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 .
Status of Claims
Claims 1-20 are examined in this office action of which claims 3-12 were amended and claims 13-20 are new in the preliminary amendment dated 6/18/24.
Drawings
The drawings are objected to because the application only includes one figure, but nonetheless numbers this “FIG. 1”. 37 C.F.R 1.84(u)(1) requires that where “only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear”, see MPEP § 608.02(V). Therefore, the drawing must be corrected to state merely “Figure”.
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 2-4 and 13-20 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.
Claims 2-4 and 13-14 all recite where “the copper alloy powder contains” amounts of various elements. However, claim 1 from which all of these claims depend recites “A copper alloy powder comprising a copper alloy that contains 5% by mass or more and 50% by mass or less of Ni.” Thus claim 1 states that the copper alloy powder comprises a copper alloy which has a stated composition. As these dependent claims refer back to the copper alloy powder and not the copper alloy of claim 1, it is not clear if these are intended to be further limitations of the composition of the copper alloy, whether they are creating a second alloy composition that is contained within the overall copper alloy powder, or some other meaning. Claims 15-20 are also rejected as they depend from claim 2 and do not solve the above issue.
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by US 2020/0055116 A1 (cited on IDS dated 6/18/24) of Yoshida.
As to claims 1-4 and 13-14, it is not clear whether the copper alloy powder a singular or multiple compositions, see 112(b) rejection above. For the purposes of applying prior art, claims 2-4 and 13-14 will be interpreted as relating to and further limiting the same composition as recited in claim 1 rather than referring to a separate composition. Yoshida discloses copper alloy particles for use in additive manufacturing (Yoshida, abstract). Yoshida discloses copper alloy particles which in example 5A contains 15.4 mass% Ni (falling within the claim 1 range 5% by mass or more and 50% by mass or less), 9.0 mass% Zn (falling within claims 3 and 13 range of 1% by mass or more and 42% by mass or less), 0.0 mass% Mn (falling within the claims 4 and 14 range of 7% by mass or less of Mn, and balance Cu which equals 76.6 mass% (falling within the claim 2 range of 45% by mass or more and 95% by mass or less) (Yoshida, Table 1). As Yoshida discloses a copper powder which in example 5A has a composition which is within the claimed range for the composition, Yoshida anticipates claims 1-4 and 13-14. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
As to claims 5-7, 10, 15-17, and 20, while Yoshida discloses a composition for a copper alloy powder that anticipates the claimed composition, see claims 1-4 and 13-14 rejections above, Yoshida does not explicitly disclose where the powder element abundance ratio Cu/O, which is determined from a peak of each of Cu and O in XPS analysis of a powder surface, is 0.10 or more as in claims 5 and 15, wherein a ratio (Cu+Cu2O)/CuO of a sum of Cu and Cu2O (Cu+Cu2O) to CuO is 1 or more in a peak of Cu in XPS analysis of a powder surface as in claims 6 and 16, wherein a ratio of CuO is 40% or less in a peak of Cu in XPS analysis of a powder surface as in claims 7 and 17, and wherein a ratio Da/Dt of a loose bulk density of the powder Da to a powder true density Dt is 0.4 or more as in claims 10 and 20.
However, Yoshida discloses an anticipating composition, see claims 1-4 and 13-14 rejections above, and Yoshida discloses a substantially identical method of manufacture where the powder is formed from copper alloy molten metal by spraying in gas atomization in combination with sieving (Yoshida, paragraph [0071]), matching the disclosed method in specification paragraph [0035]). As Yoshida applies a substantially identical method to a composition that anticipates the claimed composition, the same method applied to the same material would necessarily produce the same properties of the powder element abundance ratio Cu/O, which is determined from a peak of each of Cu and O in XPS analysis of a powder surface, is 0.10 or more as in claims 5 and 15, wherein a ratio (Cu+Cu2O)/CuO of a sum of Cu and Cu2O (Cu+Cu2O) to CuO is 1 or more in a peak of Cu in XPS analysis of a powder surface as in claims 6 and 16, wherein a ratio of CuO is 40% or less in a peak of Cu in XPS analysis of a powder surface, and wherein a ratio Da/Dt of a loose bulk density of the powder Da to a powder true density Dt is 0.4 or more, . “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 8 and 18, Yoshida discloses where the copper alloy particles comprises a metal oxide layer formed on a surface thereof and having a film thickness of 1.0 to 100 nm (Yoshida, paragraph [0015]), meeting the limitation wherein a thickness of a surface oxidation product film formed on a surface is 3 μm or less.
As to claims 9 and 19, Yoshida discloses that the copper-based particles have an average particle diameter D50 of 50 μm or less (Yoshida, paragraph [0038]) and Yoshida specifically discloses where example 5A has an average particle diameter of 17 µm (Yoshida, Table 1), falling within the claimed range of 10 μm or more and 150 μm or less.
As to claim 11, the limitation “for additive manufacturing” is merely an intended use and to satisfy an intended use limitation which is limiting, a prior art structure which is capable of performing the intended use as recited in the preamble meets the claim, see MPEP § 2111.02(II).See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997). Yoshida discloses where the copper alloy particles are used as an additive manufacturing material (Yoshida, abstract).
As to claim 12, while Yoshida does not explicitly disclose where the copper alloy powder has antimicrobial properties, as noted in the rejection of claims 1-4 and 13-14 above Yoshida discloses an anticipating composition for a copper alloy powder and “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Thus, the identical chemical composition of the powder in Yoshida must have the same properties of being antimicrobial, meeting the claim limitations.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
