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 .
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.
Claims 1-7 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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 1 recites a “film provided on a particle surface of the metal powder and containing a compound derived from a coupling agent”. It is not clear if the film itself is derived from a coupling agent, or if only the compound contained within the film is derived from a coupling agent. The specification describes the invention in the same way and does not provide an explanation of the scope of the claim.
Claim 1 also states “a water amount is measured by a Karl Fischer method”. It is not clear If this is referring to the amount of water in the powder, the amount of water in the air around the powder, or some other medium that may be involved.
Additionally with respect to claim 1, it is not disclosed what is meant by “a Karl Fischer method”. For example, there are techniques that use volumetric titrations and others that use coulometric titration, but both could be considered a Karl Fischer method. Even if both of these could be performed on the invention, it is unclear which one, and which parameters and conditions, are utilized in order to assess the metes and bounds of the claimed invention. It is also not clear if one Karl Fischer method could be performed before the heat treatment and another Karl Fischer method after the heat treatment. The claims and specification do not disclose the requirements of the method to perform “a Karl Fisher method”.
Claim 1 reads “and when the water amount before the heat treatment is set to 1, the water amount after the heat treatment is 0.85 or more and 1.15 or less in terms of mass ratio.” It is not clear if the term “mass” is referring to the mass of the water relative to the powder, or the mass of the different water measurements relative to each other. The specification does not clarify what “mass” is referring to.
For these reasons, one of ordinary skill in the art would not be reasonably apprised of the scope of the claim. Claims 2-7 are rejected as they depend on claim 1 and do not solve the above issues.
Claim 3 refers to “a tap density” being measured before and after the heat treatment. It is not disclosed which specific conditions are required for this tap density measurement. It is not clear if one type of tap density can be measured before the heat treatment and if another type could be measured after the heat treatment. No conditions such as pressure, time, or temperature are disclosed and it is unclear if these parameters could be changed before or after the heat treatment. One of ordinary skill in the art would not be reasonably apprised of the scope of the claim.
Claim 5 discloses “a Θ/2 method” for measuring the contact angle of water. It is not clear which method this is referring to as Θ/2 can apply to different techniques. It is not disclosed which parameters this method is conducted under, and it is not clear if only one type of Θ/2 method can be used or if more than one type can be used. The specification does not provide details on the method, and one of ordinary skill in the art would not be reasonably apprised of the scope of the claim.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 6, and 7 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by US20210387259 (A1) of Barnes.
In regard to Claim 1, Barnes discloses a method for the modification of particles in additive manufacturing, the same field of endeavor as the claimed invention. Barnes teaches the deposition of a film onto particles to modify core metal, and other powders to create superior properties for additive manufacturing. Para. [0010]. This reads on the additive manufacturing powder, metal powder, and film limitations in claim 1 of the instant application. Barnes teaches that the coating can be a hydrophobic organic coating. Para. [0085]. The particle diameter, including the coating, is preferably 10 to 100 µm. Para. [0070]. Claim 1 of the instant application also list a hydrophobic coating and an average particle diameter of 3.0 to 30 µm.
The meaning of “a water amount” and “a Karl Fischer method” is not clear, see 112(b) rejection above. For the purpose of prior art this will be interpreted as encompassing the amount of water in the powder before the heat treatment relative to the amount of water in the powder after the heat treatment, both having been measured by the same Karl Fischer method. 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, a prima facie case of either anticipation or obviousness has been established, see MPEP 2112.01. For the reasons listed above, the product disclosed in Barnes is substantially identical to the product disclosed in claim 1 of the instant application. They cannot have mutually exclusive properties such as water amount. Therefore, Barnes anticipates claim 1 of the instant application.
Claim 2 of the instant application further limits the hydrophobic functional group by stating that it is a cyclic structure containing group, a fluoroalkyl group, or a fluoroaryl group. Barnes discloses a coating which can include cyclic compounds, Para. [0056]. Barnes also teaches that the coating can be a fluorinated organic, Para. [0085]. This would encompass fluoroalkyl and fluoroaryl groups. Therefore, claim 2 is anticipated by Barnes.
Claim 3 adds a limitation involving the tap density of the powder. It is not clear what is meant by “a tap density” see 112(b) rejection above. For the purposes of prior art this will be interpreted as encompassing the measurement of the tap density of the powder under the same conditions before and after the heat treatment. 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, a prima facie case of either anticipation or obviousness has been established, see MPEP 2112.01. Since the product disclosed in Barnes is substantially identical to the product disclosed in claim 3 of the instant application, they cannot have mutually exclusive properties such as tap density. Therefore, Barnes anticipates claim 3 of the instant application.
Claim 5 adds a limitation involving the contact angle of water. It is not clear what is meant by “a contact angle of water” see 112(b) rejection above. For the purposes of prior art this will be interpreted as encompassing the measurement of the contact angle of water using one, consistent method. 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, a prima facie case of either anticipation or obviousness has been established, see MPEP 2112.01. Since the product disclosed in Barnes is substantially identical to the product disclosed in claim 5 of the instant application, they cannot have mutually exclusive properties such as contact angle of water. Therefore, Barnes anticipates claim 5 of the instant application.
Claim 6 adds the limitation of a silane coupling agent. Barnes discloses improved properties, such as flowability, in powders coated with silane, Para. [0146] While Barnes does not specifically mention silane as a “coupling agent” it is disclosed that core particles are adhered together through the coatings, Para. [0013]. Thus, the disclosed coatings act as “coupling agents”. Claim 6 also lists a limitation involving the concentration of a hydroxy group. The relative value of the concentration of this hydroxy group must be 0.40 or less when compared to the Si concentration which is set to 1. When the concentration of the hydroxy group is zero, the relative value would also be zero, which falls within the acceptable range for the claim. Thus, this limitation is optional and no hydroxy group is required. Therefore, Barnes anticipates claim 6 of the instant application.
Claim 7 adds the limitation of a binder that binds particles of the claimed powder together. Barnes discloses binders (aromatic containing, furfuryl alcohol, bisphenol A, or resorcinol) and coatings designed to chemically react with binders. Para. [104], [105]. Therefore, Barnes anticipates claim 7 of the instant application.
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.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over US20210387259 (A1) of Barnes in view of WO2010073021 (A1) of Godfrey.
Claim 4 adds the limitation that the film is a monomolecular film. While Barnes anticipates the powder disclosed in claim 1, Barnes does not teach a monomolecular film. Godfrey teaches a process for preparing fine particles comprising a core and coating, Para. [0001]. This is in the same field of endeavor as Barnes. Godfrey discloses that the coating will be substantially monomolecular, and that the use of monolayer coatings reduces the amount of coating material required, provides minimal addition to the size of the fine particle, and ensures that the coating is relatively easy to remove, Para. [0029]. It would be obvious to one of ordinary skill in the art to modify the powder disclosed in Barnes, with the monomolecular coating taught by Godfrey to minimize the amount of coating material required, reduce the size of the overall particles, and ensure that the coating can be removed. Therefore, all limitations of claim 4 are either anticipated by Barnes or are obvious under Barnes in view of Godfrey.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith 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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733