DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 11, 2026 has been entered.
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 June 11, 2026.
Claims Filing Date
June 11, 2026
Amended
1, 4, 5, 7-9, 21, 22
New
23
Cancelled
6, 19, 20
Pending
1-5, 7-18, 21-23
The applicant argues support for the claim 1 amendment at 10:10-11 (p. 5 para. 1).
Withdrawn Claim Rejections - 35 USC § 112
The following 112(b) rejections are withdrawn due to claim amendment:
Claim 21 line 2 “substantially no incipient melting”.
Claim 22 line 2 “substantially no incipient melting”.
Response to Remarks filed June 11, 2026
Chen (CN 114058918 machine translation)
Applicant’s arguments, see p. 5 paras. 11-12, filed June 11, 2026, with respect to Chen have been fully considered and are persuasive. The rejection of Chen has been withdrawn.
The applicant persuasively argues the magnesium alloy comprising greater than 0 to less than 0.2 wt% Ca is not disclosed by Chen (p. 5 paras. 11-12).
Chen is silent to calcium ([n0007]-[n0011]).
Yang (CN 107904461 machine translation)
Applicant’s arguments, see p. 6 paras. 6-7, filed June 11, 2026, with respect to Yang have been fully considered and are persuasive. The rejection of Yang has been withdrawn.
The applicant argues the magnesium alloy comprising greater than 0 or less than 0.2 at% Ca is not disclosed by Yang (p. 6 paras. 6-7).
Yan is silent to calcium ([0007]-[0009], [0020]-[0022]).
Double Patenting
Applicant's arguments filed June 11, 2026 with respect to the double patenting rejection have been fully considered but they are not persuasive.
The applicant argues claim 1 recites from greater than 0 to less than 0.2 wt% Ca, while claim 1 of US 12,404,569 recites 0.2 to 0.45 wt% Ca (p. 7 para. 7) with greater than 0 to less than 0.2 wt% Ca exhibiting surprisingly 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 (p. 7 para. 8) as evidenced by Table 2 (p. 8 to p. 9 para. 1).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” MPEP 716.02(d). To establish unexpected results over a claimed range, applicants should compare sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d)(II).
Applicant’s Table 2 presents compositions, with 3 examples within the scope of the claimed Ca, 0.002, 0.003, and 0.181 wt% and 7 examples outside of the scope of the claimed Ca, ranging from 0.402 to 0.541 wt%. These compositions are insufficient to establish criticality of the claimed endpoint of “less than 0.2 wt.% Ca”. There is no data around the endpoint of less than 0.2 wt.% Ca to establish a magnesium alloy with less than 0.2 wt% Ca is patentably distinct from a magnesium alloy with 0.2 wt% Ca.
Furthermore, Table 2 does not present data regarding incipient melting when extruded at a ram speed of from 1.00 to 10.00 ipm or from 4.00 to 10.00 ipm. While Table 3 presents example extrusion conditions, all the sample appear to be at a ram speed of 1.00 ipm, such that data spanning the entirety of the range has not been presented.
Therefore, for the above cited reasons, the double patenting rejection is maintained.
New Grounds
In light of claim amendment and upon further consideration new grounds of rejection are made over Li and over Pan ‘727.
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 § 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 1-3, 10-18, 21, and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Li (Li et al. Effect of micro-alloyed Ce on the microstructure evolution and mechanical properties of rolled Mg-0.6Al-0.5Mn-0.2Ca alloy sheets. Journal of Materials Research and Technology. 2022; 19: 3088-3099.).
Regarding claim 1, Li discloses a magnesium alloy (AMX100-0.3Ce) (Li 2 Experimental procedure para. 1, Table 1), where the Zn, Al, Ce, Mn, and Mg fall within the claim scope.
The Ca content of 0.22 wt% Ca has been considered and the proportion is so close to the claimed “greater than 0 to less than 0.2 wt% Ca” that one of ordinary skill in the art would have expected the Mg alloy of Li to have the same properties as the claimed magnesium alloy. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Element
Claim 1
Claim 7
Claim 8
Claim 9
Li Table 1 -0.3Ce
Zn
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
-
Al
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.60
Ca
Greater than 0 to less than 0.2
Greater than 0 to less than 0.2
0 to 0.15
0 to 0.1
0.22
Ce
0.2 to 0.4
0.2
0.2
0.2
0.32
Mn
0.1 to 0.8
0.4
0.4
0.4
0.46
Mg
Balance
Balance
Balance
Balance
Bal.
