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 .
Election/Restrictions
Applicant's election with traverse of group I, claims 1-4 in the reply filed on 5 December 2025 is acknowledged. The traversal is on the ground(s) that the prior art Garat does not describe an alloy having an amount of Sn, as required by claim 1. This is not found persuasive because the aluminum alloy of claim 1 is still found to be lacking inventive step, as detailed below. Because the claim lacks inventive step, the shared technical feature is not considered to be a special technical feature, and unity of invention is lacking.
The requirement is still deemed proper and is therefore made FINAL.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 5 December 2025. These drawings are accepted. Applicant’s amended Fig. 7 includes data presented in at least in Table 4 of the specification, and corrects an obvious inadvertent error in the Figure.
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 1-4 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.
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, claims 1 and 2 recites the broad recitations, and the claims also recite “preferably…” and “more preferably…” which is the narrower statement of the range/limitation. The claims 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.
Claims 3 and 4 are rejected as dependent on claim 1.
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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 20110126947 A1 (hereinafter “Garat”), in view of Junsheng Wang, Physical Metallurgy of Aluminum Alloys, Aluminum Science and Technology, Vol 2A, ASM Handbook, Edited By Kevin Anderson, John Weritz, J. Gilbert Kaufman, ASM International, 2018, p 44–79, https://doi.org/10.31399/asm.hb.v02a.a0006503 (hereinafter “Wang”).
Regarding claim 1, Garat teaches a casting made from an aluminum alloy (see title, abstract). Garat teaches the alloy composition in [0029] or claim 1. Garat teaches that the alloy has a high mechanical strength (see [0029]). The composition of the alloy of Garat is compared with the claimed alloy in the chart below (values in mass percent).
Element
Claim 1
Garat
Mg
Si
Cu
Mn
Fe
Ti
Zn
Sn
Sr
Zr
Hf
Cr
Mo
V
W
Nb
Al
Unavoidable impurities
<0.25
6-8
2-4
<0.2
<0.2
0.05-0.1
<1
0.03-0.09
<0.03
<0.2
<0.5
<0.3
<0.3
<0.3
<0.3
<0.3
Balance
Up to 0.05
0.1-0.45
3-11
2-5
0.05-0.50
<0.5
0.01-0.25
<0.3
--
30-500 ppm
0.05-0.25
--
--
--
0.05-0.3
--
--
Balance
<0.15 in total
The composition of the aluminum alloy of Garat overlaps the claimed compositional ranges (with the exception of Sn), establishing a prima facie case of obviousness for the ranges. It would have been obvious to one of ordinary skill in the art at time of filing to have selected a composition in the ranges as claimed because Garat teaches the same utility over an overlapping range. Applicant is further directed to MPEP 2144.05.
Garat teaches that the alloys are subjected to ageing treatment (see [0054], [0090]-[0095]). Regarding the amount of tin, Garat does not disclose the presence of tin.
However tin is known as an additive in aluminum.
Wang teaches the physical metallurgy of aluminum as related to composition, work, and heat treatment (see p 44). Wang teaches that heat treatable alloys include Al-Si-Cu alloys (see pp. 49-50). Wang describes the effects of specific alloying elements on the properties of aluminum at pp 67-77. Wang teaches that tin is added to aluminum-copper alloys in amounts of 0.05% in order to enhance the response of the alloys to aging treatments (see pp 75-76).
It would have been an obvious matter to the skilled artisan at time of filing to have altered the alloy composition of Garat as by adding 0.05% of tin in order to enhance the aging response of the aluminum, as taught by Wang (see pp 75-76).
Regarding claim 2, Garat teaches that the alloy includes 30-500 ppm of Sr (see [0029]), said range overlapping the range as claimed and establishing a prima facie case of obviousness for that range.
Regarding claim 3, Garat teaches that the alloy includes 0.05-0.25% of Zr (see [0029]), said range overlapping the range as claimed and establishing a prima facie case of obviousness for that range.
Regarding claim 4, Garat teaches a casting made from an aluminum alloy (see title, abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 20070256763 A1 teaches to add elements such as tin to a B319 alloy to enhance machining. Dasch, J. M., et al. "The effect of free-machining elements on dry machining of B319 aluminum alloy." Journal of Materials Processing Technology 209.10 (2009): 4638-4644 teaches to add Sn to an AlSiCu alloy. Mohamed, A. M. A., et al. "Influence of tin addition on the microstructure and mechanical properties of Al-Si-Cu-Mg and Al-Si-Mg casting alloys." Metallurgical and Materials Transactions A 39.3 (2008): 490-501 teaches to add Sn to an AlSiCu alloy.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759