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
Status of claims
Claims 5, 8-10, 19-28, and 36-42 have been cancelled; Claim 67 is added as a new claim; claims 48-55 are withdrawn as non-elected claims; Claims 1, 7, 11-13, 30-35, 43-46, and 60-66 are amended.
Election/Restrictions
In view the amendment, Restriction to one of the following inventions is required under 35 U.S.C. 121:
This application contains claims directed to the following patentably distinct species: claims 7, 11, 12, 13, 30, 31-35, 60-61 (64), 62-63 (65-66), and 67 depend on claim 6 individually,
Species a): Claim(s) 7, the claimed alloy including at least one solute element including one or more of Be, Cr, Mo, Ru, Mn, Ce, Y, or Zr;
Species b): Claim(s) 11, the claimed alloy including at least one solute element including Ce, at least one solute element including Ru, and one solute element including Zr;
Species c): Claim(s) 12, the claimed alloy including at least one solute element including one or more of Ce, Y, or Zr;
Species d): Claim(s) 13, the claimed alloy including at least one solute element including Y, at least one solute element including one or more of Ce or Zr;
Species e): Claim(s) 30, the claimed alloy including solute element Zr with Si + Zr in total proportion up to 12 wt%;
Species f): claims 31-35, the claimed alloy including solute element Zr with Si + Zr in total proportion up to 15 wt%;
Species g): Claim(s) 60-61 and 64, the claimed alloy including at least one solute element including Mn;
Species h): Claim(s) 62-63 and 65-66, the claimed alloy including at least one solute element including Cr;
Species i): claim(s) 67, the claimed alloy including at least one solute element including Zr;
The species are independent or distinct because they have different solute element. For examination purpose, Species a) (Claim 7) is picked in the following examination since this claim includes broadest range.
This application contains claims directed to the following patentably distinct species: claims 43-44 depend on claim 29 individually,
Species j): Claim(s) 43, the claimed alloy 5-8 wt% Ti;
Species k): Claim(s) 44, the claimed alloy >4.5-6 wt% Ti;
The species are independent or distinct because they have different Ti range in the alloy. For examination purpose, j) (Claim 43) is picked in the following examination since this claim includes broadest range.
Therefore, Claims 11-13, 30-35, 44, 48-55, and 60-67 are withdrawn as non-elected Claims 1-4, 6-7, 14-18, 29, 43, 45-47, and 56-59 remain in the examination, and claim 1 is an independent claim.
Previous Rejections/Objections
Previous objection of Claims 7, 12-13, 30-35, 43-55, and 60-63 because informalities is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/2/2026 and the new “Requirement for Election/restriction” as stated above.
Previous rejection of Claim 11 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 is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 6/2/2026
However, In view of the Applicant’s amendments in the instant claims, newly recorded reference(s), and reconsideration, a new ground rejection is listed as following:
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-7 and 18 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claims 6-7 and 18 depend on claim 1 directly/indirectly, while claim 1 already includes solute element “Si” (refer to the original claim 7 of the instant application). It is unsure “at least one solute element” in the instant claim 6 include Si or not. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Since claim 7 depend on claim 6, it is also rejected. Since claims 6-7 need further clarification/amendment, claims 6-7 and 18 are not included in the following examination
Previous Rejections/Objections
Previous rejection of Claims 1-4, 6-7, 12-16, 18, and 29 under 35 U.S.C. 103 as being unpatentable over Chen et al (CN 110181193 A, with on-line translation, thereafter CN’193) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/18/2025.
Previous rejection of Claims 1-4, 6, 14-18, 29, and 56-59 under 35 U.S.C. 102(a)(1) as being anticipated by TSUKUDA ICHIZO et al (JP H03249148 A, with on-line translation, thereafter JP’148) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 12/18/2025
However, In view of the Applicant’s amendments in the instant claims, newly recorded reference(s), and reconsideration, a new ground rejection is listed as following:
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 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 1-4, 14-17, 29, 43, 45-47, and 56-59 are rejected under 35 U.S.C. 103 as being unpatentable over TSUKUDA ICHIZO et al (JP H03249148 A, with on-line translation, thereafter JP’148).