Regarding claim 2, Li discloses the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.60 wt% Zn) (AMX100-0.3Ce) (Li 2 Experimental procedure para. 1, Table 1).
Regarding claim 3, Li discloses the magnesium alloy comprises from 0 to less than 1 wt.% Al (0 wt.% Al) (AMX100-0.3Ce) (Li 2 Experimental procedure para. 1, Table 1).
Regarding claim 10, Li discloses the microstructure is affected by the Ce content and heat treatment (1. Introduction paras. 4-5, 3.2. Microstructural evolution of the AMX series alloys para. 3, 4.1. Influence of Ce content and different annealing processes on the microstructure and texture, 5. Conclusions), including CALPHAD simulations that indicate the phases present at different temperatures (3.1. Thermodynamic simulations, Fig. 1), such that it would have been obvious to one of ordinary skill in the art at the time of filing of the instant invention how to vary the Ce content and/or heat treatment conditions such that the Zn, Al, Ca, Ce, and Mn, when present, are substantially dissolved in the magnesium alloy. For example, according to the disclosure of Li, one of ordinary skill in the art would understand the heat treatment temperatures required to substantially dissolve the Al, Ca, Ce, and Mn of AMX100-0.3Ce (Table 1, Fig. 1).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” MPEP 2144.05(II)(A).
Regarding claim 12, Li discloses the magnesium alloy has a yield strength of 20 ksi (137.9 MPa) or more (Table 3).
Regarding claim 13, Li discloses the magnesium alloy has an ultimate tensile strength (UTS) of 20 ksi (137.9 MPa) or more (Table 3).
Regarding claim 14, Li discloses the magnesium alloy has an elongation to failure of 10% or more (Table 3).
Regarding claim 15, Li discloses dilute Mg alloys have good formability with improved ductility at room temperature (1. Introduction para. 2, Fig. 8, Table 3).
The magnesium alloy being formable at room temperature has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the claim magnesium alloy (AMX100-0.3Ce, Li 2 Experimental procedure para. 1, Table 1), such that the claimed properties, functions, or characteristics naturally flow from the disclosure of the prior art, including the magnesium alloy being formable at room temperature.
Regarding claim 16, Li discloses the magnesium alloy has a solidus temperature of from 500°C to 625°C (Fig. 1(c)).
Regarding claim 17, Li discloses the magnesium alloy being free of Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof (free of Ca2Mg6Zn3 because the alloy lacks Zn) (Li 2 Experimental procedure para. 1, Table 1).
Regarding claim 18, Li discloses an object (sample) comprising the magnesium alloy of claim 1 (2. Experimental procedure, Table 1).
Regarding claim 21, the magnesium alloy exhibiting no incipient melting when extruded with a ram speed of from 1.00 to 10.00 ipm has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the claim magnesium alloy (AMX100-0.3Ce, Li 2 Experimental procedure para. 1, Table 1), such that the claimed properties, functions, or characteristics naturally flow from the disclosure of the prior art, including the magnesium alloy exhibiting no incipient melting when extruded with a ram speed of from 1.00 to 10.00 ipm.
Regarding claim 22, the magnesium alloy exhibiting no incipient melting when extruded with a ram speed of from 4.00 to 10.00 ipm has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the claim magnesium alloy (AMX100-0.3Ce, Li 2 Experimental procedure para. 1, Table 1), such that the claimed properties, functions, or characteristics naturally flow from the disclosure of the prior art, including the magnesium alloy exhibiting no incipient melting when extruded with a ram speed of from 4.00 to 10.00 ipm.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Li (Li et al. Effect of micro-alloyed Ce on the microstructure evolution and mechanical properties of rolled Mg-0.6Al-0.5Mn-0.2Ca alloy sheets. Journal of Materials Research and Technology. 2022; 19: 3088-3099.) as applied to claim 1 above, and 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.
Li discloses a magnesium alloy that renders obvious the magnesium alloy of claim 1 (AMX100-0.3Ce) (Li 2 Experimental procedure para. 1, Table 1), 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 Li (AMX100-0.3Ce) (Li 2 Experimental procedure para. 1, Table 1) is within the scope of this disclosed microalloyed composition.
Claims 1-5, 7-18, and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Pan ‘727 (CN 111607727 machine translation).
Regarding claim 1, Pan ‘727 discloses a magnesium alloy (Example 9 [0096]), where the Zn, Al, Ce, Mn, and Mg fall within the claim scope.
