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
Pending:
1-20
Withdrawn:
NONE
Rejected:
1-20
Amended:
1, 7, 9, 10, 12
New:
17-20
Independent:
1, 20
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 17 and 18 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.
The term “approximately” in claims 17 and 18 is a relative term which renders the claim indefinite. The term “approximately” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the values of Si set forth by the instant claim language of “between approximately 6.2 and 8.5% by weight of silicon” (cl. 17) and “between approximately 7.0 and 8.5% by weight of silicon” (cl. 18). For the purposes of this office action, “approximately” is held to be ±10%. Appropriate/explanation correction is required.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-13, 16-18, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Cosse et al (US 2005/0155676)- previously cited.
Concerning independent claims 1 and 20, Cosse teaches an Al-Si casting alloy comprising (in wt%):
cl. 1
cl. 20
dependent cl.
Cosse
Si
>6.0-8.5
>6.0-8.5
approx.. 6.2-8.5% (cl. 17)
approx. 7.0-8.5% (cl. 18)
2-6%,
**3-7% Si taught to be result effective variable
Zn
0.2-0.8
0.2-0.8
>0.3-0.8% (cl. 19)
<0.30
Mn
0.2-0.6
0.2-0.6
0.03-2
Cr
0.1-0.3
0.1-0.3
0.1-0.3
Mg
-0.05
-0.05
-0.01 (cl. 6)
<0.40
Sr
-0.02
0.01-0.02 (cl. 2)
50-500 ppm (0.005-0.05)
Ti
-0.15
0.04-0.15 (cl. 3)
<0.30
Fe
-0.2
-0.2 (cl. 4)
<0.50
Cu
-0.5
-0.5 (cl. 5)
<0.30
Mo, Zr
0.05-0.25
-0.25 Mo
-0.25 Zr
-0.25 Zr (cl. 7)
0.1-0.4% Mo optionally
-0.15 Hf, Ce, &/or RE (cl. 8)
Table 1: instant claims vs. prior art of Cosse
which overlaps or touches the boundary of the claimed alloying ranges of Zn, Mn, Cr, Mg, Sr, Ti, Fe, Cu, Mo (instant claims 1-6, see Cosse at [0021-0024]). Cosse teaches said alloy is die cast into structural parts for automobiles [0001], which meets the instant “casting alloy” limitation in instant claim 1. Cosse teaches that 0.1-0.4% Mo is optionally present [0022], which meets the amended limitation of claim 1 of 0.05-0.25% Mo.
Concerning the amended Si amount of “more than 6.0%”, Cosse teaches 2-6% Si (abstract) present in his alloy, but also teaches for alloys up to 7% Si, the content of silicon is directly related to the strength/elongation balance- namely, higher silicon increases strength but decreases elongation (Fig. 1C, Fig. 2). Cosse teaches examples with 7% Si (Fig. 2), [0037]. It would have been obvious to one of ordinary skill in the art to have increased Si for the Al-Si-Zn-Mn alloy of Cosse (for instance, to 7% Si) in order to provide the predictable purpose of increasing strength (at the cost of some ductility). Further, 6% Si taught preferable by Cosse is infinitesimally close to the claimed >6.0% (amended claim 1). Because Cosse teaches an Al-Si alloy cast product with alloying ranges that overlap the presently claimed alloying ranges (or, in the case of Si, are a result effective variable or an infinitesimally close approximation), it is held that Cosse has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claim 7, Cosse does not teach the presence of Zr, wherein the absence of Zr meets the claimed maximum of “up to 0.25% by weight zirconium”.
Concerning claim 8, Cosse does not teach the presence of Hf, Ce, &/or another RE metal, and therefore said elements are held to be absent/within the limits of “other elements <0.05 each” taught by Cosse at [0024], which meets the instantly claimed maximum of up to 0.15% of said element(s).
Concerning claim 9, Cosse teaches said alloy is die cast into structural parts for automobiles [0001], which meets the instant “structural component” of instant claim 9.
Concerning claim 10, Cosse teaches the application of a T5, T6, or T7 temper [0035], wherein T5 temper lacks a separate solution heating step (see Cosse at [0019, 0035]) and therefore meets the instant “not solution annealed” product by process limitation.
