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 .
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.
Status of the Claims
Amendments were filed 10/31/25. Claims 1-8 and 10-21 are pending, wherein claim 21 was newly added.
Claim Objections
Applicant is advised that should claim 10 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Similarly, should claim 15 be found allowable, claim 21 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof.
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.
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) 1, 4-8, 10-13, and 16-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saini (US 2018/0272406, previously cited) in view of Simpson (US 2017/0173682, previously cited).
Regarding claim 1, Saini teaches a method for manufacturing a tool (paragraph [0007], method of forming a hot stamping die) having one or more internal channels (fig. 4A shows plural channels), the method comprising:
forming one or more channel cores by additive manufacturing (paragraph [0023], channel insert is 3D printed into the desired conformal shape);
positioning the one or more channel cores into a casting mold having a shape of a tool (fig 1-2 and 5A-5B show positioning the channel insert into a casting mold); and
casting a molten metal into the casting mold to form the tool (fig 3-4B, paragraph [0026], casting with bulk material 310 such as castable tool steel) having the one or more internal channels corresponding to the one or more channel cores (figs 3-4B, see internal channels); and
removing the one or more channel cores during or after casting the molten metal (Saini, paragraph [0027], channel insert is removable after casting the die).
Saini fails to teach coating a metal onto the one or more channel cores to form a metal tube on each of the one or more channel cores, such that the one or more metal tubes is positioned into the casting mold.
Simpson is directed to the field relating generally to components having an internal passage, and more particularly to forming such components using a jacketed core (paragraph [0001]). Simpson teaches that prior art ceramic cores are fragile, resulting in cores that are difficult to handle without damage and lack sufficient strength to reliably withstand injection of a material (paragraph [0003]). Jacketed core 310 includes a hollow structure 320 that reinforces inner core 324, which may be a relatively brittle ceramic material subject to a high risk of fracture, cracking, and/or damage (paragraph [0058]). Thus, use of a jacketed core presents a much lower risk of failure compared to using an unjacketed core (paragraph [0058]). Simpson teaches the hollow structure of the jacketed core is formed of a first material that is an alloy and may be partially absorbable by the component material (paragraph [0044-0045]). The hollow structure may be formed by plating the first material around a precursor core (paragraph [0055-0056], electroless plating).
It would have been obvious to one of ordinary skill in the art to modify Saini such that the channel inserts are jacketed cores, as Simpson recognizes that jacketed cores would reinforce the inner brittle ceramic, and reduce the risk of fracture, cracking and/or damage. It would have been obvious to one of ordinary skill in the art to form the jacketed core of the combination by coating a metal onto the channel cores of Saini, as Simpson teaches the electroplating process is a suitable metal plating process for forming the hollow structure (paragraph [0055-0056]).
Regarding claims 4-5, the combination teaches forming the one or more channel cores comprising a ceramic sand by additive manufacturing (Saini, paragraph [0024], lost core material such as sand, e.g., high quality silica/zircon sand).
Regarding claim 6, the combination teaches forming the one or more channel cores having one or more directional changes by additive manufacturing (Saini, paragraph [0023], channel insert is 3D printed into the desired conformal shape, see figures).
Regarding claim 7, the combination teaches coating the metal onto the one or more channel cores by electroless deposition (see above, Simpson, paragraph [0056], electroless plating).
Regarding claim 8, the combination teaches melting an outermost portion of the one or more metal tubes (Simpson, paragraph [0046-0047]), wherein an innermost portion of the one or more metal tubes remains solid during the step of casting the molten metal (Simpson, paragraph [0046-0047], wall thickness selected so that the first material is partially absorbed by component material, where portion proximate inner core remains intact).
