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 .
Response to Amendment
The amendment filed 06/24/2026 has been entered. Claim(s) 20-39 is/are pending in this application, of which claims 20-21, 23, and 25-39 examined herein. Claims 22 and 24 are withdrawn. Claim(s) 20 is/are amended. Claim(s) 1-19 is/are cancelled. Claim(s) 21-39 is/are new.
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-6, drawn to a powder material for additively manufacturing a structure, classified in B22F1/12.
II. Claims 7-19, drawn to a method for fabrication metal structures, classified in B22F10/00.
III. Claim 20, drawn to a heatsink, classified in H01L23/36.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, a powder material comprising metal particles and non-metallic particles with the claimed properties could be used for a different process, such as to heat the metal in a microwave furnace for melting or heat treatment of the metal.
Inventions I and III are related as mutually exclusive species in an intermediate-final product relationship. Distinctness is proven for claims in this relationship if the intermediate product is useful to make other than the final product, and the species are patentably distinct (MPEP § 806.05(j)). In the instant case, the intermediate product is deemed to be useful as it could be used to produce other components such as heat exchangers, aerospace, or automotive parts, such as components of aircraft, rockets, or satellites; and the inventions are deemed patentably distinct because there is nothing of record to show them to be obvious variants.
Inventions II and III are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the process as claimed could be used to produce other components by additive manufacturing such as heat exchangers, aerospace, or automotive parts, or components of aircraft, rockets, or satellites.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
--the inventions have acquired a separate status in the art in view of their different classification;
--the inventions have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
This application contains claims directed to the following patentably distinct species
A1 (claim 3) and A2 (claim 6)
B1 (claim 11) and B2 (claim 16)
The species are independent or distinct because
Species A1 and A2 are independent or distinct as Species A1 requires wherein the non-metallic particles comprise diamond particles, which form metal carbide surfaces in situ while forming a heterogeneous solid structure, which is mutually exclusive with Species A2, which requires wherein the non-metallic particles are metal carbide coated diamond particles (before forming a heterogeneous solid structure).
Species B1 and B2 are independent or distinct as Species B1 requires wherein the metal particles comprise at least one of copper and silver with at least one of Ti, Zr, V, Nb, Hf, Ta, Mo, Cr, and W, which is mutually exclusive with Species B2 which requires that the metal [particles] be selected from the group consisting of aluminum, titanium, steel, silver, copper, and alloys thereof.
In addition, the compared species are not obvious variants of each other based on the current record.
Applicant is required under 35 U.S.C. 121 to elect a single grouping of patentably indistinct species, for prosecution on the merits to which the claims shall be restricted if no generic claim is finally held to be allowable. Currently, claims 1-2, 5, 7-9, 12-14, and 17-20 are generic.
There is a serious search and/or examination burden for the patentably distinct species as set forth above because at least the following reason(s) apply:
--the species or groupings of patentably indistinct species have acquired a separate status in the art in view of their different classification;
--the species or groupings of patentably indistinct species have acquired a separate status in the art due to their recognized divergent subject matter; and/or
--the species or groupings of patentably indistinct species require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Upon the allowance of a generic claim, applicant will be entitled to consideration of claims to additional species which depend from or otherwise require all the limitations of an allowable generic claim as provided by 37 CFR 1.141.
During a telephone conversation with Steven M. Hoffberg on 06/11/2026 a provisional election was made without traverse to prosecute the invention of Group III, claim 20, and of the species corresponding with claim 6. Claims 1-19 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
NOTE: Applicant submitted a preliminary amendment on 06/24/2026 to further limit Group III with dependent claims 21-39 which depend from elected claim 20.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Claim Interpretation
The phrase “metal” is herein interpreted as:
“to include the so-called post-transition metals, i.e., aluminum, gallium, indium, thallium, tin and lead, some, if not all, of the metalloids, e.g., silicon, germanium, arsenic, antimony and tellurium, and homogeneous and heterogeneous solid solutions of metals, but interstitial compounds of metals (such as carbides and nitrides) are excluded under this definition. However, interstitial intermetallic compounds are included, as are alloys of semimetal compounds with a metal. For purposes hereof, the phrase "intermetallic" compounds other than halides or oxides, and including such semimetals, carbides, nitrides, borides, sulfides, selenides, arsenides, and phosphides, and can be stoichiometric, and share similar properties to the intermetallic compounds defined above, including the facilitation of layer adhesion. Thus, compounds such as cementite, Fe3C, are included compounds also encompasses certain intermetallic-like compounds, i.e., crystalline metal”
as defined at [0036] of the instant specification.
