Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 05/29/26 has been entered. Claims 50 and 76 have been canceled. Claims 77 – 78 have been added and find support in at least [0031, 0072] of the specification. Claims 1, 9, 14, 16, 30 – 31, 34 – 35, 39, 41, 46, 55 – 56, 59 – 60, 66, 71, 75, and 77 – 78 are pending and under examination.
Claim Rejections – U.S.C. §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 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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 9, 14, 16, 30 – 31, 34 – 35, 39, 41, 46, 55 – 56, 59 – 60, 66, 71, and 75 are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US2022/0193766) as evidenced by ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009)
Regarding claim 1, Mann teaches a method of making a wrought metallic article from a metallic powder composition [Title]. Mann teaches that the method includes the steps of:
Compacting a metallic powder composition [Fig 1], meeting the claimed limitation of a consolidated preform.
The compact preform can have a relative density of at most 98% [0045], which falls within the claimed range.
Performing an initial rotary incremental forming pass on the preform [Fig 1], meeting the claimed limitation of one forming pass of a rotary incremental forming process to yield an intermediate preform.
Wherein the initial pass of rotary forming reduces the cross section preform [0006], meeting the claimed limitation of reducing the cross-sectional area.
Performing a subsequent rotary incremental forming pass [Fig 1].
Wherein the subsequent pass of rotary forming reduces the cross section preform [0006], meeting the claimed limitation of reducing the cross-sectional area.
Mann teaches that the rotary incremental forming process can be rotary forging [0098], but does not expressly refer to it as “cogging” the compact. However, as evidenced by the ASM Handbook, cogging can be performed by two-die forge or four-die forge and the four-die forge is known as rotary forge [page 1, middle column, top]. Therefore, performing rotary forging as the rotary incremental forming process in Mann would fall within the claimed “rotary incremental forming process” as well as the broadest reasonable interpretation of “cogging”.
To clarify, the claimed rotary incremental forming process and the claimed cogging process each represent a “genus” of processes. Mann teaches/suggest that rotary forging is used and that rotary forging falls within the scope/broadest reasonable interpretation of rotary incremental forming. As evidenced by ASM Handbook, rotary forging also falls within the scope/broadest reasonable interpretation of cogging.
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have selected rotary forging in Mann as the specific rotary incremental forming process to achieve predictable results. Given that Mann expressly recognizes that rotary forging is a particular process for the rotary incremental forming step, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predicable results.
Mann teaches that one of the rotary forming passes reduces cross-sectional area and substantially eliminates internal porosity [0029], meeting the claimed limitation of cogging applying local deformation to reduce centerline porosity.
Mann states that one of the rotary forming passes removes/closes any surface imperfections without cracking the preform [0027], wherein surface porosity would be considered a “surface imperfection” and therefore, the teachings meet the claimed limitation of applying local deformation (to reduce cross section) and closing surface porosity.
Regarding claim 9, Mann teaches the invention as applied in claim 1. Mann teaches that the powder used to make the compact is metallic [Fig 1], meeting the claimed limitation.
Regarding claim 14, Mann teaches the invention as applied in claim 1. Mann teaches that the compacted preform can be subjected to sintering [Fig 1], meeting the claimed limitation.
Regarding claim 16, Mann teaches the invention as applied in claim 1. Mann teaches that the compacted preform (interpreted as the consolidated preform) has a relative density of at most 98% [0045], which falls within the claimed range.
Regarding claim 30, Mann teaches the invention as applied in claim 1. Mann teaches that the subsequent rotary forming pass can be followed by a second subsequent rotary forming pass [Fig 1], meeting the claimed limitation. Wherein the rotary forming process in the form of rotary forging meets the claimed limitation of a pass of cogging and a subsequent pass of cogging.
Mann teaches that the subsequent rotary forming pass(es) reduce the cross-sectional area by at most 2% [0028] and subsequent rotary forming pass(es) reduce the cross-sectional area by at least 10% [0039], meeting the claimed limitation of a reducing a cross-sectional area by a greater percentage than by an initial rotary forming step.
Regarding claim 31, Mann teaches the invention as applied in claim 30. Mann teaches that the initial rotary forming/rotary forging pass (interpreted as the claimed cogging) reduces the cross-sectional area by at most 2% [0028], which falls within the claimed range.
Regarding claim 34, Mann teaches the invention as applied in claim 30. Mann teaches that the initial rotary forming/rotary forging (interpreted as the claimed cogging) reduces cross-sectional area and substantially eliminates internal porosity [0029], meeting the claimed limitation.
