DETAILED ACTION
Claims 1-16 and 18-20 are pending and currently under review.
Claim 17 is cancelled.
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 .
Response to Amendment
The amendment filed 8/19/2026 has been entered. Claims 1-16 and 18-20 remain(s) pending in the application.
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.
Claim(s) 1-16 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seshimo et al. (JP2010201497, machine translation referred to herein) and further in view of or evidenced by Yang et al. (KR20220131800, machine translation referred to herein).
Regarding claim 1, Seshimo et al. discloses an aluminum composition for heat sinks (ie. heat exchangers) as seen in table 1 below [0001, 0023, 0039]. The examiner notes that the overlap between the composition of Seshimo et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Seshimo et al. is further silent regarding any non-recited elements, which further meets the limitation of “consisting of…” as claimed.
Seshimo et al. does not expressly teach an inclusion of Zn as claimed. However, as evidenced by Yang et al., known impurities in Al-Si-Fe-Mg alloys further include Zn, Cu, Ni, and Sn, among others, in amounts of less than 0.1 weight percent [0023, 0053]. Alternatively, it would have been obvious to limit the aforementioned elemental inclusions in the amounts disclosed by Yang et al. as these are disclosed by Yang et al. to be impurity elements, which one of ordinary skill would readily understand to be undesirable. In either situation, the examiner notes that the overlap between the ranges of the aforementioned elements and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Seshimo et al. (wt.%)
Si
8 – 8.5
5 – 10
Fe
0.4 – 0.5
0.3 – 0.6
Mg
0.15 – 0.25
0.1 – 0.5
Zn
0.001 – 0.2
0 – 0.1 (Yang et al.)
Cu (optional)
0.001 – 0.2
0 – 0.1
Mn (optional)
0.001 – 0.2
0 – 0.05
Ti (optional)
0.001 – 0.2
0 – 0.05
Ca (optional)
0.001 – 0.2
0
Sn (optional)
0.001 – 0.2
0 – 0.1 (Yang et al.)
P (optional)
0.001 – 0.2
0
Cr (optional)
0.001 – 0.2
0 – 0.1
Zr (optional)
0.001 – 0.2
0
Ni (optional)
0.001 – 0.2
0 – 0.1 (Yang et al.)
Sr (optional)
0.001 – 0.1
0
V (optional)
0.001 – 0.1
0
Al
Balance
Balance
Regarding claims 2, 12-13, 16, and 18, the aforementioned prior art discloses the member of claims 1 and 17 (see previous). The examiner notes that the above composition of the prior art further teaches overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 3, the aforementioned prior art discloses the member of claim 1 (see previous). Seshimo et al. further teaches achieving a thermal conductivity of 150 to 200 W/mK, which overlaps with the claimed range [0011]. See MPEP 2144.05(I). Seshimo et al. does not expressly teach an electrical conductivity. However, the examiner notes that electrical conductivity is well-known to one of ordinary skill to be an intrinsic material property that is merely based on alloy composition and microstructure. Seshimo et al. discloses an overlapping alloy composition as explained above. Seshimo et al. also discloses manufacturing the alloy through die casting [0030], which is identical relative to the method of the instant application [p.6 instant spec.]. Since Seshimo et al. discloses an overlapping alloy composition and identical method of manufacture, one of ordinary skill would expect a substantially similar, overlapping range of electrical conductivity property to naturally flow from the disclosure of Seshimo et al. See MPEP 2112 & MPEP 2144.05(I).
Regarding claims 4-7 and 14-15, the aforementioned prior art discloses the member of claims 1-2 and 13 (see previous). Seshimo et al. does not expressly teach the inclusion of precipitates as claimed. However, the examiner submits that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art. See MPEP 2112. As stated above, Seshimo et al. discloses an overlapping composition and an identical manufacturing method of casting relative to the instant application [0030], such that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art absent concrete evidence to the contrary. See MPEP 2112. Seshimo et al. also achieves overlapping alloy properties of thermal conductivity as stated above, which one of ordinary skill would understand to be directly influenced by the alloy composition and precipitate structure and so further bolsters the examiner position because one of ordinary skill would expect an alloy having the same composition and microstructure to also have the same properties.
