Detailed Office Action
Notice of Pre-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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Restriction/Election
Applicant's election with traverse of Group I, claims 1 – 15 in the reply filed on 06/22/26 is acknowledged. The traversal is on the ground(s) that there is no search burden and that a search would encompass both groups. This is not found persuasive because products are not limited to the manipulation of claimed steps. As such, the bonded body as claimed can be produced in/by a materially different process than the process claimed in Group II and search burden exists by requiring different search strategies/queries and classification areas.
The requirement is still deemed proper and is therefore made FINAL.
Claims 16 – 26 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected Group II, a method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 06/22/26.
Claim Objections
Claim 4 is objected to because of the following informalities: In line 4, the number “1.0” is missing “mm from” following it. That is, line 4 should read “1.0 mm from the bonding interface.”. Appropriate correction is required.
Claim Rejections – U.S.C. §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.
Claim 5 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.
Regarding claim 5, the limitations of claim 5 are unclear. In particular, it is not clear whether “main part” and “a part” are referring to the steel material itself or the second member. Based on the language of claims 3 – 4, it appears that the language is referring to the member itself, not the material/alloy. Moreover, Figures 1c, 2c, 3c, 4c, and 7c appear to describe that the lower hardness is due to an additional material (the NiCrFe alloy), not specifically the steel material. Because the claims are interpreted in light of the specification and because the language of claim 5 does not make clear whether the hardness difference in the main part and near the interface is a limitation directed to the second member or specifically the steel, the metes and bounds of claim 5 are indefinite. For purposes of examination and based in light of the specification, it is interpreted that the main part and “a part” is referring to the second member.
Claim Rejections – U.S.C. §102/103
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 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.
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.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1 – 3, 6 – 7, 9, and 12 – 15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hachtel (EP1629957, using espacenet translation) as evidenced by ALB (NPL, 2021), or alternatively under 35 U.S.C. 103 over Hachtel (EP1629957) in view of ALB (NPL, 2021)
Regarding claims 1 – 2 and 15, Hachtel teaches an injection mold (meeting claim 15). Hachtel teaches that the injection mold has a copper/copper alloy support material and a second material made of steel [0007 – 0008]. HachHachtel teaches that the steel material is applied via direct metal deposition using a laser [0014], meeting the broadest reasonable interpretation of claim 1 of “additively manufactured” and claim 2 of LMD.
Hachtel does not expressly teach the presence of/lack of voids having a length of 50 µm or more at the bonding interface. However, Hachtel teaches a substantially identical method to claimed invention of claim 2 (additive manufacturing by laser build up (DMD)) and as such, there is a reasonable expectation to an ordinarily skilled artisan that Hachtel would possess the claimed feature.
As evidenced by ALB, the CuCoBe alloy is known as C17500 and is a precipitation hardenable (i.e., age hardened) alloy [Page 1], meeting the claimed limitation of “precipitation hardenable copper alloy)
Alternatively, ALB teaches a copper alloy containing cobalt and beryllium [Page 1]. ALB discloses that the copper alloy is age hardenable (i.e., precipitation hardenable) and utilized in industrial applications in part for its thermal conductivity [page 1]. Additionally, ALB discloses that the alloy also has good strength and hardness [page 1].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the bonded body of Hachtel and selected the copper alloy disclosed by ALB as the copper alloy. Hachtel teaches that the copper alloy can be a CuCoBe alloy and as such, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results. Moreover, an ordinarily skilled artisan would have been motivated to select this alloy because it is disclosed to have high thermal conductivity as well as good strength and hardness.
Regarding claim 3, Hachtel as evidenced by or alternatively in view of ALB (NPL) teaches the invention as applied in claim 1. Hachtel teaches that the copper alloy can be CuCoBe AMCO [0009], meeting the claimed limitation of a precipitation hardenable copper alloy (as evidenced by ALB) and in particular meets the broadest reasonable interpretation of a beryllium copper alloy.
Hachtel does not explicitly teach that an area within 1 mm of the bonding interface has a hardness below 200 HV, however, Hachtel teaches a substantially identical composition to claim 1 and/or a substantially identical method to the claimed invention of claim 2 (additive manufacturing by laser build up (DMD)) and as such, there is a reasonable expectation to an ordinarily skilled artisan that the Hachtel would possess the claimed feature.
