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 I (claims 1-8) in the reply filed on 06/23/2026 is acknowledged.
Claims 9-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/23/2026.
Status of Claims
Pending: claims 1-19
Elected and under examination: claims 1-8
Withdrawn: claims 9-19
Objected to: claims 2-8
Rejected: claims 1-8
Claim Objections
Claims 2-8 are objected to because of the following informalities:
In claims 2-8, in the preambles of the claims, “A method” should be “The method” to clearly show dependency to claim 1.
Appropriate correction is required.
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 1-8 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 1 recites:
“…wherein either:
the difference between the first and second aCTE is greater than the difference between the second and third aCTE, and the difference between the second and third aCTE is greater than the difference between the third and fourth aCTE;
wherein the average CTE of a region of the interlayer means the weighted average of the CTE of each material in the interlayer, weighted by the volume fraction of the material in that region.”
The limitation is indefinite because in the first line of the above portion of the claim, the claim recites “either”, without reciting a corresponding “or”. It is unclear if “either” was written in error and is intended to be omitted, or if the underlined “and” is supposed to be an “or”, or if the underlined “wherein” is supposed to be preceded by an “or”. The limitation is indefinite because the metes and bounds of the claim limitation are unclear due to the unclear language.
Claim 1 recites multiple instances of “CTE” and “aCTE”, i.e., coefficients of thermal expansion and average coefficients of thermal expansion. However, the first aCTE, second aCTE, third aCTE, and fourth aCTE are all defined as being more/less than one another: first material CTE > first aCTE > second aCTE >third aCTE, fourth aCTE > second material CTE; the claim further outlines limitations regarding differences between pairs of CTEs/aCTEs being greater than the differences between other pairs of CTEs/aCTEs.
The limitations are indefinite because they do not define or state the temperature at which the CTEs/aCTEs are measured. In other words, for example, material X’s CTE might be greater than material Y’s CTE at 25°C or room temperature, but the same material X’s CTE might be less than material Y’s CTE at a much higher temperature such as 500°C or 1000°C, because CTEs are a property that varies with temperature and are not static.
Claim 1 recites “the second material is a metal wherein the first material has a coefficient of thermal expansion, CTE, which is higher than a CTE of the second material”, which implies that the second material has multiple CTE values (which is possible due to materials having potentially varying CTE values based on the temperature, as discussed above). However, claim 1 later recites “the CTE of the second material”, which implies a singular CTE value. The applicant is reminded that providing antecedent basis is not required when such a property necessarily exists (see MPEP 2173.05(e)). It is suggested that the applicant either define the temperature at which the CTE is measured, as discussed above, and/or state “the CTE of the second material” in both instances.
Claim 1 recites “the first aCTE is defined from the high thermal expansion surface and is less than the CTE of the first material”, which is indefinite because it is unclear what “defined from the high thermal expansion surface” entails, or more specifically, which direction from the high thermal expansion surface the limitation is referring to. In the interest of compact prosecution, the applicant is recommended to amend the limitation to be consistent with the language for the second and third aCTE limitations. For example, the claim can be amended to “the first aCTE is defined from the high thermal expansion surface towards a midpoint of a thickness of the interlayer and is less than the CTE of the first material” or “the first aCTE is defined from the high thermal expansion surface towards the low thermal expansion surface and is less than the CTE of the first material”.
Claim 1 recites “the fourth aCTE is defined from the low thermal expansion surface and is less than the third aCTE and greater than the CTE of the second material”, which is indefinite because it is unclear what “defined from the low thermal expansion surface” entails, or more specifically, which direction from the low thermal expansion surface the limitation is referring to. In the interest of compact prosecution, the applicant is recommended to amend the limitation to be consistent with the language for the second and third aCTE limitations. For example, the claim can be amended to “the fourth aCTE is defined from the low thermal expansion surface towards a midpoint of a thickness of the interlayer and is less than the third aCTE and greater than the CTE of the second material” or “the fourth aCTE is defined from the low thermal expansion surface towards the high thermal expansion surface and is less than the third aCTE and greater than the CTE of the second material”.
Claim 8 recites “wherein, for any number N, the interlayer has an average coefficient of thermal expansion aCTE for N regions”, which is broad to the extent of being indefinite, particularly because of the use of “any” which is broad enough to extend to infinity. Although a broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. In the instant case, the boundaries are not clearly delineated because the limitation is unbounded due to the “any number N” which includes infinity.
Claim 8 recites “and the aCTE for each region varies as a polynomial function of the depth of the region through the interlayer”, which is indefinite because a constant number, e.g. a CTE = 10 is still a polynomial, albeit a zero-degree polynomial. Although a broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined, a claim is indefinite when the boundaries of the protected subject matter are not clearly delineated and the scope is unclear. In the instant case, the boundaries are not clearly delineated because the aCTE profile being claimed can vary infinitely randomly rather than clearly due to the lack of specificity of the claimed “polynomial function”.
Claims 2-8 are additionally rejected as being dependent from rejected claim 1.
Allowable Subject Matter and Pertinent Prior Art
Claims 1-8 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
The following is an examiner’s statement of reasons for indicating allowable subject matter: with regard to independent claim 1, the prior art does not anticipate or reasonably render obvious the cumulative limitations of the claim, with particular attention to the features of the claimed progression of CTE values (i.e., first material CTE > first aCTE > second aCTE >third aCTE, fourth aCTE > second material CTE), and the limitation “the difference between the first and second aCTE is greater than the difference between the second and third aCTE, and the difference between the second and third aCTE is greater than the difference between the third and fourth aCTE.” The closest prior art reference is Ferrasse et al. (US 20170287685 A1), who teaches functionally graded materials which comprise a graded volume extending between a tungsten-based structure and a steel-based structure, where the graded volume comprises a plurality of additively manufactured layers (Abstract). At least one of the plurality of additively manufactured layers may comprise a ternary element selected from vanadium and chromium (Abstract). Some of the additively manufactured layers may further comprise aluminum (Abstract) and The prior art is silent regarding the above-highlighted limitations in instant claim 1, and a POSITA would not reasonably derive these limitations from Ferrasse alone or in combination with another prior art reference.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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