Regarding claims 8 and 10, the aforementioned prior art discloses the member of claim 1 (see previous). Seshimo et al. further depicts a structure having straight fins (30) and base plate (22, 23), wherein a connecting portion therein would naturally meet the limitation of a “connection portion” [0051, fig.2].
Regarding claims 9 and 11, the aforementioned prior art discloses the member of claims 1-2 (see previous). Seshimo et al. does not expressly teach the shape considerations of a curvature or hollow fins as claimed. However, the examiner notes that these features are merely recitations of a specific shape of the heat transfer member, which is prima facie obvious because selection of shape is a mere engineering design choice that would have been obvious to one of ordinary skill. Specifically, one of ordinary skill would understand that changing the curvature and fin hollowness merely changes the surface area and thus heat transfer degree, and would therefore be entirely capable of changing these features depending on a desired degree of heat transfer. See MPEP 2144.04(IV)(B).
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seshimo et al. (JP2010201497, machine translation referred to herein) and others as applied to claim 8 above, and further in view of Carter et al. (US 2003/0131970).
Regarding claim 9, the aforementioned prior art discloses the member of claim 8 (see previous). Seshimo et al. does not expressly teach a curvature as claimed. Carter et al. discloses a heat transfer member wherein it is desired to keep a curvature at the fin base to be more than 1.2 mm as a constraint when extruding aluminum [0050]. Therefore, it would have been obvious to one of ordinary skill to modify the member of Seshimo et al. by controlling a curvature of the fin base for the aforementioned benefit. The examiner notes that the overlap between the range of Carter et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Alternatively, the examiner submits that fin base curvature is expressly recognized and disclosed by Carter et al. to be a result-effective variable which directly affects manufacturing of the heat transfer member as stated above. Accordingly, it is not inventive to discover optimal or workable ranges of the fin base curvature when the general conditions of how fin base curvature affects manufacturing is already expressly recognized and disclosed by the prior art. See MPEP 2144.05(II).
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seshimo et al. (JP2010201497, machine translation referred to herein) and others as applied to claim 8 above, and further in view of Agostini et al. (US 2009/0266514).
Regarding claim 11, the aforementioned prior art discloses the member of claim 8 (see previous). Seshimo et al. does not expressly teach hollow fins as claimed. Agostini et al. discloses a heat transfer member wherein the fin structures can be hollow to allow for greater fluid connection and increased, desirable heat transfer [0030-0031]. Therefore, it would have been obvious to one of ordinary skill to modify the member of Seshimo et al.by forming hollow fins for the aforementioned benefit.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Seshimo et al. (JP2010201497, machine translation referred to herein) and others as applied to claim 1 above, and further in view of Hirofumi et al. (CN104630576, machine translation referred to herein) and Zhang et al. (CN108559881, machine translation referred to herein).
Regarding claims 19-20, the aforementioned prior art discloses the member of claim 1 (see previous). As stated above, Yang et al. further discloses controlling Sn and Ni amounts as impurities, which overlaps with the claimed ranges. See MPEP 2144.05(I). The aforementioned prior art does not expressly teach elemental inclusions of Ca, Zr, and Sr as claimed. Hirofumi et al. discloses that it is known to include 0.01 to 0.2 weight percent Ca in die cast Al-Si-Fe-Mg alloys for refinement and 0.005 to 0.1 weight percent Sr to improve conductivity [0035-0036]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by controlling Ca and Sr inclusions for the aforementioned benefits. Furthermore, Zhang et al. discloses that it is known to control Zr in die-cast Al-Si-Fe-Mg alloys to be 0 to 0.1 weight percent for achieving high conductivity properties [0007-0008]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by specifying a Zr range for the aforementioned benefit of Zhang et al. The examiner notes that the aforementioned inclusion ranges of the prior art overlap with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1-7, 13-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2021/0108290).
Regarding claim 1, Guo et al. discloses a heat-conductive aluminum alloy composition as seen in table 2 below [abstract]. The examiner notes that a heat-conductive alloy would naturally have heat transfer properties (ie. heat transfer member). The examiner notes that the overlap between the composition of Guo et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Guo et al. is further silent regarding the necessary requirement of any non-recited elements, which further meets the limitation of “consisting of…” as claimed.
