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 .
Priority
Receipt is acknowledged of a certified copy of RU 2020 130578 filed September 16, 2020 as required by 37 CFR 1.55. A copy of WO 2022/060253, the WIPO publication of PCT/RU2021/050295 filed September 15, 2021, is attached.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed May 7, 2026.
Claims Filing Date
May 7, 2026
Amended
1
Cancelled
2-7
Under Examination
1, 8
Withdrawn Claim Rejections - 35 USC § 112
The following rejection is withdrawn due to claim cancellation:
Claim 7 line 2 "the aluminum-based casting alloy".
Response to Remarks filed May 7, 2026
112(b)
Applicant's arguments filed May 7, 2026 with respect to the 112(b) rejection have been fully considered but they are not persuasive.
The applicant argues that one of ordinary skill in the art would understand that “up to 0.05 wt.% other elements” is definite because alloys are made of elements and there are 118 elements in the periodic table (p. 3 para. 3).
Claim 1 line 1 recites “An aluminum casting alloy comprising”. The transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements. However, claim 1 line 13 “iv) up to 0.05 wt. % other elements”, suggests closed language that limits elements not listed to up to 0.05 wt. %. For example, copper is not recited in claim 1. It is unclear if copper is an additional element permitted in the prior art because the alloy is “comprising” or if copper is part of “other elements”. Therefore, it is unclear what the metes and bounds are of claim 1.
Gray (GB 2055895)
Applicant's arguments filed May 7, 2026 with respect to Gray have been fully considered but they are not persuasive.
The applicant argues unexpected results of the aluminum casting alloy of claim 1 (para. spanning pp. 3-4) as explained at 5:1-10 of applicant’s specification where zinc has a positive effect on strength due to the formation of Al4(Ca,Zn) eutectic particles by a zinc atom replacing a calcium atom and the unexpected increase in strength is not taught by Gray (p. 4 para. 2).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., strength) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Further, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II).
Applicant’s specification at 5:1-10 does not provide evidence to substantiate the allegation of unexpected results.
Applicant’s Table 1 includes two examples, Nos. 3 and 7, with Ca of 5.1 wt%, which is outside the claimed 1.5-5.0 wt%, yet appear to be inventive examples with mechanical properties as presented in Table 2, including strength, within the scope of the other examples. Similarly, Applicant’s Table 1 includes two examples, Nos. 3 and 10, with Zn of 1.8 wt%, which is outside the claimed 0.1-1.6 wt%, yet appear to be inventive examples with mechanical properties as presented in Table 2, including strength, within the scope of the other examples. This data suggests the upper end point of the claimed Ca and Zn ranges lack criticality because outside of the ranges properties within the scope of the invention are achieved.
The applicant argues Gray does not teach the aluminum casting alloy with the calcium and zinc being in the form of eutectic particles as recited in claim 1 because Gray 1:32-33 describes a semi-continuous or continuous cast alloy followed by hot and cold rolling, where the thermal impact during rolling would not form of Al4(Ca,Zn) eutectic particles because zinc would be re-distributed differently (p. 4 para. 3) with Table 1 of Gray showing that zinc has not had any significant effect on strength, indicating the presence of zinc in aluminum solution (p. 4 para. 4) with no effect on strength (p. 5 para. 1).
A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. MPEP 2123(I).
Gray discloses an aluminum alloy composition (1:15-17) that overlaps with that claimed. (MPEP 2144.05(I)). 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. (MPEP 2112.01(I)).
After casting and prior to hot and cold rolling, the alloy of Gray is a cast alloy that has not undergone the argued thermal impact during rolling, such that the zinc in the cast alloy would form eutectic particles. Further, Table 1 of Gray presents typical characteristics of cast and hot and cold rolled alloys (Gray 1:32-58), such that the presented properties are after hot and cold rolling and are not of the alloy after casting.
The applicant argues the Al-Zn-Ca phase diagram suggests zinc would be in solid solution rather than as Al4(Ca,Zn) eutectic particles (p. 4 para. 4).
Arguments presented by the applicant cannot take the place of evidence in the record. MPEP 716.01(c)(II). Objective evidence must be factually supported. MPEP 716.01(c)(I).
Evidence to substantiate applicant’s allegation that the Al-Zn-Ca phase diagram suggests zinc would be in solid solution rather than as Al4(Ca,Zn) eutectic particles has not been presented.
For the above cited reasons the rejection over Gray is maintained.
New Grounds
In light of claim amendment and upon further consideration a new grounds of rejection is made over Moore.
