DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 2, 2026 has been entered.
Claims 1-3, 5, and 7-27 are pending, claim 6 has been cancelled, claim 27 is new, and claims 7-20 remain withdrawn as directed to non-elected subject matter.
Claim Interpretation
Claim 1 presents a process requirement whereby the first metal structure and the second metal structure are “sintered together without infiltration”. This process requirement is understood to exclude structures is that contain artifacts of a powder structure such that molten material has “infiltrated” a pre-formed powder structure (whether infiltrated with the same material or different material than the powder).
Claim Rejections - 35 USC § 112(b)
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 21 and 22 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 21 requires that the structures are sintered together “without layering or infiltration”. Applicant’ specification discusses an embodiment in figures 10-12 in paragraphs 0042-0044 in the present specification where a powder is filled into a cavity and sintered with the first metal structure.
[0042] Figure 10 is an illustrative view of the first metal structure 11 manufactured according to an exemplary embodiment of the present invention. Figure 11 is an illustrative view of filling a second metal powder 12’ in the cavity 101 of the first metal structure 11 shown in Figure 10, according to an exemplary embodiment of the present invention. Figure 12 is an illustrative view of heating and melting the second metal powder 12’ shown in Figure 11 according to an exemplary embodiment of the present invention. As shown in Figures 10-12, in another exemplary embodiment of the present invention, a method for manufacturing an injection mold insert 10 is also disclosed. The method for manufacturing the injection mold insert 10 includes the following steps:
[0043] S41: manufacturing the first metal structure 11, which has a cavity 101 complementary to the second metal structure 12;
[0044] S42: filling the cavity 101 of the first metal structure 11 with the second metal powder 12’; and
In this embodiment a cavity is formed in forming of the first metal structure which is subsequently filled with a powder and sintered thereby forming an insert where the first and second metal structures are sintered together “without layering or infiltration”. This produces a structure that is absent structural artifacts produced in layering or infiltration processes. Applicants’ proposed amendment to 21 requires “printing” which is a layer-by-layer process and thus would introduce layering as excluded by claim 1.
Claim 22 is rejected as depending on claim 21 as above.
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 27 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wei et al. (Embedding anti-counterfeiting features in metallic components via multiple material additive manufacturing, 2018, Additive Manufacturing, 24 (2018) 1-12. (Year: 2018)).
Wei et al. disclose the formation of a multi-material structure using selective laser melting of metal powders including 316L stainless steel and Cu10Sn copper alloy. A layer-by-layer process is used to form a QR code of copper alloy embedded in stainless steel. The QR code forms one or more irregularly shaped complex structural bodies (figure 5) which is considered to be a second metal structure, where the structures are surrounded by (wrapped) a stainless-steel structure which is considered a first metal structure. See Section 2 and figure 5.
A second metal structure of Cu10Sn has a hardness less than that of 316L stainless steel, as well as, a thermal conductivity higher than that of 316L stainless steel. This is further evidenced by applicants’ dependent requirement (claim 3) further limiting the second metal material to copper or a copper alloy, and the first metal material to steel or a steel alloy.
Applicants’ requirement of sintering without infiltration is a product-by-process requirement. Even 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-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process. Here, the first and second metal structures are formed by selective laser melting (Section 2.3) which is a printing process. The process is understood to fuse the particles by solidification of melted powder which is a sintering process i.e. powder particles are melted or at least partially metaled and fused into a coherent structure. Absent evidence that the selectively laser melted fusing disclosed by Wei et al. necessarily results in a structure satisfying the requirements of being printed into a cavity and sintered without infiltration.
With regards to the pre-amble directed to “An injection mold insert”. Applicants’ claims do not limit the injection mold insert to a specific configuration. An injection mold insert is an intended use which requires the claimed product to have the necessary structure to perform as an injection mold insert. The embedded QR code disclosed by Wei et al. has a size a shape such that it is capable of serving as an insert in an injection mold. i.e. the embedded QR code is not of a configuration that would preclude it use as an injection mold insert.
