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
Applicant’s election without traverse of Group II, claims 15-19, in the reply filed on 04/23/2026 is acknowledged.
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.
Claim(s) 15-16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over James Andrew Yurko of US 2016/0167133 A1 (hereinafter, Yurko) in view of Dennis C. Nagle of US 4,921,531 A (hereinafter, Nagle).
As to claim 15, Yurko teaches to a method of refining an object comprising beryllium, the method comprising:
combining beryllium (Yurko, paragraph [0002], teaches to methods for manufacturing products from beryllium-containing compositions using additive manufacturing techniques, wherein the methods result in providing complex, light-weight, and rigid parts comprising beryllium and alloys thereof).
Yurko does not explicitly teach and at least one metal inoculant selected from the group consisting of Be2Co, Be2Nb, Be2Ta, Be2Ti, Be2W, Be5Hf, Be5Sc, Be5Zr, Be7Cu13, BeFe3, Cu3Mo, Cu9W, Mo, Nb, RbO2, ReRh, Ta, TiV, and W to form a pre-alloy composition.
In an analogous art, Nagle teaches to and at least one metal inoculant selected from the group consisting of Be2Co, Be2Nb, Be2Ta, Be2Ti, Be2W, Be5Hf, Be5Sc, Be5Zr, Be7Cu13, BeFe3, Cu3Mo, Cu9W, Mo, Nb, RbO2, ReRh, Ta, TiV, and W to form a pre-alloy composition (Nagle, col. 8, ln. 39, teaches to forming second phase precipitates by combining second phase-forming reactants, col. 8, ln. 35, that includes beryllium, titanium, tantalum, vanadium, and solvent metals, col. 9, ln. 11, that includes cobalt, niobium, tantalum, vanadium, zirconium, for instance; Nagle, col. 10, ln. 23, teaches that these may react in plasma; the resulting second phase precipitates reads as at least metal inoculant; Nagle, col. 8, ln. 20, at least teaches to TiVC as formed second phase precipitates which reads as TiV).
Both Yurko and Nagle relate to forming fine particles including beryllides (Nagle, col. 6, ln. 54). Yurko does not explicitly teach combining an additive to beryllium for improving mechanical properties. Yurko does teach to making articles from beryllium. Nagle teaches to forming second phase precipitates by combining second phase-forming reactants that includes beryllium and solvent metals, resulting in reduced and uniform particle size, thereby providing more compact intermetallic composites and increased mechanical strength.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing a beryllium article of Yurko with the metal inoculant of Nagle for providing more compact intermetallic composites and increased mechanical strength.
Yurko in view of Nagle teaches to depositing a layer comprising the pre-alloy composition on a surface (Yurko, paragraph [0011], teaches to depositing a plurality of layers to form a three-dimensional preform; Yurko, paragraph [0003], teaches that the additive manufacturing is performed over a bed or platform);
cycling at least a portion of the layer (Yurko, paragraph [0051], teaches that the sintering, infiltrating, and annealing can be performed consecutively) by applying energy to form molten beryllium (Yurko, paragraph [0044], teaches to using an electron beam or a laser beam for sintering or melting in forming molten beryllium);
solidifying the molten beryllium (Yurko, paragraph [0043], teaches to that the cycling results in the formation of a three-dimensional preform); and
repeating the depositing/cycling/precipitating for successive layers (Yurko, paragraph [0043], teaches that the steps of depositing the beryllium-containing deposition layer and partially curing the layer are repeated), wherein each of the successive layers comprise the pre-alloy composition (Yurko, paragraph [0040], teaches to that each layer is deposited upon or adjacent to another layer, so that there is some portion of beryllium-containing composition in each layer that contacts a portion of beryllium-containing composition in another layer) and have an average grain size from 1 to 80 microns (Yurko, paragraph [0033], teaches that the beryllium powder may have a particle size of from about 1 micron to about 200 microns).
As to claim 16, Yurko in view of Nagle teaches to the method of claim 15, wherein the pre-alloy composition comprises beryllium powder (Yurko, paragraph [0012], teaches that the beryllium-containing composition may include from 0.1 to 99.9 wt % of the beryllium powder).
As to claim 18, Yurko in view of Nagle teaches to the method of claim 15, wherein the pre-alloy composition comprises from 90 to 99.99% by weight of beryllium (Yurko, paragraph [0012], teaches that the beryllium-containing composition may include from 0.1 to 99.9 wt % of the beryllium powder).