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.
Claim 39 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 39 recites the limitation "configured to increase adhesion" in lines 6-7. The limitation is indefinite as it is unclear which component(s) or relationship between components has its adhesion increased (e.g., between the substrate and the metal matrix, between the substrate and the layer, between the metal matrix and the layer).
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 20-21, 25-27 and 38 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Cho et al. (US 20220394882 A1).
Regarding claim 20, Cho teaches a heat dissipation part (i.e., a heatsink) (Title, abstract, [0001-0002]), formed of a metal matrix [0001, 0003, 0010], and diamond or silicon-carbide particles (i.e., non-metallic particles) dispersed in the matrix [0001, 0003, 0010] the part therefore being formed of a heterogeneous material. Cho teaches the non-metallic particles having an intermetallic compound carbide interlayer forming inclusions in the metal matrix [0070], wherein the heterogeneous material has a net thermal transfer coefficient of at least 430 W/m-K [0073].
Regarding claim 21, Cho teaches wherein the metal matrix consists of one of copper [0033, 0055-0060] and silver [0033, 0074], or as an alloy thereof with am amount of 80 wt% or greater [0034], (i.e., wherein the metal matrix comprises at least one of copper and silver in an amount of at least 50% by weight).
Regarding claims 25-26, Cho teaches wherein the non-metallic particles comprise diamond particles [0001, 0003, 0010], and wherein the non-metallic particles comprise metal carbide coated diamond particles [0070].
Regarding claim 27, Cho teaches wherein the non-metallic particles are coated with metal carbide (i.e., an intermetallic compound) [0070], and the metal matrix is formed by sintering (i.e., a fusion of metal particles around the non-metallic particles coated with the intermetallic compound) [0080].
Regarding claim 38, Cho teaches a heat dissipation part (i.e., a heatsink) (Title, abstract, [0001-0002]), formed of a metal matrix [0001, 0003, 0010], formed as a heat dissipation structure on a substrate (Fig. 5, [0002-0003, 0008, 0018, 0059]), the metal matrix comprising at least one of silver [0033, 0074] and copper [0033, 0055-0060]. Cho teaches the matrix having non-metallic particle inclusions comprising diamond [0001, 0003, 0010] coated with a metal-carbide interlayer [0070] wherein the heat dissipation structure has a net thermal transfer coefficient of at least 430 W/m-K [0073].
Claim(s) 23 and 39 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Cho as applied to claims 20 and 38 above, with evidence from Diamond Properties (“General properties of diamond”, provided herein).
Regarding claim 23, Cho teaches all of claim 20 as noted above. Cho teaches wherein the heatsink may be manufactured using SPS sintering (i.e., fusing) [0079], thus the heatsink is formed of a fusion product of fusible metal particles and the non-metallic particles.
Cho is silent to wherein the non-metallic particles comprising particles having a thermal conductivity greater than 100 W/m-K and a coefficient of thermal expansion less than 10 ppm/degree C, however Diamond Properties discloses diamonds (the non-metallic particles of Cho) to have a thermal conductivity of 10-20 W/cm-K (1,000-2,000 W/m-K), and a coefficient of thermal expansion of 1.1-5.0 ppm/K, which are within the claimed ranges. Therefore, Cho with evidence from Diamond Properties teaches all of claim 23 as claimed.
