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 .
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.
Claims 1-8, 16, 18-23, and 25-26 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. Instant claims 1 and 16 recite an alloy consisting of up to 2 wt% Sc, 0-6.00 wt% mg, and 0-0.30 wt% Zr, and aluminum. Similar language is found in claims 11-12 and 25-26. In the remarks filed 02 October 2025 indicates support for this is found in the Pre-grant publication at paragraphs 28, 31, 38, 42, and Table 2. These correspond to the same paragraph and table numbers in the originally filed specification.
However, a review of these portions of the disclosure as well as the totality of applicant’s original disclosure does not find support for any and all ranges of 0-2 wt% Sc, 0-6.00 wt.% Mg, or 0-0.30 wt% Zr. Applicant does not have support for any and all Sc, Mg, and Zr contents from zero to the upper recited limit. Support is found for about 0.05-2% Sc (Paragraph 28) and 4.00-6.00 wt% Mg, and 0.10-0.30 wt% Zr (Table 2). As such, the recited ranges are considered new matter. Instant claims 24 and 27 recite finite ranges supported within applicant’s original disclosure and therefore are not included in this rejection.
Allowable Subject Matter
Claims 24 and 27 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims is that of Chen (CN107794419 – machine translation previously of record). Chen teaches an aluminothermic scandium reduction process (Paragraphs 14 and 28), but differs in that the alloy requires both Mn and Zr (Paragraph 10) which are precluded by the recited transitional phrase “consists of” the claimed alloy. There is no teaching or suggestion as to where these required materials may be omitted and therefore the claimed process would not have been obvious to one of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, see remarks p.5, section IV, filed 02 October 2025, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 6-8 has been withdrawn.
Applicant’s arguments, see remarks sections V-VI, filed 02 October 2025, with respect to 35 USC 102(a)(1) and 35 USC 103 rejections have been fully considered and are persuasive. The rejections of claims 1-21 have been withdrawn. As outlined above, applicant’s amendment overcomes the teachings of primary reference Chen.
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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