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 .
Priority
Applicant’s priority claim to US Provisional 63/391,396 filed July 22, 2022 is acknowledged.
Claim Status
This Office Action is in response to Applicant’s Remarks and Claim Amendments filed January 12, 2026.
Claims Filing Date
January 12, 2026
Amended
1-3, 6-9, 17
New
21, 22
Cancelled
19, 20
Pending
1-18, 21, 22
Withdrawn Abstract Objection
The following objection is withdrawn due to abstract amendment:
Legal phraseology “comprising” and “comprises”.
Withdrawn Claim Objections
The following objections are withdrawn due to claim amendment:
Claims 1-5 and 7-9 inconsistent range language.
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejections are withdrawn due to claim amendment:
Claim 6 lines 1-2 “substantially free of Ca”.
Claim 17 lines 1-2 “substantially free of a Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof”.
Response to Remarks filed January 12, 2026
Applicant's arguments filed January 12, 2026 have been fully considered but they are not persuasive.
Chen
The applicant argues Chen does not mention the calcium content (Remarks p. 7 para. 3), such that Chen does not explicitly disclose whether the magnesium alloy has from 0 to less than 0.2 wt.% Ca, such that the claims are not anticipated (Remarks p. 7 para. 5).
The example composition in Chen [n0010] and [n0039] requires 100 parts of Mg, 0.8 parts Al, 0.5 parts Zn, 0.4 parts Mn, and 0.2 parts Ce. Calcium is not disclosed as present in the example. Therefore, Ca is absent, which is 0 wt%, which is within the scope of the claimed range of “from 0 to less than 0.2 wt.% Ca”.
Further, in the machine translation, [n0010] recites that magnesium alloy consists of the recited Mg, Al, Zn, Mn, and Ce composition. The transitional phase “consisting of” excludes any element not specified. MPEP 2111.03(II). This supports the position that Ca, which is not specified, is absent from the example composition of Chen.
For the above cited reasons, the rejection of Chen is maintained.
Yang
The applicant argues Yang does not specify or mention calcium content of the magnesium alloys or whether calcium is included or excluded from “impurities” (Remarks p. 9 para. 1), such that Yang does not anticipate claim 1 (Remarks p. 9 para. 3).
The magnesium alloy composition of Yang requires Mn: 0.2-0.4%, Zn: 0.2-0.4%, Ce: 0.2-0.4%, and a balance of Mg and inevitable impurities ([0030]). Ca is not disclosed as present. Therefore, it is absent, which is 0 wt.%, which is within the scope of the claimed range of “from 0 to less than 0.2 wt.% Ca”.
Yang [0030] recites the presence of “inevitable impurities” in the magnesium alloy composition. As evidenced by Cobb (Cobb, ed. Dictionary of Metals. ASM International. 2012. 118-124.), impurities (p. 119) are “Elements of compounds whose presence in a material is undesirable.”. In arguendo if Ca were an inevitable impurity in Yang, then, since it’s presence is undesirable, the amount of Ca would be minimized. Further, Chen (Chen et al. Effect of Steels on the Purity of Molten Mg Alloys. Adv. Eng. Mater. 2020, 22, 2000338.) discloses common impurity elements in Mg alloys are Fe, Ni, Cu, and Co (1. Introduction para. 2). This suggests Ca is not an impurity element of Mg alloys and that is not within the scope of the “inevitable impurities” of Yang.
For the above cited reasons, the rejection of Yang is maintained.
Double Patenting
The applicant argues US 12,404,569 recites from 0.2 to 0.45 wt% Ca, whereas claim 1 recites from 0 to less than 0.2 wt% Ca (Remarks p. 11 para. 3), where 0 to less than 0.2 wt.% Ca exhibits improved properties (Remarks p. 11 para. 4).
A content of “less than 0.2 wt.% Ca” is close to “from 0.2…wt.% Ca”, such that, absent evidence to the contrary, one of ordinary skill in the art would expect an alloy with less than 0.2 wt.% Ca to have the same properties as an alloy with 0.2 wt.% Ca. MPEP 2144.05(I).
Arguments presented by the applicant cannot take the place of evidence in the record. MPEP 716.02(c)(II). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II). Evidence to substantiate applicant’s allegation of the improved properties of less than 0.2 wt.% Ca has not been presented.
New Claims
The applicant argues the claimed magnesium alloy with from 0 to less than 0.2 wt.% Ca exhibits improved properties, such as substantially no incipient melting when extruded with a ram speed of from 1.00 to 10.00 ipm or from 4.00 to 10.00 ipm (Remarks p. 11 para. 7) as investigated in the experimental alloys (Remarks pp. 11-12).