Regarding claim 39, Cho teaches all of claim 38 as noted above. Cho teaches wherein the metal matrix consists of one of copper [0033, 0055-0060] and silver [0033, 0074], or as an alloy thereof with am amount of 80 wt% or greater [0034], (i.e., wherein the metal matrix comprises at least one of copper and silver in an amount of at least 50% by weight). Cho teaches the carbide layer may be formed in situ [0071], but may also be formed by any known method, which would be recognized by one of ordinary skill to include processes wherein the metal-carbide interlayer is not derived from a reaction product of the non-metallic particles and the metal matrix (e.g., the metal carbide is made beforehand, and then applied to the diamond particles).
Cho teaches the composite material in which diamond particles are composited in Cu or Cu alloy matrix is inserted into a laminated plate comprising Cu-Mo (i.e., an intermetallic composition) [0059, 0114], which is then attached to the semiconductor chip (i.e., further comprising a layer between the substrate and the metal matrix) [0059, 0114], wherein the ceramics are bonded to the laminated plate [0059], and the use of molybdenum in the utilized wt% of the invention in the laminated plate maintains good bonding force (i.e., increasing adhesion) [0062].
Cho is silent to wherein the non-metallic particles comprising particles having a thermal conductivity greater than 100 W/m-K and a coefficient of thermal expansion less than 10 ppm/degree C, however Diamond Properties discloses diamonds (the non-metallic particles of Cho) to have a thermal conductivity of 10-20 W/cm-K (1,000-2,000 W/m-K), and a coefficient of thermal expansion of 1.1-5.0 ppm/K, which are within the claimed ranges. Therefore, Cho with evidence from Diamond Properties teaches all of claim 39 as claimed.
Claim(s) 29-37 is/are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Cho with evidence from Diamond Properties (“General properties of diamond”, provided herein).
Regarding claim 29, Cho teaches a heat dissipation part (i.e., a heatsink) (Title, abstract, [0001-0002]), formed of a metal matrix [0001, 0003, 0010], and diamond or silicon-carbide particles (i.e., non-metallic particles) dispersed in the matrix [0001, 0003, 0010] the part therefore being formed of a heterogeneous material. Cho teaches the non-metallic particles having an intermetallic compound carbide interlayer forming inclusions in the metal matrix [0070].
Cho is silent to wherein the non-metallic particles comprising particles having a thermal conductivity greater than 100 W/m-K and a coefficient of thermal expansion less than 10 ppm/degree C, however Diamond Properties discloses diamonds (the non-metallic particles of Cho) to have a thermal conductivity of 10-20 W/cm-K (1,000-2,000 W/m-K), and a coefficient of thermal expansion of 1.1-5.0 ppm/K, which are within the claimed ranges. Therefore, Cho with evidence from Diamond Properties teaches all of claim 29 as claimed.
Regarding claim 30, Cho teaches wherein the particles of the heatsink are arranged in layers (i.e., wherein the heatsink is formed as a series of layers) [0052].
Regarding claim 31, Cho teaches wherein metal matrix and nonmetallic particles are deposited on a substrate comprising a packaged semiconductor [0002-0003, 0008] and the metal matrix is configured as a thermal dissipation structure (Abstract, [0008-0009]).
Regarding claim 32, Cho teaches wherein metal matrix and nonmetallic particles are deposited on a substrate comprising ceramic (Fig. 5, [0018, 0059]).
Regarding claim 33, Cho teaches wherein the substrate comprises a semiconductor [0002-0003, 0008]. Cho teaches the composite material in which diamond particles are composited in Cu or Cu alloy matrix is inserted into a laminated plate comprising Cu-Mo (i.e., an intermetallic composition) [0059, 0114], which is then attached to the semiconductor chip (i.e., interfacial composition between the substrate and metal matrix) [0059, 0114].
