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 .
Status of Claims
Claims 1-20 are examined in this office action of which claims 17-20 are new and claims 1, 5-6, 10-11, and 16 are amended in the reply dated 6/23/26.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 16-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 16 has been amended to recite “creating a continuous independent layer of metal powder on top of a plastic by cold sintering” in lines 3-4. Applicant points to paragraphs [0015] and [0022] of the application as published as support for these amendments. While this recites that a continuous layer of metal particles on top of ABS plastic, using a cold sintering method is created, this does not state that these are continuous independent layer. The term “independent” is not used in the specification and while Fig 2 also shows a layered material, this does not show that the layer is not dependent upon other elements. Therefore, the specification does not describe the claimed subject matter of “independent layer of metal powder” in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Claims 17-20 are also rejected as they depend from claim 16 and do not solve the above issue.
Claim 18 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.
Claim 18 recites the limitation “primarily comprising”. As primarily means for the most part or chiefly, it is not clear how primarily changes the meaning of comprising. It is not clear whether this means nickel must be the largest element in the metal powder, whether this means nickel must make up more than 50% of the metal powder, or some other meaning.
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 1-9 and 12-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0226895 A1 of Nayir in view of US 2019/0202740 A1 of Laurin.
As to claim 1, Nayir discloses a cold sintering process to densify powdered metals at lower compaction pressures and lower temperatures (Nayir, abstract). Nayir discloses where the metal powder is a fine powder with a particle size can range from 1 nanometer to 100 micrometers and combining the powder with a solvent and the mixture is placed in the die of a hydraulic press and a pressure of 50 to 800 MPa is applied along with a temperature of 25 to 300 °C (Nayir, paragraph [0082]), reading upon cold sintering metal powder to create a first portion of a component. Nayir discloses where this process can be used to generate a sintered material on a polymer substrate (Nayir, paragraph [0081}), meeting the limitation of having a component with a second portion of plastic. However, Nayir does not explicitly disclose where plastic is added to one surface of the first portion and cold sintering the plastic onto the first portion.
Laurin relates to the same field of endeavor of cold sintering composite materials (Laurin, title). Laurin teaches forming a layered composite using cold sintering (Laurin, FIG. 3). Laurin teaches placing an amount of powder, including a cold sinterable ceramic powder in a die; placing an amount of polymer or polymer precursor molecules in the die; applying an activating solvent for the powder in the die; heating to a first temperature, and applying sufficient pressure to the powder, amount of polymer or polymer precursor molecules, and solvent to activate sintering of the powder (Laurin, claim 1), meeting the limitation of cold sintering the plastic as the material includes plastic and it is a part of the cold sintering process. Laurin teaches forming a layered composite by placing powder in contact with a surface and then applying an activating solvent to the powder and applying pressure between dies (Laurin, paragraphs [0063]-[0065]). Laurin teaches that this process results in composites with increased toughness, improved fracture strength, improved fracture strain, and/or more desirable failure modes, such as an object cracking but not falling apart (Laurin, paragraph [0046]).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a step of forming a layered composite by placing powder in contact with a surface and then applying an activating solvent to the powder and applying pressure between dies as taught by Laurin into the method of forming a composite using cold sintering disclosed in Nayir, thereby creating a layer of a composite with increased toughness, improved fracture strength, improved fracture strain, and/or more desirable failure modes (Laurin, paragraph [0046]).
As to claim 2, Nayir discloses a where the mixture is placed into a die of a press (Nayir, paragraph [0082] and FIG. 3), where a die meets the limitation of the shape of the first portion being defined by a mold as the die constrains the powder and thereby defines its shape upon application of pressure.
As to claim 3, Laurin discloses where the polymer is in the form of particles (Laurin, paragraph [0035] and FIG. 1A), meeting the limitation of where the plastic is added in powder form.
As to claim 4, Nayir discloses the use of a constant pressure hydraulic press and a heater band coupled to the die and applying a temperature of from 25 to 300°C (Nayir, paragraph [0082] and FIG. 3), meeting the limitation of a hydraulic press and a heat jacket. As Nayir discloses applying heat and controlling the temperature, Nayir is disclosing a temperature controller, meeting the claim limitations.