Regarding claim 35 and 39, Mann teaches the invention as applied in claim 30. Mann teaches that the two subsequent rotary forming pass(es) (the rotary forming process/rotary forging (interpreted as the claimed cogging)) are performed [Fig 1] and that subsequent rotary forming pass(es) reduces the cross-sectional area by at least 10% [0039], which falls within the claimed ranges of claim 35 as well as the ranges of claim 39.
Regarding claim 41, Mann teaches the invention as applied in claim 1. Mann teaches that the rotary forming process/rotary forging (interpreted as the claimed cogging) is performed at a temperature of at most 95% of the melting temperature of the composition [0107], meeting the claimed limitations.
Regarding claim 46, Mann teaches the invention as applied in claim 1. Mann teaches that the rotary forming process/rotary forging (interpreted as the claimed cogging) is performed at a strain rate of 0.00001 s-1 to 100 s-1 [0113], which falls within the claimed range.
Regarding claim 55, Mann teaches the invention as applied in claim 1. Mann teaches that the subsequent rotary forming pass can be followed by a second subsequent rotary forming pass [Fig 1], meeting the claimed limitation. Mann teaches that the subsequent rotary forming pass(es) reduce the cross-sectional area by at most 2% [0028] and subsequent rotary forming pass(es) reduce the cross-sectional area by at least 10% [0039], meeting the claimed limitation of a reducing a cross-sectional area by a greater percentage than by an initial rotary forming step.
Regarding claim 56, Mann teaches the invention as applied in claim 55. Mann teaches that the initial rotary forming pass reduces the cross-sectional area by at most 2% [0028], which falls within the claimed range.
Regarding claim 59, Mann teaches the invention as applied in claim 55. Mann states that the initial rotary forming process removes/closes any surface imperfections without cracking the preform [0027], wherein surface porosity would be considered a “surface imperfection” and therefore, the teachings meet the claimed limitation of the initial rotary forming pass reducing cross section and is sufficient to close surface porosity.
Regarding claim 60, Mann teaches the invention as applied in claim 55. Mann teaches that the subsequent rotary forming pass reduces the cross-sectional area by at least 10% [0039], which falls within the claimed range.
Regarding claim 66, Mann teaches the invention as applied in claim 1. Mann teaches that the rotary forming process is performed at a temperature of at most 95% of the melting temperature of the composition [0107], meeting the claimed limitation.
Regarding claim 71, Mann teaches the invention as applied in claim 1. Mann teaches that the rotary forming process is performed at a strain rate of 0.00001 s-1 to 100 s-1 [0113], which falls within the claimed range.
Regarding claim 75, Mann teaches the invention as applied in claim 1. Mann teaches that annealing can be performed following the rotary forming process [Fig 1], meeting the claimed limitation.
Claims 1 and 77 – 78 are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US2020/0023425, referred to as US ‘425 for clarity of the record) in view of AST (“Open Die Forging vs Closed Die Forging”, NPL)
Regarding claims 1 and 77 – 78, US ‘425 teaches a method of making a wrought metallic article from a metallic powder composition [Fig 1]. US ‘425 teaches that the method includes the steps of:
Consolidating [0056] a metallic powder composition [Fig 1], meeting the claimed limitation of a consolidated preform.
The metallic billet can be formed by cold isostatic pressing [0056].
Performing rotary incremental forming on the billet [Fig 1] to reduce the cross-sectional area [0020], meeting the claimed limitation of one forming pass of a rotary incremental forming process to yield an intermediate preform.
Wherein the rotary incremental forming can be swaging, piercing, and/or pilgering [0020], meeting the limitation of claim 78
Performing a high rate forming process [Fig 1].
Wherein the forming process can be forging [0025]
US ‘425 does not expressly teach that the forging process is cogging.
AST provides information regarding different forms of forging including open die, closed die, and rotary forging [page 1]. AST teaches that open-die forging is a known forging process for shaping and strengthening metal [page 3]. AST teaches that open-die forging (which is one of the cogging processes of claim 78) has several benefits including reducing porosity and improving strength, durability, and fatigue resistance of the final product [Page 3]. Lastly, AST states that open-die forging can be used for both large- and small-scale metal pieces [page 4] and has been used in the aerospace area [page 4] (which is a similar area to that described in US ‘425 [0003]).
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the forging disclosed in US ‘425 and used an open-die forging step as disclosed by the AST. The AST provides teachings of different types of forging processes and acknowledges that open-die forging is used in aerospace applications. As such, an ordinarily skilled artisan would have considered the teachings of the AST to be pertinent to the method of US ‘425 and would have had a reasonable expectation of success in applying them. Moreover, AST acknowledges that open-die forging is a form of forging commonly used for the same purposes of shaping metal. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results in selecting open-die forging as the forging disclosed in US ‘425. Moreover, AST teaches that open-die forging has several benefits including reducing porosity and improving strength, durability, and fatigue resistance of the final product. Therefore, an ordinarily skilled artisan would have had motivation as well.