Regarding claim 10, Saini teaches a method for manufacturing a tool for processing a material (paragraph [0007], method of forming a hot stamping die), the tool having a contoured surface for interacting with the material to be processed (fig. 3-4B) and a plurality of internal channels (fig. 4A shows plural channels), the tool’s surface contour having a directional change and each internal channel having a directional change that conforms to said directional change of the tool’s contoured surface (figs 3-4B, paragraph [0021], channel insert 120 has a conformal shape to the parting line curved surface profile), the method comprising:
forming, by additive manufacturing, a plurality of channel cores each comprising an inorganic material and each having a directional change (paragraph [0023], channel insert is 3D printed into the desired conformal shape, paragraph [0024], 3D printed for a lost core type material such as sand, e.g., high quality silica/zircon sand, note figure 4A shows plural channels formed, suggesting plural channel inserts);
positioning the plurality of channel cores into a casting mold (fig 1-2 and 5A-5B show positioning the channel insert into a casting mold), the casting mold having a surface contour corresponding to the tool’s surface contour for interacting with the material to be processed by the tool (paragraph [0020], shape of the channel insert corresponds to the curved surface profile of the mold assembly, paragraph [0021], the conformed shape is directly driven by the desired temperature of the working surface of the die for the particular hot stamped piece), the casting mold including a directional change corresponding to the directional change of the tool’s contoured surface (figs 1-2 and 5A-5B, paragraph [0020-0021], shape of insert corresponds to curved surface profile of mold, conformed shape driven by working surface of die), wherein the plurality of channel cores are positioned into the casting mold such that each channel core’s directional change conforms to said directional change of the casting mold’s contoured surface (paragraph [0021], figs 1-5B show the cores directional change conforming to the mold surface/tool surface directional channel);
casting a molten metal into the casting mold to form the tool (fig 3-4B, paragraph [0026], casting with bulk material 310 such as castable tool steel), the resulting cast tool having the contoured surface for interacting with the material to be processed by the tool and having the plurality of internal channels (figs 3-4B), the resulting cast tool’s surface contour having the directional change and each internal channel of the resulting cast tool having the directional change that conforms to said directional change of the resulting cast tool’s contoured surface (figs 3-4B show the conforming channels to the tool); and
removing the one or more channel cores during or after casting the molten metal (Saini, paragraph [0027], channel insert is removable after casting the die).
Note that Saini shows plural channels formed in figure 4A, which suggests the use of plural channel inserts. Alternatively, note that it would have been obvious to one of ordinary skill in the art to form a plurality of channel inserts, in order to form the plural channels in the arrangement of figure 4A of Saini. Note that the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960). MPEP 2144.04(VI)(B).
Saini fails to teach coating a metal onto the plurality of channel cores to form a metal tube on each of the plurality of channel cores, each metal tube having the directional change of the underlying channel core, such that the metal tube is placed into the casting mold.
Simpson is directed to the field relating generally to components having an internal passage, and more particularly to forming such components using a jacketed core (paragraph [0001]). Simpson teaches that prior art ceramic cores are fragile, resulting in cores that are difficult to handle without damage and lack sufficient strength to reliably withstand injection of a material (paragraph [0003]). Jacketed core 310 includes a hollow structure 320 that reinforces inner core 324, which may be a relatively brittle ceramic material subject to a high risk of fracture, cracking, and/or damage (paragraph [0058]). Thus, use of a jacketed core presents a much lower risk of failure compared to using an unjacketed core (paragraph [0058]). Simpson teaches the hollow structure of the jacketed core is formed of a first material that is an alloy and may be partially absorbable by the component material (paragraph [0044-0045]). The hollow structure may be formed by plating the first material around a precursor core (paragraph [0055-0056], electroless plating).
It would have been obvious to one of ordinary skill in the art to modify Saini such that the channel inserts are jacketed cores, as Simpson recognizes that jacketed cores would reinforce the inner brittle ceramic, and reduce the risk of fracture, cracking and/or damage. It would have been obvious to one of ordinary skill in the art to form the jacketed core of the combination by coating a metal onto the channel cores of Saini, as Simpson teaches the electroplating process is a suitable metal plating process for forming the hollow structure (paragraph [0055-0056]).