As to claim 5, it is not clear what the temperature, pressure, and time apply to, see 112(b) rejection above. For the purposes of applying prior art, they will be interpreted as applying to one of the two cold sintering steps. Nayir discloses a pressure of 50 to 800 MPa is applied along with a temperature of 25 to 300 °C (Nayir, paragraph [0082]) and a compaction time of 10-60 min (Nayir, paragraph [0086]), overlapping the claimed parameters. “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
As to claim 6, Nayir discloses where the metal compound is any one or combination of iron, nickel, steel, stainless steel, copper, brass, bronze, copper-silver alloy, titanium, tantalum, or silver (Nayir, paragraph [0085]), meeting the limitation of where the powdered metal is primarily nickel, copper, iron or a mixture of two or more of nickel, copper, and iron.
As to claims 7-8, Laurin discloses where acceptable polymers include Polycarbonate and acrylonitrile butadiene styrene (ABS) (Laurin, paragraph [0036]), meeting the claim 7 limitation where the plastic is at least partially polycarbonate and claim 8 limitation where the plastic is at least partially ABS.
As to claim 9, Nayir discloses where the cold sintering is done with no binder (Nayir, paragraph [0109]), meeting the limitation of the method not including any additional binders.
As to claim 12, Laurin discloses where the ceramic particles include zinc oxide (Laurin, claim 6), meeting the limitation of a thermal stabilizer as ceramic oxides are thermal insulators.
As to claim 13, Nayir discloses using lubricants from classes of silanes, titanates, aluminates, zirconates can result in an insulating inorganic coating on iron powders that can yield 95% relative density (Nayir, paragraph [0104]).
As to claim 14, Laurin discloses where the ceramic particles include zinc oxide (Laurin, claim 6), meeting the limitation of an acid scavenger as applicant notes in paragraph [0023] of the specification that metal oxides are acid scavengers.
As to claim 15, Laurin discloses where the ceramic particles include zinc oxide (Laurin, claim 6), meeting the limitation of impact enhancer as the addition of a ceramic such as zinc oxide will increase the strength of the composite material and thereby its ability to resist impacts.
As to claim 16, Nayir discloses a cold sintering process to densify powdered metals at lower compaction pressures and lower temperatures (Nayir, abstract). Nayir discloses where the metal powder is a fine powder with a particle size can range from 1 nanometer to 100 micrometers and combining the powder with a solvent and the mixture is placed in the die of a hydraulic press and a pressure of 50 to 800 MPa is applied along with a temperature of 25 to 300 °C (Nayir, paragraph [0082]), reading upon cold sintering metal powder to create a first portion of a component. Nayir discloses where this process can be used to generate a sintered material on a polymer substrate (Nayir, paragraph [0081}), meeting the limitation of having a component with a second portion of plastic and creating a continuous layer of metal powder on top of plastic by cold sintering. However, Nayir does not explicitly disclose where plastic is added to one surface of the first portion and cold sintering the plastic onto the first portion.
Laurin relates to the same field of endeavor of cold sintering composite materials (Laurin, title). Laurin teaches forming a layered composite using cold sintering (Laurin, FIG. 3). Laurin teaches placing an amount of powder, including a cold sinterable ceramic powder in a die; placing an amount of polymer or polymer precursor molecules in the die; applying an activating solvent for the powder in the die; heating to a first temperature, and applying sufficient pressure to the powder, amount of polymer or polymer precursor molecules, and solvent to activate sintering of the powder (Laurin, claim 1), meeting the limitation of cold sintering the plastic as the material includes plastic and it is a part of the cold sintering process. Laurin discloses where acceptable polymers include Polycarbonate and acrylonitrile butadiene styrene (ABS) (Laurin, paragraph [0036]). Laurin teaches forming a layered composite by placing powder in contact with a surface and then applying an activating solvent to the powder and applying pressure between dies (Laurin, paragraphs [0063]-[0065]). Laurin teaches that this process results in composites with increased toughness, improved fracture strength, improved fracture strain, and/or more desirable failure modes, such as an object cracking but not falling apart (Laurin, paragraph [0046]).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a step of forming a layered composite by placing powder in contact with a surface and then applying an activating solvent to the powder and applying pressure between dies and where the polymer is polycarbonate and ABS as taught by Laurin into the method of forming a composite using cold sintering disclosed in Nayir, thereby creating a layer of a composite with increased toughness, improved fracture strength, improved fracture strain, and/or more desirable failure modes (Laurin, paragraph [0046]).
As to claim 17, Nayir discloses where the cold sintering is done with no binder (Nayir, paragraph [0109]), meeting the limitation of the method not including any additional binders.
As to claim 18, Nayir discloses where the metal compound is any one or combination of iron, nickel, steel, stainless steel, copper, brass, bronze, copper-silver alloy, titanium, tantalum, or silver (Nayir, paragraph [0085]), meeting where the transition metal powder is primarily comprising nickel.
