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 .
Claims Status
Claims 1-5 and 7-20 are pending wherein claims 1-5, 7-9, 11-17 and 20 are amended and claim 6 is canceled.
Previous Rejection Status
The previous rejection of claims 2-5, 7, 9, 11 and 13-20 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to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendments to the claims. The previous rejection to claims 1-5, 8-9 and 11-17 under 35 U.S.C. 102(a)(1) as being anticipated by Wang (CN 104532076 A) is withdrawn in view of the Applicant’s amendment to the claims. The previous rejection of claims 1-5, 7, 10-13 and 15-20 under 35 U.S.C. 103 as being unpatentable over Doty (US 2005/0199318) is withdrawn in view of the Applicant’s amendments to the claims.
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 1-5 and 7-11 are rejected under 35 U.S.C. 103 as being unpatentable over Scott et al. (US 4,976,243).
In regard to claim 1, Scott et al. (‘243) discloses aluminum base alloys that would be cast as pistons having compositions relative to that of the instant invention as set forth below (column 1 to top of column 2).
Element
Instant Claim
(weight percent)
Scott et al. (‘243)
(weight percent)
Overlap
Si
6 – 11.5
9 – 14
9 – 11.5
Fe
0.30 – 0.80
0 – 0.6
0.3 – 0.6
Mg + Mo + Zr
0.07 – 0.15
0 – 0.5 (Mg)
0.07 – 0.15
Sr
Optionally, 100-500 ppm
0 – 0.1 (0-1000 ppm)
100-500 ppm
Al
Balance
Balance
Balance
The Examiner notes that the amounts of silicon, iron, magnesium, molybdenum, zirconium and strontium disclosed by Scott et al. (‘243) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to have selected the claimed amounts of silicon, iron, magnesium, molybdenum, zirconium and strontium from the amounts disclosed by Scott et al. (‘243) because Scott et al. (‘243) discloses the same utility (aluminum alloy castings) throughout the disclosed ranges.
In regard to claim 2, Scott et al. (‘243) discloses 9 to 14 weight percent silicon, which overlaps the range of the instant invention (column 1 to top of column 2). MPEP 2144.05 I.
In regard to claim 3, Scott et al. (‘243) discloses 9 to 14 weight percent silicon, which overlaps the range of the instant invention (column 1 to top of column 2). MPEP 2144.05 I.
In regard to claim 4, Scott et al. (‘243) discloses 0 to 0.6 weight percent iron, which overlaps the range of the instant invention (column 1 to top of column 2). MPEP 2144.05 I.
In regard to claim 5, Scott et al. (‘243) discloses 0 to 0.6 weight percent iron, which overlaps the range of the instant invention (column 1 to top of column 2). MPEP 2144.05 I.
In regard to claim 7, Scott et al. (‘243) discloses 0 to 0.5 weight percent magnesium, which encompasses the range of the instant invention (column 1 to top of column 2).
In regard to claim 8, Scott et al. (‘243) discloses 0 to 0.5 weight percent magnesium, which encompasses the range of the instant invention (column 1 to top of column 2). Scott et al. (‘243) does not require the presence of magnesium, molybdenum or zirconium and therefore would read on the language of claim 8.
In regard to claim 9, Scott et al. (‘243) discloses 0 to 0.5 weight percent magnesium, which encompasses the range of the instant invention (column 1 to top of column 2). Scott et al. (‘243) does not require the presence of magnesium, molybdenum or zirconium and therefore would read on the language of claim 9.
In regard to claim 10, Scott et al. (‘243) discloses up to 0.1 weight percent strontium (column 1 to top of column 2).
In regard to claim 11, Scott et al. (‘243) discloses up to 0.1 weight percent strontium, which would encompass the range of the instant invention (column 1 to top of column 2).
Claims 1-5 and 7-20 are rejected under 35 U.S.C. 103 as being unpatentable over Donahue et al. (US 7,347,905).
In regard to claim 1, Donahue et al. (‘905) discloses lost foam aluminum base alloy castings having compositions relative to that of the instant invention as set forth below (abstract, column 6, lines 2-8 and column 11).
