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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/13/2026 has been entered.
Response to Arguments
Applicant’s arguments filed 4/13/2026 have been fully considered and are persuasive in view of Applicant’s amendments and arguments. The 35 U.S.C. 103 rejection over Ishizuka et al. (JP 2021-188118) in view of Sakamoto et al. (WO 2021/241250) and Taniguchi (JP H11-279675) has been withdrawn.
However, upon further search and consideration, new grounds of rejection are entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3-5 and 10-17 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites: “a base material that includes a Mg-Li alloy having an α-phase and a β-phase…a surface layer of the base material…the surface layer includes the Mg-Li alloy…a degree of orientation in a (110) plane of the β-phase of the Mg-Li alloy is more than or equal to 70 percent…”.
The specification does not provide support for a base material that includes a Mg-Li alloy. The specification only provides support for a base material that is a Mg-Li alloy (see Spec., ¶¶ 4&46). The specification also does not provide support for a surface layer having the claimed degree of orientation or the claimed average grain size. The specification only provides support for a base material that is a Mg-Li alloy having the claimed degree of orientation and the claimed average grain size (see Spec., ¶¶ 4, 24, 26, 38, 52). Accordingly, claims 1, 3-5 and 10-17 are considered to contain new matter.
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, 3-5 and 10-17 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 recites: “a base material that includes a Mg-Li alloy having an α-phase and a β-phase…a surface layer of the base material…the surface layer includes the Mg-Li alloy…a Li concentration of the surface layer is lower than a Li concentration of an inside of the base material”. Claim 1 is indefinite. The claim requires the base material and the surface layer of the base material to include the same Mg-Li alloy, yet the claim simultaneously requires the surface layer to have a Li concentration that is less than the inside of the base material; thus, these are not the same alloy. For purposes of examination, it is presumed the composition of the surface layer is not the same as that of the base material. Dependent claims not addressed are indefinite by virtue of dependence from claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Dean (US 2,692,213) discloses a layer of substantially pure magnesium on the surface of a magnesium-lithium alloy, the layer having a thickness of 0.0002 inch (about 5 microns). Munroe (US 3,345,276) discloses a surface layer of a magnesium-lithium alloy whose lithium content is depleted prior to fluoride anodization, but does not teach or suggest a thickness of the surface layer.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784