Regarding claims 6 – 7, Hachtel as evidenced by or alternatively in view of ALB (NPL) teaches the invention as applied in claim 1. Hachtel teaches that the copper alloy can be CuCoBe AMCO [0009], meeting the claimed limitation of a precipitation hardenable copper alloy (as evidenced by ALB) and in particular meets the broadest reasonable interpretation of a beryllium copper alloy.
Regarding claims 13 – 14, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 2. Hachtel teaches that the copper alloy can be CuCoBe AMCO [0009], meeting the claimed limitation of a precipitation hardenable copper alloy (as evidenced by ALB) and in particular meets the broadest reasonable interpretation of a beryllium copper alloy of claim 14.
As evidenced/taught by ALD, the CuCoBe alloy has a thermal conductivity of 0.48 cal/(cm-s-°C) which is ~200.8 W/m-k, which falls within the claimed range of claim 13.
Regarding claim 9, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 1. Hachtel teaches that an intermediate layer can be provided between the carrier material and wear protection material to prevent stresses between the individual materials [0009]. This reasonably suggests that the intermediate layer is a heterogenous metal material relative to the copper/copper alloy and steel.
Regarding claim 12, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 9. Hachtel does not expressly teach the presence of/lack of voids having a length of 10 µm or more at the bonding interface. However, Hachtel teaches a substantially identical method to the claimed invention of claim 2 (additive manufacturing by laser build up (DMD)) and as such, there is a reasonable expectation to an ordinarily skilled artisan that the Hachtel would possess the claimed feature.
Claim Rejections – U.S.C. §103
Claim 4 is rejected under 35 U.S.C. 103 over Hachtel (EP1629957, using espacenet translation) in view of ALB (NPL, 2021)
Regarding claim 4, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 1. Hachtel as evidenced by or in view of ALB teaches that C17500 copper alloy can be used as the alloy. Hachtel teaches that the hardness of the alloy can be up to 100 HRB [page 1] which is approximately up to 240 HV, which overlaps with the claimed range(s) of the main part.
With regards to the overlapping ranges taught, “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)”, absent evidence of criticality or unexpected results (MPEP 2144.05 I). "The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . In such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range." In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) (MPEP 2144.05 III A).
Claim 8 is rejected under 35 U.S.C. 103 over Hachtel (EP1629957, using espacenet translation) in view of ALB (NPL, 2021), as applied in claim 1, in further view of Azom (“Tool Steel Classification”, NPL)
Regarding claim 8, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 1. Hachtel teaches that the steel compositon for the wear resistance material can be tool steel [0009] but does not expressly teach that the tool steel is high speed tool steel.
Azom teaches information regarding tool steel. Azom teaches that tool steels are divided into 3 basic categories including cold work, hot work, and high speed [Page 2]. Azom teaches that these tools are known for their wear resistance, hardness, and toughness [page 2].
As such, it would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the bonded body of Hachtel and selected high speed tool steel as the steel compositon to achieve predictable results. Because Hachtel teaches that the steel compositon can be a tool steel, an ordinarily skilled artisan would have had a reasonable expectation of success in achieving predictable results.
Claim 10 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hachtel (EP1629957, using espacenet translation) as evidenced by ALB (NPL, 2021), or alternatively under 35 U.S.C. 103 in view of ALB (NPL, 2021), as applied in claim 9, in further view of Ma (US2020/0230697)
Regarding claim 10, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 9. Hachtel teaches that an intermediate layer can be provided between the carrier material and wear protection material to prevent stresses between the individual materials [0009]. Hachtel does not expressly teach or suggest that the intermediate material is a Ni alloy.
Ma teaches the formation of multi-material component via additive manufacturing to form a joint with minimal porosity [Abstract]. Like Hachtel, Ma states that a buffer material can be provided between the first and second metallic material to reduce cracks and/or embrittlement as a metal material such as nickel/nickel alloy [0011, 0012]. Ma expressly recognizes that nickel material can serve as a buffer material in instances for which the first metallic material includes copper and the second metallic material includes iron. [0013]
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the intermediate layer of Hachtel and selected it to be nickel/nickel alloy material, as taught by Ma. Hachtel and Ma are directed to the same field of endeavor of multi-material components produced by laser build-up/cladding. Moreover, Ma teaches that nickel can serve as a buffer material for copper and iron and Hachtel teaches that an intermediate layer can be used to reduce residual stresses. As such, an ordinarily skilled artisan would have had reasonable expectation of success. Additionally, an ordinarily skilled artisan would have been motivated because Ma teaches that the buffer material can prevent cracks and/or embrittlement.