Concerning claim 11, Cosse does not specify forming said alloy into a battery housing. However, it would have been within the level of one of ordinary skill in the art to have formed the Al-Si alloy of Cosse into a variety of structural components for automobiles, such as a battery housing for hybrid or electric vehicles, because Cosse teaches said alloy exhibits good mechanical properties (examples) and is useful for automobile structural parts.
Concerning claim 12, as set forth above, Cosse teaches casting said Al-Si alloy and producing a structural component, which meets the instant limitation.
Concerning claim 13, Cosse teaches die casting said alloy [0001], which meets the instant limitation.
Concerning claim 16, Cosse teaches said Al-Si alloy die cast product does not require a T6 or T7 temper (wherein said tempers include solution heat treating steps, see [0019] of Cosse). Rather, Cosse teaches the application of a T5 temper (which does not include solution annealing see [0035] of Cosse), which meets the instant limitation.
Concerning claims 17, 18 and 20, see above discussion of composition.
Claims 1, 3, 4, 7-19 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106244864 A (CN’864) cited on IDS filed 7/31/23 in view of Cosse.
CN’864 teaches an Al-Si casting alloy comprising (in wt%):
cl. 1
cl. 20
dependent cl.
CN’864
Si
6.0-8.5
>6.0-8.5
approx. 6.2-8.5% (cl. 17)
approx. 7.0-8.5% (cl. 18)
8-11
Zn
0.2-0.8
0.2-0.8
>0.3-0.8% (cl. 19)
-1.2
Mn
0.2-0.6
0.2-0.6
-0.55
Cr
0.1-0.3
0.1-0.3
-0.15
Mg
-0.05
-0.05
-0.01 (cl. 6) outside
0.05-0.55
Sr
-0.02
0.01-0.02 (cl. 2) outside
-
Ti
-0.15
0.04-0.15 (cl. 3)
-0.25
Fe
-0.2
-0.2 (cl. 4)
-1.3
Cu
-0.5
-0.5 (cl. 5) outside
2-4
Mo
0.05-0.25
-0.25 Mo
-0.25 Zr
-0.25 Zr (cl. 7)
-
-0.15 Hf, Ce, &/or RE (cl. 8)
-
Table 2: instant claims vs. prior art of CN’864
which overlaps or touches the boundary of the claimed alloying ranges of Si, Zn, Mn, Cr, Mg, Sr, Ti, Fe (instant claims 1, 3, 4, new claims 17-18, see CN’864 at translation p 1). CN’864 teaches said alloy is die cast into automobile turbocharger housings (translation p 1), which meets the instant “casting alloy” limitation in instant claim 1.
CN’864 does not teach the presence of Mo. However, Cosse teaches that 0.1-0.4% Mo is effective to add to Al-Si foundry alloys in order to reduce adherence to the mold [0022]. It would have been obvious to one of ordinary skill in the art, to have added 0.1-0.4% Mo to the Al-Si foundry alloy of CN’864, because Cosse teaches 0.1-0.4% Mo is effective to reduce adherence to the mold [0022]. It is held that CN’864 and Cosse have created a prima facie case of obviousness of the presently claimed invention. Overlapping ranges have been held to establish a prima facie case of obviousness; see MPEP § 2144.05 and Peterson, supra.
Concerning claims 3 and 4, see above discussion of alloying ranges.
Concerning claim 7, CN’864 does not teach the presence of Zr or Mo, and therefore said elements are held to be absent/within the limits of “other elements <0.05 each” taught by Cosse at [0024]. The absence of Zr and Mo falls within the claimed maximum of “up to 0.25% by weight of molybdenum and/or zirconium”, and therefore meets the instant limitation.
Concerning claim 8, CN’864 does not teach the presence of Hf, Ce, &/or another RE metal, and therefore said elements are held to be absent/within the limits of “other elements <0.05 each” taught by Cosse at [0024], which meets the instant maximum of up to 0.15% of said element(s).
Concerning claim 9, CN’864 teaches said alloy is die cast into parts for automobiles – in particular, die cast into automobile turbocharger housings (translation, p 1). Though CN’864 does not specify said housing is a “structural component”, it would have been within the level of one of ordinary skill in the art, given the disclosure of CN’864, to have used the die cast Al-Si alloy formed into a housing of CN’864 as a “structural component”, because CN’864 teaches said alloy product exhibits high strength, high endurance, and high quality (translation p 1).
