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 .
Status of Claims
Claims 1-22 have been canceled in view of applicant’s preliminary amendment filed 6/26/2023. New claims 23-37 are added. Therefore, claims 23-37 are currently under examination.
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994)
The disclosure of the prior-filed application, Application No. 14/627236, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, the nonprovisional application 14/627236 does not provide support for claimed thermal conductivity.
Therefore, the effective filing date for the instant application is 5/23/2016, which is the effective filing date of the provisional application 62/340,074.
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 23-29 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 11,674,208. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-16 of U.S. Patent No. 11,674,208 teaches a Mg based composite with significantly similar amounts of nanoparticles and experiences similar amount of increase in thermal conductive with the presence of nanoparticles. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Claims 30-37 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,685,983. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-13 of U.S. Patent No. 11,674,208 teaches a method of producing a Mg based composite with significantly similar amounts of nanoparticles and experiences similar amount of increase in thermal conductive with the presence of nanoparticles. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. Additionally, the method as taught by the claims 1-13 of U.S. Patent No. 11,674,208 comprises the same processing steps such as heating the based Mg until molten, mixing the nanoparticles and cooling the mixture to form the Mg based composite.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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) 23-37 is/are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Sherman et al. US 2015/0240337 A1(Sherman), as evidenced by “Effects of Heat Treatment on the Thermal Properties of AZ91D Magnesium Alloys in Different Casting Processes”, Guangyu Yuan et al, Journal of Alloys and Compounds, vol. 766, pg 410-416 (2018)(Yuan), .
Sherman teaches a method for forming a Mg based composite comprising Mg or Mg alloy [0005] and insoluble submicron size particles(abstract), wherein the insoluble particles includes carbon, graphite, iron[0016, 0061-0064]. Example 3 of Sherman further teaches melting an AZ91D Mg alloy(i.e. Mg alloy having 9 wt% Al & 1% Zn), adding about 2wt% nano Fe particles and about 2wt% nano graphite particles into the melt while using ultrasonic mixing, cooling the mixture to form a Mg based composite[0016, 0063], wherein the nanoparticles are located at the grain boundary[0046]. Sherman further teaches that the nanoparticles are typically no more than 1 nm[0057].
Regarding claims 23-25, 28-30 and 32-37, the amounts of Mg in AZ91D alloy and insoluble particles in Example 3 of Sherman read on the claimed more than base metal with at least 70wt% Mg and nanoparticles constituting at least 0.1vol% of the Mg-based composite, respectively. The thermal conductivity of AZ91D is 51.2W/m-K, as evidenced by Yuan(page 410, under Introduction). Sherman further teaches that the nanoparticles did not fully melt during the mixing and casting process[0063], which implies that the nanoparticles have higher melting point than the base metal as claimed. Since the nanoparticles in the process of Sherman are to be deposited at the grain boundary[0046, 0049], the examiner concludes that the nanoparticles of Sherman are located within 200nm of grain boundary as claimed. Additionally, since Sherman teaches a Mg based composition with the same amounts of Mg and nanoparticles, that is made from a process that has the same process steps as claimed, the Mg based composition of Sherman would have had the same thermal conductivity as claimed and would have experienced the same increase in thermal conductivity with the additional nanoparticles as claimed comparing to the thermal conductivity of the base metal.
Alternatively, Although Sherman does not explicitly teach the claimed thermal conductivities, one of ordinary skill in the art would have found the claimed thermal conductivity and the claimed increase in thermal conductivity in the Mg-based composition of Sherman with expected success since the Mg based composite as taught by Sherman was produced by the same processing step using the same Mg alloy and nanoparticles as claimed.
Regarding claims 26-27 and 31, Sherman further teaches that the nanoparticles may include copper or carbon nanotubes[0014-0015], the graphite particles used in Example 3 of Sherman also reads on the claimed nanoparticles..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733