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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 15, 2025 has been entered.
Status of the Claims
Claims 1-5 and 7-20 are pending wherein claims 1-5, 7, 9 and 12-17 are amended and claim 6 is canceled.
Status of Previous Rejections
The previous rejection of claims 1-5 and 7-20 under 35 U.S.C.103 as being unpatentable over Donahue et al. (US 7,347,905) is withdrawn in view of the Applicant’s amendment to claim 1.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(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 18-20 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.
The term “high” in the phrase “high-pressure die cast” in claims 18-20 is a relative term which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 4,975,243).
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
0.45 – 0.80
0 – 0.6
0.45 – 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 Wang et al. (US 2017/0107599).
In regard to claims 1, 10 and 18, Wang et al. (‘599) discloses aluminum base alloys suitable for high pressure die casting and capable of age-hardening having compositions relative to that of the instant invention as set forth below (abstract, [0025] and [0037]).
Element
Instant Claim
(weight percent)
Wang et al. (‘599)
(weight percent)
Overlap
Si
6 – 11.5
7 – 15
7 – 11.5
Fe
0.45 – 0.80
0 – 1
0.45 – 0.80
Mg + Mo + Zr
0.07 – 0.15
0 – 1.1
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 Wang et al. (‘599) 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 Wang et al. (‘599) because Wang et al. (‘599) discloses the same utility (aluminum alloy castings) throughout the disclosed ranges.
In regard to claims 2-3, Wang et al. (‘599) discloses 7 to 15 weight percent silicon, which overlaps the ranges of the instant invention (abstract and [0037]).
In regard to claim 4, Wang et al. (‘599) discloses 0 to 1 weight percent iron, which overlaps the range of the instant invention (abstract and [0037]).
In regard to claim 5, Wang et al. (‘599) discloses 0 to 1 weight percent iron, which overlaps the range of the instant invention (abstract and [0037]).
In regard to claims 7-9, Wang et al. (‘599) discloses 0 to 0.6 weight percent magnesium and 0 to 0.5 weight percent zirconium and no molybdenum, which encompasses the range of the instant invention (abstract and [0037]).
In regard to claim 11, Wang et al. (‘599) discloses 0 to 0.1 weight percent (0 – 1000 ppm) strontium (abstract and [0037]).
In regard to claim 12, Wang et al. (‘599) discloses about 0 to 0.5 weight percent copper (abstract and [0037]. Wang et al. (‘599) discloses about 0 to 1 weight percent manganese (abstract and [0037]).
Wang et al. (‘599) discloses about 0 to 1 weight percent zinc (abstract and [0037]). Wang et al. (‘599) discloses about 0 to 0.5 weight percent titanium (abstract and [0037]). Wang et al. (‘599) does not disclose adding chromium to the aluminum base alloys (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 1 weight percent nickel (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 0.5 weight percent vanadium (abstract and [0037]). Therefore, the scope of Wang et al. (‘599) includes aluminum base alloys substantially free of copper, manganese, zinc, titanium, chromium, nickel and vanadium.
In regard to claim 13, Wang et al. (‘599) discloses about 0 to 0.5 weight percent copper (abstract and [0037].
In regard to claim 14, Wang et al. (‘599) discloses about 0 to 1 weight percent manganese (abstract and [0037]).
In regard to claim 15, Wang et al. (‘599) discloses about 0 to 1 weight percent zinc (abstract and [0037]).
In regard to claim 16, Wang et al. (‘599) discloses about 0 to 0.5 weight percent titanium (abstract and [0037]). Wang et al. (‘599) does not disclose adding chromium to the aluminum base alloys (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 1 weight percent nickel (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 0.5 weight percent vanadium (abstract and [0037]).
In regard to claim 17, Wang et al. (‘599) discloses about 0 to 0.5 weight percent titanium (abstract and [0037]). Wang et al. (‘599) does not disclose adding chromium to the aluminum base alloys (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 1 weight percent nickel (abstract and [0037]). Wang et al. (‘599) discloses adding about 0 to 0.5 weight percent vanadium (abstract and [0037]). Therefore, the cumulative amounts of these elements need not be more than 0 or 0.10 weight percent.
In regard to claim 19, Wang et al. (‘599) discloses substantially similar compositions that would be suitable for high pressure die casting. Therefore, a tensile yield strength of at least 65 MPa and an elongation of at least 2% would be expected. MPEP 2112.01 I.
In regard to claim 20, Wang et al. (‘599) discloses substantially similar compositions that would be suitable for high pressure die casting. Therefore, a 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 filed December 15, 2025 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that Scott et al. (‘243) fails to teach amended claim 1 because Scott et al. (‘243) requires nickel to be present in an amount of “3.0 to 7.0 wt.%” and based on the teachings of Scott et al. (‘243), the presence of nickel materially affects the basic and novel characteristics of the aluminum alloy and for this reason amended claim 1 is patentable over Scott et al. (‘243).
In response, the Examiner notes that only in some embodiments and not all embodiments is the alloy of the instant invention absent or substantially absent of nickel [0013]. Additionally, Applicant has not demonstrated or described how nickel would be detrimental to the claimed alloy such that it would affect the basic and novel characteristics of the instant invention. MPEP 2111.03. Therefore, the rejection pertaining to Scott et al. (‘243) has been maintained.
Second, Applicant’s additional arguments have been considered, but are moot in view of the new grounds of rejection.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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