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
Pending:
1-5, 7, 8, 10, 11, 13-17, 19-23
Withdrawn:
NONE
Rejected:
1-5, 7, 8, 10, 11, 13-17, 19-23
Amended:
NONE
New:
21-23
Independent:
1, 11
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.
Claims 1-5, 7, 8, 10, 11, 13-17, 19-23 are rejected under 35 U.S.C. 103 as being unpatentable over Saikawa et al (US 2016/0222493) in view of Wang (US 2019/0185967).
Saikawa teaches an Al-Mg-Si casting alloy comprising (in wt%):
cl. 1
Saikawa
Mg
2.5-5.0
3.0-4.60 (cl. 2)
2.0-7.5
Si
0.70-2.5
1.10-2.1 (cl. 3)
1.65-5
Mn
0.40-1.5
0.60-1.2 (cl. 4)
0.3-1.0
Fe
0.15-0.60
0.30-0.60 (cl. 5)
-0.4
Ti
opt. ≤0.15
Opt. Sr
-0.10
0.015-0.12
one or more of: Zr, Sc, Hf, V, Cr
opt. ≤0.15
Mg/Si
1.7-3.6
Table 1: instant claims vs. Saikawa
see Saikawa at claim 3 & [0020], which overlaps the claimed alloying ranges of Mg, Si, Mn, Fe, Ti, and Sr (cl. 1-5). Concerning the Mg/Si ratio (claim 1), though Saikawa does not specify the Mg/Si ratio, the broad ranges of Mg and Si taught by Saikawa imply ratios that substantially overlap the claimed ratio. More particularly, Saikawa teaches Mg=(2.0-7.5) and Si=(1.65-5) which covers ratios of Mg/Si of: 0.4-4.5, which encompasses the claimed ratio of 1.7-3.6, and therefore meets said limitation. With respect to the limitation:
(0.4567*Mg-0.5) ≤ Si ≤ (0.4567*Mg+0.2)
for the range of Saikawa of Mg=2.0-7.5 the above equation would range 0.2≤Si≤3.6, wherein Saikawa teaches values of Si (2.0-7.5) overlapping that calculated range (and therefore meets the instant limitation).
Saikawa teaches processing said alloy by high pressure die casting [0035], which achieves a die cast product exhibiting an excellent combination of high ductility and strength [0045]. Saikawa teaches performing said casting with cracks being prevented (see Saikawa at [0063], Fig. 1), wherein examples of Saikawa exhibit 0 area% cracking, which meets the “crack free” limitation in independent claims 1, 11.
Saikawa does not specify: a) “the aluminum casting alloy has a non-equilibrium solidification range of not greater than 155°C” (cl. 1) or similarly “the aluminum alloy moves from the fully liquid state to the fully solid state in not greater than 155C” (cl. 11) or b) the amount of β-Al5FeSi compounds present (claim 1, new claims 21-23).
Concerning a), solidification range (i.e. moving from a fully liquid state to the fully solid state) is dependent on composition (as seen in a phase diagram, which shows the phase equilibria of an alloy in terms of composition and temperature, for a given pressure). Because Saikawa teaches an overlapping Al-Mg-Si die casting alloy composition, the overlapping alloy of Saikawa would inherently exhibit the claimed solidification range. Further, one of skill in the art would be motivated to optimize the alloying ranges to adjust the solidification/freezing range of the alloy taught by Saikawa. It would have been obvious to one of ordinary skill in the art to optimize the solidification/freezing range of the overlapping alloy taught Saikawa, because Wang (see [0025,0028]) teaches that small freezing/solidification ranges when high pressure die casting aluminum alloys leads to low shrinkage porosity and good castability. Therefore it is held that Saikawa in view of Wang has created a prima facie case of obviousness of the presently claimed invention.
Concerning b), Saikawa does not specify the amount of β-Al5FeSi compounds (claim 1, new claims 21-23) present. However, Wang teaches β phase is dependent on Fe+Mn content [0026] and that eliminating β-phase is important to improving ductility and minimizing cracks [0030,0026] (it is noted that the instant specification also teaches β phase is dependent on Fe+Mn content, see [0056] and Fig. 5A, 5B, and 6 in the instant specification). It would have been obvious to one of ordinary skill in the art to have eliminated β-phase (i.e. to within the claimed maximum of ≤0.012 wt%) from the Al-Mg-Si alloy taught by Saikawa and Wang (wherein eliminating β-phase is taught by Wang to be possible by optimizing Fe+Mn content), in order to improve ductility and minimize cracks (taught by Wang at [0026, 0030]).
