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 .
Incomplete Response
In the amendment filed 24 November 2025, it is noted that applicant does not mention the grounds of rejection of the claims under the doctrine of obviousness-type double patenting. For this reason the response is not complete. Because applicant’s reply is bona fide, the amendments are entered into prosecution and examined herein. MPEP 714.03.
Status of Claims
Responsive to the amendment filed 24 November 2025, claim 1 is amended and claims 2, 3, and 8-10 are cancelled. Claims 1, and 4-7 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 24 November 2025, new grounds of rejection are presented corresponding to the changes to the claims.
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 5-6 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 5 recites the limitation "the nanoparticle." There is insufficient antecedent basis for this limitation in the claim. Prior to this, claim 1 recites “at least one type of nanoparticle.” It is not clear from the language whether claim 5 limits one type of nanoparticle specifically, the at least one type of nanoparticle, or any and all nanoparticles that may be in the metal alloy, or if something else is limited. The point of infringement of claim 5 cannot be determined and the claim is indefinite.
Claim 6 similarly invokes a limitation of “the nanoparticle,” and is indefinite for the same reason.
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.
Claim(s) 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0161835 A1 (hereinafter “Martin”).
Regarding claim 1, Martin teaches aluminum alloys with nanoparticles (see Example 4 at [0334]-[0337]). Martin teaches an example of a 6061 alloy (see Example 4). Martin teaches that the alloy 6061 includes the Zr nanoparticles at 1 vol %. Martin teaches that this causes grain refinement in the alloy (see [0334]). Martin teaches aluminum alloys with nanoparticles (see Example 4 at [0334]-[0337]). Martin teaches that the alloy may be made by a process that includes a casting process (see [0124]-[0127] and [0140]-[0146]). Thereby the material is considered to be compatible with high pressure die casting.
Martin teaches that the alloy 6061 includes the Zr nanoparticles at 1 vol %. Martin does not teach an example wherein the nanoparticle includes any of the claimed species.
Martin teaches that the material may include a surface modification such as a ceramic nanoparticle (see [0177]-[0180]). Martin teaches that the nanoparticles may include a coating on a powder (see [0177]-[0188]). Martin teaches that the nanoparticles may be a ceramic such as a carbide (see [0182]).
It would have been obvious to one of ordinary skill in the art to have added a nanoparticle carbide material to the Example 4 because Martin teaches that these particles serve to control solidification (See [0179 and [0191]).
Regarding wherein the nanoparticle enhances the fluidity of the metal alloy to fill a die at a pressure of 30 to 100 MPa, Martin does not teach this feature. Martin teaches that the alloy may be made by a process that includes a casting process (see [0124]-[0127] and [0140]-[0146]), but does not specify a fluidity of a metal when cast.
The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). In this case what is claimed is a metal alloy, rather thana a high pressure die casting procedure. The metal having the claimed properties would have flowed naturally from following the teachings of Martin as stated above.
Regarding wherein the nanoparticle eliminates hot cracking when cooling at 100C/s to 200 C/s, Martin does not teach this feature. Martin teaches that the material is substantially crack-free ([0017]). This by itself is considered to meet the limitation as claimed. Further, the metal having the claimed properties would have flowed naturally from following the teachings of Martin as stated above.
Regarding claim 4, Martin teaches that the nanoparticles may include a coating on a powder (see [0177]-[0188]), meeting the limitation of a core-shell particle.
Regarding claims 5-6, Martin teaches aluminum alloys with nanoparticles (see Example 4 at [0334]-[0337]). Martin teaches that the alloy 6061 includes the Zr nanoparticles at 1 vol %.
Martin teaches aluminum alloys with nanoparticles (see Example 4 at [0334]-[0337]). Martin teaches that the alloy 6061 includes the Zr nanoparticles at 1 vol %. Martin does not teach an example wherein the material includes TiC.
Martin teaches that a suitable ceramic material for the nanoparticle is a TiC (see [0192]-[0193], [0211] and [0059]). It would have been an obvious matter to the skilled artisan at time of filing to have altered the Example 4 of Martin as by using a TiC nanoparticle, because Martin teaches that this is as suitable nanoparticle for nucleation control (See [0211]). The simple substitution of one known element for another to obtain predictable results would have been prima facie obvious to the skilled artisan.
Regarding claim 7, Martin teaches aluminum alloys with nanoparticles (see Example 4 at [0334]-[0337]). Martin teaches that the alloy 6061 includes the Zr nanoparticles at 1 vol %. Martin does not teach an example wherein the material includes TiC.
Martin teaches that a suitable ceramic material for the nanoparticle is a TiC (see [0192]-[0193], [0211] and [0059]). It would have been an obvious matter to the skilled artisan at time of filing to have altered the Example 4 of Martin as by using a TiC nanoparticle, because Martin teaches that this is as suitable nanoparticle for nucleation control (See [0211]). The simple substitution of one known element for another to obtain predictable results would have been prima facie obvious to the skilled artisan.
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 24 November 2025 have been fully considered but they are not persuasive.
Applicant argues that the Li and Martin references do not teach wherein the metal alloy includes the new limitations in claim 1. It is agreed that the claimed metal alloy is not taught by the prior art, but what is claimed would have been obvious to the skilled artisan based on the broad teachings of the prior art as stated above.
The rejections under obviousness double patenting still stand.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/Examiner, Art Unit 1759