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 .
Status of Claims
Pending:
1-16, 18-20
Withdrawn:
9-15
Rejected:
1-8, 16, 18-20
Amended:
1, 6, 7, 9, 13, 14, 16
New:
NONE
Independent:
1, 9, 16
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 1-8, 16, 18-20 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 “about” in independent claims 1 and 16 (as well as dependent claims 4-7, 19, 20) is a relative term which renders the claim indefinite. The term “about” 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. The instant specification at [0040] describes variations of the implied imprecision of “about”, but does not give a clear definition of said term.
Claim 20 recites the limitation “impurities at a concentration of less than exactly or about 0.05 wt%”. It is unclear the meaning of this limitation. Further, it is unclear if impurities are being referred to in total, or each (in other words, it is unclear if impurities are intended to be limited to 0.05% each, or 0.05% total).
Appropriate correction is required. Claims dependent on the above rejected claim 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 (i.e., changing from AIA to pre-AIA ) 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) 1-8, 16, 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2006-316341A (JP’341, previously cited) in view of Horikawa et al (US 2010/0108209, cited herein).
JP’341 teaches a cast aluminum alloy comprising (in wt%):
Claim 1
Claim 6
Claim 7
Claim 16
JP’341
Secondary ref. Horikawa
Si
6.5-9.5
6.5-8
8-9.5
8-9.5
6.0-11.0
Mg
0-0.35
0.1-0.3
0-0.15
0-0.15
0.1-0.5
Cr
0<0.3
0.2-0.3
0.2-0.3
0.2-0.3
0.1-0.5
Mn
>0.1-0.4
0-0.15
0-0.15
0-0.15
(not taught)
~ 0.1-0.3%
Fe
0.2-0.4
0.2-0.4
0.2-0.4
0.2-0.4
-0.42
Zn
0.05-0.5
0-0.2
0-0.2
0-0.2
(not taught)
≤0.5%
Cu
0-0.5
0-0.5
0-0.5
0-0.5
-0.03
Ti
0-0.2
-
Sr
0-200 ppm
30-200 ppm
Fe+Mn+Cr
Fe + (1.5*Mn) + (2.7*Cr)
Table 1: instant claims vs. JP’341
which overlaps the claimed alloying ranges of Si, Mg, Cr, Fe, Cu, Ti, and Sr in independent claims 1 and 16 (as well as dependent claims 6, 7. Concerning the amended Mn and Zn contents, JP’341 does not mention the presence of Mn or Zn. However, secondary reference of Horikawa teaches Mn is included (in amounts typically 0.1-0.3%, see Horikawa at Table 1, [0029]) in substantially similar Al-Si casting alloys for the predictable purpose of improving high temperature mechanical strength while maintaining good thermal conductivity [0029]. Further, Horikawa teaches Zn is included in amounts ≤0.5% in order to improve mechanical strength but maintaining good thermal conductivity [0031-0032]. It would have been obvious to one of ordinary skill in the art to have added/allowed Mn in small amounts (approx.. 0.1-0.3%) and Zn in amount of ≤0.5% in order to improve mechanical strength but maintaining good thermal conductivity [0029, 0031-0032]. Because of the overlap in alloying ranges, along with product configuration as a cast component, it is held that JP’341 together with Horikawa has 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 claim 2, JP’341 together with Horikawa teaches ranges of Fe, Mn, and Cr that meet the instant limitation of Fe+Mn+Cr<0.65. Namely, the combination of JP’341 and Horikawa teach said cast alloy contains ≤0.42% Fe, 0.1-0.5% Cr, and 0.1-0.3% Mn, which results in Fe+Mn+Cr values of 0.2-1.22, which overlaps the claimed range of <0.65 and therefore meets the instant limitation.
Concerning claim 3, JP’341 together with Horikawa teaches ranges of Fe+1.5*Mn+2.7*Cr that meet the instant limitation of Fe+1.5*Mn+2.7*Cr >0.8. Namely, JP’341 teaches said cast alloy contain s≤0.42% Fe, 0.1-0.5% Cr, and Horikawa teaches approx. 0.1-0.3% Mn, which results in Fe+1.5*Mn+2.7*Cr values ranging 0.45-2.22 which overlaps the claimed range of Fe+1.5*Mn+2.7*Cr >0.8 and therefore meets the instant limitation.
Concerning claims 4, 5, and 16, JP’341 teaches a typical YS = 142 MPa (Table 1, Example 6), and elongation of 12.8% (Table 1, Example 6) which fall within the claimed minimums and therefore meet the instant YS and elongation limitations. JP’341 does not teach the claimed bending angle. However, because JP’341 teaches an overlapping Al-Si alloy, processed by substantially identical steps as the instant invention (JP’341 teaches steps of die casting and heat treating to T5 temper- see JP’341 at Table 1; the instant specification details die casting and heat treating to T5 temper see specification at [0082, 0087]), then substantially the same properties and microstructure would be inherently expected to the alloy product of JP’341 and Horikawa, as for the instant invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Concerning claim 8 and 18, neither JP’341 nor Horikawa teach a coral-like morphology when said Al-Si alloy is in the as-cast state. However, because the combination of JP’341 and Horikawa teach an overlapping Al-Si alloy, processed by substantially identical steps as the instant invention (i.e. die casting and application of T5 temper, see discussion above), then substantially the same properties and microstructure would be inherently expected to the alloy product of JP’341 and Horikawa, as for the instant invention.
Concerning claim 19, JP’341 teaches heat treating at temperatures of 170C for 4 hrs or 160C for 4 hours [0040,0041], which falls within the claimed temperature and time ranges and therefore meets the instant limitations.
Concerning claim 20, no impurities are specified by JP’341, and therefore negligible impurities are held to be present, within the claimed <0.05% (see also, 112(b) rejection above). Alternatively, it would have been within the level of one of ordinary skill in the art, given the disclosure of JP’341, to have minimized the amount of impurities in the Al-Si cast alloy in order to improve the consistency of mechanical properties and maintain good thermal conductivity (as taught by Horikawa at [0032]).
Response to Amendment
In the response filed on 7/6/26 applicant amended claims 1, 6, 7, 9, 13, 14, and 16 and submitted various arguments traversing the rejections of record. No new matter has been added.
The 112(b) rejections have been maintained. It is unclear the degree of precision implied by “about”. The instant specification at [0040] gives examples of several interpretations, but does not clearly define said term, thereby clarifying the boundary implied by said term. Appropriate correction/clarification is needed.
Applicant’s argument that the instant invention is allowable because JP’341 does not teach the amended ranges of Mn or Zn has not been found persuasive. Secondary reference of Horikawa teaches motivation to add/allow Mn and Zn in ranges that fall within the claimed ranges (see rejections above), that is, in order to provide the predictable purpose of improving mechanical strength while maintaining good thermal conductivity (see Horikawa at [0029, 0031-0032]).
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 9/27/2026
