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 1-2, 4-5, 7-8, 10, 14-19, 21-25, 28 and 31 are pending wherein claims 1-2, 4-5, 7-8, 10, 14-19, 21-25, 28 are currently under examination and claim 31 is withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of making aluminum alloys containing iron, cerium and silicon. Applicant’s election of claims 1-2, 4-5, 7-8, 10, 14-19, 21-25 and 28 was made in the Response filed on December 12, 2025. Because Applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP §818.01(a)).
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.
Claim 21 is 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.
In regard to claim 21, it is unclear what the claim includes or excludes as the language “comprises Mn, Mg, Cu, Zn, or a combination thereof” does not indicate if only one of the elements is sufficient or if the scope includes all of the elements being present.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In regard to claim 5, the ratio of claim 5 is the same as in claim 1 and the result of suppressing formation of Al13Fe4 would be present in claim 1 as in claim 5.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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, 5, 7-8, 10, 16, 19, 21-25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kim et al. (WO 2018/044047).
In regard to claim 1, Kim et al. (WO ‘047) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (pages 7-8 of Translation).
Element
Instant Claim
(weight percent)
Kim et al. (WO ‘047)
(weight percent)
Overlap
Fe
0.3 – 1.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 16
0.01 – 1.5
0.2 – 1.5
Si
0 – 2
0.7 – 2.9
0.7 - 2
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, cerium and silicon for the aluminum base alloy disclosed by Kim et al. (WO ‘047) 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 have selected the claimed amounts of iron, cerium and silicon from the amounts disclosed by Kim et al. (WO ‘047) because Kim et al. (WO ‘047) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the ratio of Ce to Fe is 1.2 or more” in claim 1, the ratio of Ce to Fe in Kim et al. (WO ‘047) would range from 0.02 to 15, which would encompass the range of the instant invention.
In regard to claim 5, the ratio of Ce to Fe in Kim et al. (WO ‘047) would range from 0.02 to 15, which would encompass the range of the instant invention. Therefore, suppression of the Al13Fe4 would be expected in Kim et al. (WO ‘047).
In regard to claim 7, Kim et al. (WO ‘017) does not require the presence of the Al13Fe4 phase and therefore would read on the claim.
In regard to claim 8, Kim et al. (WO ‘017) discloses 0.1 to 0.5 weight percent iron, which overlap the range of the instant invention (pages 7-8 of Translation).
In regard to claim 10, Kim et al. (WO ‘017) discloses 0.01 to 1.5 weight percent cerium, which encompasses the range of the instant invention (pages 7-8 of Translation).
In regard to claim 16, Kim et al. (WO ‘047) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (pages 7-8 of Translation).
Element
Instant Claim
(weight percent)
Kim et al. (WO ‘047)
(weight percent)
Overlap
Fe
0.3 – 1.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 9
0.01 – 1.5
0.2 – 1.5
Si
0 – 2
0.7 – 2.9
0.7 - 2
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, cerium and silicon for the aluminum base alloy disclosed by Kim et al. (WO ‘047) 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 have selected the claimed amounts of iron, cerium and silicon from the amounts disclosed by Kim et al. (WO ‘047) because Kim et al. (WO ‘047) discloses the same utility throughout the disclosed ranges.
In regard to claim 19, Kim et al. (WO ‘017) does not require the presence of the AlCeSi phase and therefore would read on the claim.
In regard to claim 21, Kim et al. (WO ‘017) discloses the presence of magnesium and manganese (page 5 of translation).
In regard to claim 22, Kim et al. (WO ‘017) discloses 0.3 to 1.1 weight percent manganese, which overlaps the range of the instant invention (page 7 of Translation).
In regard to claim 23, Kim et al. (WO ‘047) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (pages 7-8 of Translation).
Element
Instant Claim
(weight percent)
Kim et al. (WO ‘047)
(weight percent)
Overlap
Fe + Cu
0.3 – 2.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 16
0.01 – 1.5
0.2 – 1.5
Si
0 – 2
0.7 – 2.9
0.7 - 2
Mn
0 – 1
0.3 – 1.1
0.3 – 1
Mg
0 – 1
0.2 – 0.5
0.2 – 0.5
Zn
0 – 1
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, copper, cerium, silicon, manganese, magnesium, and zinc for the aluminum base alloy disclosed by Kim et al. (WO ‘047) 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 have selected the claimed amounts of iron, copper, cerium, silicon, manganese, magnesium and zinc from the amounts disclosed by Kim et al. (WO ‘047) because Kim et al. (WO ‘047) discloses the same utility throughout the disclosed ranges.
In regard to claim 24, Kim et al. (WO ‘047) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (pages 7-8 of Translation).