Regarding claim 34, Cho teaches wherein the non-metallic particles comprise diamond particles [0001, 0003, 0010], which are thin film coated with at least one of titanium [0072, 0083], or zirconium or hafnium [0072]. Cho teaches that molybdenum may be part of the metal matrix [0061-0062], and as the metal matrix surrounds the diamond particles [0001, 0003], molybdenum would comprise part of a thin film coating around the diamond particles.
Regarding claim 35, Cho teaches wherein the metal matrix comprises at least one of copper, silver, aluminum, and magnesium [0003, 0033-0034].
Regarding claim 36, Cho teaches the carbide layer may be formed in situ [0071], but may also be formed by any known method, which would be recognized by one of ordinary skill to include processes wherein the intermetallic compound is not a reaction product of the non-metallic particles and the metal matrix (e.g., the metal carbide is made beforehand, and then applied to the diamond particles).
Claim 37 is a product-by-process claims because it seeks to define the claimed product by its method of manufacture. The preamble of the claims is directed to a heatsink, but the body of the claims recites “wherein the heatsink is formed by a process selected from the group consisting of powder bed selective laser fusion, directed energy deposition, electron beam melting, and welding”.
The patentability of product-by-process claims is determined by characteristics of the product itself recited in the claim, not on its method of manufacture. When the prior art discloses a product appearing to be identical or substantially identical to the claimed product, the burden falls on applicant to show an unobvious difference. See MPEP § 2113. In this case, the product is a heatsink according to claim 29, and prior art disclosing limitations of the heatsink of claim 29 will meet all of the claim limitations of claim 37, regardless the method of manufacture and precursor components used.
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.
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.
Claim(s) 28 is/are rejected under 35 U.S.C. 103 as being unpatentable over Cho as applied to claim 20 under 35 USC 102 above, further in view of Tuma et al. (US 20070102070 A1) with evidence from Weinhandl (“What metals are magnetic?”, supplied herein).
Regarding claim 28, Cho teaches all of claim 20 under 35 USC 102 as noted above. Cho teaches it is preferable to form a metal carbide layer which may improve wetting between the metal matrix and the diamond particles. A metal carbide layer may be formed, for example, by coating a metal on the surface of diamond and then carbonizing a portion of the metal through heat applied during a heat treatment or complexation process [0071], wherein the metals may be Ti, Zr, or Hf [0072].
Cho does not teach wherein the nonmetallic particles comprise diamond particles coated with a magnetic cobalt layer.
Tuma teaches a thermal transfer coating (i.e., a heatsink) (Title), which may be used to dissipate heat from electronic devices [0004-0005], the coating comprising a plurality of metal bodies and plurality of interstitial elements disposed between (Abstract), wherein the metal bodies comprise diamonds in their inner portion [0008], thus Tuma and Cho are analogous to the instant application as both are directed to compositions for transferring heat from electronics using heatsinks comprising metal containing diamond particles. Tuma teaches in some aspects, the diamonds can be coated with a coating comprising a carbide former selected from chromium, cobalt, manganese, molybdenum, nickel, silicon, tantalum, titanium, tungsten, vanadium, zirconium, and alloys thereof [0008, 0037], which is coated onto the diamonds [0037]. Weinhandl teaches cobalt to be magnetic (pg. 1), thus Tuma teaches wherein the nonmetallic particles comprise diamond particles coated with a magnetic cobalt layer.
It has long been held that it is prima facie obvious to substitute equivalents taught by the prior art to be useful for the same purpose. See MPEP 2144.06 (II). As in the instant case Cho only differs from claim 28 in that the instant claim uses cobalt as the metal used to form a metal carbide layer, while Cho uses Ti, Zr, or Hf, and Tuma uses Cr, Co, Mn, Mo, Ni, Si, Ta, Ti, W, V, or Zr and alloys thereof to form a metal carbide layer, a prima facie case of obviousness exists as it would have been obvious to have substituted the magnetic cobalt metal of Tuma into the heatsink of Cho to form the metal carbide layer, as both are used for the same purpose of forming metal carbide coating layers over diamond particles in a metal phase in a heatsink.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571)-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733
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