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
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/18/2025 has been entered.
Status of claims
Claims 5, 8-10, 19-28, and 36-42 have been cancelled; Claims 56-66 are added as new claims; Claims 1, 4, 17, 29, 43-47, and 50 have been amended; to response to the “Requirement for Election/Restriction” in the office action dated 7/23/2025, the applicant has elected Group I (claims 1-4, 6-7, 11-18, 29-35, 43-47) without travers and elected Species 9 (claim 11). Since claims 4, 17, 29, and 43-47 have been amended and there are newly added claims, the newly species election requirement is listed as following:
Election/Restrictions
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 4, 17, and 45-47 depend on claim 1 individually,
Species 1’: Claim(s) 4 and 17, the claimed alloy >0.2-3.5 wt% Mg;
Species 2’: Claim(s) 45, the claimed alloy >0.2-3.0 wt% Mg;
Species 3’: Claim(s) 46-47, the claimed alloy >0.2-2.6 wt% Mg;
The species are independent or distinct because they have different Mg range in the alloy. For examination purpose, Species 1’ (Claims 4 and 17) is picked in the following examination since this claim includes broadest range.
This application contains claims directed to the following patentably distinct species: claims 29, and 43-44 depend on claim 1 individually,
Species 4’: Claim(s) 29, the claimed alloy >4.5-8 wt% Ti;
Species 5’: Claim(s) 43, the claimed alloy 5-8 wt% Ti;
Species 6’: 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, Species 4’ (Claim 29) is picked in the following examination since this claim includes broadest range.
This application contains claims directed to the following patentably distinct species: claims 6 and 60 and 61 depend on claim 1 individually,
Species 7’: Claim(s) 6, the claimed alloy has at least on solution element including Mn (refer to claim 7);
Species 8’: Claim(s) 60, the claimed alloy has >0.1-25 wt% Mn;
Species 9’: Claim(s) 61, the claimed alloy has 8-25 wt% Mn;
The species are independent or distinct because they have different Mn range in the alloy. For examination purpose, Species 7’ (Claim 6) is picked in the following examination since this claim includes broadest range.
This application contains claims directed to the following patentably distinct species: claims 6, 62 and 63 depend on claim 1 individually,
Species 7’: Claim(s) 6, the claimed alloy has at least on solution element including Cr (refer to claim 7);
Species 10’: Claim(s) 62, the claimed alloy has >0.1-25 wt% Cr;
Species 11’: Claim(s) 63, the claimed alloy has >4-25 wt% Cr;
The species are independent or distinct because they have different Mn range in the alloy. For examination purpose, Species 7’ (Claim 6) is picked in the following examination since this claim includes broadest range.
This application contains claims directed to the following patentably distinct species: claims 64-66 depend on claim 7 individually,
Species 12’: Claim(s) 64, the claimed alloy has 6-20 wt% Mn;
Species 13’: Claim(s) 65, the claimed alloy has 4-25 wt% Cr;
Species 14’: Claim(s) 66, the claimed alloy has 10-25 wt% Cr;
It is noted Mn and Cr are in the optional elements list in claim 7, the Applicant is required to choose a Species from Species 12’-14’ for the further examination. Actually, these species are still optional elements since they depend on claim 7.
Therefore, Claims 7, 12-13, 30-35, 43-55, and 60-63 are withdrawn as non-elected claims, claims 64-66 are required for “Election/restriction” for the further examination; Claims 1-4, 6, 11, 14-18, 29, and 56-59 remain in the examination, and claim 1 is an independent claim.
Claim Objections
Claims 7, 12-13, 30-35, 43-55, and 60-63 are objected to because of the following informalities: proper claim indicators are required for the withdrawn claims (for non-elected group and Species). Appropriate correction is required.
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.
Claim 11 is 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. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation “the at least one solute further includes one or more of Si, Ce, and Zr” one lines.4-5, and the claim also recites recitation “the at least one solute includes Ce” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Since this claim need further clarification/amendment, claim 11 is 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.
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 § 102
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 1-4, 6, 14-18, 29, and 56-59 are rejected 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).
Regarding claims 1, 4, 6, 17-18, 29, 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, 6, 17-18, 29, and 56-59 are listed in the following table. All of the essential alloy composition ranges disclosed by working Example #10 of JP’148 are within the claimed composition ranges and melting temperature ranges. It is noted there is no specific amount for Er in the instant claim 57, trace or impurity level of element disclosed by JP’148 reads on the claimed limitation. Since JP’148 teaches all of the essential alloy elements in the Al alloy, claims 1, 4, 17, 29, and 56-59 are anticipated by JP’148.
Element
From instant Claims 1, 4, 17, 29 (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)
1
1
Ti
>4.5-10 (cl.1)
>4.5-8 (cl.29)
7
7
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 claims 6 and 18
At least one or more of
At least on solution element (cl.6, 18)
Si: 0.6
Si: 0.6
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 same 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.
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 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, 6, 14-18, 29, 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, and 29, 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 (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)
0.2-30
0.2-4 (cl.1)
0.2-3.5 (cl.4)
Ti
>4.5-10 (cl.1)
>4.5-8 (cl.29)
0.2-15
>4.5-10 (cl.1)
>4.5-8 (cl.29)
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 claims 6 and 18
At least one or more of
At least on solution element (cl.6, 18)
Si: 0.2-10;
Mn: 0.2-5;
Si: 0.2-10;
Mn: 0.2-5;
From claim 14
Elastic modulus (GPa)
At least 100
Inherently have MPEP 2112 III&IV
Same alloy and same phase
From claim 56 (wt%)
Within/Overlapping
Hf
Further included
Trace amount
Reads on
From claim 57 (wt%)
Er
Further included
Trace amount
Reads on
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).
Response to Arguments
Applicant’s arguments to the art rejection of Claims 1-4, 6, 11, 14-18, 29, 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.
The Applicant’s arguments are summarized as following:
1, the Applicant travers to the Species election in the previous office action dated 7/23/2025.
2, regarding the rejection under 35 U.S.C. 103 as being unpatentable over Lindenau et al (WO’710), Lindenau et al (WO’710) fails to disclose or suggest the features of claim 1 as a whole. Lindenau's long list (i.e., 21 elements) of alloying elements, together with each element's broad range of percent weights, discloses a mind-boggling number of possible alloy combinations. Lindenau did not disclose or recognize Ti, Mg, Al, Si or Y nor any value(s) of Ti, Mg, Al, Si or Y being a result-effective variable of the disclosed alloy that affected the result of the composition having sufficient strength values and high hardness. Specifically for the independent claims 48 and 52.
In response
Regarding the argument 1, Regarding the arguments to the travers on the Species election in the previous office action dated 7/23/2025, different Species depend on the corresponding independent claims individually, it is proper to require to choose one from different claimed ranges in the Species for in the following examination. In view the amendment and newly added claims, new “Election/Restriction requirement” has been added as above.
Regarding the argument 2, Firstly, as pointed out in the rejection for the instant claims above and in the previous office action dated 7/23/2025, 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. Secondly, there is no limitation the in the instant claims to require sufficient strength values and high hardness as argued. Finally, claims 48 and 52 are indicated as non-elected claims in the Applicant’s response filed on 12/18/2025 (page 13), which has been withdrawn from the consideration in the instant examination.
Conclusion
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.
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/JIE YANG/Primary Examiner, Art Unit 1734