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 1-8 and 10-18 are pending wherein claims 1-7 are amended, claim 9 is canceled, claims 10-18 are new and claim 8 is withdrawn from consideration.
Examiner Interpretation
Claim 1 recites the limitation “0.8-2.0% rare earth (RE)” and the claim also recites “wherein the rare earth includes Yttrium and Cerium”. Yttrium and cerium would inherently be included in rare earths. However, the claim does not actually require the presence of yttrium and cerium in the magnesium alloy as written. This is different than claim 13 where it explicitly indicates that “Yttrium in the magnesium-containing alloy ranges from 0.8% to 1.0%” and “Cerium in the magnesium-containing alloy ranges from 0.5% to 0.8%”.
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 1-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2013/0280121).
In regard to claims 1 and 6, Kim et al. (‘121) discloses magnesium alloys having compositions relative to the instant invention as set forth below (abstract and [0010]).
Element
Instant Claim
(weight percent)
Kim et al. (‘121)
(weight percent)
Overlap
Al
7.0 – 8.6
7 – less than 9.5
7 – 8.6
RE (Y)
0.8 – 2
(B) 0.05 – 2, (P) 0.1 – 1
0.8 – 2, 0.8 – 1
Mn
0.2 – 0.8
greater than 0 – 1
0.2 – 0.8
Mg
Balance
Balance
Balance
Note: (B) = broad, (P) = preferred.
The Examiner notes that the amounts of aluminum, yttrium and manganese for the magnesium based alloys disclosed by Kim et al. (‘121) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, yttrium and manganese from the amounts disclosed by Kim et al. (‘121) because Kim et al. (‘121) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “having an elongation of 15-22%” in claim 1, Kim et al. (‘121) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I. Additionally, Kim et al. (‘121) discloses elongations in the range of 1.9% to 25.1% (Table 3).
In regard to claim 2, Kim et al. (‘121) discloses magnesium alloys having compositions relative to the instant invention as set forth below (abstract and [0010]).
Element
Instant Claim
(weight percent)
Kim et al. (‘121)
(weight percent)
Overlap
Al
7.0 – 8.2
7 – less than 9.5
7 – 8.2
RE (Y)
1.1 – 2
(B) 0.05 – 2, (P) 0.1 – 1
1.1 – 2
Mn
0.4 – 0.8
greater than 0 – 1
0.4 – 0.8
Mg
Balance
Balance
Balance
Note: (B) = broad, (P) = preferred.
The Examiner notes that the amounts of aluminum, yttrium and manganese for the magnesium based alloys disclosed by Kim et al. (‘121) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, yttrium and manganese from the amounts disclosed by Kim et al. (‘121) because Kim et al. (‘121) discloses the same utility throughout the disclosed ranges.
In regard to claim 3, Kim et al. (‘121) discloses 7 to less than 9.5 weight percent aluminum, which encompasses the claimed range of aluminum (abstract and [0010]).
With respect to the recitation “wherein the Mg-Al based magnesium alloy has an elongation of 17-21.6%” in claim 4, Kim et al. (‘121) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I. Additionally, Kim et al. (‘121) discloses elongations in the range of 1.9% to 25.1% (Table 3).
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a welding loss rate of less than 6%” in claim 5, Kim et al. (‘121) discloses a substantially similar composition. Therefore, the claimed welding loss rate would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a yield strength of 182-235 MPa and a tensile strength of 306-342 MPa” in claim 6, Kim et al. (‘121) discloses a substantially similar composition. Therefore, the claimed tensile and yield strengths would be expected. MPEP 2112.01 I.
In regard to claims 10 and 12, Kim et al. (‘121) teaches a broad range of yttrium of 0.05 to 2 weight percent and a preferred range of 0.1 to 1 weight percent (abstract and [0010]).
Claims 1-7 and 11-12 are rejected under 35 U.S.C. 103 as being unpatentable over Saikawa et al. (US 2007/0178006).
In regard to claim 1, Saikawa et al. (‘006) discloses magnesium alloys having compositions relative to the instant invention as set forth below ([0022-0025], [0038-0039] and [0049]).
