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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/09/2026 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 01/09/2026, has been entered. Claims 1, 6, 7, and 8 are amended, claims 2-5 are or were previously cancelled, and no claims are newly added. Accordingly, claims 1 and 6-8 are pending and considered in this Office Action.
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 and 6-8 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.
Claim 1 utilizes the open-ended transitional phrase “comprising” but introduces new claim element “(iv) up to 0.05 wt% other elements” which appears to be closed language. The metes and bounds of the claim are indefinite because it is unclear if additional elements are permitted due to the conflicting language. Notably, it is unclear if ‘other elements’ is provided to embrace ‘impurities’ or if ‘other elements up to 0.05% in addition to inevitable impurities’ is intended. In the interest of the clarity of the record and construing the claims under the broadest reasonable interpretation, Examiner has construed the claim such that the claim embraces elements present up to 0.05% in addition to inevitable impurities.
Claim 7 recites the limitation "the aluminum-based casting alloy" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claims 6 and 8 are rejected due to their dependency from claim 1.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1 and 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Gray (GB 2 055 895; Of Record).
Regarding claim 1, Gray teaches an aluminium alloy containing (Page 1 lines 15-17):
Element
Claimed Range
Gray Page 1 lines 15-17
Shared
Ca
1.5-5.0
0.2-7.0
1.5-5.0
Zn
0.1-1.6
0 to 6.0
0.1-1.6
Fe
0.08-0.5
0 to 1.0
0.08-0.5
Si
0.5-1.0
0 to 1.0
0.5-1.0
Mn
up to 0.9
0 to 1.5
0-0.9
Ti
Up to 0.002
-
-
Zr
Up to 0.14
-
-
Cr
Up to 0.15
-
-
Other
Up to 0.05
0 to 2.0 Mg
0-0.05 Mg
Al
Present
Remainder with impurities
Present; Remainder with impurities
In the interest of the record, it is noted that a slight gray has been applied to the table above containing text boxes with Mn, Ti, Zr, and Cr to denote that only one of these elements is required due to the claim language (“at least one further element selected from the group consisting of”).
With regard to the presence of Mg, Gray’s alloy discloses 0-2.0% Mg which is construed as an “other element” and also not as an inevitable impurity. Please see 112b above.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, Gray further teaches that the alloy is produced by semi-continuous or continuous casting (Page 1 lines 32-33) and thus, meets the BRI of a casting alloy as claimed.
Regarding claims 6-8, Gray teaches the alloy as applied to claim 1 above but is silent to the calcium and zinc being in the form of eutectic particles.
However, it has been held that ‘where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, there is sufficient prima facie basis to presume that the die-cast aluminum alloy of Gray having a composition that meets the claimed composition and being produced by casting would possess Ca and Zn in the form of eutectic particles absent evidence to the contrary.
Further, it has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
Notably, the USPTO does not possess the capabilities to manufacture and test compositions of the prior art to make physical comparisons therewith.
Lastly, and with particular attention to the features of claim 7 (which depends from claim 6) and the features of claim 8 (which depends from claim 1), Gray expressly teaches that the alloy is produced by semi-continuous or continuous casting (Page 1 lines 32-33) such that the alloy is ‘made in the form of a casting’ as claimed.
Response to Arguments
Applicant’s arguments, filed 01/09/2026, 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.
Additionally, the response filed 01/09/2026 did not provide new evidence that would demonstrate that the claimed ranges are critical or produce unexpected results such that a new 103 rejection would be precluded. Specifically, the new reference to Gray has an overlapping Si content with the claimed range.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738