As to claim 19, Laurin discloses where LMO/PEI composite is added to the stainless steel die and pressed into a ceramic pellet at 268 MPa pressure and 150° C. temperature for 30 min (Laurin, paragraph [0100]), meeting the claim limitation of cold sintering the plastic onto the densified first portion is performed using an annealing thermal profile starting at room temperature and ramping up to a maintained temperature of 150°C as Laurin does not disclose where this heating process is started from a temperature, it is obviously started at room temperature.
Claims 10-11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2022/0226895 A1 of Nayir and US 2019/0202740 A1 of Laurin as applied to claims 1 and 16 above, and further in view of US 5922397 A of Brandt.
As to claims 10 and 20, the combination of Nayir and Laurin discloses the method of forming a component of cold sintered metal powder and cold sintered plastic, see claims 1 and 16 rejection above. However, neither Nayir nor Laurin discloses plating an additional metal onto the component without etching, sensitization of activation steps.
Brandt relates to the same field of endeavor plating multi-layer constructs (Brandt, col 1, lines 5-11). Brandt teaches plating a conductive surface onto a sintered paste which comprised a metal powder, solder powder, binder and crosslinking agent (Brandt, claims 1 and 5). Brandt teaches that this process produces a conductive trace with reduced resistance and good adhesion of the plated metal to the underlying material (Brandt, col 9, lines 16-18).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a conductive surface by coating metal as taught by Brandt into the method of forming a metal and plastic cold sintered part disclosed by the combination of Nayir and Laurin, thereby plating the cold sintered metal with another metal and produces a conductive trace with reduced resistance and good adhesion of the plated metal to the underlying material (Brandt, col 9, lines 16-18).
As to claim 11, Brandt teaches wherein plating employs a metal selected from the group consisting of Ni, Cu, Ag, Au, Pd, Sn, Pb, Zn and Sn (Brandt, claim 4), reading upon the claim limitation of the additional metal being silver, gold, nickel, copper or a mixture thereof.
Response to Arguments
With respect to the claim objection of claim 6, applicant’s deletion of the errant numbers cures the previous issue and the objection is withdrawn.
Also, with respect to the 112(b) rejections, applicant’s amendments to claims 5-6 and 11 cure the previous issues and the rejections are withdrawn.
With respect to the 103 rejection over Nayir and Laurin, applicant argues that Laurin does not cure the deficiencies of Nayir as Laurin discloses a single step of co-sintering a single mass where this is a homogeneous mixture of cold-sinterable ceramic grains co-mingled with secondary polymer particles (Applicant’s remarks, pg 6, 1st paragraph). Applicant argues that as Laurin further teaches the activating solvent is applied to the ceramic phase which trapps the polymer phase within the closed-cell matrix pores, Laurin does not teach or suggest processing a layer of metal powder to create a densified first portion before subsequently adding a plastic to the densified first portion (Applicant’s remarks, pg 6, 2nd paragraph).
However, Nayir already discloses forming a layered composite of metal on a polymer substrate (Nayir, paragraph [0081]). All that Nayir does not disclose is where this polymer layer is formed using cold sintering. As Laurin discloses a method of forming a layer containing polymer using cold sintering, it is obvious to combine the references to carry out the formation of the polymer layer already disclosed in Nayir. Thus, it is immaterial that Laurin does not disclose where metal is used; Laurin is merely being combined to form the polymer layer already disclosed in Nayir. Thus applicant’s arguments are not persuasive and the rejection is maintained.
Applicant also argues that the references teach away from the invention of claim 1 as Nayir is focused exclusively on metallurgical densification, all of its examples are concerned with metal densification, whereas a thermoplastic the high shear stresses produced by Nayir’s compression would destroy the polymer grains and thus the teachings of Nayir are not compatible with those of Laurin (Applicant’s remarks, pg 6, last paragraph – pg 7 1st paragraph).
With respect to applicants argument that Nayir teaches away by disclosing examples which relate to metal powder, "the prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004), see MPEP § 2141.02(VI). "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)), see MPEP § 2123(I). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971), see MPEP§ 2123(II). In this case, Nayir already discloses where a metal/polymer composite is formed where the metal portion is formed using cold sintering. All that Nayir lacks is a teaching of forming the polymer layer using cold sintering. As Laurin teaches a method of forming a polymer composite portion using cold sintering, it is obvious to combine Laurin into Nayir to form the composite already disclosed in Nayir. The mere fact that Nayir has examples that are merely metal-based does not teach away from the other disclosure where there is a metal/polymer composite. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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