Therefore, it would have been within the level of one of ordinary skill in the art, given the disclosures of Saikawa and Wang to have eliminated β phase, because Wang teaches eliminating β phase is a result effective variable.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claim 7, the ranges of Mg, Fe, and Si taught by Saikawa fall within the instant inequality conditions for Si (i.e. for Mg=4.0%, Fe=0.2%, Mn=0.4% the instant inequality simplified:
S
i
≤
0.4567
*
M
g
+
0.2
*
M
n
+
0.25
*
F
e
S
i
≤
0.4567
*
4.0
+
0.2
*
0.4
+
0.25
*
0.2
S
i
≤
1.96
S
i
≥
0.4567
*
M
g
+
0.2
*
M
n
+
0.25
*
F
e
-
0.6
S
i
≥
0.4567
*
4.0
+
0.2
*
0.4
+
0.25
*
0.2
-
0.6
S
i
≥
1.36
wherein Saikawa teaches Si values within said calculated range of 1.36-1.96% Si.
Concerning claims 8-10, because Saikawa teaches an overlapping Al-Mg-Si with added Sr foundry alloy, together with substantially identical processing of casting by die casting (Saikawa at [0035]), then substantially the same UTS, YS, and/or elongation (cl. 8), as well as hot tearing index (cl. 10), are expected in the prior art, as in the instant invention. See MPEP 2112 and Best, supra.
Concerning claims 11, 13, 14, Saikawa teaches a process of high pressure die casting [0035] with cracks being prevented (see Saikawa at [0063] and Fig. 1, wherein examples of Saikawa exhibit 0 area% cracking, which meets the instant “crack free” limitation). Saikawa teaches a T5 heat treatment provides the predictable purpose of increasing strength [0012], at an increase in cost. It would have been within the level of one of ordinary skill in the art to have applied a T5 temper (which is absent of a separate solution heating, cl. 14), in order to provide the predictable purpose of increasing strength. Alternatively, the examples of Saikawa are held to be in an “as-cast” state, which qualifies as a F-temper.
Concerning claims 15-17, 19, 20, it would have been obvious to one of ordinary skill in the art to have die cast a variety of automotive structural components, such as a door frame, shock tower, or tunnel structure, because Saikawa teaches said Al-Mg-Si die cast alloy exhibits an excellent combination of strength and elongation as well as crack resistance [0019].
Concerning new claims 21-23, see above discussion on β-Al5FeSi compounds.
Response to Amendment/Arguments
In the response filed on 4/2/26 applicant added new claims 21-23, submitted various arguments traversing the rejections of record, and submitted a 1.132 declaration. No new matter has been added.
Applicant’s arguments that the instant invention is allowable because Saikawa does not teach β-phase is within the claimed maximum of ≤0.012 wt% (claims 1 and 11) has not been found persuasive. As set forth above, Wang teaches β phase is dependent on Fe+Mn content [0026] and eliminating β-phase is important to improving ductility and minimizing cracks [0030,0026]. It therefore would have been obvious to one of ordinary skill in the art to adjust the Fe+Mn content to eliminate β-phase to the extent practical (within the claimed maximum of ≤0.012 wt%) from the Al-Mg-Si alloy taught by Saikawa and Wang (wherein said alloy overlaps the claimed Fe+Mn content, wherein the optimizing of Fe+Mn is taught by Wang to be critical to eliminate β phase), in order to improve ductility and minimize cracks (taught by Wang at [0026, 0030]). This teaching of Wang is not dependent on Si or Mg ranges, and therefore applicant’s argument that one of skill in the art would not be motivated to apply said teaching of minimizing β phase of Wang to casting alloys with non-overlapping ranges of Si and Mg has not been found persuasive. It is noted that the instant specification at [0056] acknowledges the β-phase is controlled by controlling Fe and Mn contents (which is identical to the teaching of Wang). Therefore, it would have been within the level of one of ordinary skill in the art, given the disclosures of Saikawa and Wang to have eliminated β phase, wherein Wang teaches eliminating β phase is a result effective variable.
The declaration under 37 CFR 1.132 filed 4/2/26 is insufficient to overcome the rejection of claims 1-5, 7, 8, 10, 11, 13-17, 19-23 based upon Saikawa and Wang as set forth in the last Office action because: Declarant states that the closest example of Saikawa exhibits 0.019% β Al5FeSi compounds according to thermodynamic software estimate, which is outside the claimed maximum of independent claims 1 and 11. Though Saikawa does not teach an example within the claimed β phase, as set forth above, Wang teaches β phase is dependent on Fe+Mn content [0026] and eliminating β-phase is important to improving ductility and minimizing cracks [0030,0026]. It therefore would have been obvious to one of ordinary skill in the art to adjust the Fe+Mn content to eliminate β-phase (within the claimed maximum of ≤0.012 wt%) from the Al-Mg-Si alloy taught by Saikawa and Wang (wherein said alloy overlaps the claimed Fe+Mn content), thereby having improved ductility and minimized cracks (taught by Wang at [0026, 0030]). Wang teaches eliminating β phase is a result effective variable.
Applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
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 JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached on Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 6/12/26
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