Element
Instant Claim
(weight percent)
Saikawa et al. (‘006)
(weight percent)
Overlap
Al
7.0 – 8.6
6 – 12
7 – 8.6
Ce
0.8 – 2
0 – 1.25
0.8 – 1.25
Mn
0.2 – 0.8
0.1 – 1.5
0.2 – 0.8
Mg
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, cerium and manganese for the magnesium based alloys disclosed by Saikawa et al. (‘006) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, cerium and manganese from the amounts disclosed by Saikawa et al. (‘006) because Saikawa et al. (‘006) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “having an elongation of 15-22%” in claim 1, Saikawa et al. (‘006) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I.
In regard to claim 2, Saikawa et al. (‘006) discloses 0 to 1.25 weight percent cerium, which overlaps the range of the instant invention ([0022-0025], [0038-0039] and [0049]).
In regard to claim 3, Saikawa et al. (‘006) discloses 6 to 12 weight percent aluminum, which encompasses the range of the instant invention [0022-0025].
With respect to the recitation “wherein the Mg-Al based magnesium alloy has an elongation of 17-21.6%” in claim 4, Saikawa et al. (‘006) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a welding loss rate of less than 6%” in claim 5, Saikawa et al. (‘006) discloses a substantially similar composition. Therefore, the claimed welding loss rate would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a yield strength of 182-235 MPa and a tensile strength of 306-342 MPa” in claim 6, Saikawa et al. (‘006) discloses a substantially similar composition. Therefore, the claimed strengths would be expected. MPEP 2112.01 I.
In regard to claim 7, Saikawa et al. (‘006) discloses wherein the misch metal would include lanthanum praseodymium, cerium and neodymium ([0039] and [0049]).
In regard to claim 11, Saikawa et al. (‘006) discloses 0 to 1.25 weight percent cerium, which overlaps the range of the instant invention ([0022-0025], [0038-0039] and [0049]).
In regard to claim 12, Saikawa et al. (‘006) discloses wherein the sum of the rare earths would be up to 2.5 weight percent which encompasses the range of the instant invention ([0022-0025], [0038-0039] and [0049]).
Claims 1-6 and 10-17 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (US 2011/0286880).
In regard to claim 1, Luo et al. (‘880) discloses magnesium alloys having compositions relative to the instant invention as set forth below (claims).
Element
Instant Claim
(weight percent)
Luo et al. (‘880)
(weight percent)
Overlap
Al
7.0 – 8.6
about 6.5 – 9
7.0 – 8.6
RE
0.8 – 2
0 – about 2
0.8 – 2
Mn
0.2 – 0.8
about 0.2 – 0.6
0.2 – about 0.6
Mg
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, rare earth metals and manganese for the magnesium based alloys disclosed by Luo et al. (‘080) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, cerium and manganese from the amounts disclosed by Luo et al. (‘080) because Luo et al. (‘080) discloses the same utility throughout the disclosed ranges.
Still regarding claim 1, Luo et al. (‘080) discloses wherein rare earth elements would be yttrium and cerium (claim 1).
With respect to the recitation “having an elongation of 15-22%” in claim 1, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I.
In regard to claim 2, Luo et al. (‘080) discloses wherein the rare earth elements would range form 0 to about 2 weight percent (claim 1).
In regard to claim 3, Luo et al. (‘880) discloses about 6.5 to 9 weight percent aluminum, which encompasses the range of the instant invention (claim 1).
With respect to the recitation “wherein the Mg-Al based magnesium alloy has an elongation of 17-21.6%” in claim 4, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a welding loss rate of less than 6%” in claim 5, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed welding loss rate would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a yield strength of 182-235 MPa and a tensile strength of 306-342 MPa” in claim 6, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed strengths would be expected. MPEP 2112.01 I.
In regard to claim 10, Luo et al. (‘080) discloses 0 to about 1 weight percent yttrium, which overlaps the range of the instant invention (claim 1). MPEP 2144.05 I.
In regard to claim 11, Luo et al. (‘080) discloses 0 to about 1 weight percent cerium, which encompasses the range of the instant invention (claim 1).