Regarding claims 1, 4, 17, 29, 43, 45-47, and 56-59, JP’148 teaches an aluminum alloy manufactured by a casting metallurgy method (Abstract, examples, and claims of JP’148), which reads on the alloy as recited in the instant claims. The comparison between the alloy composition ranges as disclosed in working Example 10 of JP’148 and those disclosed in the instant claims 1, 4, 17, 29, and 56-59 are listed in the following table. All of the essential alloy composition ranges disclosed by working Example #10 in table 1 of JP’148 are within the claimed composition ranges and melting temperature ranges. It is noted that the amount Si in working Example #10 in table 1 of JP’148 is outside the claimed range. However, JP’148 specify adjusting Si in range 0.01-13 wt% (claims of JP’148), which overlapping the claimed Si range. Overlapping in Si range creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Si in the alloy since JP’148 teaches the same aluminum alloy manufactured by a casting metallurgy method as claimed throughout whole disclosing range(Abstract, examples, and claims of JP’148). For Er in the instant claim 57, trace or impurity level of element disclosed by JP’148 reads on the claimed limitation.
Element
From instant Claims 1, 4, 17, 29, 43, 45-47 (wt%)
From Example #10 in table 1 of JP’148 (wt%)
within range
(wt%)
Al
Based
Balance
Balance
Mg
0.2-4 (cl.1)
0.2-3.5 (cl.4, 17)
0.2-3 (cl.45)
0.2-2.6 (cl.46)
1
1
Ti
>4.5-10 (cl.1)
>4.5-8 (cl.29)
5-8 (cl.43)
5-7 (cl.47)
7
7
Si
0.8-8
0.6
Adjusting range
0.01-13
Overlapping 0.8-8
From claims 2-3 and 15-16
Melting point
At least 195oC (cl.2-3)
At least 575oC (cl.15-16)
Heated to 850oC (Examples of JP’148)
Reads on
From claim 14
Elastic modulus (GPa)
At least 100
Inherently
MPEP 2112 III&IV
From claim 56 (wt%)
From claim 2 of JP’148
Hf
Further included
0.05-1
0.05-1
From claim 57 (wt%)
Er
Further included
Trace amount
Trace amount
From claim 58 (wt%)
Zn
Further included
0.01-7
0.01-7
From claim 59 (wt%)
Cu
Further included
1.5-8
1.5-8
Regarding claims 2-3 and 15-16, JP’148 specify heating the alloy to 850oC (Examples of JP’148), which reads on the claimed limitations in the instant claims.
Regarding claim 14, JP’148 teaches the similar Al based alloy including Ti, Mg, and Si and treated by the same solution heat treatment (Examples of JP’148). Since JP’148 teaches the same alloy compositions with the same solution heat treatment as claimed in the instant claims and referring to the par.(0067) of instant specification, the claimed elastic modulus would be inherently exist in the alloy of JP’148. MPEP 2112 III&IV.
Claims 57 are rejected under 35 U.S.C. 103 as being unpatentable over JP’148 in view of Bartges et al (US 5,601,934, thereafter US’934).
Regarding claim 57, JP’148 does not specify intended adding Er in the Al alloy. US’934 teaches a Mg included Al based alloy (Abstract, Col.1, line 37-Col.2 line 20 of US’934) and US’934 specify including a dispersoid-forming element selected from the group including erbium in order to obtain the benefit of the dispersoid as a precipitation-hardening compound in the Al alloy (Claim 1, Col.2, lns.15-20, and col.4, lins.4-54 of US’934). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to intended adding Er in the Al based alloy as demonstrated by US’934 in the alloy of JP’148 in order to obtain the benefit of the dispersoid as a precipitation-hardening compound in the Al alloy (Col.4, lins.4-54 of US’934).
Claims 1-4, 14-17, 29, 43, 45-47, and 56-59 are rejected under 35 U.S.C. 103 as being unpatentable over Lindenau et al (WO 03/064710 A1, with on-line translation, thereafter WO’710).
