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 .
DETAILED ACTION
Claims 7-10 have been cancelled; Claims 1, 6, 11-14, and 19 have been amended; Claims 1-6 and 11-19 remain for examination, wherein claim 1 is an independent claim
Previous Rejections/Objections
Previous objection of claims 6 and 14 because of the informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 06/22/2026.
Previous rejection of claim 1 under 35 U.S.C. 102 (a)(1) as being anticipated by Karabin et al (US-PG-Pub 2019/0309402 A1, Thereafter PG’402) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 06/22/2026.
Previous rejection of Claim(s) 6-11, 14-15, 17, and 19 under 35 U.S.C. 103 as being unpatentable over PG’402 is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 06/22/2026.
Previous rejection of Claim(s) 2-5, 12-13, and 16-18 under 35 U.S.C. 103 as being unpatentable over PG’402 in view of Chehab (WO2019/155180 A1, listed in IDS filed on 4/11/2024, corresponding to US-PG-pub 2021/0276099 A1, listed in IDS filed on 4/11/2024, thereafter PG’099) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 06/22/2026.
However, in view of the Applicant’s amendment, newly cited reference(s), and reconsideration, a new ground rejection is listed as following:
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 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.
Claim(s) 1, 6, 11, 14-15, 17, and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Karabin et al (US-PG-Pub 2019/0309402 A1, Thereafter PG’402) in view of Fodran et al (NPL: Microstructural evolution and thermal stability of Al-Ce-Ni ternary eutectic” Thesis (2002), thereafter NPL-1).
Regarding claim 1, PG’402 teaches an aluminum alloy and product for additive manufacturing (abstract, claims, and examples of PG’402), which reads on the alloy Al based alloy for additive manufacturing as claimed in the instant claim. The comparison of the composition ranges between the alloy composition disclosed by the PG’402 (Cl.18 and par.[0026] of PG’402) and those of the instant claim 1 are listed in the following table. All of the alloy composition ranges disclosed by PG’402 overlap the claimed alloy composition ranges, which creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount including Ce, Ni, Mn, and Al from the disclosure of PG’402 since PG’402 teaches the same aluminum alloy and product for additive manufacturing as claimed throughout whole disclosing range.
Element
From instant Claim 1 (in wt %)
From PG’402 (in wt%)
Overlapping range
(in wt%)
Ce
8-12
1-18
8-12
Ni
2-4
1-24
2-4
Mn
0-3
Trace amount
0-Trace amount
Al
Balance with impurities
Balance with impurities
Balance with impurities
Intermetallic Phase comprising at least one
Al23Ni6Ce4
Al11Ce3
Al7Ni2Ce
Al20Mn2Ce
--
--
Still regarding claim 1, PG’402 forming intermetallic phase including Al3Ni, Al4Ce, Al10Ni2Ce and Al8Ni4Ce (par.[0026] of PG’402), which does not include the intermetallic phase as claimed in the instant claim. NPL-1 teaches a Al-Ce-Ni alloy (Table 3.2 of NPL-1). NPL-1 specify include primary -Al dendrites and lamellar intermetallic micro-eutectic phases (-Al, Al11Ce3 and Al3Ni) (in Fig.3.6 of NPL-1), which reads on the claimed intermetallic phase as claimed in the instant claim. It would have been obvious to one of ordinary skill in the art at the time the invention was made to form Al11Ce3 as demonstrated by NPL-1 in the alloy of PG’402 as claimed since both PG’402 and NPL-1 teach the same aluminum alloy and product for additive manufacturing as claimed throughout whole disclosing range.
Regarding claims 6 and 14, PG’402 teaches a eutectic-type microstructure, generally having cellular, lamellar, and/or wavy structures within individual grains (Fig.2 and par.[0009]-[0011] of PG’402), which reads on the alloy (cl.1) and object (cl.14) with Al based matrix phase and intermetallic phase as claimed in the instant claims. PG’402 indicates a eutectic-type structure comprises cellular structures having a cell size of generally less than 1 micron, and/or a spacing of less than 1 micron between lamellar structures and/or wavy structures. (par.[0009] of PG’402), which overlaps the claimed isolated feature length and thickness of lattice-like structure in the instant claims. Overlapping in the dimensions of the isolated feature length and thickness of lattice-like structure creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the dimensions of the isolated feature length and thickness of lattice-like structure from the disclosure of PG’402 as claimed since PG’402 teaches the same Al-Ce-Ni alloy with Al3Ni intermetallic phase for additive manufacturing as claimed throughout whole disclosing range.