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over James Andrew Yurko of US 2016/0167133 A1 (hereinafter, Yurko) in view of Dennis C. Nagle of US 4,921,531 A (hereinafter, Nagle), as applied to claim 15 above, and in further view of Brennan Yahata of US 2023/0282398 A1 (hereinafter, Yahata).
As to claim 19, Yurko in view of Nagle does not explicitly teach wherein the pre-alloy composition comprises from 0.01 to 10% by weight of the metal inoculant.
In an analogous art, Yahata teaches to wherein the pre-alloy composition comprises from 0.01 to 10% by weight of the metal inoculant (Yahata, paragraph [0219], teaches to using from about 0.1 wt % to about 10 wt % of metal-containing inoculant).
Both Yurko in view of Nagle and Yahata relate to laser-based additive manufacturing (Yahata, paragraph [0215]). Yurko in view of Nagle does not explicitly teach the composition of metal inoculant expressed as the specified inoculant weight percentages. Yurko in view of Nagle does teach combining metal inoculant in additive manufacturing. Yahata teaches to the specified composition of the metal inoculant.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for producing a beryllium article of Yurko in view of Nagle with the inoculant weight percentages of Yahata for providing increased control grain size, grain texture, grain boundaries, and other microstructure features, thereby providing a more uniform structure to the additive manufacturing.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over James Andrew Yurko of US 2016/0167133 A1 (hereinafter, Yurko) in view of Dennis C. Nagle of US 4,921,531 A (hereinafter, Nagle), as applied to claim 15 above, and in further view of Kim, Jae-Hwan, Hirotomo Iwakiri, and Masaru Nakamichi. "Reactivity with water vapor and hydrogen storage capacity of Be2Ti compound." International Journal of Hydrogen Energy 41.21 (2016): 8893-8899 (hereinafter, Kim).
As to claim 17, Yurko in view of Nagle does not explicitly teach wherein the at least one metal inoculant comprises at least one particle selected from the group consisting of Be2Co, Be2,Nb, Be2Ta, Be2Ti, Be2W, Be5Hf, Be5Sc, and Be--5Zr.
In an analogous art, Kim teaches to wherein the at least one metal inoculant comprises at least one particle selected from the group consisting of Be2Co, Be2,Nb, Be2Ta, Be2Ti, Be2W, Be5Hf, Be5Sc, and Be--5Zr (Kim, pg. 8944, teaches that Be2Ti is synthesized by plasma sintering a powder containing beryllium and titanium; Nagle, col. 8, ln. 39, teaches to forming second phase precipitates by combining second phase-forming reactants, col. 8, ln. 35, that includes beryllium, and solvent metals, col. 9, ln. 11, that includes titanium, for instance; Nagle, col. 10, ln. 23, teaches that these may react in plasma; the resulting second phase precipitates reads as at least metal inoculant).
Both Yurko in view of Nagle and Kim relate to plasma sintering (Kim, pg. 8894). Yurko in view of Nagle does not explicitly teach Be2Ti is obtained as a result of forming second phase precipitates by combining second phase-forming reactants and solvent metals. Yurko in view of Nagle does teach forming second phase precipitates by combining second phase-forming reactants and solvent metals, wherein beryllium and titanium react in plasma. Kim teaches that titanium and beryllium in plasma sintering of Nagle would have formed Be2Ti.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have observed that Be2Ti would have been formed from Nagle’s teachings, as supported by Kim’s synthesis of Be2Ti.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-15 of copending Application No. 18/448,388 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they each perform a method for producing a beryllium article.
While depositing a layer on a surface is recited being actively cited, the layer in ‘338 comprises beryllium and at least one metal selected from the group consisting of iron, zirconium, tantalum, titanium, yttrium, molybdenum, niobium, chromium, nickel, cobalt, hafnium, tungsten, and strontium. The layer in ‘552 comprises combining beryllium and at least one metal inoculant selected from the group consisting of Be2Co, Be2Nb, Be2Ta, Be2Ti, Be2W, Be5Hf, Be5Sc, Be5Zr, Be7Cu13, BeFe3, Cu3Mo, Cu9W, Mo, Nb, RbO2, ReRh, Ta, TiV, and W. The layers overlap in scope because the layer in ‘552 comprises beryllium and at least one metal selected from the group consisting of iron (see BeFe3, for instance), zirconium (see Be5Zr, for instance), or tantalum (see Ta, for instance).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN LEE whose telephone number is (703)756-1254. The examiner can normally be reached M-F, 7:00-16:00.
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/JOHN LEE/Examiner, Art Unit 1794
/JAMES LIN/Supervisory Patent Examiner, Art Unit 1794
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