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 1-3 are examined in this office action below.
Claim Objections
Claim 3 is objected to because of the following informalities: claim 3 uses the abbreviation . Appropriate correction is required.
Claim Interpretation
Claim 1 recites a “titanium alloy” and goes on to recite exact amounts of Al, V, O, Fe, H, C, and N which are contained in the alloy. Given the broadest reasonable interpretation consistent with the specification, the term “titanium alloy” recited in the claims is interpreted as an alloy with Ti being the element with the highest concentration in the alloy (see paragraphs [0033]-[0037], paragraph [0040] and Table 1 of the 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.
Claims 1-3 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 1-3 all recite the limitation “titanium alloy additive manufacturing product” in the preamble of each claim. It is not clear if this limitation is creating a product for additive manufacturing, whether it is trying to create an additively manufactured product (i.e. a product made by additive manufacturing) or some other meaning.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by "Microstructure and mechanical properties of Ti–6Al–4V manufactured by electron beam melting process." (cited on IDS dated 11/13/24) of Mohammadhosseini.
As to claim 1, it is not clear what is meant by “titanium alloy additive manufacturing product”, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as requiring a product made by additive manufacturing of a titanium alloy. Therefore applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the method of additive manufacturing does not further limit the structure as the structure implied by this process step, namely that the produced part would have some porosity, is recited in the remainder of the claim.
Mohammadhosseini discloses forming titanium parts using a EBM machine where the composition is 6.0% Al, 4.0% V, 0.10% Fe, 0.14% O, ˂0.01% N, 0.0042% H, and 0.01% C with the balance being titanium (Mohammadhosseini, Table 1) where these are mass percentages as this is a Ti-6Al-4V alloy and these alloys are disclosed in mass %, meeting the claim limitation of 5.50 to 6.75 wt% of Al, 3.50 to 4.50 wt% of V, 0.20 wt% or less of O, 0.40 wt% or less of Fe, 0.015 wt% or less of H, 0.08 wt% or less of C, and 0.05 wt% or less of N.. Mohammadhosseini discloses where the tensile strength is 978.5 MPa for as built parts and 978 MPa for Hot Isostatic pressed parts (Mohammadhosseini, Table 2) meeting the limitation of where the tensile strength is 855 MPa or more. Mohammadhosseini discloses there is no porosity visible in the hot isostatic pressed samples (Mohammadhosseini, pg. S2-110, right column, 3rd paragraph and FIGs. 14 and 15), meeting the claim limitation of a pore content is 0.05 number/mm2 or less as no pores detected would be a 0 number per mm2.
As to claim 3, the limitation recites where the titanium alloy additive manufacturing product is manufactured without performing a HIP treatment. Thus applicant is claiming a product in a product-by-process manner. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the method of HIP (hot isostatic pressing) does not further limit the structure as the structure implied by this process step, namely that the produced part would have some low porosity level, is recited in the rest of the claim.
Thus, although Mohammadhosseini discloses the use of hot isostatic pressing, as Mohammadhosseini discloses samples with the required tensile strength (Mohammadhosseini, Table 2) as well as the required level of porosity, (Mohammadhosseini, pg. S2-110, right column, 3rd paragraph and FIGs. 14 and 15), Mohammadhosseini meets the claimed structure.
Claim Rejections - 35 USC § 102/103
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 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.
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 2 is rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over "Microstructure and mechanical properties of Ti–6Al–4V manufactured by electron beam melting process." (cited on IDS dated 11/13/24) Of Mohammadhosseini.
As to claim 2, Mohammadhosseini discloses where the hot isostatic pressed specimen at 600 MPa fails at 6.87*106 cycles (Mohammadhosseini, Table 3). However, Mohammadhosseini does not explicitly disclose wherein a fatigue strength for 107 cycles is 500 MPa or more. Nevertheless, as Mohammadhosseini discloses specimens with the same composition, same lack of pores, and same tensile strength as claimed, see claim 1 rejection above, this same structure would have the same fatigue strength for 107 cycles is 500 MPa or more. “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).
In the alternative, Mohammadhosseini discloses the same composition and applies the same method of electron beam additive manufacturing thereto, the same method applied to the same starting material would be expected to produce the same properties of a fatigue strength for 107 cycles is 500 MPa 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).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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