Regarding claims 1, 4, 6, 17-18, 29, 43, 45-47, and 56-59, WO’710 teaches a sinter-able powder mixture for producing sintered components, particularly in the automobile industry, by means of which components have both adequate mechanical strength properties and especially a high degree of hardness. (Abstract, examples, and claims of WO’710), which reads on the alloy as recited in the instant claims. The comparison between the alloy composition ranges as disclosed in WO’710 (Abstract and claims of WO’710) and those disclosed in the instant 1, 4, 6, 17-18, and 29 are listed in the following table. All of the essential alloy composition ranges disclosed by WO’710 overlap the claimed alloy composition ranges as claimed in the instant claims. Overlapping in composition ranges create a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Ti, Mg, Al, and optionally Si and Y ranges from the disclosing of WO’710 since WO’710 teaches the same aluminum alloy manufactured by melting and casting as claimed throughout whole disclosing range.
Element
From instant Claims 1, 4, 17, 29, 43, and 45-47 (wt%)
From WO’710 (wt%)
Overlapping range
(wt%)
Al
Based
Balance
Balance
Mg
0.2-4 (cl.1)
0.2-3.5 (cl.4, 17)
0.2-3 (cl.45)
0.2-2.6 (cl.46)
0.2-30
0.2-4 (cl.1)
0.2-3.5 (cl.4, 17)
0.2-3 (cl.45)
0.2-2.6 (cl.46)
Ti
>4.5-10 (cl.1)
>4.5-8 (cl.29)
5-8 (cl.43)
5-7 (cl.47)
0.2-15
>4.5-10 (cl.1)
>4.5-8 (cl.29)
5-8 (cl.43)
5-7 (cl.47
Si
0.8-8
Si: 0.2-10;
0.8-8
From claims 2-3 and 15-16
Melting point
At least 195oC (cl.2-3)
At least 575oC (cl.15-16)
Operation at temperature 610oC (page 12, 3rd paragraph of WO’710)
Reads on
From claim 14
Elastic modulus (GPa)
At least 100
Inherently have MPEP 2112 III&IV
Same alloy and same phase
From claim 56 (wt%)
From claim 2 of JP’148
Hf
Further included
Trace amount
Trace amount
From claim 57 (wt%)
Er
Further included
Trace amount
Trace amount
From claim 58 (wt%)
Zn
Further included
0.2-15 (cl.1)
0.2-15 (cl.1)
From claim 59 (wt%)
Cu
Further included
0.2-15 (cl.1)
0.2-15 (cl.1)
Regarding claims 2-3 and 15-16, WO’710 specify operation at 610oC (Page 12 3rd paragraph of WO’710), which reads on the claimed limitations in the instant claims.
Regarding claim 14, WO’710 teaches the same Al based alloy including Ti, Mg, Cr, and Si treated by the same heat treatment (Page 12 3rd paragraph of WO’710). Since WO’710 teaches the same alloy compositions with the same heat treatment as claimed in the instant claims and referring to the par.(0067) of instant specification, the claimed elastic modulus would be inherently exist in the alloy of WO’710. MPEP 2112 III&IV.
Regarding claims 56-59, WO’710 teaches including Cu and Zn in the alloy, which reads on the claimed limitation in the instant claims 58-59. It is noted there is no specific amount for Hf in the instant claim 56 and/or Er in claim 57, trace or impurity level of element disclosed by WO’710 reads on the claimed limitation.
Claims 56-57 are rejected under 35 U.S.C. 103 as being unpatentable over WO’710 in view of US’934.
Regarding claims 56-57, WO’710 does not specify intended adding Hf (cl.56) or Er (cl.57) in the Al alloy. US’934 teaches a Mg included Al based alloy (Abstract, Col.1, line 37-Col.2 line 20 of US’934) and US’934 specify including a dispersoid-forming element selected from the group including hafnium and erbium in order to obtain the benefit of the dispersoid as a precipitation-hardening compound in the Al alloy (Claim 1, Col.2, lns.15-20, and col.4, lins.4-54 of US’934). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to intended adding Er in the Al based alloy as demonstrated by US’934 in the alloy of WO’710 in order to obtain the benefit of the dispersoid as a precipitation-hardening compound in the Al alloy (Col.4, lins.4-54 of US’934).
Notes: Kuwabara et al (US 4,145,462) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection of Claims 1-4, 6-7, 14-18, 29, 43, 45-47, and 56-59 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights