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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/28/2026 has been entered.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, 7-9, 13, 14, 18, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3 438 303 A1 in view of Ye et al in Materials Science and Engineering A.
EP 3 438 303 A1 (EP ‘303) teaches a magnesium alloy with Al, Mn and Ni [0014]. Table 1 on pages 5 and 6 teaches a range of corrosion rates in mg/cm2/day, which reads on degradation rate, that overlaps the claimed range of 1017 mg/cm2/day, especially Examples 4-12. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. The measurement of the degradation rate is an intended use of the claimed alloy since EP ‘303 teaches the claimed property. Language in the claim that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation, for example statements of intended use or field of use. See MPEP § 2106. In this case, the claim does not limit the claimed alloy to a particular structure. See also EP ‘303 [0036]. Regarding the crystallized Al-Mn-Ni system intermetallic compound, EP ‘303 teaches crystals [0032] and casting at 700 °C [0036] but does not explicitly recite the aforementioned intermetallic compound as claimed.
Ye et al teaches in situ formation of aluminide intermetallic particles in a magnesium alloy. Adding nickel to a magnesium alloy during melting produced two types of intermetallic particles in the alloy: manganese nickel aluminde (Al60Mn11Ni4) and nickel aluminide (Al0.42Ni0.58) (abstract). The melting temperature is 700 °C. Ye et al also teaches stirring with argon gas agitation (page 28). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the magnesium alloy taught in EP ‘303 would have aluminide intermetallic particles as taught by Ye et al, since Ye et al and EP ‘303 teach the same melting conditions. Additionally, Ye et al teaches bubbling of argon gas was beneficial to the in-situ formation of the particles and grain refinement (page 29), where the particles include Al, Mn, and Ni (Table 3, page 29).
Regarding Claim 3, EP ‘303 teaches the alloy comprises Ca [0030].
Regarding Claim 4, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the magnesium alloy in EP ‘303 with Ca would include one or more compounds selected from the group consisting of Al2Ca, (Mg, Al)2Ca, and Mg2Ca as claimed, since the magnesium alloy of EP ‘303 is produced by a substantially identical process.
Regarding Claim 5, EP ‘303 teaches Al is 3.9% or more, and Mn is 0.1% or more [0021 and 0022]. Ye et al teaches an AM60B alloy that has 5.6-6.4% Al and 0.26-0.5% Mn (page 28).
Regarding Claim 7, EP ‘303 teaches Ca is 0.2% or less [0030], which overlaps the claimed range.
Regarding Claim 8, EP ‘303 teaches Ni is 0.01-0.3% [0026].
Regarding Claim 9, EP ‘303 teaches the crystal size after extruding is 10-20 μm [0032].
Regarding Claim 13, EP ‘303 teaches the magnesium alloy is used for structural materials [0008-0013].
Regarding Claim 14, EP ‘303 teaches the magnesium alloy is used for structural materials [0008-0013] and is a degradable material [0013].
Regarding Claim 18, EP ‘303 teaches Al is 3.9% or more, and Mn is 0.1% or more [0021 and 0022]. Ye et al teaches an AM60B alloy that has 5.6-6.4% Al and 0.26-0.5% Mn (page 28).
Regarding Claim 22, EP ‘303 teaches Ni is 0.01-0.3% [0026].
Response to Arguments
In response to arguments filed 4/28/2026, applicant argues that EP ‘303 fails to teach or suggest each element of Applicant’s claims based on the rejection of Clams 1-9 and 13-24 under 35 U.S.C. 103, though claims 2, 6, 10, 15-17, 19-21, 23, and 24 are now canceled. Regarding Difference 1, applicant argues EP ‘303 fails to disclose or suggest “having a crystallized Al-Mn-Ni system intermetallic compound.” The rejection above uses the secondary reference of Ye et al that teaches the formation of intermetallic compounds. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., “step for dissolving Ni in the Mg alloy …” and “heating and stirring are performed, …”) are not recited in the rejected claims. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). The condition of “without precipitation or separation from the Mg alloy” is also not claimed recited in Claim 1.
Ye et al teaches the formation of Al-Mn-Ni intermetallics after melting at 700 °C and casting (abstract; page 28) as stated above in the office action. Therefore, the combination of EP ‘303 and Ye et al teaches the formation of “a crystallized Al-Mn-Ni system intermetallic compound.” The specification states “the casting method of the casting step of the present invention has no restriction so long as the method performs such casting” [0042] and “the Mg-Al-Zn system intermetallic compound with a low melting point to be crystallized at the casting step” in [0043].
Regarding Difference 2, applicant argues EP ‘303 fails to disclose “heating the produced mixture to 720 °C or more.” Even though the heating temperature of 720 °C is not recited as a product by process limitation in Claim 1, the specification teaches in [0053] and in Fig. 2 the proportion of Ni content relative to Ni addition amount with respect to molten metal temperature. However, this proportion is not recited in Claim 1.
Allowable Subject Matter
Claims 11 and 12 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: EP ‘303 and Ye et al teach a melting temperature of 700 °C. Peng et al in Intermetallics teaches the influence of iron on the formation of Al-Mn-Fe intermetallic compounds (abstract). The Fe content in the intermetallic compounds increased significantly with increasing holding temperature from 640-850 °C (page 3). However, Peng et al does not suggest the influence of nickel on the formation of Al-Mn-Ni intermetallic compounds at greater than 700 °C. Neither EP ‘303 nor Ye et al teach or suggest a melting temperature of greater than 700 °C.
Conclusion
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733
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