Claims 5 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hachtel (EP1629957, using espacenet translation) as evidenced by ALB (NPL, 2021), or alternatively under 35 U.S.C. 103 in view of ALB (NPL, 2021), as applied in claims 1 and 9, in further view of Ma (US2020/0230697) and Wang (CN109778180, using espacenet translation), and as evidenced by Azom (“Tool Steels”, NPL, 2012)
Regarding claim 11, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 9. Hachtel teaches that an intermediate layer can be provided between the carrier material and wear protection material to prevent stresses between the individual materials [0009]. Hachtel does not expressly teach or suggest that the intermediate material is a Ni-Cr-Fe alloy.
Ma teaches the formation of multi-material component via additive manufacturing to form a joint with minimal porosity [Abstract]. Like Hachtel, Ma states that a buffer material can be provided between the first and second metallic material to reduce cracks and/or embrittlement [0011]. Ma expressly recognizes that instances in which first metallic material includes copper and the second metallic material includes iron, the buffer layer can include nickel [0013].
To this, Wang teaches a laser cladding method to prevent copper permeation cracking [0002]. Wang teaches that when copper is heated/melted near steel, the molten copper penetrates the grain boundaries of steel and causes cracking (known as “liquid metal embrittlement”) [0004]. Wang teaches that a solution for this problem is to include an additional material, specifically a nickel-based alloy of Ni-Cr-Fe [0008, 0009]. Wang teaches that the inclusion of a nickel-based alloy transition layer slows the wetting of Cu/steel and thereby controlling copper penetration cracks [0017].
It would have been obvious to one of ordinary skill in the art before the effective filing date to have taken the multi-material body of Hachtel and controlled the intermediate layer disclosed to be a Ni-Cr-Fe alloy as suggested by Ma in view of Wang. Hachtel, Ma, and Wang are all in the same field of endeavor of forming multi-material components by laser build-up/cladding and as such, the teachings of Ma and Wang would be pertinent to the disclosure of Hachtel. Moreover, Hachtel discloses that an intermediate material layer between the copper and steel layer can be used to reduce residual stresses and Ma teaches that a buffer layer including nickel can serve as an appropriate intermediate for copper and iron to reduce cracks and/or embrittlement. As such, an ordinarily skilled artisan would have had a reasonable expectation of success in using the Ni-Cr-Fe alloy disclosed by Wang as the intermediate layer. Moreover, an ordinarily skilled artisan would have been motivated to use it because Wang discloses that this intermediate material slows/controls copper/copper alloy penetration cracks of steel.
Regarding claim 5, Hachtel as evidenced by, or alternatively in view of, ALB (NPL) teaches the invention as applied in claim 1. Hachtel does not expressly teach Vickers hardness limitations. Hachtel does teach that the second member can be a tool steel [0009].
As discussed above in claim 11, Ma in view of Wang suggests using a Ni-Cr-Alloy as an intermediate layer that is applied by an AM process. Hachtel teaches that the wear material (i.e., steel) is produced through additive manufacturing process (DMD) [0008, 0009]. As such, the additively manufactured nickel layer can, under broadest reasonable interpretation, be interpreted as part of the second member at the interface. Given that the instant invention describes Ni-Cr-Fe as having hardness below 300 HV and Hachtel teaches a substantially identical method to claimed invention of claim 2 (additive manufacturing by laser build up (DMD)), there is a reasonable expectation to an ordinarily skilled artisan that the use of Ni-Cr-Fe in Hachtel would possess the claimed feature.
Moreover, as evidenced by Azom, tool steel has a hardness ranging from 62 – 67 HRC (~750 - 903 HV) [Page 1], which falls within the claimed range of 300 HV or more.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2018/0104759 – laser welding deposition material for composite material
JP2022013563 – coating method of copper alloy on stainless steel substrate by laser
CN113001024 – laser welding dissimilar materials of copper and iron and nickel powder disposed between
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
Prosecution Insights