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 .
Election/Restrictions
Applicant's election with traverse of group I in the reply filed on 3/3/2026 is acknowledged. The traversal is on the ground(s) that group I and group II are connected by a special technical feature (amended claim 1, new claim 6), and said special technical feature is not obvious in view of the prior art. This has been found persuasive.
Claims 1 and 6 are directed to an allowable product. Pursuant to the procedures set forth in MPEP § 821.04(B), claims 2-5, directed to the process of making or using an allowable product, previously withdrawn from consideration as a result of a restriction requirement, are hereby rejoined and fully examined for patentability under 37 CFR 1.104.
Because all claims previously withdrawn from consideration under 37 CFR 1.142 have been rejoined, the restriction requirement as set forth in the Office action mailed on 1/7/26 is hereby withdrawn. In view of the withdrawal of the restriction requirement as to the rejoined inventions, applicant(s) are advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application. Once the restriction requirement is withdrawn, the provisions of 35 U.S.C. 121 are no longer applicable. See In re Ziegler, 443 F.2d 1211, 1215, 170 USPQ 129, 131-32 (CCPA 1971). See also MPEP § 804.01.
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, 3-6 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.
Claim 1 recites the limitation "the state in which the TiB2 aggregates are exposed" in lines 6-7 (which is discussed in the instant specification at [0057], etc.). There is insufficient antecedent basis for “the state” in the claim.
Claim 1 recites the limitation "the circularities" in lines 8 (which is discussed in the instant specification at [0037-0038], etc.). There is insufficient antecedent basis for this limitation in the claim.
Similarly, Claim 6 recites the limitation "the state in which the TiB2 aggregates are exposed" in lines 8-9. There is insufficient antecedent basis for “the state” in the claim.
Claim 6 recites the limitation "the resulting aluminum alloy matrix" in lines 3-4, as well as line 5. There is insufficient antecedent basis for this limitation in the claim.
Claim 6 recites the limitation "the circularities" in line 10. There is insufficient antecedent basis for this limitation in the claim.
Allowable Subject Matter
Claims 1, 3-6 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action. The closest prior art, JP 62-133037A (JP’037), teaches an aluminum alloy product with TiB2 aggregates with a size≤ 8 µm, however said composition has >> B content of 0.1-2.2% B. JP’037 does not teach or suggest the claimed alloy product with the TiB2 aggregate average size as claimed, complete with a dilute boron content of 0.001-0.0010% (based on the boron atoms contained in said TiB2 aggregates, substantially as claimed).
Concerning process claims 3-5, which contain all the limitations of allowable claim 1, because the instant aluminum alloy product has been found allowable, then a method of making said allowable product is likewise allowable. See In re Ochiai, 71 F.3d 1565, 1572, 37 USPQ2d 1127, 1133 (Fed. Cir. 1995).
Conclusion
The closest prior art is JP 62-133037A (JP’037). The prior art made of record and not relied upon (JP H10317083A, US2015/0082947, US 5,484,493) is considered pertinent to applicant's disclosure.
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 Mon-Thurs 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 5/24/26
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