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 .
Claim Status
An amendment, filed 6/2/2026, is acknowledged. Claim 1 is amended; Claim 3 is canceled; claims 4-7 are newly added. No new matter is present. Claims 1 and 4-7 are currently pending.
Claim Interpretation
Claim 1 recites “An aluminum alloy casting material which comprises an aluminum alloy consisting of.” Thus, the claim has been amended to recite the open transitional phrase “comprises” for an aluminum alloy casting material then uses the closed transitional phrase “consisting of” for the aluminum alloy itself. The claim is interpreted such that the casting material is required to contain an aluminum alloy having the recited closed composition but may contain additional elements other than said aluminum alloy (e.g. a coating or separate additional particles of a differing composition).
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Beals (WO 2020/018477)(previously cited).
With respect to Claim 1, Beals teaches an aluminum alloy, with a composition in mass%, as follows (para. 8-9, 41, 43):
Claim 1
Beals
Si
7.0-9.0
0.1-7.5
Cu
2.0-4.0
0.05-5.0
Mg
0.8-1.2
0.1-5.0
Fe
0.3-0.5
0.12-1.0
Mn
0.3-0.5
≤ 1.8
Zn
2.8-4.0
0.05-6.1
Sr
0.008-0.04
≤ 0.06
Al
Balance with unavoidable impurities
Balance with 0.1 or less total other elements
Be
Optionally, 0.001-0.004
-
Ti
Optionally, 0.05-0.005
Optionally, ≤ 0.2
B
Optionally, 0.01-0.005
-
Compositional ranges including zero are interpreted as optional elements. Thus, Beals teaches an aluminum alloy with compositional ranges overlapping each of the instantly required ranges, overlapping one of the optional element ranges, and that does not require any elements outside the closed composition (see claim 1 preamble, reciting “An aluminum alloy consisting of”). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Beals teaches that the aluminum alloy exhibits increased strength and Young’s modulus, useful as structural components for automotive vehicles. (para. 32). The reference teaches exemplary embodiments demonstrating the range of properties achievable with the claimed alloy, including examples such as A356 – T6 having a yield strength (i.e. 0.2% proof stress, which one of ordinary skill in the art would recognize is conventionally presented as a 0.2% yield strength) of 36 ksi (approx. 248 MPa) and 8% elongation. (Fig. 9, also including additional embodiments with higher and lower proof stress and elongation values). Thus, Beals is deemed to teach an aluminum alloy with proof stress and elongation values overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP 2144.05. Additionally, Beals is deemed to teach that the 0.2% proof stress and elongation at break are result effective variables that may controlled through the composition and/or processing of the alloy. It would have been obvious to one of ordinary skill in the art to select a 0.2% proof stress and elongation at break from the ranges of values demonstrated as achieved from the alloy of Beals, in order to obtain a desired balance of strength and elongation for a particular application. For example, the alloy may be selected to have higher strength with lower elongation/ductility or higher elongation/ductility with lower strength depending on the needs of the part.
Finally, Beals teaches that the aluminum alloy is useful for casting and teaches cast components from said alloy (see, e.g., para. 8-9), and therefore, teaches “An aluminum alloy casting material.”
With respect to Claim 4, the limitation recites “wherein the aluminum alloy casting material is not subjected to heat treatment.” First, it is noted that this limitation does not necessarily limit the underlying aluminum alloy as claim 1, from which it depends, claims the structures differently. Second, the limitation defines the claimed product by the method in which it was made and therefore, constitutes a product-by-process limitation. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, there is no clear structural difference being claimed, as the broadly claimed “heat treatment,” could have significantly varying results. That is, for a given structure or property, heat treatment could result in either an increase or decrease or no change at all depending on the actual parameters of the treatment. Therefore, as only the resulting structure is provided patentable weight, as long as the prior art teaches an alloy casting material with the claimed composition and properties, it is deemed to meet the instant claim. Beals teaches the aluminum alloy casting material of claim 1, from which the claim depends, and therefore, meets the instant limitation.
Alternatively, the intermediate product of Beals, prior to heat treatment and comprising an aluminum alloy having substantially the same composition, would necessarily be expected to possess the same properties as instantly claimed, in particular, as the claimed product seeks to minimize or eliminate any possible variation between the alloy itself and a processed product thereof by excluding heat treatment processes. See MPEP 2112.01.
Claim(s) 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 108300910A)(machine translation provided).