US ‘425 does not expressly teach that metallic billet has less than 100% relative density. However, given that the compact is formed from powder and that cold isostatic pressing is used to form the compact (which is a specific compaction process disclosed in [0023] of the specification) there is a reasonable expectation to an ordinarily skilled artisan that the metallic billet formed would not possess 100% relative density.
Additionally, US ‘425 does not expressly teach that the rotary incremental forming process reduces centerline porosity. However, given that swaging, piercing, and/or pilgering [0020] are used in US ‘425, which are specific processes disclosed in [0072] of the specification, there is a reasonable expectation to an ordinarily skilled artisan that rotary incremental forming step would apply local deformation and reduce centerline porosity.
Lastly, US ‘425 does not expressly teach that cogging/open-die forging reduce surface porosity. However, given that open-die forging is a specific process disclosed in [0031] of the specification and that AST teaches that open-die forging reduces porosity [page 3] there is a reasonable expectation to an ordinarily skilled artisan that the open-die forging (interpreted as the claimed cogging of claim 1 and 77) would apply global deformation and reduce surface porosity.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, in this case the process steps, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
Response to Arguments
Applicant's amendments have overcome the previous rejections of:
Claims 1, 9, 14, 16, 30 – 31, 35, 39, 41, 55 – 56, 59 – 60, 66, and 75 on the ground of nonstatutory double patenting as being unpatentable over claims 1, 2, 6 – 10, 14, 15, and 20 of U.S. Patent No. 11,938,541 (henceforth US ‘541)
Claims 1, 9, 14, 16, 30 – 31, 34 – 35, 39, 41, 46, 55 – 56, 59 – 60, 66, 71, and 75 under 35 U.S.C. 102(a)(1) as being anticipated by Mann (US2022/0193766)
Claims 30 – 31, 34 – 35, 39, 41, and 46 under 35 U.S.C. 102(a)(1) as being anticipated by Mann (US2022/0193766), as evidenced by ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009)
Claims 30 – 31, 34 – 35, 39, 41, and 46 are rejected under 35 U.S.C. 103 as being unpatentable over Mann (US2022/0193766) as applied to claim 1, in further view of ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009)
However, upon further consideration a new rejection is made of:
Claims 1, 9, 14, 16, 30 – 31, 34 – 35, 39, 41, 46, 55 – 56, 59 – 60, 66, 71, and 75 under 35 U.S.C. 103 as being unpatentable over Mann (US2022/0193766) as evidenced by ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009)
Applicant arguments in response to Mann (US2022/0193766) and ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009) have been fully considered but they are not persuasive.
Applicant argues that Mann and ASM Handbook do not disclose the claimed process and that cogging and rotary incremental forming process are two separate processes applied differently. The arguments have been considered but are not persuasive. In particular, as interpreted the claimed rotary incremental forming process and the claimed cogging process each represent a “genus” of processes. This is supported by claims 77 and 78 which disclose specific forms (i.e., “species” for clarity) of the processes. It is clear from the disclosure of Mann that rotary forging falls within the scope/broadest reasonable interpretation of rotary incremental forming. Additionally, as evidenced by ASM Handbook, rotary forging also falls within the scope/broadest reasonable interpretation of “cogging”. As such, the use of rotary forging in Mann meets/falls within both of the rotary incremental forming process and cogging process. Moreover, as stated above Mann discloses that the passes of the rotary incremental forming process apply deformation/reduce cross-sections and reduce interline porosity as well as close surface imperfections (meeting the broadest reasonable interpretation of surface porosity). As such, the arguments have been considered but are not persuasive because the specific disclosure of using rotary forging as the rotary incremental forming steps in Mann meet the broadest reasonable interpretation of both rotary incremental forming and cogging.
For purposes of compact prosecution, the examiner notes the newly presented claims 77 and/or 78 overcome the rejection of Mann (US2022/0193766) as evidenced by ASM Handbook (“Practical Aspects of Converting Ingots to Billets”, 2009).
A rejection is made of claims 1 and 77 – 78 in response to the newly presented claims.
Claims 1 and 77 – 78 under 35 U.S.C. 103 as being unpatentable over Mann (US2020/0023425, referred to as US ‘425 for clarity of the record) in view of AST (“Open Die Forging vs Closed Die Forging”, NPL)
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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