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 § 103
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.
Claim(s) 1, 7-11, and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0028469 A1 (hereinafter “Bishop”), in view of US 2011/0265757 (hereinafter “GKN”).
Regarding claim 1, Bishop teaches an aluminum alloy powder mixture that allows high volume parts with improved mechanical properties (see BACKGROUND). Bishop teaches a powder mixture including aluminum powder, Al-Cu master alloy, Al-Si master alloy, elemental magnesium powder and elemental tin powder (see claim 1 or SUMMARY). Bishop teaches that the composition also includes a ceramic component powder (See [0043]).
Bishop does not teach a AlN powder. Bishop does not specify the ceramic component.
GKN teaches an aluminum powder mixture for improved mechanical properties (see BACKGROND). GKN teaches that the powder includes aluminum powder, Al-Cu master alloy, elemental magnesium powder and elemental tin powder (see claim 1 thru 7 or SUMMARY). GKN teaches that a ceramic component may be added to the powder to improve mechanical properties (See [0042]). GKN teaches that AlN is suitable for this purpose (See [0042]).
It would have been an obvious matter to the skilled artisan at time of filing to have altered the method of Bishop as by adding in AlN to the composition, because GKN teaches that such an addition is suitable to improve the mechanical properties of aluminum powder mixtures ([0042]).
Regarding claims 7-8, Bishop teaches Al-50Cu (claim 3). The limitations of atomized and crushed are considered product-by-process limitations. In this case the structures described by the prior art are the same as those claimed.
Regarding claim 9, Bishop teaches Al-12Si (claim 3).
Regarding claim 10, Bishop teaches lubricant ([0025] and claim 8).
Regarding claim 11, the lubricant is also considered to be a flow aid, as the lubricant will help the powder flow while pressing occurs.
Regarding claim 13, Bishop teaches that there is a homogenous distribution of silicon in the part ([0027]). Bishop teaches that the dispersoids are distributed homogenously through the part ([0037]). GKN further teaches to create a uniform distribution ([0042]). The properties not disclosed would have flowed naturally from creating the powder mixture as the prior art suggests.
Regarding claims 14-15, Bishop in view of GKN do not teach a size of the AlN material in the powder mixture. However in general the recitation of a size is not sufficient to distinguish over the prior art having the same composition. In Gardner v. TEC Syst., Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984), the Federal Circuit held that, where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device. In this case, GKN clearly envisions that the AlN is added as a reinforcement material ([0042]), and the alloys are all directed to improvement of mechanical properties of aluminum powder metallurgy parts.
Regarding claim 16, GKN teaches a AlN material. GKN does not specify the phase or composition of phases, however the skilled artisan reading GKN would have immediately envisioned the stable phase of the material absent description otherwise. The properties not disclosed are inherent.
Regarding claims 17-18, Bishop does not teach a flow rate or a theoretical density. In general Bishop when modified by GKN teaches the same powder mixture, with the same components, and used for the same purpose of powder metallurgy, to achieve the same goals of improved mechanical properties. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Regarding claim 19-20, Bishop teaches green compacts, which are then sintered (BACKGROUND or claim 11).
Claim(s) 2-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0028469 A1 (hereinafter “Bishop”), in view of US 2011/0265757 (hereinafter “GKN”), and further in view of US 4177069 A (hereinafter “Kobayashi”).
Bishop in view of GKN are applied to the claim as stated above.
Bishop in view of GKN do not teach wherein a proportion of the aluminum alloy includes fines.
Kobayashi teaches a process for making aluminum powder compacts (title, SUMMARY). Kobayashi teaches mixing aluminum or Al-Si powder with one or more master alloys, including Mg powders (claim 1, SUMMARY, EXAMPLES 1 thru 14). Kobayashi teaches that prior art powders with high amount of fines have caused economical constraint (col 1-2). Kobayashi teaches that a powder including a normal distribution of fines and coarse will work when additives such as Si and Cu are included (col 2 and col 7). Kobayashi teaches that the powder may include fines (Example 1).
It would have been an obvious matter to the skilled artisan to have used the powder of Kobayashi as the aluminum powder because Kobayashi teaches that the powder obtains sufficient mechanical strength (see col. 4 and Examples).
Regarding claims 3-4 Kobayashi teaches similar proportions of fines (Examples 1 thru 14).
Claim(s) 11-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0028469 A1 (hereinafter “Bishop”), in view of US 2011/0265757 (hereinafter “GKN”), and further in view of US 7943084 B1 (hereinafter “Johnson”).
Bishop in view of GKN are applied to the claim as stated above.
Bishop in view of GKN do not teach to add fumed silica.
Johnson teaches means to improve flowability of powders (title, SUMMARY). Johnson teaches to add fumed silica to the powder to improve flowability (see col 12-13).
It would have been an obvious matter to the skilled artisan at time of filing to have altered the method of Bishop as by adding in AlN to the composition, because GKN teaches that such an addition is suitable to improve the mechanical properties of aluminum powder mixtures ([0042]), and to have added fumed silica as taught by Johnson in order to improve flowability (col 12-13).
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 1-4 and 7-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. US 12629750 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s patent claim 1 does not recite that tin or aluminum nitride is added. However these features are expressed in claims 3 and 14-16 respectively. The combination of the known features in the claims would have been a prima facie obvious matter to the skilled artisan. Applicant’s patent claims additionally describe instantly claimed features (particle sizes and phases in claims 14-16, flow rate in claim 1, etc.).
Allowable Subject Matter
NO claims are allowable. Claims 5 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The prior art does not teach the combinations of features of claims 5 and 6, respectively, wherein the composition includes the recited amounts of the respective alloying elements, and the respective particle (mesh) sizes of the individual powders required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 10640851 B2 teaches to create high theoretical density powder compacts by mixtures of aluminum powders.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759
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