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 the Claims
Claims 1-2 and 5-11 are pending wherein claims 1-2, 5-7 and 9 are amended, claims 10-11 are new, claims 3-4 are canceled, and claims 7-9 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claims 1-2 under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (The Influence of Sr element on the Microstructure and Properties of Al-Si-Zn-xSr Solder) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 5-6 under 35 U.S.C. 103 as being unpatentable over Wang (CN 102312135A) is withdrawn in view of the Applicant’s amendment to claim 5. The previous rejection of claimThe previous rejection of claims 1-2 on the ground of nonstatutory double patenting as being unpatentable over claims 1-3 of copending Application No. 18/278,001 is withdrawn in view of the Applicant’s amendment to claim 1.
Claim Objections
Claim 11 is objected to under 37 CFR 1.75 as being a substantial duplicate of claim 1. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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 1-2, 5-6 and 10-11 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.
In regard to claims 1, 5 and 11, these claims recite “4043 filler metal specified in JIS Z 3604” which would constitute a trademark/trade name. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe an alloy that may change depending on a standard and, accordingly, the identification/description is indefinite.
With respect to the recitation “the surface-active element is at least any one of Ca, Sr and Ba, and the Sr content of the welded portion is 0.03% by mass or more” in claim 5, A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation “at least any one of Ca, Sr and Ba” and the claim also recites “and the Sr content of the welded portion is 0.03% by mass or more” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In regard to claim 10, claim 5, upon which claim 10 depends, already indicates a required strontium content of 0.03 mass percent or more. Thus, claim 10 which indicates that the element is strontium would fail to further limit claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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, 5-6 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (CN 102312135A).
In regard to claims 1-2 and 11, Wang (CN ‘135) discloses aluminum base alloys comprising about 0.5 to 14 weight percent silicon, about 0.1 to 1 weight percent iron and about 0 to 0.2 weight percent titanium, which would appear to correspond with the specifications of a conventional 4043 aluminum alloy (abstract and [0009]). Wang (CN ‘135) further discloses the presence of about 0.015 to 0.2 weight percent strontium (abstract and [0009]), which would overlap the claimed range of strontium, thereby establishing prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “filler metal” in claims 1 and 11, this would be a recitation of intended use that would not further limit the structure of the aluminum alloy. MPEP 2111.02 II.
With respect to the recitation “a welding speed of the aluminum alloy filler metal is 1 m/min or more” in claims 1 and 11, this appears to be a property of the alloy and since Wang (CN ‘135) discloses a substantially similar composition, this property would be expected. MPEP 2112.01 I.
With respect to the recitation “a surface-active element that lowers the surface tension of molten aluminum” in claims 1 and 11, since Wang (CN ‘135) discloses a substantially similar composition, this property would be expected. MPEP 2112.01 I.
In regard to claims 5 and 10, Wang (CN ‘135) discloses aluminum base alloys comprising about 0.5 to 14 weight percent silicon, about 0.1 to 1 weight percent iron and about 0 to 0.2 weight percent titanium, which would appear to correspond with the specifications of a conventional 4043 aluminum alloy (abstract and [0009]). Wang (CN ‘135) further discloses the presence of about 0.015 to 0.2 weight percent strontium (abstract and [0009]), which would overlap the claimed range of strontium, thereby establishing prima facie evidence of obviousness. MPEP 2144.05 I. Wang (CN ‘135) additionally discloses welding the mould (welded structure) with aluminum base alloys containing 0.015 to about 0.2 weight percent strontium [0082-0084].
With respect to the recitation “a surface-active element that lowers the surface tension of molten aluminum” in claim 5, since Wang (CN ‘135) discloses a substantially similar composition, this property would be expected. MPEP 2112.01 I.
In regard to claim 6, Wang (CN ‘135) discloses treating a substantially similar composition (overlapping range of strontium) in the same manner (welding). Therefore, equiaxed grains with an average grain size of 150 µm or less would be expected.
Response to Arguments
Applicant's arguments filed April 3, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that in JIS Z 3604, the content of magnesium is 0.05% or less. The Applicant attaches JIS Z 3232 and indicates that JIS Z 3604 does not include a composition of 4043 filler metal and is using JIS Z 3232 as evidence indicating that JIS Z 3604 is indispensable for the application of JIS Z 3232.
In response, the Examiner notes that adding a limitation with regard to a trade alloy depending on a Japanese standard creates an issue of indefiniteness since standards may change over time and the standard that Applicant is referring to, as admitted by Applicant, does not even include a composition of 4043 aluminum alloy. Additionally, the claims cite a standard and Applicant refers the Examiner to a different standard in JIS Z 3232 and this creates confusion since this standard this is not event the standard that is being referred to in the specification.
Second, Applicant argues about new claim 11 with reference to 4043 filler metal and JIS Z 3604 specifications, but claim 11 appears to be a substantial duplicate of claim 1 such that it is unclear what the difference in scope would be.
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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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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