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 Status
Claims 1-18 are currently pending.
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 1-14 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.
The term “comparable to wrought 6063 aluminum alloy” in claim 1 is a relative term which renders the claim indefinite. The term “comparable” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is further unclear what aspect (e.g. processing step, structure, properties, etc.) are required to be comparable to the claimed 6063 aluminum alloy. Claims 2-14 are indefinite based on their dependency.
Claims 2, 3, and 7 each recite the phrase “more narrowly” followed by a compositional ranges which further limits a range of Claim 1, from which the respective claim depends. It is unclear how the term “more narrowly” modifies the limitation other than the recited compositional range.
Claim 14 recites “wherein the ceramic powder addition is silicon carbide (SiC),” however, Claim 10, from which claim 14 depends, requires “wherein the ceramic powder addition is an aluminum nitride.” Therefore, it is unclear if claim 14 intends to require a second ceramic powder or improperly attempt to replace the ceramic powder required by claim 10.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 14 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 14 recites “wherein the ceramic powder addition is silicon carbide (SiC),” however, Claim 10, from which claim 14 depends, requires “wherein the ceramic powder addition is an aluminum nitride.” Therefore, Claim 14 may be interpreted as requiring silicon carbide instead of aluminum nitride as a ceramic powder and thus, fails to include all of the limitations upon which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 2024/0033819).
Claim 1 recites the optional addition of a “lubricant,” wherein the instant specification recites “lubricant (wax and/or binder, such as for example Lico Wax ©).” The term lubricant, in light of the specification, is interpreted to include materials such as conventional binders and waxes used in powder metallurgy, such as the disclosed commercial wax.
With respect to Claim 1, Han teaches an aluminum alloy powder composition, the composition comprising an aluminum or aluminum alloy powder, a wax-based binder configured to be burned off during sintering (deemed to meet the claimed “lubricant…configured to be burned off during sintering”), and optionally a ceramic powder addition such as aluminum nitride or silicon carbide. (para. 28-31, 67-72). Han teaches wherein the composition is useful for forming green compacts/molded articles, followed by sintering. (para. 11, 28-31).
Han further teaches wherein the aluminum or aluminum alloy powder may comprise a powder mixture of pure aluminum powder with another alloying element powder and/or master alloy powder. (para. 64, 81). In particular, Han teaches forming such a powder composition/mixture to comprise an Al-Mg-Si (AA6xxx)-type alloy (and therefore, including an AA6063 alloy), with a composition comprising 0.5-8 wt% Mg, 0-5 wt% Si, 0.1-3 wt% Cu, balance Al with additional optional elements. (para. 58, 80-82, 84). Han further teaches the optional addition of tin, as a sintering aid up to 3 wt%. (para. 65).
Thus, Han teaches the selection of a mixture of pure/elemental powder(s) and alloying powder(s) to form a metal powder having a desired composition comparable to a 6xxx-series aluminum alloy. Accordingly, it would have been obvious to one of ordinary skill in the art to select a powder metal composition, from the disclose of Han, comprising a mixture of a pure aluminum powder, an elemental powder such as Mg (elemental magnesium powder metal) and optionally Sn (optionally an elemental tin powder metal), and a master alloy comprising aluminum and one or alloying elements such as Si (i.e. an aluminum-silicon powder metal), such that the overall composition has ranges of Mg, Si, and Sn overlapping the instantly claimed ranges.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, it is noted that claim 1 uses the transitional phrase “consisting essentially of.” The transitional phrase "consisting essentially of" limits the scope of a claim to the specified materials or steps "and those that do not materially affect the basic and novel characteristic(s)" of the claimed invention. In re Herz, 537 F.2d 549, 551-52, 190 USPQ 461, 463 (CCPA 1976); MPEP § 2111.03. Absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising." MPEP § 2111.03.
Here, the claims and specification make clear that an alloy such as aluminum alloy 6063 is within the scope of the basic and novel characteristics of the invention and one of ordinary skill in the art would recognize that the standardized alloy 6063 may contain small contents of additional elements, such as Cu and Fe (see also instant specification, para. 4, recognizing up to 0.1 wt% Cu). Accordingly, the minor required content of Cu taught by Han (as low as 0.1 wt%) does not materially affect the basic and novel characteristics of the claimed invention. Alternatively, the minor content of Cu may be considered to fall within scope of the “trace amounts” as recited in the instant claim.
Finally, the preamble limitation “to be compacted, sintered, and heat treated” is a statement of intended use. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant claim, the intended use recitation does not impart additional structure with the exception being that the powder metal composition is capable of being compacted and sintered. Han teaches a powder metal composition that is compacted and sintered (see discussion above) and thus, meets the instant limitation.
With respect to Claims 2-4, Han teaches compositional ranges of silicon and magnesium overlapping the instantly claimed ranges. (see rejection of claim 1 above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 5, Han teaches wherein the composition may comprise “pure” aluminum powder, deemed to constitute up to 100% meeting or overlapping the claimed range. (see rejection of claim 1). See also MPEP § 2144.05.