Regarding claim 11, the combination teaches for each of the plurality of metal tubes, a distance between the metal tube and the casting mold’s contoured surface is substantially the same along most of a length of the metal tube (Saini, see figs 3-4B showing a substantially same distance from the tool surface (which would correspond to the mold surface), e.g., paragraph [0028], conforming channels up to 3 mm from the working surface).
Furthermore, Saini teaches that the shape and distance of the channels from the surface of the molded die may be varied and selected to achieve optimal cooling rates (paragraph [0021]), thereby recognizing that the distance is a result-effective variable. It would have been obvious to one of ordinary skill in the art to modify the distance between the channel insert and the mold’s contoured surface, so as to achieve an optimal cooling rate depending on the part to be produced.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Regarding claim 12, the combination teaches wherein the plurality of metal tubes are positioned substantially in parallel to one another (Saini, fig 4A shows substantially parallel channels (would be formed by substantially parallel channel inserts)).
Regarding claim 13, the combination teaches a cross-sectional area is substantially the same along most of a length of the metal tube (Saini, fig 4A shows channels with substantially the same cross-sectional area along the length (would be formed by the corresponding channel insert)).
Furthermore, Saini teaches that the shape and distance, including the cross-section, may be varied and selected to achieve optimal cooling rates (paragraph [0021]), thereby recognizing that the distance is a result-effective variable. It would have been obvious to one of ordinary skill in the art to modify the cross-sectional area to be substantially the same along most of the length of the metal tube, so as to achieve an optimal cooling rate depending on the part to be produced.
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05(II)(A).
Regarding claims 16-17, the combination teaches the inorganic material comprises a refractory such as ceramic sand (Saini, paragraph [0024], lost core material such as sand, e.g., high quality silica/zircon sand).
Regarding claim 18, the combination teaches coating the metal onto the plurality of channel cores by electroless deposition (see above, Simpson, paragraph [0056], electroless plating).
Regarding claim 19, the combination teaches melting an outermost portion of the one or more metal tubes (Simpson, paragraph [0046-0047]), wherein an innermost portion of the one or more metal tubes remains solid during the step of casting the molten metal (Simpson, paragraph [0046-0047], wall thickness selected so that the first material is partially absorbed by component material, where portion proximate inner core remains intact).
Regarding independent claim 20, refer to the rejection of claim 10 above. Claim 20 is identical to amended claim 10.
Claim(s) 2-3, 14-15, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Saini as modified by Simpson as applied to claims 1, 10, and 20 above, and further in view of Hochsmann (US 2005/0017394, previously cited).
Regarding claims 2-3, 14-15, and 21, the combination of Saini as modified by Simpson teaches 3D printing the channel cores, each comprising an inorganic material (Saini, paragraph [0024], lost core material such as sand, e.g., high quality silica/zircon sand), but is quiet to using a polymer binder, such as a phenolic binder.
Hochsmann teaches layer-by-layer buildup of three-dimensional forms using a composite including particles in a hardened binder material (paragraph [0002]). The invention is useful for making forms such as casting molds and cores (paragraph [0058] and claim 15). The binder is any suitable material capable of firmly coupling adjoining particulates, such as phenolic resin, phenolic polyurethane, polyphenol resin, etc (paragraph [0025]).
It would have been obvious to one of ordinary skill in the art to modify the combination of Saini and Simpson such that the binder is a phenolic binder, as Hochsmann teaches that phenolic binders were suitable for firmly coupling adjoining particulates, and that any suitable material may be used.
All the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would yield nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395. MPEP 2143(I)(A).
Response to Arguments
Applicant's arguments filed 10/31/25 have been fully considered but they are not persuasive.
On p.7 of the remarks, Applicant traverses the rejection of claims 1 and 6-8 under 35 USC 102(a)(1) as being anticipated by Simpson. The rejection of claims 1 and 6-8 under 35 USC 102(a)(1) has been withdrawn in response to the claim amendments.