Claim Objection
Claim 8 is objected to because of the following informalities:
Line 1 “according to 1” should recite “according to claim 1”.
Appropriate correction is required.
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 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” and recites in line 13 “(iv) up to 0.05 wt% other elements” which appears to be closed language. It is unclear if additional elements are permitted due to the conflicting language. For the purpose of examination claim 1 will be construed as “comprising” such that additional, unrecited elements are not excluded. MPEP 2111.03(I).
Claim 8 is rejected as depending 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 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 aluminum alloy containing (1:15-17):
Element
Claimed Range
Gray (1:15-17)
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 (1:32-33) and thus, meets the BRI of a casting alloy as claimed.
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.
Regarding claim 8, Gray expressly teaches that the alloy is produced by semi-continuous or continuous casting (1:32-33) such that the alloy is ‘made in the form of a casting’ as claimed.
Claims 1 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Moore (US 4,126,448).
Regarding claim 1, Moore discloses an aluminum casting alloy (1:6-8, 46-57, 2:3-32, 4:6-47, 5:13-68) comprising an overlapping composition (1:58 to 2:2, 3:3 to 4:5) with a total of Fe, Ti, Zr, and Cr limited to 1.0% max (3:61-66), wherein the calcium and zinc are in the form of eutectic particles (eutectic Ca-Zn-Al particles) (2:7-16, 59-68, 4:6-14). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 1 wt%
Moore wt%
Moore Citation
Al
Present
Balance
4:5
Ca
1.5 to 5.0
2 to 8
3:13-26
Zn
0.1 to 1.6
1.5 to 10
3:27-43
Fe
0.08 to 0.5
0.5 max
3:61-67
Si
0.5 to 1.0
1.0 max
3:61-67
At least one further element of:
Mn
Up to 0.9
1.0 max
3:61-67
Ti
Up to 0.002
0.5 max
3:61-67
Zr
Up to 0.14
0.5 max
3:61-67
Cr
Up to 0.15
0.5 max
3:61-67
Other elements
Up to 0.05
0.25 max
3:61-67
Regarding claim 8, Moore discloses the aluminum casting alloy according to 1 as cited above, wherein the aluminum casting alloy is made in the form of a casting (2:3-32, 4:6-47, 5:13-68).
Related Art
Totsugi (JP 2012-040610 machine translation)
Totsugi discloses an aluminum alloy with a composition that falls within the scope of that claimed ([0037], Table 1 F1).
Element
Claim 1 wt%
Totsugi F1
Al
Present
Balance
Ca
1.5 to 5.0
1.5
Zn
0.1 to 1.6
1.5
Fe
0.08 to 0.5
0.3
Si
0.5 to 1.0
0.5
At least one further element of:
Mn
Up to 0.9
0.9
Ti
Up to 0.002
0.01
Zr
Up to 0.14
-
Cr
Up to 0.15
-
Other elements
Up to 0.05
Cu: 0.01
Mg: 0.01
V: 0.01
Be: 0.01
Sr: 0.01
Bi: 1.5
Na:0.01
Zhang (CN 102433470 machine translation)
Zhang discloses a cast aluminum alloy ([0002]) with a similar composition ([0012]).
Element
Claim 1 wt%
Zhang [0012]
Al
Present
Balance
Ca
1.5 to 5.0
0.88 to 2.19
Zn
0.1 to 1.6
0.25 max
Fe
0.08 to 0.5
0.5 max
Si
0.5 to 1.0
1.0 to 1.7
At least one further element of:
Mn
Up to 0.9
0.4 to 1.0
Ti
Up to 0.002
0.6 to 1.5
Zr
Up to 0.14
-
Cr
Up to 0.15
0.1 max
Other elements
Up to 0.05
0.05 max
Letyagin (RU 2741874 machine translation)
Letyagin, published January 29, 2021, discloses an aluminum casting alloy with a similar composition (Abstract, [0001], [0010]-[0012], [0020]-[0025]) and a Ca-containing eutectic with a tensile strength of at least 180 MPa ([0009], [0026]).
Element
Claim 1 wt%
Letyagin [0011]
Al
Present
Rest
Ca
1.5 to 5.0
2.0 to 4.0
Zn
0.1 to 1.6
0.1 to 1.0
Fe
0.08 to 0.5
0.2 to 0.8
Si
0.5 to 1.0
0.1 to 0.5
At least one further element of:
Mn
Up to 0.9
1.2 to 2.2
Ti
Up to 0.002
-
Zr
Up to 0.14
-
Cr
Up to 0.15
-
Other elements
Up to 0.05
-
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/STEPHANI HILL/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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