The Ca content of 0.2 wt% Ca has been considered and the proportion is so close to the claimed “greater than 0 to less than 0.2 wt% Ca” that one of ordinary skill in the art would have expected the Mg alloy of Pan ‘727 to have the same properties as the claimed magnesium alloy. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Alternatively, Pan ‘727 discloses 0.1 to 1.0 wt% Ca ([0008]).
It would have been obvious to one of ordinary skill in the art in Example 9 of Pan ‘727 to vary the Ca content from 0.1 to 1.0 wt% because this is within the scope of the invention (Pan ‘727 [0008]), where the Ca cooperates with elements such as Al and Ce to exhibit segregation behavior, promoting small-angle grain boundaries and dislocations generated during stable deformation (Pan ‘727 [0021]). 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 1
Claim 7
Claim 8
Claim 9
Pan ‘727 Example 9 [0096]
Zn
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.5
Al
0 to 1.5
0 to less than 1
0 to less than 1
0 to less than 1
0.5
Ca
Greater than 0 to less than 0.2
Greater than 0 to less than 0.2
0 to 0.15
0 to 0.1
0.2
Ce
0.2 to 0.4
0.2
0.2
0.2
0.2
Mn
0.1 to 0.8
0.4
0.4
0.4
0.5
Mg
Balance
Balance
Balance
Balance
Balance
Regarding claim 2, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.5 wt% Zn) (Example 9 [0096]).
Regarding claim 3, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0 to less than 1 wt.% Al (0.5 wt% Al) (Example 9 [0096]).
Regarding claim 4, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from greater than 0 to 0.15 wt.% Ca (0.1 to 1.0 wt%) (modified Example 9, [0008], [0096]). 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).
Regarding claim 5, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from greater than 0 to 0.1 wt.% Ca (0.1 to 1.0 wt%) (modified Example 9, [0008], [0096]). 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).
Regarding claim 7, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.5 wt%), from 0 to less than 1 wt.% Al (0.5 wt%), from greater than 0 to less than 0.2 wt.% Ca (0.2 wt% Ca or modified with 0.1 to 1.0 wt% Ca), 0.2 wt.% Ce (0.2 wt%), and the balance comprising Mg ([0008], [0096]).
The Ca content of 0.2 wt% is so close to that claimed that one of ordinary skill in the art would have expected the Mg alloy of Pan ‘727 to have the same properties as the claimed magnesium alloy. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are close. MPEP 2144.05(I).
Alternatively, for 0.1 to 1.0 wt% Ca, 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).
Example 9 of Pan ‘727 includes 0.5 wt% Mn.
Pan ‘727 discloses 0.1 to 3.0 wt% Mn ([0008]).
It would have been obvious to one of ordinary skill in the art in Example 9 of Pan ‘727 to vary the Mn content from 0.1 to 3.0 wt% because this is within the scope of the invention (Pan ‘727 [0008]). 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).
Regarding claim 8, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.5 wt%), from 0 to less than 1 wt.% Al (0.5 wt%), from greater than 0 to 0.15 wt.% Ca (0.1 to 1.0 wt%), 0.2 wt.% Ce (0.2 wt%), and the balance comprising Mg (modified Example 9 [0008], [0096]).
For 0.1 to 1.0 wt% Ca, 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).
Example 9 of Pan ‘727 includes 0.5 wt% Mn.
Pan ‘727 discloses 0.1 to 3.0 wt% Mn ([0008]).
It would have been obvious to one of ordinary skill in the art in Example 9 of Pan ‘727 to vary the Mn content from 0.1 to 3.0 wt% because this is within the scope of the invention (Pan ‘727 [0008]). 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).
Regarding claim 9, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0 to less than 1 wt.% Zn (0.5 wt%), from 0 to less than 1 wt.% Al (0.5 wt%), from greater than 0 to 0.1 wt.% Ca (0.1 to 1.0 wt%), 0.2 wt.% Ce (0.2 wt%), and the balance comprising Mg (modified Example 9 [0008], [0096]).
For 0.1 to 1.0 wt% Ca, 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).
Example 9 of Pan ‘727 includes 0.5 wt% Mn.
Pan ‘727 discloses 0.1 to 3.0 wt% Mn ([0008]).
It would have been obvious to one of ordinary skill in the art in Example 9 of Pan ‘727 to vary the Mn content from 0.1 to 3.0 wt% because this is within the scope of the invention (Pan ‘727 [0008]). 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).