Beginning on p.7 of the remarks, Applicant traverses the rejection of claims 1, 4-13, and 16-20 under 35 USC 103 as being unpatentable over Saini in view of Simpson. Applicant argues that Saini and Simpson, whether considered separately or in combination, do not teach or suggest the combination of features recited in Claims 1, 10, and 20.
Applicant first argues that the sequence of core removal is fundamentally different. Applicant notes that Saini’s insert is a sand core removed after casting the die, while Simpson’s polymer core is melted or dissolved before casting. Applicant argues that neither reference teaches or suggests retaining a metal-coated core during casting as now effectively claimed. Applicant argues that the rationale to “reinforce the inner brittle ceramic” depends on Simpson’s use of a hollow shell with a separate ceramic core, not on retaining the metal-plated core through casting. Applicant argues that implementing that teaching into Saini’s sand system would require replacing the lost-core architecture entirely and contradict Saini’s explicit removal step. Applicant argues the proposed modification therefore changes the basic principles of operation of both references.
The Examiner disagrees. As discussed in the rejections above, Saini teaches an additively manufactured channel insert (core, formed from lost core type materials, including sand) which is placed in a mold, a step of casting to form a body, and then removing the insert from the cast body, resulting in the cast body having cooling channels formed therein. Saini differs from applicant’s claimed invention in that applicant’s channel cores are coated with a metal to thus form a metal tube (with the channel core within) for use in the mold. After casting, the channel core is removed. The resultant cast body may have an inner portion of the metal tube remain (see dependent claim 19) thereby defining an internal channel in the body.
As discussed above, Simpson teaches casting a component having an internal passage using a jacketed core (paragraph [0001]). The jacketed core 310 includes a hollow structure 320 that reinforces an inner core 324, which may be a relatively brittle ceramic material subject to a high risk of fracture, cracking, and/or damage (paragraph [0058]). The jacketed core is fixed relative to a mold and secured such that the jacketed core does not shift during introduction of molten component material (paragraph [0043]). After casting, the inner core material is selectively removed from the cast component to form the internal passage (paragraph [0049]), where the resultant cast component may have an inner portion of the jacket remain defining the internal passage (paragraph [0047], at least a portion of hollow structure proximate inner core remains intact after component material is cooled).
As discussed above, it would have been obvious to one of ordinary skill in the art to modify Saini such that the channel inserts are jacketed cores, as Simpson recognizes that jacketed cores would reinforce the inner brittle ceramic, and reduce the risk of fracture, cracking and/or damage. The proposed combination suggests providing a jacket to Saini’s insert, and does not replace the lost-core architecture of Saini’s insert. Saini’s insert would still be removed after casting, similar to the inner core of Simpson being removed after casting, while a portion of the jacket is absorbed into the cast component.
The Examiner recognizes that Simpson differs from the claimed invention in that the jacket of the jacketed core is coated onto an additively manufactured polymer precursor core by electroless plating. However, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
"A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton." KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421, 82 USPQ2d 1385, 1397 (2007). "[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle." Id. at 420, 82 USPQ2d 1397. Office personnel may also take into account "the inferences and creative steps that a person of ordinary skill in the art would employ." Id. at 418, 82 USPQ2d at 1396. The "hypothetical ‘person having ordinary skill in the art’ to which the claimed subject matter pertains would, of necessity have the capability of understanding the scientific and engineering principles applicable to the pertinent art." Ex parte Hiyamizu, 10 USPQ2d 1393, 1394 (Bd. Pat. App. & Inter. 1988). See MPEP 2141.03(I).
As discussed above, it would have been obvious to one of ordinary skill in the art to form the jacketed core of the combination by coating a metal onto the channel cores of Saini, as Simpson teaches the electroplating process is a suitable metal plating process for forming the hollow structure (paragraph [0055-0056]). As discussed above, providing a jacket to Saini’s core would reinforce the inner brittle ceramic, and reduce the risk of fracture, cracking and/or damage of Saini’s core.
