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, 2, 4-7, and 16-19
Withdrawn:
NONE
Rejected:
1, 2, 4-7, and 16-19
Amended:
1
New:
17-19
Independent:
1
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 1-2, 4-7, 16-19 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (US 2016/0250683, cited on 892 mailed 5/9/24).
Wang teaches an Al-Si cast alloy [0004-0005] with improved casting quality and mechanical properties comprising:
cl. 1
Wang
Al alloy comprising (wt%)
Si
7.0-8.9
5-14
Mg
0.3-0.65
0.2-0.55
Cu
0.05-0.19
0-1.5
Mn
0.35-0.60
0.1-0.6
Sr
0.005-0.050
≤0.015
Ti
-0.25
≤0.15
Fe
0.01-0.30
0.2-1.2
Zn
0.01-0.20
0-0.8
Impurities ea.
-0.10
-
Impurities total
-0.35
≤0.2 total other elements
Table 1: instant claim 1 vs. Wang
see Wang at abstract, [0007-0008], which overlaps the claimed ranges of Si, Mg, Cu, Mn, Sr, Ti, Fe, and Zn (independent claim 1, dependent claim 7). Wang teaches processing said alloy into a cast product (which meets the instant “shape cast” limitation) by sand casting, mold casting, or high pressure die casting [0005,0007]. Wang teaches said Al-Si-Mg cast alloy is suitable for further machining [0001], and is processed by tempering to a T5, T6, or T7 temper [0028]. Wang teaches said alloy is formed into a variety of structural parts- such as engine blocks [0007], which meets the instant automotive product limitation.
Wang does not teach the mechanical properties of said alloy (such as elongation, YS, UTS as recited in amended claim 1, new claims 17-19). Though Wang does not teach the mechanical properties of the prior art Al-Si-Mg alloy, because Wang teaches overlapping alloying ranges, together with identical steps of casting and tempering to T5, T6, or T7 temper, then substantially the same mechanical properties would have been expected for Wang, as for the instant invention. Therefore, it is held that Wang has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish 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).
When the Examiner has established a prima facie obviousness, the burden then shifts to the applicant to rebut. In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). Rebuttal may take the form of “a comparison of test data showing that the claimed compositions possess unexpectedly improved properties… that the prior art does not have, that the prior art is so deficient that there is no motivation to make what might otherwise appear to be obvious changes, or any other argument... that is pertinent.” Id. at 692-93; USPQ2d 1901. Applicant has not directed the examiner to evidence of unexpected results (see MPEP 716.02).
Concerning claims 2, 4, 5, and 16, as set forth above, Wang teaches tempering to a T5, T6, or T7 temper [0028], and therefore meets the instant temper limitations.
Concerning claim 6, Wang teaches said alloy is suitable for machining [0001]. Therefore it is held to be within the disclosure of Wang to perform a step of machining, which meets the instant process step.
Concerning claims 17-19, see above discussion of expected properties.
Response to Amendment
In the response filed 8/27/25 applicant amended claim 1, added new claims 17-19, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s arguments that the instantly amended yield strength and elongation are not obvious in view of Wang has not been found persuasive. Similarly, applicant’s argument that one of skill in the art would not be motivated to select Al-Si-Mg alloys with low amounts of Cu (within the claimed range of 0.05-0.5% Cu) because Wang teaches that “high tensile strength” applications have 1.0-1.5% Cu, while applications requiring “high ductility” and/or “high fatigue strength” include 0-1.0% Cu has not been found persuasive. The terms “high” and “low” are relative terms. Though Wang does not categorize the low Cu embodiment as “high” tensile yield strength, because Wang teaches an overlapping Al-Si alloy, together with processing by casting and applying a T6 (peak strength) temper, then substantially the same mechanical properties would be expected for the alloy product of Wang, as for the instant invention.
Further, ”Aluminum and Aluminum Alloys” (cited on 892 mailed 7/17/24) shows that an Al-Si foundry alloy with low Cu (that is substantially similar to Wang as well as the instant invention, p 89, for alloying ranges- of A357.0: 6.5-7.5 Si, 0.4-0.7% Mg, 0.1% max Mn, 0.2% max Cu, 0.2% max Zn, 0.04-0.20% Ti; as well as 358.0: 7.6-8.6 % Si, 0.40-0.60% Mg, 0.20% max Mn, 0.20% max Cu, 0.2% max Zn, 0.10-0.20% Ti, etc.) exhibits YS (after mold casting and in a T6 temper) or 290MPa (p 114, Table 14), and UTS of 360 MPa (A357.0-T6) and 345 MPa (358.0-T6). Though lower in strength relative to the higher Cu embodiment of Wang, the 0-1.0% Cu alloys taught by Wang would be reasonably expected to have the same yield strength as the claimed invention for these reasons.
Conclusion
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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 10/2/25