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Guo et al. (wt.%)
Si
8 – 8.5
5 – 11
Fe
0.4 – 0.5
0.4 – 1
Mg
0.15 – 0.25
0.2 – 1
Zn
0.001 – 0.2
0 – 0.1
Cu (optional)
0.001 – 0.2
0 – 0.1
Mn (optional)
0.001 – 0.2
0 – 0.1
Ti (optional)
0.001 – 0.2
0
Ca (optional)
0.001 – 0.2
0
Sn (optional)
0.001 – 0.2
0
P (optional)
0.001 – 0.2
0
Cr (optional)
0.001 – 0.2
0
Zr (optional)
0.001 – 0.2
0
Ni (optional)
0.001 – 0.2
0
Sr (optional)
0.001 – 0.1
0 – 0.1
V (optional)
0.001 – 0.1
0
Al
Balance
Balance
Regarding claims 2, 13, 16, and 18, the aforementioned prior art discloses the member of claims 1 and 17 (see previous). The examiner notes that the above composition of the prior art further teaches overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 3, the aforementioned prior art discloses the member of claim 1 (see previous). Guo et al. further teaches achieving a thermal conductivity of not less than 150 W/mK, which overlaps with the claimed range [abstract]. See MPEP 2144.05(I). Guo et al. does not expressly teach an electrical conductivity. However, the examiner notes that electrical conductivity is well-known to one of ordinary skill to be an intrinsic material property that is merely based on alloy composition and microstructure. Guo et al. discloses an overlapping alloy composition as explained above. Guo et al. also discloses manufacturing the alloy through die casting [0017], which is identical relative to the method of the instant application [p.6 instant spec.]. Since Guo et al. discloses an overlapping alloy composition and identical method of manufacture, one of ordinary skill would expect a substantially similar, overlapping range of electrical conductivity property to naturally flow from the disclosure of Guo et al. See MPEP 2112 & MPEP 2144.05(I).
Regarding claims 4-7 and 14-15, the aforementioned prior art discloses the member of claims 1-2 and 13 (see previous). Guo et al. does not expressly teach the inclusion of precipitates as claimed. However, the examiner submits that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art. See MPEP 2112. As stated above, Guo et al. discloses an overlapping composition and an identical manufacturing method of casting relative to the instant application [0017], such that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art absent concrete evidence to the contrary. See MPEP 2112. Guo et al. also achieves overlapping alloy properties of thermal conductivity as stated above, which one of ordinary skill would understand to be directly influenced by the alloy composition and precipitate structure and so further bolsters the examiner position because one of ordinary skill would expect an alloy having the same composition and microstructure to also have the same properties.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2021/0108290) as applied to claims 1-2 above, and further in view of Seshimo et al. and alternatively further in view of Carter et al. (US 2003/0131970) and Agostini et al. (US 2009/0266514).
Regarding claims 8 and 10, Guo et al. discloses the member of claim 1 (see previous). Guo et al. does not expressly teach a structure as claimed. Seshimo et al. discloses an aluminum alloy having good thermal conductivity and specifically having a structure having straight fins (30) and base plate (22, 23) for a heat sink [0051, fig.2]. Therefore, it would have been obvious to one of ordinary skill to modify the member of Guo et al. by utilizing the structure of Seshimo et al. for use as a heat sink. The examiner notes that Seshimo et al. expressly depicts a connecting portion between the fins and plate, which would naturally meet the limitation of a “connection portion” [0051, fig.2].
Regarding claims 9 and 11, the aforementioned prior art discloses the member of claims 1-2 (see previous). The aforementioned prior art does not expressly teach the shape considerations of a curvature or hollow fins as claimed. However, the examiner notes that these features are merely recitations of a specific shape of the heat transfer member, which is prima facie obvious because selection of shape is a mere engineering design choice that would have been obvious to one of ordinary skill. Specifically, one of ordinary skill would understand that changing the curvature and fin hollowness merely changes the surface area and thus heat transfer degree, and would therefore be entirely capable of changing these features depending on a desired degree of heat transfer. See MPEP 2144.04(IV)(B).