In regard to claim 12, Luo et al. (‘080) discloses up to about 2 weight percent of yttrium and cerium, which would encompass the range of the instant invention (claim 1).
In regard to claim 13, Luo et al. (‘880) discloses magnesium alloys having compositions relative to the instant invention as set forth below (claims).
Element
Instant Claim
(weight percent)
Luo et al. (‘880)
(weight percent)
Overlap
Al
7.0 – 8.6
about 6.5 – 9
7.0 – 8.6
Mn
0.2 – 0.8
about 0.2 – 0.6
0.2 – about 0.6
Y
0.8 – 1.6
0 – about 1
0.8 – about 1
Ce
0.5 – 0.8
0 – about 1
0.5 – 0.8
Mg
Present
Balance
Present
The Examiner notes that the amounts of aluminum, manganese, yttrium and cerium for the magnesium based alloys disclosed by Luo et al. (‘080) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, manganese, yttrium and cerium from the amounts disclosed by Luo et al. (‘080) because Luo et al. (‘080) discloses the same utility throughout the disclosed ranges.
In regard to claim 14, Luo et al. (‘880) discloses about 6.5 to 9 weight percent aluminum, which encompasses the range of the instant invention (claim 1).
In regard to claim 15, Luo et al. (‘880) discloses about 0.2 to 0.6 weight percent manganese, which overlaps the range of the instant invention (claim 10).
With respect to the recitation “wherein the Mg-Al based magnesium alloy has an elongation of 17-21.6%” in claim 16, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed elongation would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the Mg-Al based magnesium alloy has a welding loss rate of less than 6%” in claim 17, Luo et al. (‘080) discloses a substantially similar composition. Therefore, the claimed welding loss rate would be expected. MPEP 2112.01 I.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (US 2013/0280121) as applied to claim 1, and further in view of Rosalbino et al. (Effect of erbium addition on the corrosion behavior of Mg-Al alloys).
In regard to claim 7, Kim et al. (‘121) discloses magnesium-aluminum alloys as set forth above, but Kim et al. (‘121) does not specify wherein erbium would be present in the alloys.
Rosalbino et al. discloses that the addition of up to 0.9 atomic percent erbium would provide enhanced corrosion resistance (Table 1 and page 60, left column).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 0.9 atomic percent erbium, as disclosed by Rosalbino et al., to the magnesium-aluminum alloys of Kim et al. (‘121), in order to improve the corrosion resistance, as disclosed by Rosalbino et al. (Table 1 and (page 60, left column).
Claims 7 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Luo et al. (US 2011/0286880) as applied to claims 1 and 13, and further in view of Rosalbino et al. (Effect of erbium addition on the corrosion behavior of Mg-Al alloys).
In regard to claims 7 and 18, Luo et al. (‘880) discloses magnesium-aluminum alloys as set forth above, but Luo et al. (‘880) does not specify wherein erbium would be present in the alloys.
Rosalbino et al. discloses that the addition of up to 0.9 atomic percent erbium would provide enhanced corrosion resistance (Table 1 and page 60, left column).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 0.9 atomic percent erbium, as disclosed by Rosalbino et al., to the magnesium-aluminum alloys of Luo et al. (‘880), in order to improve the corrosion resistance, as disclosed by Rosalbino et al. (Table 1 and (page 60, left column).
Response to Arguments
Applicant's arguments filed January 27, 2026 have been fully considered but they are not persuasive.
The Applicant primarily argues that Kim et al. (‘121) does not teach using cerium and Kim et al. (‘121) does not teach wherein the rare earth includes yttrium and cerium.
In response, the Examiner notes that claim 1 requires the presence of rare earth elements in an amount of 0.8 to 2 weight percent. Also, claim 1 requires that rare earth element include yttrium and cerium. Rare earth elements inherently include yttrium and cerium, but the independent claim 1 does not require that yttrium and cerium actually be present in the alloy and only states an inherent feature of rare earth elements, namely that they include yttrium and cerium.
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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/JESSEE R ROE/ Primary Examiner, Art Unit 1759