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 1-2, 7, 9, 11-12 amended
Claims 11-20 withdrawn
Claims 1-10 pending and elected
Examiner’s Note
A NEW SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE THREE MONTHS FROM THE MAILING DATE OF THIS COMMUNICATION.
Election/Restrictions
Applicant's election with traverse of claims 1-10 in the reply filed on 01/05/2026 is acknowledged. The traversal is on the ground(s) that search and examination would not impose an undue burden on the office. This is not found persuasive because as the examination of method claims are not the same for examination of product claims.
The requirement is still deemed proper and is therefore made FINAL.
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 10 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 10 recites the limitation "the surface structure" in page 4. There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 102
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.
Claim(s) 1-4, 7-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tuffile (PG Pub 2018/0119239 A1).
Consider Claim 1, Tuffile teaches the process of forming a metallic part using layer by layer process (claim 1), by supplying iron based alloy powder, where the powder alloy includes; mainly Fe, Cr with 10-19 wt %, Nb with 0-1.0 wt%, Mo with 0.5-3.0 wt%, C with 0-0.35 wt%, Ni with 0-5.0 wt%, Cu with 0-5.0 wt%, Si with 0-1.0 wt%, N with 0-0.25 wt% (claim 1, page 5) leading to Fe with 65.4-89.5 wt %, where this metallic part is built on a substrate (claim 8), in a layer form by melting the alloy powder into a melting state using laser/e-beam energy (claim 6) to melt and cooling and solidifying processes (claim 1, page 5), and forming a layer thickness with 2-200 microns (claim 1, page 5), and where the tensile strength at least 1000 MPa, yield strength at least 640 MPa, elongation at least 3.0%, hardness at least 375 HV (375 HV equal to 45 HRC) (claim 1, page 5).
Consider Claim 2, Tuffile teaches the layer thickness is from 2.0 micron to 200 micron (claim 1).
Consider Claims 3-4, Tuffile teaches the iron alloy includes; mainly Fe, Cr with 10-19 wt %, Nb with 0-1.0 wt%, Mo with 0.5-3.0 wt%, C with 0-0.35 wt%, Ni with 0-5.0 wt%, Cu with 0-5.0 wt%, Si with 0-1.0 wt%, N with 0-0.25 wt% (claim 1, page 5) leading to Fe with 65.4-89.5 wt % (Claim 1).
Consider Claim 7, Tuffile teaches the substrate is pre-heated to temperature less than or equal to 300 ℃ (Claim 8).
Consider Claim 8, Tuffile teaches the metallic part undergoes solutionizing for the as built metallic part at a temp that is greater than 900℃ followed by quenching step (claim 9).
Consider Claim 9, Tuffile teaches tempering the as built metallic part at a temperature of 454℃ after the forming of the as built metallic part [0053].
Consider Claim 10, Tuffile teaches altering of the as built metallic part surface using carbonization (claim 12) or nitridation (claim 13), and carbonitriding [0063].
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) 1-4, 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Tuffile (PG Pub 2018/0119239 A1).
Consider Claim 1, Tuffile teaches the process of forming a metallic part using layer by layer process (claim 1), by supplying iron based alloy powder, where the powder alloy includes; mainly Fe, Cr with 10-19 wt %, Nb with 0-1.0 wt%, Mo with 0.5-3.0 wt%, C with 0-0.35 wt%, Ni with 0-5.0 wt%, Cu with 0-5.0 wt%, Si with 0-1.0 wt%, N with 0-0.25 wt% (claim 1, page 5) leading to Fe with 65.4-89.5 wt %, where this metallic part is built on a substrate (claim 8), in a layer form by melting the alloy powder into a melting state using laser/e-beam energy (claim 6) to melt and cooling and solidifying processes (claim 1, page 5), and forming a layer thickness with 2-200 microns (claim 1, page 5), and where the tensile strength at least 1000 MPa, yield strength at least 640 MPa, elongation at least 3.0%, hardness at least 375 HV (375 HV equal to 45 HRC) (claim 1, page 5). 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). (MPEP 2144.05).
Consider Claim 2, Tuffile teaches the layer thickness is from 2.0 micron to 200 micron (claim 1). 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). (MPEP 2144.05).
Consider Claims 3-4, Tuffile teaches the iron alloy includes; mainly Fe, Cr with 10-19 wt %, Nb with 0-1.0 wt%, Mo with 0.5-3.0 wt%, C with 0-0.35 wt%, Ni with 0-5.0 wt%, Cu with 0-5.0 wt%, Si with 0-1.0 wt%, N with 0-0.25 wt% (claim 1, page 5) leading to Fe with 65.4-89.5 wt % (Claim 1). 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). (MPEP 2144.05).
Consider Claim 7, Tuffile teaches the substrate is pre-heated to temperature less than or equal to 300 ℃ (Claim 8). 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). (MPEP 2144.05).
Consider Claim 8, Tuffile teaches the metallic part undergoes solutionizing for the as built metallic part at a temp that is greater than 900℃ followed by quenching step (claim 9). 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). (MPEP 2144.05).
Consider Claim 9, Tuffile teaches tempering the as built metallic part at a temperature of 454℃ after the forming of the as built metallic part [0053]. 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). (MPEP 2144.05).
Consider Claim 10, Tuffile teaches altering of the as built metallic part surface using carbonization (claim 12) or nitridation (claim 13), and carbonitriding [0063].
