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 .
Response to Arguments
The claim objections and 35 U.S.C. 112 rejections are withdrawn in view of Applicant’s amendments.
Applicant's arguments filed 12/17/2025, with respect to the 35 U.S.C. 103 rejection over Takahiro (JP 2013-204127) in view of Ishizuka et al. (JP 2021-188118) and Taniguchi (JP H11-279675) have been fully considered and are persuasive in view of Applicant’s arguments. The rejection has been withdrawn.
However, Applicant's arguments with respect to 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) have been fully considered but are not persuasive. Applicant makes the following arguments traversing the rejection:
A) Ishizuka is “completely different” from the method disclosed in Applicant’s specification and thus, one of ordinary skill in the art would not expect the prior art alloy to exhibit the claimed features. Applicant admits that Ishizuka discloses or suggests the claimed features with respect to the microstructure (see Remarks, p. 8). The fact that Ishizuka teaches a different manufacturing method from the method disclosed in the specification to arrive at the claimed product is not relevant. The patentability of a product does not depend on its method of production, unless that process imparts distinctive structural features to the product. See MPEP 2113. However, Applicant’s claims do not recite a method for making the claimed product, nor has Applicant identified any distinctive structural features arising from a different production method. This argument is not persuasive.
B) Taniguchi teaches away from a method corresponding to that in Applicant’s specification for making the claimed invention. It is immaterial whether or not Taniguchi teaches away from a method corresponding to that in Applicant’s specification for making the claimed invention. The standard is whether the prior art teaches away from the claimed invention. See MPEP 2144.05.III.B. The claims at issue are product claims, not method claims, and nothing in the claimed invention requires die-casting.
Even if the claimed product did require die-casting, the disclosure of Taniguchi would not teach away from the claimed invention. A reference does not teach away if it merely expresses a general preference for an alternative invention but does not criticize, discredit or otherwise discourage investigation into the invention claimed. See MPEP 2145. X.D.1. Taniguchi’s comments regarding die-casting merely state the processing efficiency drawbacks of die casting a Mg-Al-Zn alloy (see Taniguchi, ¶ 2), and presents a Mg-Li alloy which overcomes these drawbacks. Applicant has not identified any reason why one of ordinary skill in the art would expect Taniguchi’s comments regarding die-casting a Mg-Al-Zn alloy to apply to the Mg-Li alloy of Ishizuka or the Mg-Li alloy of the claimed invention. This argument is not persuasive.
C) The thickness of the surface layer is critical and achieves unexpected results. This argument is not persuasive. The data in the specification is insufficient to demonstrate unexpected results with respect to the claimed range. The data in the specification merely compares the existence of a surface layer to the absence of a surface layer (see Table 1). This does not demonstrate that the claimed thickness of at least 10 μm is critical or achieves unexpected results that, for example, a thickness of 9 μm would not achieve. See MPEP 716.02. The rejection is maintained.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5, and 9-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ishizuka et al. (JP 2021-188118) in view of Sakamoto et al. (WO 2021/241250) and Taniguchi (JP H11-279675).
Regarding claims 1, 3 and 12, Ishizuka teaches a Mg-Li alloy (p. 1, ¶ 5). The alloy contains both an α-phase and a β-phase (p. 2, ¶ 4), and Ishizuka discloses examples of alloys containing 9% Li (p. 6, ¶ 7). Ishizuka teaches a Mg-Li alloy having a β-phase degree of orientation of the (110) plane of 20% or more, preferably 60% or more (p. 2, ¶ 7). A corrosion resistant fluoride film is formed on the alloy surface (p. 1, ¶ 10).
Ishizuka does not expressly teach the Mg-Li alloy has a surface layer with a Li concentration that is less than a Li concentration of the inside of the alloy. Sakamoto teaches a Mg-Li alloy with a fluoride coating (p. 2, ¶ 3). The Mg-Li alloy has a surface with a reduced Li amount (p. 2, ¶ 9 – p. 3, ¶ 1). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to lower Li amount at the surface of the Mg-Li alloy of Ishizuka, as taught by Sakamoto, because doing so allows for a thicker corrosion resistant fluoride film to be formed (p. 3, ¶ 1).
Ishizuka in view of Sakamoto does not expressly teach the claimed average grain size of the Mg-Li alloy. Taniguchi teaches a Mg-Li alloy having an average grain size of 3-40 μm (¶ 11). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to modify the average grain size of the Mg-Li alloy of Ishizuka in view of Sakamoto according to the teachings of Taniguchi because an average grain size of 3-40 μm results in an alloy having good press working and strength characteristics (¶ 34). The ranges of the prior art combination overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Modified Ishizuka does not expressly teach the thickness of the surface layer having a reduced Li concentration. However, the present specification states the thickness of the surface layer forms when the average grain size is less than or equal to 50 μm (Spec., ¶ 26), and by setting the pH (7.0-7.5), temperature (-20°C -60°C), and voltage (≥100 C/cm2) parameters of the anodization process (Spec., ¶¶ 49-50). Taniguchi teaches a Mg-Li alloy having an average grain size of 3-40 μm (¶ 11), and Sakamoto teaches an anodization process where the pH is 7.0-7.5 (p. 4, ¶ 6), the temperature is -20°C -60°C (p. 4, ¶ 7), and the voltage is at least 100 C/cm2 (p. 4, ¶ 8). Since the prior art process is the same as the process for making the claimed invention, one of ordinary skill in the art would expect the prior art combination to result in the claimed surface layer thickness, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 4, one of ordinary skill in the art would expect the crystal shape of α phase is a needle shape, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 5, the average grain size of the α-phase would be expected to fall within the claimed range when the overall average grain size is 3-40 μm, as taught by Taniguchi.
Regarding claims 9-11, Ishizuka teaches forming a magnesium fluoride corrosion resistant film on the surface of the Mg-Li alloy (p. 1, ¶ 10). Sakamoto also teaches forming an anodized coating of magnesium and lithium fluoride on the surface of a Mg-Li alloy (p. 1, ¶ 7; p. 4, ¶¶ 4-5). The fluoride coating has MgF2 as a main component comprising 90% by volume of the coating film or more (p. 2, ¶ 3). Sakamoto teaches the thickness of the fluoride film is at least 20 μm (p. 2, ¶ 4).
Regarding claims 13-14, Ishizuka also teaches including 0.2%-3% Zn, 0.1%-0.3% Mn, 0.1%-0.2% Si, and 0.05%-2% Ca to increase the strength of the Mg-Li alloy (p. 3, ¶ 5). These amounts overlap or lie within the claimed amounts, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 15, Modified Ishizuka does not expressly teach the claimed surface roughness characteristics of the anticorrosive film. However, the present specification states the surface roughness values are controlled by setting the coulomb amount in the anodization process (see Spec., ¶ 59). The present specification uses a voltage of ≥100 C/cm2 in the anodization process (Spec., ¶ 50). Sakamoto teaches the anodization process where the voltage is at least 100 C/cm2 (p. 4, ¶ 8). Since the prior art process is the same as the process for making the claimed invention, one of ordinary skill in the art would expect the prior art combination to result in the claimed surface roughness values, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 16, Sakamoto teaches fluoride coating is an anodization process (p. 4, ¶ 4). Anodizing is expected to result in a porous coating, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 17, Ishizuka teaches the Mg-Li alloy is used to make a housing for an electronic device such as a camera (p. 4, ¶ 5).
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 XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784