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 the Claims
Claims 16 and 21-37 are pending wherein claim 16 is amended, claims 1-15 and 17-20 are canceled and claims 23-29 and 31-36 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claims 16, 21-22, 30 and 37 under 35 U.S.C. 103 as being unpatentable over Okamoto (WO 2005/059195) is withdrawn in view of the Applicant’s amendment to claim 16.
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 16, 21-22, 30 and 37 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.
With respect to the recitation “An aluminum alloy, in particular cast aluminum alloy” in claim 1, the phrase “in particular" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). It is unclear if the claim requires that the aluminum alloy be cast or is open to other forms of aluminum alloys such as powder sintered aluminum alloys.
Allowable Subject Matter
Claims 16, 21-22, 30 and 37 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
In regard to claim 16, the closest prior art to Okamoto (‘195) discloses alloys having substantially similar amounts of silicon, copper, magnesium, iron, manganese, zirconium, vanadium, titanium and phosphorus. Claim 16 distinguishes from Okamoto (‘195) because of the nickel content. Either Okamoto (‘195) does not require nickel or it is present in a range of 0.8 to 1.3 mass percent. The amended claims now require more than 0 to less than 0.6 weight percent nickel and therefore would distinguish from Okamoto (‘195).
Response to Arguments
Applicant’s arguments with respect to claim(s) 16, 21-22, 30 and 37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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