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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/28/26 has been entered.
Claim Interpretation
Claim 9 recites the limitation “a cast aluminum alloy” in line 1, and refers to “the alloy” (cl. 9 line 1) “the cast aluminum alloy” (cl. 9 line 11), “the alloy” (claim 9 line 12). These are held to be equivalent terms (that is, “the alloy” is held to refer to “a cast aluminum alloy”). Applicant is encouraged to maintain consistent use of terminology throughout the specification and claims. If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where said interpretation is found in the original specification) in response to this action.
Status of Claims
Pending:
1-5, 7-16, 18-20, 24-26
Withdrawn:
NONE
Rejected:
1-5, 7-16, 18-20, 24-26
Amended:
1, 8, 9, 12, 19, 26
New:
NONE
Independent:
1, 9, 19
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 1-5, 7-8, 19, 20, 24-26 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 cast aluminum alloy" in line 10. Similarly, claim 7 recites the limitation "the cast aluminum alloy" in lines 1-2. Similarly, claim 19 refers to “the cast aluminum alloy” in line 12. There is insufficient antecedent basis for these limitations in said claims. Appropriate correction is required. Claims dependent on the above rejected claims are likewise rejected under this statute.
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 1-5, 7-16, 18-20, 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Garat (US 2004/0045638) in view of Lin et al (US 2007/0125460), cited on IDS filed 10/14/22 and “Aluminum and Aluminum Alloys” p 43-44.
Garat teaches an aluminum alloy comprising (in wt%):
cl. 1, 9, 19
Garat
Si
1 to <4.0%
3.5<4% (cl. 4, 15)
3.5% (cl. 5, 16)
3 to <4% (cl. 26)
2-6%
Mg
0.3-0.5%
0.5% (cl. 2)
0.3-0.7%
Sr
0.04-0.06%
0.04% (cl. 3, 14)
0.004-0.050%
Fe
0.1-0.3%
<0.2%
Mn
<0.01%
-
Cu
<0.01%
-
Table 1: Comparison of alloy of Garat and Instant Claims
which overlaps the alloying ranges of Si, Mg, Sr, Fe (independent claims 1 and 9, dependent claims 2-5, 13-16, 26). More particularly concerning the amount of Mn of <0.01% (highlighted in Table 1 above), Garat does not mention the presence of Mn (see examples, etc.) and therefore the assumption is that substantially no Mn or a very small content of Mn is present. This is further supported by “Aluminum and Aluminum Alloys” p 44, which teaches Mn is a common impurity in aluminum, typically ranging from 5-50 ppm (0.0005-0.0050%). One of ordinary skill in the art, given the disclosure of “Aluminum and Aluminum Alloys” together with Garat, would have expected impurity levels of Mn for the Al-Si-Mg alloy of Garat to be within the claimed <0.01% (as evidenced by “Aluminum and Aluminum Alloys” p 44, which teaches a typical impurity amount of 0.0005-0.0050% Mn for aluminum).
Concerning the limitation of claims 1 and 9 of “Cu in the range of less than 0.01 wt%”, Garat teaches two main embodiments of Al-Si-Mg alloys- one with higher Si and containing Cu; and one with lower Si and not containing Cu [0024-0031] see for instance, alloy D in Table 2 which as 0.03% Cu and is an example of said lower Si embodiment of Garat with minimal (impurity) level of Cu. The ranges of alloying elements listed in Table 1 above are the lower Si embodiment, wherein for this low Si embodiment of Garat’s invention “the compromise between the required properties can be improved even further…which gives a significant increase in ductility” [0037] and improvement in overall quality index (see [0041], [0056]), and wherein “it is essential to have sufficient ductility to prevent brittle failure after a shock, good corrosion resistance” [0002]. This low Si embodiment of Garat is not taught to be inferior, but rather, superior in ductility and quality index (Garat at Tables 4 and 5). The low Si embodiment of Garat may include impurities <0.3% each, and one or more eutectic modifying elements such as 0.004-0.050% Sr [0040], which overlaps the claimed ranges of Cu and Sr. It would have been obvious to one of ordinary skill in the art to have maintained the Cu content of the Al-Si-Mg alloy of Garat to ≤0.3% Cu (which overlaps the claimed ≤ 0.01% Cu), because Garat teaches that an alloy with the above mentioned ranges of Si, Fe, and Mg, together with low Cu, exhibits an excellent combination of strength and elongation/high quality index (see Table 4, 5, [0041], [0056]).
Expected properties/microstructure: YS, electrical conductivity, intermetallic phases
Concerning the amended limitation of claim 1, 9, and 19 of “the yield strength of the alloy is 140-175MPa”, Garat teaches a typical YS (Rp0.2)=266 MPa (example D, Table 5, T6 temper), which is outside the instant range. However, YS depends on alloy composition together with processing (in the instant case, processing by: casting followed by heat treatment/temper, see Lin at [0069], Table 2). It would have been obvious to one of ordinary skill in the art to modify the casting and heat treatment process of Garat in order to achieve the desired combination of properties, because casting and heat treating are known to be result effective variables (wherein the predictable result of modifying casting and temper conditions is strength/elongation balance, see Lin at Table II, which teaches tempers of F, T5, and T6 result in typical YS range 90-180MPa when mold cast [0069]).
Garat does not specify: a) the electrical conductivity of said alloy (independent claims 1, 9, dependent claims 7, 18), b) the presence of particular intermetallic phases (claim 25), or c) the limitation of “TiB2 in a range of from 0.02 to 0.07 wt%” (independent claim 1, 9, 19).
