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 1-5, 7 and 13-20 are pending wherein claims 1, 7 and 13-20 are amended and claims 6 and 8-12 are canceled.
Status of Previous Rejections
The previous rejection of claims 18-20 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendment to claims 18-20. The previous rejection of claims 1-5 and 7 under 35 U.S.C. 103 as being unpatentable over Scott et al. (US 4,975,243) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1-5, 7 and 13-20 under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2017/0107599) is withdrawn in view of the Applicant’s amendment to claim 1.
Claim Rejections - 35 USC § 112
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.
Claims 13-16 are 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 13, Claim 1 utilizes the language “wherein the aluminum casting alloy is substantially free of copper, manganese, zinc, titanium, chromium, nickel, and vanadium” in claim 1 and as that pertains to copper in accordance to [0010] of the instant specification it is indicated that “substantially free of copper” means the aluminum alloys contain less than 0.10 weight percent copper. As that limitation is now present in claim 1 and claim 13 does not specify anything other than “including less than 0.10 wt. % Cu”, claim 13 fails to further limit claim 1.
In regard to claim 14, Claim 1 utilizes the language “wherein the aluminum casting alloy is substantially free of copper, manganese, zinc, titanium, chromium, nickel, and vanadium” in claim 1 and as that pertains to manganese in accordance to [0011] of the instant specification it is indicated that “substantially free of manganese” means the aluminum alloys contain less than 0.05 weight percent manganese. As that limitation is now present in claim 1 and claim 14 does not specify anything other than “including not greater than 0.04 wt. % Mn”, claim 14 fails to further limit claim 1.
In regard to claim 15, Claim 1 utilizes the language “wherein the aluminum casting alloy is substantially free of copper, manganese, zinc, titanium, chromium, nickel, and vanadium” in claim 1 and as that pertains to zinc in accordance to [0012] of the instant specification it is indicated that “substantially free of zinc” means the aluminum alloys contain less than 0.10 weight percent zinc. As that limitation is now present in claim 1 and claim 15 does not specify anything other than “including less than 0.10 wt. % Zn”, claim 15 fails to further limit claim 1.
In regard to claim 16, Claim 1 utilizes the language “wherein the aluminum casting alloy is substantially free of copper, manganese, zinc, titanium, chromium, nickel, and vanadium” in claim 1 and as that pertains to titanium, chromium, nickel and vanadium in accordance to [0013] of the instant specification it is indicated that “substantially free of” means the aluminum alloys contain not greater than 0.04 weight percent of each of titanium, chromium, nickel and vanadium. As that limitation is now present in claim 1 and claim 16 does not specify anything other than “including not greater than 0.04 wt. % of each of Ti, Cr, Ni, and V”, claim 16 fails to further limit claim 1.
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.
Allowable Subject Matter
Claims 1-5, 7 and 17-20 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
In regard to claim 1, the closest prior art to Koch (‘321) discloses aluminum alloys having compositions relative to that of the instant invention as set forth below (abstract and [0012-0026].
Element
Instant Claim
(weight percent)
Koch (‘321)
(weight percent)
Overlap
Si
6 – 11.5
8 – 11.5
8 – 11.5
Fe
0.45 – 0.80
0 – 0.4
-
Mo
0.07 – 0.15
0.05 – 0.15
0.07 – 0.15
Sr
100 – 500 ppm
30 – 300
100 – 300
Al
Balance
Balance
Balance
The amounts of silicon, molybdenum and strontium disclosed in Kock (‘321) clearly overlap the range of the instant invention and one having ordinary skill in the art could take the position that 0.4 weight percent iron as disclosed by Koch (‘321) would close enough to 0.45 weight percent iron to establish prima facie obviousness. MPEP 2144.05 I. However, Kock (‘321) discloses 0.3 to 0.8 weight percent manganese and Applicant uses the language “wherein the aluminum casting alloy is substantially free of copper, manganese, zinc, titanium, chromium, nickel, and vanadium”. At [0011] of the instant specification, Applicant defines “substantially free of manganese” to mean less than 0.05 weight percent manganese. Therefore, claim 1 would be distinct from Kock (‘321).
Response to Arguments
Applicant’s arguments with respect to claim(s) 13-16 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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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