Element
Instant Claim
(weight percent)
Donahue et al. (‘905)
(weight percent)
Overlap
Si
6 – 11.5
6 – 12
6 – 11.5
Fe
0.30 – 0.80
0 – 0.4
0.3 – 0.4
Mg + Mo + Zr
0.07 – 0.15
0 – 0.6 (Mg)
0.07 – 0.15
Sr
Optionally, 100-500 ppm
0.005 – 0.07 (50-700 ppm)
100-500 ppm
Al
Balance
Balance
Balance
The Examiner notes that the amounts of silicon, iron, magnesium, molybdenum, zirconium and strontium disclosed by Donahue et al. (‘905) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to have selected the claimed amounts of silicon, iron, magnesium, molybdenum, zirconium and strontium from the amounts disclosed by Scott et al. (‘905) because Donahue et al. (‘905) discloses the same utility (aluminum alloy castings) throughout the disclosed ranges.
In regard to claim 2, Donahue et al. (‘905) discloses 6 to 12 weight percent silicon, which encompasses the range of the instant invention (abstract, column 6, lines 2-8 and column 11).
In regard to claim 3, Donahue et al. (‘905) discloses 6 to 12 weight percent silicon, which encompasses the range of the instant invention (abstract, column 6, lines 2-8 and column 11).
In regard to claim 4, Donahue et al. (‘905) discloses 0 to 0.4 weight percent iron, which overlaps the range of the instant invention (abstract, column 6, lines 2-8 and column 11). MPEP 2144.05 I.
In regard to claim 5, Donahue et al. (‘905) discloses 0 to 0.4 weight percent iron, which overlaps the range of the instant invention (abstract, column 6, lines 2-8 and column 11). MPEP 2144.05 I.
In regard to claim 7, Donahue et al. (‘905) discloses 0 to 0.6 weight percent magnesium, which encompasses the range of the instant invention (abstract, column 6, lines 2-8 and column 11).
In regard to claim 8, Donahue et al. (‘905) discloses 0 to 0.6 weight percent magnesium, which encompasses the range of the instant invention (abstract, column 6, lines 2-8 and column 11). Donahue et al. (‘905) does not require the presence of magnesium, molybdenum or zirconium and therefore would read on the language of claim 8.
In regard to claim 9, Donahue et al. (‘905) discloses 0 to 0.6 weight percent magnesium, which encompasses the range of the instant invention (abstract, column 6, lines 2-8 and column 11). Donahue et al. (‘905) does not require the presence of magnesium, molybdenum or zirconium and therefore would read on the language of claim 9.
In regard to claim 10-11, Donahue et al. (‘905) discloses 0.005 to 0.07 weight percent (50-700 ppm) strontium, which would overlap the range of the instant invention (abstract, column 6, lines 2-8 and column 11). MPEP 2144.05 I.
In regard to claim 12, Donahue et al. (‘905) teaches maximum 4.5 weight percent copper, maximum 0.40 weight percent manganese, maximum 0.6 weight percent magnesium, maximum 3.0 weight percent zinc (column 6, lines 2-7). Donahue et al. (‘905) also discloses wherein the alloy would be preferably free from titanium and does not indicate that chromium, nickel and/or vanadium would be required and therefore would read on claim 12 (column 6, lines 2-10).
In regard to claim 13, Donahue et al. (‘905) discloses 4.5 weight percent maximum copper, which would include less than 0.10 weight percent as claimed (column 6, lines 2-7).
In regard to claim 14, Donahue et al. (‘905) discloses a maximum of 0.49 weight percent manganese, which would include not greater than 0.04 weight percent as claimed (column 6, lines 2-7)
In regard to claim 15, Donahue et al. (‘905) discloses a maximum of 3 weight percent zinc, which would include less than 0.10 weight percent zinc as claimed (column 6, lines 2-7).
In regard to claims 16-17, Donahue et al. (‘905) indicates free of titanium and does not require the presence of chromium, nickel or vanadium and therefore would read on the claims (column 6, lines 2-10).
In regard to claim 18, Donahue et al. (‘905) discloses producing by die casting or lost foam casting (column 10) and discloses high pressure die casting marine propellers (column 4).
In regard to claim 19, Donahue et al. (‘905) discloses a substantially similar composition made by the same process. Therefore, the claimed tensile yield strength and elongations would be expected. MPEP 2112.01 I.
In regard to claim 20, Donahue et al. (‘905) discloses a substantially similar composition made by the same process. Therefore, the claimed thermal conductivity of at least 160 W/m/°C at a temperature of 25°C would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-5 and 7-20 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