Allowable Subject Matter
Claims 1-3, 5, and 23-26 are allowed. Regarding applicants’ claim 1, Wei et al. (Embedding anti-counterfeiting features in metallic components via multiple material additive manufacturing, 2018, Additive Manufacturing, 24 (2018) 1-12. (Year: 2018)) disclose the formation of a multi-material structure using selective laser melting of metal powders including 316L stainless steel and Cu10Sn copper alloy. A layer-by-layer process is used to form a QR code of copper alloy embedded in stainless steel. The QR code forms one or more irregularly shaped complex structural bodies (figure 5) which is considered to be a second metal structure, where the structures are surrounded by (wrapped) a stainless-steel structure which is considered a first metal structure. See Section 2 and figure 5. Wei et al. however use a layer by layer process resulting in a layering structure excluded by claim 1. There is no motivation such that one of ordinary skill in the art would have found it obvious to modify the process of Wei et al. in a manner that provides sintering without layering or infiltration.
Response to Amendments/Arguments
Applicants’ amendments to the claims and corresponding arguments filed January 28, 2026 are in part found to be persuasive.
Applicants’ amendment overcomes the rejections under 35 U.S.C. 112(a) but has introduced new grounds of rejection under 35 U.S.C. 112(b). Applicants’ amendments to claim 1 distinguish the claims over Wei et al., however new claim 27 is not found to distinguish over Wei et al.
Applicants’ amendments to the claims reintroduce the requirement that the structures are sintered together “without layering or infiltration” which in-an-of-itself is clear. However claim 21 of the proposed amendment appears to be indefinite based on applicants disclosed embodiments. Applicant’ specification discusses an embodiment in figures 10-12 in paragraphs 0042-0044 in the present specification where a powder is filled into a cavity and sintered with the first metal strcutre
[0042] Figure 10 is an illustrative view of the first metal structure 11 manufactured according to an exemplary embodiment of the present invention. Figure 11 is an illustrative view of filling a second metal powder 12’ in the cavity 101 of the first metal structure 11 shown in Figure 10, according to an exemplary embodiment of the present invention. Figure 12 is an illustrative view of heating and melting the second metal powder 12’ shown in Figure 11 according to an exemplary embodiment of the present invention. As shown in Figures 10-12, in another exemplary embodiment of the present invention, a method for manufacturing an injection mold insert 10 is also disclosed. The method for manufacturing the injection mold insert 10 includes the following steps:
[0043] S41: manufacturing the first metal structure 11, which has a cavity 101 complementary to the second metal structure 12;
[0044] S42: filling the cavity 101 of the first metal structure 11 with the second metal powder 12’; and
In this embodiment a cavity is formed in forming of the first metal structure which is subsequently filled with a powder and sintered thereby forming an insert where the first and second metal structures are sintered together “without layering or infiltration”. This produces a structure that is absent structural artifacts produced in layering or infiltration processes. Applicants’ proposed amendment to 21 requires “printing” which is a layer-by-layer process and thus would introduce layering as excluded by claim 1. Applicants written description appears to discuss printing embodiments independent from the fill and sinter embodiment. Applicants newly proposed claim 27 is consistent with the embodiments of the present disclosure because does not limit the structure to sintering “without layering”, however Claim 27 does not distinguish over Wei et al. as claim 27 allows for layering.
For these reasons applicants’ and for those reasons as discussed in the rejections above, the application is not fully in condition for allowance. Claims 7-20 are withdrawn as directed to non-elected subject matter and are not in condition for rejoinder. Claims 7-20 should be amended to contain all of the limitations of an allowable product claim or cancelled.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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, Humera Sheikh can be reached at (571)272-0604. 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.
/Adam Krupicka/Primary Examiner, Art Unit 1784
Prosecution Insights