Regarding claim 10, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the Zn, Al, Ca, Ce, and Mn, when present, are substantially dissolved in the magnesium alloy (Ce dissolved in the matrix) ([0021]-[0027], Figs. 2, 4, 5) (process includes homogenization, which creates a uniform structure) ([0100]) (co-addition of Ce and Ca induces segregation of elements at dislocation sites, which is different than conventional magnesium alloys relying on segregation of nano-second phases) ([0105]).
Regarding claim 11, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy is microalloyed ([0008], [0096], [0104], [0107]).
Regarding claim 12, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy has a yield strength of 20 ksi (137.9 MPa) or more (392 MPa) ([0102]).
Regarding claim 13, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy has an ultimate tensile strength of 20 ksi (137.9 MPa) or more (420 MPa) ([0102]).
Regarding claim 14, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy has an elongation to failure of 10% or more (26%) ([0102]).
Regarding claim 15, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above.
The magnesium alloy being formable at room temperature has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the magnesium alloy of claim 1 (Pan ‘727 [0008], Example 9 [0096]), such that the claimed properties, functions, or characteristics naturally flow, including the magnesium alloy being formable at room temperature.
Regarding claim 16, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above.
The magnesium alloy having a solidus temperature of from 500°C to 625°C has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the magnesium alloy of claim 1 (Pan ‘727 [0008], Example 9 [0096]), such that the claimed properties, functions, or characteristics naturally flow, including the magnesium alloy having a solidus temperature of from 500°C to 625°C.
Regarding claim 17, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above.
Pan ‘727 discloses the co-addition of Ce and Ca can induce the segregation of elements at dislocation sites, whereas conventional magnesium alloys rely on segregation of nano-second phases ([0105]) of a microalloyed magnesium alloy ([0106]).
The magnesium alloy being free of a Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the magnesium alloy of claim 1 (Pan ‘727 [0008], Example 9 [0096]), such that the claimed properties, functions, or characteristics naturally flow, including the magnesium alloy being free of a Mg2Ca phase, an AlCaMg phase, an Al2Ca phase, a Ca2Mg6Zn3 phase, or a combination thereof.
Regarding claim 18, Pan ‘727 discloses an object comprising the magnesium alloy of claim 1 (magnesium alloy rods) (Example 9 [0101]-[0102]).
Regarding claim 21, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above.
The magnesium alloy exhibiting substantially no incipient melting when extruded with a ram speed of from 1.00 to 10.00 ipm has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the magnesium alloy of claim 1 (Pan ‘727 [0008], Example 9 [0096]), such that the claimed properties, functions, or characteristics naturally flow, including the magnesium alloy exhibiting substantially no incipient melting when extruded with a ram speed of from 1.00 to 10.00 ipm.
Regarding claim 22, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above.
The magnesium alloy exhibiting substantially no incipient melting when extruded with a ram speed of from 4.00 to 10.00 ipm has been considered and determined to recite a property, function, or characteristic of the claimed magnesium alloy. The prior art renders obvious the magnesium alloy of claim 1 (Pan ‘727 [0008], Example 9 [0096]), such that the claimed properties, functions, or characteristics naturally flow, including the magnesium alloy exhibiting substantially no incipient melting when extruded with a ram speed of from 4.00 to 10.00 ipm.
Regarding claim 23, Pan ‘727 discloses the magnesium alloy of claim 1 as cited above, wherein the magnesium alloy comprises from 0.002 wt.% to 0.181 wt.% Ca (0.1 to 1.0 wt% Ca) ([0008], [0096]). 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).
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 1-5, 7-18, 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).
Claims 1-5, 7-18, 21, and 22 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/294,464 (App ‘464, reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because App ‘464 discloses an overlapping or close composition (claims 1, 16-18) wherein the Zn, Al, Ca, Ce, and Mn are substantially dissolved (claims 10, 19), and the alloy is substantially free of Al2Ca or AlCaMg (claim 20).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Related Art
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
Zhao (CN 109763045 machine translation)
Zhao discloses a non-aging magnesium alloy ([0002], [0024], [0037]) comprising Zn: 1- 9wt%, Mn: 0.1-1 wt%, Ce(La) 0-5 wt%, Al 0.1-1 wt%, Ti 0-0.3 wt%, Ca 0-0.1 wt%, Be 0-0.05 wt%, Si up to 0.02 wt%, Fe up to 0.005 wt%, Cu up to 0.05 wt%, Ni up to 0.005 wt%, and balance Mg ([0008], [0025]-[0029]) that has a fast extrusion speed ([0022], [0044]).
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/STEPHANI HILL/Examiner, Art Unit 1735
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