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, 2, 5, 7, 10, 11, 13, 17, 19, 21-24, 50-53, 55, 57, 59-64
Withdrawn:
24, 50-53
Rejected:
1, 2, 5, 7, 10, 11, 13, 17, 19, 21-23, 55, 57, 59-64
Amended:
1, 7, 22, 24, 50, 55, 59-62
New:
63, 64
Objected to (allowable):
11
Independent:
1, 24, 55
Claim Rejections - 35 USC § 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.
Claims 1, 2, 5, 7, 10, 13, 17, 22-23, 55, 57, 59-64 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003-119536A (hereinafter JP’536, cited herein).
JP’536 teaches an aluminum alloy that is processed by die casting (abstract), which meets the “cast alloy” limitation of instant claim 1.
Said aluminum alloy comprises (in wt%):
Claim 1
Dependent claims
JP’536
Ni
1.8-6.5
>2.0 (cl. 2)
1.0-6.0
Si
0.10-1.5
0.15-0.90 (cl. 5)
0.1-0.6
Mg
0.10-3
0.2-0.9
Fe
-0.2
-0.10 (cl. 10)
0.1-1.0
Mn
-0.65
*0.45-0.35 (cl. 11)
-0.05
Ti
-0.12
0.02-0.12 (cl. 13)
0.005-0.15
V
-0.01
-0.05
Zr
-0.15
0.01-0.15 (cl. 17)
-0.05
Mo
-0.15
*0.01-0.15 (cl. 19)
-
Cr
-0.01
-0.05
Sr
-0.02
*0.005-0.02 (cl. 21)
-
*=outside
Table 1: instant claims vs. JP’640
which overlaps the claimed ranges of Ni, Si, Mg, Fe, Mn, Ti, V, Zr (instant claims 1, 2, 5, 10, 13, 17).
JP’536 does not specify the electrical conductivity in a T6 temper (amended claim 1, amended claim 55, new claim 64) or the yield strength (claim 63). However, because JP’536 teaches an overlapping alloy processed by the identical casting process of die casting, then substantially the same properties are expected for the die cast Al-Ni alloy product of JP’536, as for the claimed invention (including electrical conductivity, given a T6 temper; as well as yield strength). Therefore, because JP’536 teaches an overlapping Al-Ni alloy die cast product, it is held that JP’536 has created a prima facie case of obvious of the presently claimed invention.
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 claims 2, 5, 10, 13, 17, as set forth in Table 1 above, JP’536 teaches overlapping alloying ranges.
Concerning claim 7, though JP’536 does not specify the claimed relationship of Mg and Si in instant claim 7, the ranges of Mg and Si taught by JP’536 meet the instant inequality (i.e. 0.5% Si and 0.5% Mg taught by JP’536 results in: Mg≤-1.218*ln(0.5), Mg≤0.84, wherein the 0.5% Mg taught by JP’640 meets Mg≤0.84.
Concerning claim 22, JP’536 teaches a broadly overlapping range of Mn+Cr+Ti+V (see Table 1 above), and therefore meets the instant limitation.
Concerning claim 23, though JP’536 does not specify the claimed relationship of Mg and Si in instant claim 23, the broad ranges of Mg and Si taught by JP’536 meet the instant limitation, for instance: 0.9% Mg and 0.4% Si (within the ranges of JP’536), meet the instant weight percent ratio of more than 2:1. With respect to the broad overlap taught by the prior art, 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).
Concerning claim 55, JP’536 teaches forming said alloy into a cast aluminum product (see examples).
Concerning claim 57, as set forth above, JP’536 teaches said Al-Ni alloy is used for cast parts. Because the Al-Ni alloy of JP’536 is a metal alloy, it would necessarily qualify as “electrically conductive” as claimed.
Concerning claims 59 and 60, though the prior art does not specify that Mg2Si or MgSi precipitates are formed, because JP’536 teaches overlapping alloying ranges, then substantially the same microstructural phases (such as Mg2Si and/or MgSi) are expected to form after casting as presently claimed, by virtue of the overlapping alloying ranges of Mg and Si taught by the prior art.
Concerning claims 61 and 62, the product configuration implied by the instant product by process steps of “die-cast alloy” and “mold-cast alloy” is met by the prior art’s cast alloy, which is die cast into a mold [0005].
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over JP’536 as applied to claims above, further in view of WO2017-133415A (WO’415, previously cited).
JP’536 is discussed above. JP’536 does not teach the addition of Sr. However, WO’415 teaches that 0.001-0.15% Sr is added to similar Al-Ni alloys for the predictable purpose of modifying/refining the needle shaped Si phase and improving thermal conductivity and mechanical properties (WO’415 p 3, lines 113-114). It would have been obvious to one of ordinary skill in the art to have added 0.001-0.15% Sr to the Al-Ni alloy of JP’536, because WO’415 teaches said addition is useful to refine the Si phase and improve thermal conductivity and mechanical properties.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over JP’536 as applied to claims above, further in view of GB 649,134 (GB’134, previously cited).
JP’536 is discussed in paragraphs above. JP’536 does not teach the addition of 0.01-0.15% molybdenum (cl. 19). However, GB’134 teaches that 0.05-0.2% Mo can be added to aluminum alloys for a grain refining effect (p 3 lines 102-110). It would have been obvious to one of ordinary skill in the art to have added 0.01-0.15% Mo (as taught by GB’134) to the aluminum alloy of JP’536, in order to provide a grain refining effect (as taught by GB’134).
Response to Amendment
In the response filed 12/22/25 applicant amended claims 1, 7, 22, 24, 50, 55, 59-62, added new claims 63 and 64, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s arguments with respect to claim(s) 1, 2, 5, 7, 10, 11, 13, 17, 19, 21-23, 55, 57, 59-64 in view of JP’640 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The closest prior art to the amended claims is held to be JP’536.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: the closest prior art, JP’536, does not teach or suggest an Al-Ni cast alloy with the claimed properties, complete with 0.45-0.65% Mn, as set forth in claim 11.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 1/4/26