Applicant secondly argues the material incompatibility, as Saini’s additive material is sand or ceramic particulate with binder, whereas Simpson’s plating process depends on conductive polymer surfaces that can receive electroless nickel or electroplated metal.
The Examiner disagrees. The test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Simpson only requires a plating process (paragraph [0056]), and that electroless plating is exemplary. Furthermore, Simpson does not describe that the electroless plating requires a conductive surface, contrary to applicant’s arguments. The materials are not incompatible, as electroless plating is the same coating process applicant uses in their claimed invention (see dependent claims 7 and 18, electroless deposition) for a core formed of an inorganic material such as a ceramic sand (see dependent claim 17).
Applicant thirdly argues that the function and purpose of Simpson’s jacket core differs from the claimed invention. Applicant argues that Simpson’s jacketed core was developed to protect fragile ceramic cores during investment casting wax injection and is not used to form functional metal channels, whereas Saini’s sand insert is used to form cooling voids in a tool steel die.
The Examiner disagrees. The reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). See MPEP 2144 (IV).
Saini’s lost cores, formed from materials such as sand, would benefit from the jacket as taught in Simpson, so as to reinforce the ceramic and reduce risk of fracture, cracking, and/or damage. Additionally note that the jacketed core of Simpson does form a functional metal channel. Simpson’s jacketed core is placed in a mold and a molten component material is cast around it (paragraph [0025], jacketed core is positioned with respect to a mold, and the component is cast in the mold). The component material in Simpson may be a superalloy (paragraph [0045]). Depending on the thickness of the first material 322 of the jacket, either the first material is absorbed by the component material such that no discrete boundary delineates hollow structure from component material after the component material is cooled (paragraph [0046]) or in an alternative embodiment, the wall thickness is selected such that the first material is only partially absorbed by the component material, such that a discrete boundary delineates the hollow structure 320 from component material 78 after component material 78 is cooled, and a portion of the hollow structure remains intact after component material is cooled (paragraph [0047]).
Beginning on p.9 of Applicant’s Remarks, Applicant notes that Hochsmann relates to three-dimensional printing of particulate materials using liquid binder systems and describes a variety of potential binder chemistries, including suitable binders including phenolic resins, and also recognizes that these binders can be used to form three-dimensional printed molds or cores for casting applications. However, Applicant argues that Hochsmann provides no teaching or suggestion that such binder systems are capable of surviving molten-metal casting conditions. Applicant argues that the claimed binder choice is not a routine matter of design selection, but rather a purposeful material adaptation that allows the additively manufactured core to remain intact throughout casting and to be subsequently removed thereafter.
The Examiner disagrees. Note that Saini teaches the channel insert may be 3D printed from a lost core type material, such as sand, or other 3D printable lost core materials as appropriate, that can maintain the integrity during the molding process (paragraph [0024]). Although Saini is not explicit to a binder, a binder is implied as the material is used as a lost core and is additively manufactured (the binder would be used to bind the sand particles into the shape of the core). Hochsmann’s binders are suitable for making any of a variety of different three dimensional forms, including molds and cores (paragraph [0058] and claim 15), and in particular, in the field of metal casting (paragraph [0059]), thus suggesting being suitable for the same purpose as applicant’s binder. Note that applicant’s argument that the purpose of allowing the additively manufactured core to remain intact throughout casting and to be subsequently removed thereafter, is a known function of cores used in casting, and is taught in Saini as discussed above, where the channel insert is a lost core type material (lost core implying the core is removed) while maintaining integrity during the molding process (paragraph [0024]).
Regarding claims 20-21, the Examiner notes that claim 20 is identical to amended claim 10. Thus, newly added claim 21 is identical to amended claim 15. See the warning regarding duplicate claims above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACKY YUEN whose telephone number is (571)270-5749. The examiner can normally be reached 9:30 - 6:00.
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/JACKY YUEN/
Examiner
Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735