Regarding claim 11, PG’402 indicates that the aluminum, cerium, and nickel contents are controlled such that the alloy contains 0.5 to 21.0 wt. % Ce, 0.5 to 17.0 wt. % Ni, the balance being aluminum, optional additions, and unavoidable impurities, (par.[0026] of PG’402), which overlap the claimed Ce ranges (cl.7-8, and 11), Ni ranges (cl.9-11). Overlapping in Ce and Ni ranges creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Ce and Ni from the disclosure of PG’402 as claimed since PG’402 teaches the same Al-Ce-Ni alloy with Al3Ni intermetallic phase for additive manufacturing as claimed throughout whole disclosing range.
Regarding claim 15, PG’402 specify Al-Ce-Ni alloy with Al3Ni intermetallic phase (par.[0026] and claim 20 of PG’402), which reads on the claimed limitations as claimed in the instant claims.
Claims 2-5, 12-13, and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’402 in view of NPL-1 and further in view of Chehab (WO2019/155180 A1, listed in IDS filed on 4/11/2024, corresponding to US-PG-pub 2021/0276099 A1, listed in IDS filed on 4/11/2024, thereafter PG’099).
Regarding claims 2-5, 12-13, and 17-18, PG’402 in view of NPL-1 teaches an aluminum alloy and product with Al-Ce-Ni alloy with intermetallic phase (par.[0026] and claim 20 of PG’402) for additive manufacturing (abstract, claims, and examples of PG’402), PG’402 specify including optional additions, and unavoidable impurities in the Al-Ce-Ni alloy (par.[0026] of PG’402). But PG’402 in view of NPL-1 does not specify the claimed specific additional elements as recited in the instant claims. PG’099 teaches an Al based alloy manufactured by additive manufacturing process (Abstract, par.[0002] and [0025], and claims of PG’099). PG’099 teaches Al based alloy including Ni, Mn, Zr, Hf, and optional including Ce with specific amount (claims 1-3 and par.[0017]-[0018], and [0029] of PG’099], which overlaps the claimed Hf (cl.2-3), Mn and/or Zr (cl.4-5, 12-13, and 17-18) amount in the instant claims 1 and 8-9. Overlapping in composition ranges creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Mn, Zr, and Hf from the disclosure of PG’099 for the alloy of PG’402 in order to obtain a high strength Al alloy (par.[0030] of PG’099).
Regarding claim 16, PG’099 teaches including Zr and formation of nanometric dispersoids of the Al3Zr in the alloy (Par.[0026] of PG’099), which reads on the claimed limitation in the instant claim.
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’402 in view of NPL-1 and evidenced by Dehoff et al (US 11,986,904 B2, thereafter US’904).
Regarding claim 19, PG’402 forming intermetallic phase including Al3Ni, Al4Ce, Al10Ni2Ce and Al8Ni4Ce (par.[0026] of PG’402), which does not include the intermetallic phase as claimed in the instant claim. However, forming one of more of intermetallic phase in Al-Ce-Ni alloy including Al23Ni6Ce4, Al7Ni2Ce, and Al20Mn2Ce fully depended on the alloy composition and manufacturing process. PG’402 in view of NPL-1 teaches the similar alloy composition manufacturing by the same additive manufacturing process as disclosed by the instant invention, the claimed one of more of intermetallic phase in Al-Ce-Ni alloy including Al23Ni6Ce4, Al7Ni2Ce, and Al20Mn2Ce would be highly expected in the alloy of PG’402 in view of NPL-1. This position further evidenced by US’904. All of the alloy composition ranges and microstructure disclosed by US’904 overlap the ranges of composition ranges, which is a prima facie case of obviousness. MPEP 2144.05 I. US’904 indicates forming different intermetallic phase including Al23Ni6Ce4, Al7Ni2Ce, and Al20Mn2Ce (Col.14, lns.18-50 of US’904).
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-6 and 11-19 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2).
Regarding claims 1-19, although the conflicting claims are not identical, they are not patentable distinct from each other with Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2). All of the alloy composition ranges and microstructure disclosed in Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2) overlap the ranges of composition ranges, which is a prima facie case of obviousness. MPEP 2144.05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include ferrite as claimed from the disclosures Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2) because Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2) teaches the same Al-Ce-Ni for additive manufacture as claimed throughout the whole disclosed ranges. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-16 of copending application No. 16/894551 (US 11,608,546 B2).
Claims 1-6 and 11-19 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2).
Regarding claims 1-19, although the conflicting claims are not identical, they are not patentable distinct from each other with Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2). All of the alloy composition ranges and microstructure disclosed in Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2) overlap the ranges of composition ranges, which is a prima facie case of obviousness. MPEP 2144.05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to include ferrite as claimed from the disclosures Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2) because Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2) teaches the same Al-Ce-Ni for additive manufacture as claimed throughout the whole disclosed ranges. Thus, no patentable distinction was found in the instant claims compared with the Claims 1-15 of copending application No. 17/084582 (US 11,986,904 B2).
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-6, and 11-19 have been considered but they are moot in view of the new ground rejection above.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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