosphere [0114] or a vacuum atmosphere [0116]. However, Kasperchik et al does not specifically exemplify preparing a powder mixture comprising gold source and titanium source powders as claimed.
Svanidze et al teaches Ti3Au is not a shape memory alloy and has high hardness (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a gold-titanium alloy as taught by Svanidze et al as the alloy in Kasperchik et al, since gold and titanium and their alloys have melting points within the range of 850-3500 °C (Kasperchik et al, [0041]) as evidenced by the Murray on page 276.
Regarding Claim 2, Svanidze et al teaches Ti3Au. The ratio of 1:3 is within the claimed range.
Regarding Claim 3, Svanidze et al teaches less than 10 wt% of another alloying element.
Regarding Claim 4, Kasperchik et al teaches other elements may include Al, V, Co, W, Pt, Ni, and Mo [0040].
Regarding Claim 5, Kasperchik et al teaches an environment with a reducing gas such as hydrogen is a deoxygenating atmosphere [0114] during debinding or sintering.
Regarding Claim 7, Kasperchik et al teaches the granule is substantially spherical or non-spherical with irregular shaped [0032].
Regarding Claim 8, Kasperchik et al teaches the titanium and gold are not pre-alloyed.
Regarding Claim 9, Kasperchik et al teaches the primary metal particles are dispersed in a mixture containing the temporary binder and spray dried from a slurry [0081].
Regarding Claim 10, Kasperchik et al teaches the granules are sintered.
Regarding Claim 11, Kasperchik et al teaches the sintering temperature is 600-1800 °C [0109], which overlaps the claimed range.
Regarding Claim 12, Kasperchik et al teaches the size of the powder is 1 μm to 20 μm [0042], which overlaps D10 of 1 μm to D90 of 150 μm.
Regarding Claim 14, Kasperchik et al teaches the intermediate part has a shape representative of the final 3D printed part [0017] built on the build area platform [0027].
Regarding Claim 15, Kasperchik et al teaches the consolidated body is densified when the binder is dissolved, redistributed, and evaporated [0016]. Heating sinters and fuses the primary metal particles to form a completed 3D, which may be even further densified relative to the at least substantially binder-free granule [0109].
Regarding Claim 17, Kasperchik et al teaches consolidating comprises debinding or when the binder is evaporated.
Regarding Claim 18, Kasperchik et al teaches the binder is removed during 3D printing [0016].
Regarding Claim 19, Kasperchik et al teaches the diameter is 10-200 μm [0032], which overlaps no more than 10% of grain cross-section diameters are smaller than 10 μm or larger than 100 μm.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Claims 6 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Kasperchik et al in view of Svanidze et al as applied to claim 1 above, and further in view of Zhang et al (US 9,669,464 B1).
Kasperchik et al in view of Svanidze et al discloses the invention substantially as claimed. However, Kasperchik et al in view of Svanidze et al does not teach deoxygenating with magnesium as in Claim 6 or the titanium source powder is commercially pure titanium as in Claim 13.
Zhang et al teaches deoxygenating Ti with Mg when the process is carried out in a hydrogen containing atmosphere including pure hydrogen or hydrogen and argon. Ti is in the form of particulate (column 8, lines 14-17). The metal can be a substantially Ti or Ti alloy powder that is milled and mixed with a binder in a solvent to form a slurry. The slurry can be granulated to form spherical granules. The granules can be debinded by heating, and the debinded granules can be partially or fully sintered (lines 19-32).
Regarding Claim 6, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the deoxygenating in Kasperchik et al in view of Svanidze et al to including magnesium, since Zhang et al teaches lower material costs with using Mg (column 7, lines 37-39) and deoxygenating to a level of oxygen content meets the specifications of commercial Ti and Ti alloys (column 10, lines 1-3).
Regarding Claim 13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the deoxygenating process of Zhang et al in the method of Kasperchik et al in view of Svanidze et al, since Zhang et al teaches deoxygenating to a level of oxygen content meets the specifications of commercial Ti and Ti alloys (column 10, lines 1-3).
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Kasperchik et al in view of Svanidze et al as applied to claims 1 and 15 above, and further in view of Buller (US 2024/0033826 A1).
Kasperchik et al in view of Svanidze et al discloses the invention substantially as claimed. Kasperchik et al et al teaches 3D printing is used for mold generation [0002]. However, Kasperchik et al in view of Svanidze et al does not teach the processes as listed in Claim 16.
Buller teaches generating a 3D object by additive manufacturing [0003]. The formation of a green or intermediate state object is accomplished by 3D forming or a molding process such as injection molding [0077]. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the formation process of Buller with Kasperchik et al in view of Svanidze et al, since Buller teaches reducing deformation during at least one maturation stage of forming 3D objects [0052].
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Kasperchik et al in view of Svanidze et al as evidenced by Murray.
Kasperchik et al teaches a forming a granular material build material composed of primary metal particles and a temporary binder [0015] that are densified to form a green part [0018]. The primary metal particles include iron, steel, stainless steel, copper, bronze, aluminum, tungsten, molybdenum, silver, gold, platinum, titanium, nickel, cobalt, non-shape memory alloys of any of these metals, and combinations thereof [0040]. Sintering can occur in a reducing atmosphere with a reducing gas such as hydrogen is a deoxygenating atmosphere [0114] during debinding or sintering. However, Kasperchik et al does not specifically exemplify preparing a powder mixture comprising gold source and titanium source powders as claimed.
Svanidze et al teaches Ti3Au is not a shape memory alloy and has high hardness (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose a gold-titanium alloy as taught by Svanidze et al as the alloy in Kasperchik et al, since gold and titanium and their alloys have melting points within the range of 850-3500 °C (Kasperchik et al, [0041]) as evidenced by the Murray on page 276.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jadhav et al (US 2024/0300014 A1) teaches a composite powder comprising gold (abstract) and titanium [0093] does not suggest at least partially sintering but teaches melting and solidifying a composite powder [0035]. Sungail et al (US 2021/0175024 A1) teaches a spherical metal powder comprising gold and titanium [0026]. The spherical powder can be formed by sintering a first powder and then e-beam melting the sintered powder [0056]. Any spherical capacitor grade powder and/or spherical metal powder that is capable of being formed into a capacitor anode can be used [0025]. The spherical powder can be an alloy but does not suggest the alloy is of Ti or Au [0036].
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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 D. 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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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
Prosecution Insights