Concerning c), Lin et al., also drawn to Al-Si-Mg foundry alloys, teaches Ti and B combined are an effective grain refiner when added to Al-Si-Mg foundry alloys, wherein Ti and B are in the form of TiB2, and typically ≤0.1% TiB2 is present ([0052], cl. 3). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to have added Ti and B, resulting in ≤0.1% TiB2, to the Al-Si-Mg foundry alloy of Garat, because Lin teaches said addition provides beneficial effect of refining grains of foundry cast Al-Si-Mg alloys.
Concerning a) and b), because Garat and Lin teach an overlapping Al-Si-Mg alloy composition, processed by foundry casting ([0037], examples) and heat treating to a temper such as a T5 or T6 temper (see Lin at Table 2), then substantially the same properties, such as electrical conductivity, and microstructural features (intermetallic phases Al8Fe2Si, etc), are expected for the overlapping alloy of Garat and Lin processed substantially identically (that is, foundry cast followed by application of a given temper), as compared to the instant invention.
Processing of instant invention:
Process of Garat + Lin:
Foundry cast [0014]
Foundry cast [0028, 0037]
Heat treat to: T5, T6, T7 tempers [0047]
Heat treat to: T5, T6 temper (Lin Table 2)
Table 2: Comparison of process of Garat and Instant Invention
Therefore, because of the combination of overlapping alloying ranges together with substantially identical processing, it is held that Garat, Lin, and “Aluminum and Aluminum Alloys” have created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be 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, 13-16, 26, see above discussion of alloying ranges.
Concerning dependent claims 7 and 18, see above discussion of electrical conductivity.
Garat teaches forming said alloy into structural components for automobiles (which meets the limitations of instant cl. 9-10).
Concerning dependent claims 8, 12, 20, 24 which mention said alloy is cast into a rotor, Garat does not specify casting said Al-Si-Mg alloy into the specific shape of a rotor (or an electric vehicle part, instant claim 11). However, it would have been obvious to one of ordinary skill in the art, given the disclosure of Garat, to have formed the aluminum alloy of Garat into a variety of structural parts for automobiles, such as a rotor (or electric-vehicle rotor as recited in claim 24), because Garat teaches said alloy exhibits excellent mechanical strength and is suitable for structural parts for automobiles (examples, [0002]).
Concerning claim 19, Garat teaches casting (from metal that is at least partially in the molten/liquid state [0003]) an overlapping Al-Si-Mg alloy (see Table 1 above for comparison of alloying ranges), and further applying a T6 temper [0041], which meets instant claim 19’s process steps.
Claims 1-5, 7-16, 18-20, 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Garat, Lin, and “Aluminum and Aluminum Alloys” p 43-44 as set forth above, and further in view of Greven et al (US 2019/0185968).
Garat, Lin, and “Aluminum and Aluminum Alloys” are discussed above. Garat teaches an overlapping Al-Si-Mg alloy, and Lin teaches motivation to add ≤0.1% TiB2. Garat’s Cu teaching broadly overlaps the Cu in claims 1, 9, 19. Further concerning motivation to select the claimed Cu range from the broader range taught by Garat, Greven is drawn to Al-Si-Mg casting alloys substantially similar to Garat, but teaches limiting Cu to <0.01% is advantageous to optimize castability, without a negative influence on mechanical properties [0032]. It would have been obvious to one of ordinary skill in the art to have limited the Cu content of the Al-Si-Mg alloy of Garat and Lin to low amounts such as <0.01% Cu, because Greven teaches that Cu amounts of <0.01% are advantageous to optimize castability, without a negative influence on mechanical properties [0032].
See above discussion of dependent claims with respect to the teachings of Garat.
Response to Amendment
In the response filed on 1/28/26 applicant amended claims 1, 8, 9, 12, 19, and 26, and submitted various arguments traversing the rejections of record.
To address applicant’s assertion that “the Office Action provides no test data, scientific literature, or theoretical calculation to support the assertion that the alloys disclosed in Garat or Lin would achieve electrical conductivity of 45 to 50% IACS”, the examiner provides “The Electrical Conductivity of Cast Al-Si Alloys in the Range 2 to 12.6 Wt Pct Silicon” (hereinafter Mulazimoglu et al), p 383-389. Mulazimoglu et al at Fig. 5 (p 385) shows that aluminum alloys with 2% Si and 0.3% Mg exhibit electrical conductivity of approximately 46% IACS. Mulazimoglu evidences that it is reasonable to expect the Al-Si-Mg alloy of Garat and Lin (which is substantially identical to the alloy set forth in Mulazimoglu), to exhibit an electrical conductivity within the claimed ranges. Moreover, Mulazimoglu et al teaches that the electrical conductivity of Al-Si-Mg alloys is dependent on wt% Si (Figure 5, p 385). It would have been obvious to one of ordinary skill in the art to optimize the Si content of the prior art (such as within the claimed 1-4%) in order to increase the electrical conductivity (as taught by Mulazimoglu et al Fig. 5).
Applicant’s argument that the claimed invention exhibits unexpected yield strength and electrical conductivity has not been found persuasive. As set forth above concerning electrical conductivity, because Garat and Lin teach an overlapping Al-Si-Mg alloy composition, processed by foundry casting and heat treating to a T5 or T6 temper, then substantially the same properties, such as electrical conductivity, and microstructural features (intermetallic phases Al8Fe2Si, etc), are expected for the overlapping alloy of Garat and Lin processed substantially identically (that is, foundry cast followed by heat treatment), as compared to the instant invention.
With respect to the prima facie case of obviousness set forth by the examiner, 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
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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 2/20/26