Alternatively, Carter et al. discloses a heat transfer member wherein it is desired to keep a curvature at the fin base to be more than 1.2 mm as a constraint when extruding aluminum [0050]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by controlling a curvature of the fin base for the aforementioned benefit. The examiner notes that the overlap between the range of Carter et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, the examiner submits that fin base curvature is expressly recognized and disclosed by Carter et al. to be a result-effective variable which directly affects manufacturing of the heat transfer member as stated above. Accordingly, it is not inventive to discover optimal or workable ranges of the fin base curvature when the general conditions of how fin base curvature affects manufacturing is already expressly recognized and disclosed by the prior art. See MPEP 2144.05(II).
Furthermore, Agostini et al. discloses a heat transfer member wherein the fin structures can be hollow to allow for greater fluid connection and increased, desirable heat transfer [0030-0031]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by forming hollow fins for the aforementioned benefit.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2021/0108290) as applied to claim 1 above, and further in view of or evidenced by Yang et al. (KR20220131800, machine translation referred to herein).
Regarding claim 12, Guo et al. discloses the member of claim 1 (see previous). Guo et al. does not expressly specify an inclusion of Sn as claimed. However, as evidenced by Yang et al., known impurities in Al-Si-Fe-Mg alloys further include Sn and Ni, among others, in amounts of less than 0.1 weight percent [0023, 0053]. Alternatively, it would have been obvious to limit the aforementioned elemental inclusions in the amounts disclosed by Yang et al. as these are disclosed by Yang et al. to be impurity elements, which one of ordinary skill would readily understand to be undesirable. In either situation, the examiner notes that the overlap between the ranges of the aforementioned elements and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Guo et al. (US 2021/0108290) as applied to claim 1 above, and further in view of Hirofumi et al. (CN104630576, machine translation referred to herein), Yang et al. (KR20220131800, machine translation referred to herein), and Zhang et al. (CN108559881, machine translation referred to herein).
Regarding claims 19-20, Guo et al. discloses the member of claim 1 (see previous). As stated above, Yang et al. further discloses controlling Sn and Ni amounts as impurities, which overlaps with the claimed ranges. See MPEP 2144.05(I). The aforementioned prior art does not expressly teach elemental inclusions of Ca and Zr as claimed. Hirofumi et al. discloses that it is known to include 0.01 to 0.2 weight percent Ca in die cast Al-Si-Fe-Mg alloys for refinement [0035-0036]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by controlling Ca inclusions for the aforementioned benefits. Furthermore, Zhang et al. discloses that it is known to control Zr in die-cast Al-Si-Fe-Mg alloys to be 0 to 0.1 weight percent for achieving high conductivity properties [0007-0008]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by specifying a Zr range for the aforementioned benefit of Zhang et al. The examiner notes that the aforementioned inclusion ranges of the prior art overlap with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1-7, 13-16, and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN108559881, machine translation referred to herein).
Regarding claim 1, Zhang et al. discloses a high thermal conductivity aluminum alloy composition as seen in table 3 below [0007-0008]. The examiner notes that a high conductivity alloy would naturally have heat transfer properties (ie. heat transfer member). The examiner notes that the overlap between the composition of Zhang et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Zhang et al. is further silent regarding the necessary requirement of any non-recited elements, which further meets the limitation of “consisting of…” as claimed.
Table 3.
