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
Claims 2-3, 5-6, 9, 24, and 27-29 have been cancelled, Claims 1, 4, 7-8, 10-20, 22, and 25-26 are amended; Claims 4, 8, 11, 13, 15, 18, and 20-21 are withdrawn from consideration as non-elected claims, claims 1, 7, 10, 12, 14, 16-17, 19, 22-23, and 25-26 remain for examination, wherein claims 1 and 19 are independent claims.
Information Disclosure Statement
IDS filed on 4/21/2026 has been recorded.
Previous Rejections/Objections
Previous rejection(s) of Claim(s) 27 under 35 U.S.C. 103 as being unpatentable over MIYAZAKI et al (JP 2001254135 A, with on-line translation, thereafter JP’135) in view of Schoerner et al (US 4,080,222, thereafter US’222) is withdrawn since this claim has been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 04/21/2026.
In view of the Applicant’s “Arguments/Remarks with amendment” filed on 04/21/2026, IDS filed on 4/21/2026, and reconsideration, a new ground rejection(s) have been added as following.
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 and 19 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. The term “high pressure die casting” in the amended claims 1 and 19 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Proper amendment is necessary.
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.
Claim(s) 1, 7, 10, 12, 14, 16-17, 19, 22-23, and 25-26 are rejected under 35 U.S.C. 103 as being unpatentable over MIYAZAKI et al (JP 2001254135 A, with on-line translation, thereafter JP’135) in view of Schoerner et al (US 4,080,222, thereafter US’222).
JP’135 in view of US’222 is applied to the instant claims 1, 7, 10, 12, 14, 16-17, 19, 22-23, and 25-26 for the same reason as stated in the previous office action dated 2/4/2026.
Regarding the amendments in the instant claims 1 and 19, the limitation of “high pressure die casting” or “gravity die casting” is recognized as process limitation in a product-by-process claims. The claimed Al-Fe-Ni alloy is manipulated by the alloy composition, structure and properties itself. The process limitation does not add patentable weight for the instant claims. MPEP 2113 [R-1]. Actually, JP’135 teaches a die casting Al alloy and product (Abstract, par.[0014], and claims of JP’135), which reads on the “high-pressure” or “gravity” die casting process as claimed in the instant claims.
Regarding the amendments in 4, 7-8, 10-18, 20, 22, and 25-26, they do not change the claimed scope as claimed in the instant claims.
Notes: Wiesner (US 11,421,305 B2, corresponding to US-PG-pub 2019/0119792 A1, listed in IDS filed on 4/21/2026) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the art rejection to claims 1, 7, 10, 12, 14, 16-17, 19, 22-23, and 25-26 have been considered but they are moot in view of the new ground rejection as stated above. Regarding the Applicant’s arguments related to the amended features in the claims, the Examiner’s position has been stated as above.
The Applicant’s arguments are summarized as following:
1, the alloys in Schoerner et al (US’222) is for completely different purpose as claimed in the instant claims.
2, Claims 1 and 19 does not include Zr. Schoerner et al (US’222) indicates Zr as an unavoidable impurity.
In response,
Regarding the argument 1, Firstly, as pointed out in the previous office action dated 2/4/2026, both US’222 and JP’135 teach the same cast Al-Fe-Ni alloy for casting application throughout whole disclosing range. Cast Al-Fe-Ni alloy of Schoerner et al (US’222) does not exclude application as mentioned in MIYAZAKI et al (JP’135). Secondly, as discussed above, the limitation of “high pressure die casting” or “gravity die casting” is recognized as process limitation in a product-by-process claims. The claimed Al-Fe-Ni alloy is manipulated by the alloy composition, structure and properties itself. The process limitation does not add patentable weight for the instant claims. MPEP 2113 [R-1]. Actually, there is no evidence to show the claimed process limitations have criticality for the claimed alloy in term of the “0.2% offset yield strength”.
Regarding the argument 2, the “does not contain Zr” is considered as not intendedly adding Zr, which not limit the impurity not including “Zr”. Actually, it is noted that the instant application include Zr as an optional element (par.[0012] and [0044] of PG-pub 2023/0043878 A1—corresponding to the specification Of the instant application). Furthermore, there is no any technique disclosure in the instant application to exclude Zr from the impurity of the claimed steel.
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.
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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.
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/JIE YANG/Primary Examiner, Art Unit 1734
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