The incipient melting recited in new claims 21 and 22 has been considered and determined to recite a property of the claimed magnesium alloy. The prior art disclose compositions (Chen [n0010], [n0039]; Yang [0030]) that fall within the scope of that claimed, such that the prior art anticipates or renders obvious the claimed incipient melting property. MPEP 2112(III).
For the above cited reasons new claims 21 and 22 are rejected over Chen and over Yang.
Claim Interpretation
Claim 10 line 2 “substantially dissolved” is interpreted in light of applicants specification at 8:15, which recites “By “substantially” is meant within 5%”. Therefore, when present, the Zn, Al, Ca, Ce, and Mn are dissolved with up to 5% of the added amount undissolved.
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 21 and 22 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 21 line 2 “substantially no incipient melting” renders the claim indefinite. Applicant specification at 8:15 recites “By “substantially” is meant within 5%”. In claim 21 what is the within 5% or? Is it 5% of “no”, which is 0%? Is it within 5% of 0%, such that incipient melting is in the range of 0% to 5%? For the purpose of examination claim 21 will be interpreted as the incipient melting being with 5% or no, such that the range is 0% to 5%.
Claim 22 line 2 “substantially no incipient melting” renders the claim indefinite. Applicant specification at 8:15 recites “By “substantially” is meant within 5%”. In claim 22 what is the within 5% or? Is it 5% of “no”, which is 0%? Is it within 5% of 0%, such that incipient melting is in the range of 0% to 5%? For the purpose of examination claim 22 will be interpreted as the incipient melting being with 5% or no, such that the range is 0% to 5%.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-9, 13, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 114058918 machine translation).
Regarding claims 1 and 7-9, Chen discloses a magnesium alloy that is within the scope of claim 1 ([n0010], [n0039]).
Element
Claim 1
Claim 7
Claim 8
Claim 9
Chen [n0010], [n0039]
Zn
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.5 parts (0.5%)
Al
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.8 parts (0.8%)
Ca
0 to less than 0.2
0 to less than 0.2
0 to 0.15
0 to 0.1
-
Ce
0.2 to 0.4
0.2
0.2
0.2
0.2 parts (0.2%)
Mn
0.1 to 0.8
0.4
0.4
0.4
0.4 parts (0.4%)
Mg
Balance
Balance
Balance
Balance
100 parts (98.1%)
Regarding claim 2, Chen discloses the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.5 parts, 0.5%) ([n0010], [n0039]).
Regarding claim 3, Chen discloses the magnesium alloy comprises from 0 to less than 1 wt.% Al (0.8 parts, 0.8%) ([n0010], [n0039]).
Regarding claim 4, Chen discloses the magnesium alloy comprises from 0 to 0.15 wt.% Ca (0 parts, 0%) ([n0010], [n0039]).
Regarding claim 5, Chen discloses the magnesium alloy comprises from 0 to 0.1 wt.% Ca (0 parts, 0%) ([n0010], [n0039]).
Regarding claim 6, Chen discloses the magnesium alloy is free of Ca (0 parts, 0%) ([n0010], [n0039]).
Regarding claim 13, Chen discloses the magnesium alloy has an ultimate tensile strength of 20 ksi (138 MPa) or more (168 MPa) ([n0020]).
Regarding claim 17, Chen discloses the magnesium alloy is substantially free of a Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof (the magnesium alloy of Chen does not include Ca, such that it is substantially free of the claimed phases that include Ca) ([n0010], [n0039]).
Regarding claim 18, Chen discloses an object comprising the magnesium alloy of claim 1 ([n0010]-[n0019]).
Claim 11 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chen (CN 114058918 machine translation) as evidenced by Wikitionary (Microalloying. Wikitionary. https://en.wiktionary.org/wiki/microalloying. Accessed 10/6/25.).
Regarding claim 11, according to MPEP 2111.01(I), words of a claim must be given their plain meaning, unless such meaning is inconsistent with the specification. The plain meaning of a term means the ordinary and customary meaning given to the term by those of ordinary skill in the art at the relevant time. Applicant’s specification does not define the term “microalloyed”. As evidenced by Wikitionary, the claim term “microalloying” refers to the addition of elements to an alloy in much smaller amounts than normal.
Chen discloses a magnesium alloy that falls within the scope of that claimed ([n0010]), such that it satisfies the claim limitation of being microalloyed.
In support of this position, applicant’s specification at 9:9-11 recites “the magnesium alloy is microalloyed. The magnesium alloy can, for example, comprise: from 0 to 1.5 wt. % Zn, from 0 to 1.5 wt. % Al, less than 0.2 wt. % Ca, from 0.2 to 0.4 wt. % Ce, from 0.1 to 0.8 wt. % Mn, and the balance comprising Mg.” The alloy of Chen [n0010], [n0039] is within the scope of this disclosed microalloyed composition.