Claim(s) 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Angles (PG Pub 2018/0318922 A1) in view of Tuffile (PG Pub 2018/0119239 A1).
Consider Claim 1, Angles teaches the process of forming metallic part using high melting point alloy powder (claim 1), where the high melt alloy include iron alloy (claim 5), where the iron alloy powder consists essentially of: including Fe with 5.8-99.85 wt %, Cr with 0-20 wt %, Nb with 0-10 wt%, Mo with 010 wt%, C with 0.15-3.5 wt% Ni with 0-2 wt%, Cu with 0-10 wt% Si with 0-6 wt%, W with 0-12 wt%, Mn with 0-3 wt%, N with 0-15 wt%, B with 0-0.27 wt % (claim 13). 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). (MPEP 2144.05).
Although Angles teach the forming of layer by layer in paragraph [1873] with a thickness of 1.1 micron – 11 mm in paragraph [0137], however, it does not explicitly teach the building of a metallic part on a substrate using layer by layer process.
However, Tuffile is in the prior art of using iron base powder for layer by layer (claim 1), teaches the process of forming a metallic part using layer by layer process (claim 1), by supplying iron based alloy powder (claim 5), where this metallic part is built on a substrate (claim 8), in a layer form by melting the alloy powder into a melting state using laser/e-beam energy (claim 6) to melt and cooling and solidifying processes (claim 1, page 5), and forming a layer thickness with 2-200 microns (claim 1, page 5), and where the tensile strength at least 1000 MPa, yield strength at least 640 MPa, elongation at least 3.0%, hardness at least 375 HV (375 HV equal to 45 HRC) (claim 1, page 5). 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). (MPEP 2144.05).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Angles with Tuffile to form metallic part on a substrate using layer by layer process, to provide metallic parts with high hardness, tensile strengths, yield strengths, and elongation (abstract).
Consider Claim 2, the combined Angles (with Tuffile) teaches the forming of layer with thickness from 1.1 micron to 11,000 micron [0130].
Consider Claims 3-6, the combined Angles (with Tuffile) teaches the iron powder alloy with Fe with 5.8-99.85 wt %, Cr with 0-20 wt %, Nb with 0-10 wt%, Mo with 0-10 wt%, C with 0.15-3.5 wt% Ni with 0-15 wt%, Cu with 0-10 wt% Si with 0-6 wt%, W with 0-12 wt%, Mn with 0-3 wt%, N with 0-15 wt%, B with 0-0.27 wt % (Angles, claim 13). 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). (MPEP 2144.05).
Consider Claim 7, the combined Angles (with Tuffile) teaches the substrate is pre-heated to temperature less than or equal to 300 ℃ (Tuffile , Claim 8). 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). (MPEP 2144.05).
Consider Claim 8, the combined Angles (with Tuffile) teaches the metallic part undergoes solutionizing for the as built metallic part at a temp that is greater than 900℃ followed by quenching step (Tuffile, claim 9). 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). (MPEP 2144.05).
Consider Claim 9, the combined Angles (with Tuffile) teaches tempering the as built metallic part at a temperature of 454℃ after the forming of the as built metallic part (Tuffile, [0053]). 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). (MPEP 2144.05).
Consider Claim 10, the combined Angles (with Tuffile) teaches altering of the as built metallic part surface using carbonization (Tuffile, claim 12) or nitridation (Tuffile, claim 13), and carbonitriding (Tuffile, [0063]).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,953,465 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 1 state “A method of layer-by-layer construction by direct energy deposition of a metallic part comprising:
supplying an alloy in particle form comprising the following elements: Fe at 69.2 wt. % to 89.1 wt. %; Cr at 7.25 wt. % to 16.0 wt. %; Nb at 0.01 wt. % to 10.0 wt. %; Mo at 0.5 wt. % to 4.0 wt. %. C at 0.03 wt. % to 0.4 wt. % and optionally one or more of Ni, Cu, Si, W, Mn, N and B;
supplying a substrate; and
applying one or more layers of the alloy onto the substrate by melting the alloy into a molten state and cooling and solidifying;
wherein the metallic part has the following properties: tensile strength of at least 1300 MPa, yield strength of at least 700 MPa, elongation of at least 4.0%, and hardness of at least 45 HRC.”
Where this is in claims 1-3 of ‘465.
Claims 2-10 are in claims 1-15 of ‘465.
Claims 1-10 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 10,920,295 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 1 state “A method of layer-by-layer construction by direct energy deposition of a metallic part comprising:
supplying an alloy in particle form comprising the following elements: Fe at 69.2 wt. % to 89.1 wt. %; Cr at 7.25 wt. % to 16.0 wt. %; Nb at 0.01 wt. % to 10.0 wt. %; Mo at 0.5 wt. % to 4.0 wt. %. C at 0.03 wt. % to 0.4 wt. % and optionally one or more of Ni, Cu, Si, W, Mn, N and B;
supplying a substrate; and
applying one or more layers of the alloy onto the substrate by melting the alloy into a molten state and cooling and solidifying;
wherein the metallic part has the following properties: tensile strength of at least 1300 MPa, yield strength of at least 700 MPa, elongation of at least 4.0%, and hardness of at least 45 HRC.”
Where this is in claims 1-3 of ‘295.
Claims 2-10 are in claims 1-15 of ‘295.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 11:00AM-7:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718