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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11 May 2026 has been entered.
Status of Claims
Responsive to the amendment filed 11 May 2026, claim 1 and 5-7 are amended. Claims 1, and 4-7 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 11 May 2026, new grounds of rejection are presented corresponding to the changes to the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sokoluk, Maximilian, Jie Yuan, Shuaihang Pan, and Xiaochun Li. "Nanoparticles Enabled Mechanism for Hot Cracking Elimination in Aluminum Alloys." Metallurgical & Materials Transactions. Part A 52, no. 7 (2021): 3083 (hereinafter “Sokoluk”).
Regarding claim 1, Sokoluk teaches a material that solves hot cracking problems in aluminum cast aluminum (See Abstract, or II. Materials and Methods). Sokoluk teaches that the aluminum alloy including the nanoparticle TiC is provided by MetaLi (p. 3084). Sokoluk teaches that a 7075NT-C alloy is formed, meaning a 7075 alloy with TiC nanoparticles (p. 3084). Sokoluk teaches that the metal with the TiC nanoparticles is cast (p. 3084).
Sokoluk teaches that the hot cracking problem is solved (V. Conclusions). Sokoluk does not teach a prevention of cracking at 100 – 300 C/s cooling rate. Regarding the limitations of wherein the nanoparticle enhances the fluidity of the metal alloy to fill a die at a pressure of 30 to 100 MPa, Sokoluk does not teach this feature. Sokoluk teaches that the alloy may be made by casting.
The properties not disclosed in the prior art would have been inherently present in the prior art. The same structure, the same composition, used for casting, and to solve problems of hot cracking (though at different cooling rates), would have had the same properties as claimed inherently. Applicant is directed to MPEP 2112.
Regarding claim 4, Sokoluk teaches that the TiC nanoparticles can coat 7075 aluminum metal powders (see pp. 3083-3084). The disclosure reads on a core of Al and a shell of the nanoparticles. Thus the TiC nanoparticles are in the structure of an aluminum core-TiC shell particle.
Regarding claims 5-6, Sokoluk teaches that metal with 0.8% TiC is provided by MetaLi (p. 3084). The amount falls within each of the claimed ranges, anticipating the entire range. Applicant is directed to MPEP 2131.03.
Regarding claim 7, Sokoluk teaches that a 6061 alloy is prepared (II. Materials and Methods, Table 1).
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 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of copending Application No. 18/364334 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s copending application does not disclose a “high pressure” die casting in claim 1. However, the material is considered to be essentially the same material of a metal matric with less than 4.0% silicon, and having a nanoparticle, and used for die casting. Corresponding features of the claims are met by the copending dependent claims, such as copending claim 2, copending claim 3, copending claim 4, and so on. The combination of the features of the different claims would require no more than an ordinary level of skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 4-7 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-24 of copending Application No. 18/489543 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s copending application does not disclose a “high pressure” die casting in claim 1. However, the material is considered to be essentially the same material of one of the selected aluminum alloys from copending claim 2 (inherently having less than 4% silicon), and having a nanoparticle, and used for casting. Corresponding features of the claims are met by the copending dependent claims, such as copending claim 2, copending claim 3, copending claim 4, and so on. The combination of the features of the different claims would require no more than an ordinary level of skill in the art.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 11 May 2026 have been fully considered but they are not persuasive.
Applicant argues that a terminal disclaimer has been filed. However no terminal disclaimer is in the file. The rejections under obviousness double patenting still stand.
Applicant argues that the prior art Martin does not make obvious the invention of claim 1. While not necessarily agreeing to applicant’s arguments, the arguments are moot in view of new grounds of rejection, which are accordingly NON-final.
Conclusion
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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