Claims 1-6, 10-14, 17, and 18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yang (CN 107904461 machine translation).
Regarding claim 1, Yang discloses a magnesium alloy with a composition that falls within the scope of the claim ([0030]).
Element
Claim 1
Yang [0030]
Zn
0 to 1.5
0.2-0.4
Al
0 to 1.5
-
Ca
Less than 0.2
-
Ce
0.2 to 0.4
0.2-0.4
Mn
0.1 to 0.8
0.2-0.4
Mg
Balance
Balance
Regarding claim 2, Yang discloses the magnesium alloy comprises less than 1 wt.% Zn (0.2-0.4%) ([0030]).
Regarding claim 3, Yang discloses the magnesium alloy comprises less than 1 wt.% Al (0%) ([0030]).
Regarding claim 4, Yang discloses the magnesium alloy comprises from 0 to 0.15 wt.% Ca (0%) ([0030]).
Regarding claim 5, Yang discloses the magnesium alloy comprises from 0 to 0.1 wt.% Ca (0%) ([0030]).
Regarding claim 6, Yang discloses the magnesium alloy is substantially free of Ca (0%) ([0030]).
Regarding claim 10, Yang discloses the Zn, Al, Ca, Ce, and Mn, when present, are substantially dissolved in the magnesium alloy (single-phase solid solution obtained during heat treatment in which the alloy phase is formed by the complete dissolution of solute atoms in the solid metal solvent) ([0028]).
Regarding claim 11, Yang discloses the magnesium alloy is microalloyed ([0017], [0020]).
Regarding claim 12, Yang discloses the magnesium alloy has a yield strength of 20 ksi (138 MPa) or more (300 MPa to 305 MPa) ([0030]).
Regarding claim 13, Yang discloses the magnesium alloy has an ultimate tensile strength of 20 ksi (138 MPa) or more (332 MPa to 346 MPa) ([0030]).
Regarding claim 14, Yang discloses the magnesium alloy has an elongation to failure of 10% or more (18-22%) ([0030]).
Regarding claim 17, Yang discloses the magnesium alloy is substantially free of a Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof (the magnesium alloy of Yang does not include Ca, such that it is substantially free of the claimed phases that include Ca) ([0028], [0030]).
Regarding claim 18, Yang discloses an object (magnesium alloy rod) comprising the magnesium alloy of claim 1 ([0030]).
Claim Rejections - 35 USC § 102/103
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.
Claims 10, 12, 15, 16, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Chen (CN 114058918 machine translation).
Regarding claim 10, Chen discloses the Zn, Al, and Ca, when present, are substantially dissolved in the magnesium alloy (Al and Zn solid solution strengthen such that they read on being substantially dissolved, Ca is not present) ([n0007], [n0010]).
The Ce and Mn being substantially dissolved in the magnesium alloy has been considered and determined to recite a property of the claimed magnesium alloy composition. The prior art discloses a composition that is within the scope of that claimed (Chen [n0010], [n0039]), such that the Ce and Mn being “substantially dissolved” is anticipated or rendered obvious by the disclosure of Chen. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of the claim but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” MPEP 2112(III).
Regarding claim 12, the limitation of the magnesium alloy having a yield strength of 20 ksi (138 MPa) or more has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Chen [n0010], [n0039]), such that the claimed property of yield strength of 20 ksi (138 MPa) or more is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 15, the limitation of the magnesium alloy being formable at room temperature has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Chen [n0010], [n0039]), such that the claimed property of being formable at room temperature is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 16, the limitation of the magnesium alloy having a solidus temperature of from 500°C to 625°C has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Chen [n0010], [n0039]), such that the claimed property of a solidus temperature of from 500°C to 625°C is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 21, the magnesium alloy exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Chen [n0010], [n0039]), such that the claimed property of exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 22, the magnesium alloy exhibiting substantially no melting when extruded with a ram speed of from 4.00 to 10.00 ipm has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Chen [n0010], [n0039]), such that the claimed property of exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Claims 15, 16, 21, and 22 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Yang (CN 107904461 machine translation).
Regarding claim 15, the limitation of the magnesium alloy being formable at room temperature has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Yang [0030]), such that the claimed property of being formable at room temperature is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 16, the limitation of the magnesium alloy having a solidus temperature of from 500°C to 625°C has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Yang [0030]), such that the claimed property of a solidus temperature of from 500°C to 625°C is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 21, the magnesium alloy exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Yang [0030]), such that the claimed property of exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Regarding claim 22, the magnesium alloy exhibiting substantially no melting when extruded with a ram speed of from 4.00 to 10.00 ipm has been considered and determined to recite a property of the claimed magnesium alloy. The prior art discloses a magnesium alloy that is within the claimed composition (Yang [0030]), such that the claimed property of exhibiting substantially no melting when extruded with a ram speed of from 1.00 to 10.00 ipm is anticipated or rendered obvious. Where applicant claims a composition in terms of a function, property or characteristic and the composition of the prior art is the same as that of claimed but the function is not explicitly disclosed by the reference, the examiner may make a rejection under both 35 U.S.C. 102 and 103. “There is nothing inconsistent in concurrent rejections for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.”. MPEP 2112(III).