Concerning claim 10, CN’864 teaches processing steps subsequent to die casting (see translation p 3), and said subsequent steps lack a solution annealing step, and therefore CN’864 meets the instant “not solution annealed” product by process limitation.
Concerning claim 11, CN’864 does not specify forming said alloy into a battery housing. However, it would have been within the level of one of ordinary skill in the art to have formed the Al-Si alloy of CN’864 into a variety of structural components for automobiles, such as a battery housing for hybrid or electric vehicles, because CN’864 teaches said alloy exhibits excellent strength and internal quality (translation p 1), and can be formed into housings used in automobiles (translation p 3).
Concerning claim 12, see above discussion of structural components.
Concerning claim 13, CN’864 teaches die casting said alloy (translation p 1), which meets the instant limitation.
Concerning claim 14, CN’864 teaches preheating a die casting mold to 16-250°C prior to adding the melt into said mold (i.e. casting), which overlaps and therefore meets the limitation of heating the die casting mold to 105-290°C before casting (instant claim 14).
Concerning claim 15, CN’864 teaches the aluminum alloy is at a temperature >600°C prior to being poured into the die casting mold (translation p 2), which overlaps and therefore meets the instant range of 690-725°C immediately before casting (instant claim 15).
Concerning claim 16, as set forth above, CN’864 teaches processing steps subsequent to die casting (see translation p 3), and said subsequent steps lack a solution annealing step. Therefore CN’864 meets the instant “no solution annealing” process limitation.
Concerning claims 17-19, see above discussion of alloying ranges.
Response to Amendment/Arguments
In the response filed on 3/3/26 applicant amended claims 1, 7, 9, 10, 12 and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s argument that Cosse does not teach or suggest the amended Si range, or teaches away from the claimed Si range, has not been found persuasive. As set forth above, Cosse teaches for alloys 3-7% Si, the content of silicon is directly related to the strength/elongation balance- namely, higher silicon increases strength but decreases elongation (Fig. 1C, Fig. 2). It would have been obvious to one of ordinary skill in the art to have increased Si for the Al-Si-Zn-Mn alloy of Cosse (for instance, to 7% Si) in order to provide the predictable purpose of increasing strength (while decreasing elongation). Further, 6% Si taught preferable by Cosse is infinitesimally close to the claimed >6.0%. Because Cosse teaches an Al-Si alloy cast product with alloying ranges that overlap the presently claimed alloying ranges (or, in the case of Si, are infinitesimally close and/or a result effective variable), it is held that Cosse has created a prima facie case of obviousness of the presently claimed invention.
Applicant’s argument that the instant invention is allowable because the prior art does not teach a preferred embodiment within the claimed ranges has not been found persuasive.
A reference disclosure must be evaluated for all that it fairly suggests and not only for what is indicated as preferred, In re Boe, 53 CCPA 1079, 335 F.2d 961, 148 USPQ 507 (1966), see also MPEP 2123. "The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The court held that the prior art anticipated the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed.")
For the instant case, though 7% Si is taught to be less preferred by Cosse, Cosse still teaches increasing Si to 7% provides the predictable purpose of increasing strength (while decreasing elongation). The claimed invention (>6% Si, in combination with the claimed Zn, Mn, Cr, and Mo) is held to be less preferred by Cosse, but is taught to be known in the art (suitable for lower ductility and higher strength applications).
Absence of property which a claimed invention would have been expected to possess based on the teachings of the prior art is evidence of unobviousness. Ex parte Mead Johnson & Co., 227 USPQ 78 (Bd. Pat. App. & Inter. 1985) (Based on prior art disclosures, claimed compounds would have been expected to possess beta-andrenergic blocking activity; the fact that claimed compounds did not possess such activity was an unexpected result sufficient to establish unobviousness within the meaning of 35 U.S.C. 103.), MPEP 716.02.
Applicant’s argument that the instant invention is allowable because CN’864 does not teach the amended amount of Mo has not been found persuasive. As set forth above, though CN’864 does not teach the presence of Mo, it would have been obvious to one of ordinary skill in the art, to have added 0.1-0.4% Mo to the Al-Si foundry alloy of CN’864, because Cosse teaches 0.1-0.4% Mo is effective to reduce adherence to the mold [0022]. It is held that CN’864 and Cosse have created a prima facie case of obviousness of the presently claimed invention.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 5/26/26
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