With respect to Claim 5, Zhang teaches an aluminum alloy for casting, with a composition in mass%, as follows (pgs. 1-2 of translation):
Claim 5
Zhang
Si
7.7-9.0
7-12
Cu
2.0-4.0
0-3
Mg
0.8-1.2
0.15-0.8
Fe
0.3-0.5
0-0.8
Mn
0.3-0.5
0.2-1
Zn
2.8-4.0
0-21
Sr
0.008-0.04
0-0.5
Al
Balance with unavoidable impurities
Balance with 0-0.05 impurities
Be
Optionally, 0.001-0.004
-
Ti
Optionally, 0.05-0.005
0-0.3
B
Optionally, 0.01-0.005
-
Other
-
Ni: 0-0.1
Y: 0-0.02
La: 0-0.2
RE: 0-0.1
Mo: 0-0.1
Nd: 0-0.008
Sb: 0-0.1
Zr: 0-0.01
Ce: 0-0.01
Pb: 0-0.05
Compositional ranges including zero are interpreted as optional elements. Thus, Zhang teaches an aluminum alloy with compositional ranges overlapping each of the instantly required ranges, overlapping one of the optional element ranges, and that does not require any elements outside the closed composition (see claim 5 preamble, reciting “An aluminum alloy consisting of”). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 6, Zhang teaches a silicon (Si) content of 7-12% by mass (see rejection of claim 5 above), overlapping the instantly claimed range. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Allowable Subject Matter
Claim 7 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach an aluminum alloy consisting of the composition as required by claim 5, further exhibiting a 0.2% proof stress of 230 or more and an elongation at break of 2.5% or more. Prior art Zhang teaches an aluminum alloy meeting the composition of claim 5 but fails to teach the required properties of claim 7.
Response to Arguments
Applicant's arguments filed 6/2/2026 have been fully considered but they are not persuasive.
Applicant argues that prior art Beals teaches certain examples that do not meet all of the claimed compositional ranges and property limitations simultaneously and argues that a comparative example falls within the broader ranges of Beals yet fails to meet the instantly claimed elongation. (Remarks, pgs. 4-5). These arguments have been fully considered but are not found persuasive.
Beals teaches exemplary embodiments demonstrating the range of properties achievable with the claimed alloy, including examples such as A356 – T6 having a yield strength (i.e. 0.2% proof stress, which one of ordinary skill in the art would recognize is conventionally presented as a 0.2% yield strength) of 36 ksi (approx. 248 MPa) and 8% elongation. (Fig. 9, also including additional embodiments with higher and lower proof stress and elongation values). Thus, Beals is deemed to teach an aluminum alloy with proof stress and elongation values overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. MPEP 2144.05. Additionally, Beals is deemed to teach that the 0.2% proof stress and elongation at break are result effective variables that may controlled through the composition and/or processing of the alloy. It would have been obvious to one of ordinary skill in the art to select a 0.2% proof stress and elongation at break from the ranges of values demonstrated as achieved from the alloy of Beals, in order to obtain a desired balance of strength and elongation for a particular application. For example, the alloy may be selected to have higher strength with lower elongation/ductility or higher elongation/ductility with lower strength depending on the needs of the part.
The rejection over Beals is not based on inherency but two separate obviousness arguments. Applicant fails to provide sufficient evidence, commensurate with the scope of the claims, to rebut the prima facie case of obviousness established by Beals and fails to address the additional obviousness rationale set forth in the rejection.
Applicant also argues that the aluminum alloy of Beals is subjected to heat treatment and therefore, fails to meet new claim 4. These arguments have been fully considered but are not found persuasive.
Claim 4 recites “wherein the aluminum alloy casting material is not subjected to heat treatment.” First, it is noted that this limitation does not necessarily limit the underlying aluminum alloy as claim 1, from which it depends, claims the structures differently. Second, the limitation defines the claimed product by the method in which it was made and therefore, constitutes a product-by-process limitation. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, there is no clear structural difference being claimed, as the broadly claimed “heat treatment,” could have significantly varying results. That is, for a given structure or property, heat treatment could result in either an increase or decrease or no change at all depending on the actual parameters of the treatment. Therefore, as only the resulting structure is provided patentable weight, as long as the prior art teaches an alloy casting material with the claimed composition and properties, it is deemed to meet the instant claim. Beals teaches the aluminum alloy casting material of claim 1, from which the claim depends, and therefore, meets the instant limitation.
Alternatively, the intermediate product of Beals, prior to heat treatment and comprising an aluminum alloy having substantially the same composition, would necessarily be expected to possess the same properties as instantly claimed, in particular, as the claimed product seeks to minimize or eliminate any possible variation between the alloy itself and a processed product thereof by excluding heat treatment processes. See MPEP 2112.01.
With respect to new claims 5-7, prior art Beals teaches away from the required composition. However, after further search and consideration, a new ground of rejection over Zhang is made, as detailed above.
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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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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