With respect to Claim 6, Han teaches the use of a master alloy powder, including elements such as Al and Si, and therefore, is deemed to implicitly teach overlapping compositional ranges to the recited Al-Si master alloy. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 7-8, Han teaches the optional addition of up to 3 wt% Sn, overlapping the instantly claimed ranges. (see rejection of claim 1). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 9-14, it is noted that claim 1, from which the claims depend, recites an optional content of a ceramic powder and none of claims 9-14 are interpreted to require the ceramic powder. Rather, claims 9-14 are interpreted to further limit the ceramic powder addition, if added. “Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure.” MPEP 2111.04.
Moreover, Han teaches wherein the powder metal composition optionally includes a ceramic powder addition, such as aluminum nitride or silicon carbide, with a content of 1-30 wt% of ceramic powder to 100 wt% of aluminum alloy powder. (para. 84-85). Thus, Han teaches an optional ceramic powder addition, when converted to volume%, overlapping the claimed range of claim 9 and meeting the composition of claims 10 and 14. Additionally, with respect to Claim 13, as Han teaches wherein the ceramic power is aluminum nitride, one of ordinary skill in the art would recognize that is necessarily comprise a single phase microstructure comprising a hexagonal crystal structure. See also MPEP 2112.01.
Additionally, with respect to Claims 11-12, Han teaches wherein the optional ceramic powder material addition has an average particle size of 0.05-40 microns, overlapping the instantly claimed ranges. Additionally, as Han teaches a powder with the same composition and average particle size, it would necessarily be expected to exhibit a specific surface area falling within or overlapping the instantly claimed ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05; MPEP 2112.01.
With respect to Claims 15-16, Han teaches forming a green compact from the powder metal composition and sintering the green compact to form a sintered metal part. (para. 11, 49-72; rejection of claim 1 above, incorporated here by reference).
With respect to Claim 17, Han is silent as to the thermal conductivity of the sintered metal part. However, as Han teaches a sintered metal part having substantially overlapping composition and the same method of marking, comprising forming a powder metal composition having a mixture of components as in claim 1, forming a green compact, and sintering, it would necessarily be expected to result in the same properties, including the claimed thermal conductivity. See MPEP 2112.01.
With respect to Claim 18, Han teaches examples wherein the sintered metal part exhibits a yield strength of 71 MPa and tensile strength of 132 MPa and wherein after further heat treatment processes, the yield and tensile strength may rise above 300 MPa, respectively. (para. 91, 99). Thus, Han teaches a sintered metal part capable of achieving yield strength and tensile strength values encompassing the claimed ranges, wherein such properties are result effective variables taught to be controlled by heat treatment processes such as solution and aging treatments and wherein the elongation decreases with increasing strength. (see, e.g., para. 99). Accordingly, it would have been obvious to one of ordinary skill in the art to control the heat treatment of the sintered metal part to achieve desired yield strength and tensile strength from the overlapping portion of the ranges, for a desired application requiring higher or lower strength and balancing the need for a particular elongation property. MPEP 2144.05.
Claim(s) 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (US 2024/0033819) in view of Bishop (US 2017/0028469).
In the alternative to the above rejections of Claims 1-18, incorporated here by reference, Han teaches wherein the aluminum or aluminum alloy powder may comprise a powder mixture of pure aluminum powder with another alloying element powder and/or master alloy powder. (para. 64, 81). In particular, Han teaches forming such a powder composition/mixture to comprise an Al-Mg-Si (AA6xxx)-type alloy, with a composition comprising 0.5-8 wt% Mg, 0-5 wt% Si, 0.1-3 wt% Cu, 0-3 wt% Sn, balance Al with additional optional elements. (para. 58, 80-82, 84). Thus, Han teaches the selection of a mixture of pure/elemental and alloying powders to form a metal powder having a desired composition comparable to a 6xxx-series aluminum alloy and comprising the claimed components (Al, Si, Mg, optionally Sn and ceramic powder); however, the reference does not teach the specific separation into an aluminum-silicon master alloy powder, magnesium elemental powder, and optional elemental tin powder in addition to the pure aluminum powder.
Bishop teaches a powder metal composition for compacting and sintering, the composition comprising an aluminum - 12 wt% silicon master alloy, elemental magnesium powder, and elemental tin powder. (para. 9-11). Bishop is therefore, deemed to teach the utility of separating alloy elements in an aluminum alloy powder mixture into an aluminum-silicon master alloy, in particular one comprising 12 wt% Si, and separately, elemental magnesium and optionally tin.
Accordingly, it would have been obvious to one of ordinary skill in the art to select a powder metal composition, from the disclose of Han and in view of Bishop, comprising a mixture of a pure aluminum powder, a master alloy powder comprising aluminum with 12 wt% Si, an elemental magnesium powder, and optionally an elemental tin powder, in order to obtain a powder metal composition with a desired composition and suitability for compacting and sintering.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kato (US 2024/0033819) and Neubing (US 6468468) each drawn to a metal powder mixture comprising pure aluminum powder and an aluminum alloy powder comprising silicon, but teaching away from the claimed overall composition.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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