Element (wt.%)
Claim 1 (wt.%)
Zhang et al. (wt.%)
Si
8 – 8.5
6.5 – 13
Fe
0.4 – 0.5
0.4 – 1
Mg
0.15 – 0.25
0 – 0.3
Zn
0.001 – 0.2
0 – 0.1
Cu (optional)
0.001 – 0.2
0.01 – 2
Mn (optional)
0.001 – 0.2
0 – 0.1
Ti (optional)
0.001 – 0.2
0 – 0.1
Ca (optional)
0.001 – 0.2
0
Sn (optional)
0.001 – 0.2
0
P (optional)
0.001 – 0.2
0
Cr (optional)
0.001 – 0.2
0
Zr (optional)
0.001 – 0.2
0 – 0.1
Ni (optional)
0.001 – 0.2
0 – 0.1
Sr (optional)
0.001 – 0.1
0 – 0.8
V (optional)
0.001 – 0.1
0
Al
Balance
Balance
Regarding claims 2, 13, 16, and 18, the aforementioned prior art discloses the member of claims 1 and 17 (see previous). The examiner notes that the above composition of the prior art further teaches overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 3, the aforementioned prior art discloses the member of claim 1 (see previous). Zhang et al. does not expressly teach conductivity values as claimed. However, the examiner notes that thermal and electrical conductivity are well-known to one of ordinary skill to be intrinsic material properties that are merely based on alloy composition and microstructure. Zhang et al. discloses an overlapping alloy composition as explained above. Zhang et al. also discloses manufacturing the alloy through die casting [0007], which is identical relative to the method of the instant application [p.6 instant spec.]. Since Zhang et al. discloses an overlapping alloy composition and identical method of manufacture, one of ordinary skill would expect a substantially similar, overlapping range of electrical conductivity property to naturally flow from the disclosure of Zhang et al. See MPEP 2112 & MPEP 2144.05(I).
Regarding claims 4-7 and 14-15, the aforementioned prior art discloses the member of claims 1-2 and 13 (see previous). Zhang et al. does not expressly teach the inclusion of precipitates as claimed. However, the examiner submits that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art. See MPEP 2112. As stated above, Zhang et al. discloses an overlapping composition and an identical manufacturing method of casting relative to the instant application [0017], such that a substantially similar presence of precipitates relative to that as claimed would have naturally flowed from the prior art absent concrete evidence to the contrary. See MPEP 2112.
Claim(s) 8-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN108559881, machine translation referred to herein) as applied to claims 1-2 above, and further in view of Seshimo et al. and alternatively further in view of Carter et al. (US 2003/0131970) and Agostini et al. (US 2009/0266514).
Regarding claims 8 and 10, Zhang et al. discloses the member of claim 1 (see previous). Zhang et al. does not expressly teach a structure as claimed. Seshimo et al. discloses an aluminum alloy having good thermal conductivity and specifically having a structure having straight fins (30) and base plate (22, 23) for a heat sink [0051, fig.2]. Therefore, it would have been obvious to one of ordinary skill to modify the member of Zhang et al. by utilizing the structure of Seshimo et al. for use as a heat sink. The examiner notes that Seshimo et al. expressly depicts a connecting portion between the fins and plate, which would naturally meet the limitation of a “connection portion” [0051, fig.2].
Regarding claims 9 and 11, the aforementioned prior art discloses the member of claims 1-2 (see previous). The aforementioned prior art does not expressly teach the shape considerations of a curvature or hollow fins as claimed. However, the examiner notes that these features are merely recitations of a specific shape of the heat transfer member, which is prima facie obvious because selection of shape is a mere engineering design choice that would have been obvious to one of ordinary skill. Specifically, one of ordinary skill would understand that changing the curvature and fin hollowness merely changes the surface area and thus heat transfer degree, and would therefore be entirely capable of changing these features depending on a desired degree of heat transfer. See MPEP 2144.04(IV)(B).
Alternatively, Carter et al. discloses a heat transfer member wherein it is desired to keep a curvature at the fin base to be more than 1.2 mm as a constraint when extruding aluminum [0050]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by controlling a curvature of the fin base for the aforementioned benefit. The examiner notes that the overlap between the range of Carter et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). Alternatively, the examiner submits that fin base curvature is expressly recognized and disclosed by Carter et al. to be a result-effective variable which directly affects manufacturing of the heat transfer member as stated above. Accordingly, it is not inventive to discover optimal or workable ranges of the fin base curvature when the general conditions of how fin base curvature affects manufacturing is already expressly recognized and disclosed by the prior art. See MPEP 2144.05(II).