Claim Rejections - 35 USC § 103
Claims 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN 107904461 machine translation).
Regarding claims 7-9, Yang discloses a magnesium alloy with a composition that overlaps with that claimed ([0030]). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. MPEP 2144.05(I).
Element
Claim 7
Claim 8
Claim 9
Yang [0030]
Zn
0 to less than 1
0 to less than 1
0 to less than 1
0.2-0.4
Al
0 to less than 1
0 to less than 1
0 to less than 1
-
Ca
0 to less than 0.2
0 to 0.15
0 to 0.1
-
Ce
0.2
0.2
0.2
0.2-0.4
Mn
0.4
0.4
0.4
0.2-0.4
Mg
Balance
Balance
Balance
Balance
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 1-18, 21, and 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-17 of U.S. Patent No. 12,404,569 (US ‘569).
Although the claims at issue are not identical, they are not patentably distinct from each other because US ‘569 discloses an overlapping or close composition (claims 1-6) wherein the Zn, Al, Ca, Ce, and Mn are substantially dissolved (claim 7), the alloy is microalloyed (claim 8), the yield strength is 200 MPa or more and the elongation is 25% or more (claims 9, 14, 15). The alloy of US ‘569 is substantially free from Al2Ca and AlCaMg (claims 16, 17).
Related Art
Peng (CN 104152769 machine translation)
Peng discloses a deformable magnesium alloy ([0002], [0008]) with Zn: 0.8 to 3.0 wt%, Mn: 0.25-0.48 wt%, Ce: 0.05-1.0 wt%, and the rest if Mg ([0010]-[0012]), where Mn mainly exists in the form of manganese particles, ZN and Ce dissolve in the magnesium matrix and form some second phases, where the solid solution atoms have a larger effect on thermal conductivity ([0028], [0046]). Peng discloses the magnesium alloy has a tensile strength greater than 250 MPa, yield strength greater than 200 MPa, and elongation greater than 20% ([0029]).
Pan ‘689 (CN 104651689 machine translation)
Pan ‘689 discloses a magnesium alloy ([0002], [0009]) with 0.20-1.20 wt% Mn, 0.05-0.85 wt% Ce, and the rest Mg ([0011]-[0014], [0029], [0039]) with a tensile strength greater than 300 MPa at room temperature ([0031], [0048]). Pan ‘689 discloses the thermal conductivity of the alloy is a result of controlling the number of solid solution atoms in the magnesium alloy within a certain range, the precipitated phase to not be coherent with the matrix, and the compound size to be not large ([0040]), the Mn precipitates in the solid solution ([0041]) the solid solubility of Ce in Mg is only 0.52 wt% and Ce precipitates small and stable dispersed phase particles ([0042]), the Mn precipitates from the alloy matrix and the Ce forms intermetallic compounds ([0043]-[0044]).
Zhang (CN 102181759 machine translation)
Zhang discloses a magnesium alloy with 0.8% Zn, 0.8% Al, 0.4% mixed rare earth RE in which 60% is Ce, 0.4% Mn, and a remainder of Mg (mixed rare earth RE is 0.4%, which is 60% Ce, so that Ce content is 0.4*0.6=0.24%) ([0009], [0028]) with an ultimate tensile strength of 265 MPa and an elongation to failure of 20% ([0028]).
Pan ‘866 (CN 105886866 machine translation)
Pan ‘866 discloses a magnesium alloy with high formability ([0002]) with a composition that overlaps with that claimed ([0009]-[0010])
Element
Claim 1
Claim 7
Claim 8
Claim 9
Pan ‘866 [0009]-[0010]
Zn
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.5 to 2.0
Al
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
-
Ca
0 to less than 0.2
0 to less than 0.2
0 to 0.15
0 to 0.1
0.1 to 0.3
Ce
0.2 to 0.4
0.2
0.2
0.2
0.1 to 0.3
Mn
0.1 to 0.8
0.4
0.4
0.4
0.01 to 0.3
Mg
Balance
Balance
Balance
Balance
Remainder
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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to STEPHANI HILL whose telephone number is (571)272-2523. The examiner can normally be reached Monday, Wednesday-Friday 7am-12pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STEPHANI HILL/Examiner, Art Unit 1735