Furthermore, Agostini et al. discloses a heat transfer member wherein the fin structures can be hollow to allow for greater fluid connection and increased, desirable heat transfer [0030-0031]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by forming hollow fins for the aforementioned benefit.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN108559881, machine translation referred to herein) as applied to claim 1 above, and further in view of or evidenced by Yang et al. (KR20220131800, machine translation referred to herein).
Regarding claim 12, Zhang et al. discloses the member of claim 1 (see previous). Zhang et al. does not expressly specify an inclusion of Sn as claimed. However, as evidenced by Yang et al., known impurities in Al-Si-Fe-Mg alloys further include Sn, among others, in amounts of less than 0.1 weight percent [0023, 0053]. Alternatively, it would have been obvious to limit the aforementioned elemental inclusions in the amounts disclosed by Yang et al. as these are disclosed by Yang et al. to be impurity elements, which one of ordinary skill would readily understand to be undesirable. In either situation, the examiner notes that the overlap between the ranges of the aforementioned elements and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al. (CN108559881, machine translation referred to herein) as applied to claim 1 above, and further in view of Hirofumi et al. (CN104630576, machine translation referred to herein) and Yang et al. (KR20220131800, machine translation referred to herein).
Regarding claims 19-20, Zhang et al. discloses the member of claim 1 (see previous). As stated above, Zhang et al. teaches overlapping amounts of Zr, Ni, and Sr; and Yang et al. further discloses controlling Sn as impurities, which overlaps with the claimed ranges. See MPEP 2144.05(I). The aforementioned prior art does not expressly teach an elemental inclusion of Ca as claimed. Hirofumi et al. discloses that it is known to include 0.01 to 0.2 weight percent Ca in die cast Al-Si-Fe-Mg alloys for refinement [0035-0036]. Therefore, it would have been obvious to one of ordinary skill to modify the member of the aforementioned prior art by controlling Ca inclusions for the aforementioned benefits.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-16 and 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6 of U.S. Patent No. 11,685,974 in view of Takemura et al. (EP0757220), Carter et al. (US 2003/0131970), and Agostini et al. (US 2009/0266514). The only differences between the instant claims and the patented claims are: 1) the instant claims require a narrower compositional scope, which would still be obvious over the overlapping composition of the patented claims, and 2) the instant claims recite “a heat transfer member” and further dependent claims 8-11 recite heat transfer member shape/structure limitations. However, these features would have been obvious in view of the prior art as explained above.
Response to Arguments
Applicant's arguments filed 8/19/2026 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant repeatedly argues that one of ordinary skill would not have selected only the claimed ranges from the broader ranges of Seshimo et al., which pertains to only a particular percentage of all of the disclosed ranges of Seshimo et al. In response, the examiner notes that this point was never alleged in the previous office actions. No determination of “selecting” ranges from the prior art was ever relied upon, contrary to applicant’s remarks. The overlap between the claimed ranges and prior art ranges is obvious. See MPEP 2144.05(I).
Applicant then argues that the claimed compositional ranges achieve unexpected and critical results of good thermal conductivity as shown in fig.5-7 of the instant application. The examiner cannot concur. Firstly, Seshimo et al. already expressly teaches achieving overlapping thermal conductivity as explained above. Thus, the feature of thermal conductivity is not unexpected, but rather it is entirely expected because it is expressly disclosed in the prior art. Secondly, the examiner further cannot concur because the data relied upon by applicant is not commensurate in scope with the claimed ranges. See MPEP 716.02. Specifically, applicant’s data clearly shows that Si amounts above 8.5 percent for example close to 9 percent still achieve high thermal conductivity. In other words, the data of the record clearly shows that the claimed compositional ranges are not critical because desirable thermal conductivities can still be achieved outside of the claimed ranges.
Applicant’s arguments regarding Guo and Zhang are not persuasive insomuch as they are identical to those applied to Seshimo et al. above. The examiner cannot concur for the same reasons as explained above.
Applicant's arguments filed 8/19/2026 regarding the double patenting rejections have been fully considered but they are not persuasive.
Applicant argues that the narrower compositional ranges as amended overcome the previous double patenting rejections. The examiner cannot concur. The claimed ranges still overlap with the patented ranges which is prima facie obvious. See MPEP 2144.05(I).
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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