Element
Instant Claim
(weight percent)
Kim et al. (WO ‘047)
(weight percent)
Overlap
Fe + Cu
0.3 – 2.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 9
0.01 – 1.5
0.2 – 1.5
Si
0 – 2
0.7 – 2.9
0.7 - 2
Mn
0 – 1
0.3 – 1.1
0.3 – 1
Mg
0 – 1
0.2 – 0.5
0.2 – 0.5
Zn
0 – 1
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, copper, cerium, silicon, manganese, magnesium, and zinc for the aluminum base alloy disclosed by Kim et al. (WO ‘047) 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 have selected the claimed amounts of iron, copper, cerium, silicon, manganese, magnesium and zinc from the amounts disclosed by Kim et al. (WO ‘047) because Kim et al. (WO ‘047) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the aluminum alloy has: a yield strength of from 55 MPa to 120 MPa; an ultimate tensile strength of from 175 MPa to 250 MPa; an elongation to failure of from 4% to 12%; or a combination thereof” in claim 25, Kim et al. (WO ‘047) discloses substantially similar compositions. Therefore, these properties would be expected. MPEP 2112.01 I.
In regard to claim 28, Kim et al. (WO ‘047) discloses generating drill chips from the aluminum alloys (page 2).
Claims 1-2, 5, 8, 10, 14-19, 21-25 and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Kichizo et al. (US 3,278,300).
In regard to claim 1, Kichizo et al. (‘300) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (column 2).
Element
Instant Claim
(weight percent)
Kichizo et al. (‘300)
(weight percent)
Overlap
Fe
0.3 – 1.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 16
0.60 – 3
0.6 – 3
Si
0 – 2
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, cerium and silicon for the aluminum base alloy disclosed by Kichizo et al. (‘300) 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 have selected the claimed amounts of iron, cerium and silicon from the amounts disclosed by Kichizo et al. (‘300) because Kichizo et al. (‘300) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the ratio of Ce to Fe is 1.2 or more” in claim 1, the ratio of Ce to Fe in Kichizo et al. (‘300) would range from 1.2 to 30, which is within the range of the instant invention.
In regard to claim 2, Kichizo et al. (‘300) discloses wherein the aluminum-cerium-iron alloy would be a ternary alloy and thus would have the Al-Ce-Fe phase (column 2).
In regard to claim 5, the ratio of Ce to Fe in Kichizo et al. (‘300) would range from 1.2 to 30, which would encompass the range of the instant invention. Therefore, suppression of the Al13Fe4 would be expected in Kichizo et al. (‘300).
In regard to claim 7, Kichizo et al. (‘300) does not require the presence of the Al13Fe4 phase and therefore would read on the claim.
In regard to claim 8, Kichizo et al. (‘300) discloses 0.1 to 0.5 weight percent iron, which overlap the range of the instant invention (column 2).
In regard to claim 10, Kichizo et al. (‘300) discloses 0.6 to 3 weight percent of cerium, which is within the range of the instant invention (column 2).
In regard to claims 14-15, Kichizo et al. (‘300) does not disclose or require the presence of silicon and therefore reads on the claims (column 2).
In regard to claim 16, Kichizo et al. (‘300) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (column 2).
Element
Instant Claim
(weight percent)
Kichizo et al. (‘300)
(weight percent)
Overlap
Fe
0.3 – 1.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 9
0.60 – 3
0.6 – 3
Si
0 – 2
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, cerium and silicon for the aluminum base alloy disclosed by Kichizo et al. (‘300) 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 have selected the claimed amounts of iron, cerium and silicon from the amounts disclosed by Kichizo et al. (‘300) because Kichizo et al. (‘300) discloses the same utility throughout the disclosed ranges.
In regard to claim 17, Kichizo et al. (‘300) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (column 2).
Element
Instant Claim
(weight percent)
Kichizo et al. (‘300)
(weight percent)
Overlap
Fe
0.3 – 1
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 2.5
0.60 – 3
0.6 – 2.5
Si
0 – 0.5
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, cerium and silicon for the aluminum base alloy disclosed by Kichizo et al. (‘300) 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 have selected the claimed amounts of iron, cerium and silicon from the amounts disclosed by Kichizo et al. (‘300) because Kichizo et al. (‘300) discloses the same utility throughout the disclosed ranges.
In regard to claim 19, Kichizo et al. (‘300) does not require or suggest the presence of silicon and therefore AlCeSi being substantially absent or absent entirely from the alloy would be expected.
In regard to claims 21-22, Kichizo et al. (‘300) discloses that the addition of magnesium in an amount of 0.1 to 0.6 weight percent would improve characteristics of high strength heat resistant conductive aluminum alloys (column 3).
In regard to claim 23, Kichizo et al. (‘300) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (columns 2-3).
Element
Instant Claim
(weight percent)
Kichizo et al. (‘300)
(weight percent)
Overlap
Fe
0.3 – 1.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 16
0.60 – 3
0.6 – 3
Si
0 – 2
0
0
Mn
0 – 1
0
0
Mg
0 – 1
0.1 – 0.6
0.1 – 0.6
Cu
0 – 1
0
0
Zn
0 – 1
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, copper, cerium, silicon, manganese, magnesium, and zinc for the aluminum base alloy disclosed by Kichizo et al. (‘300) 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 have selected the claimed amounts of iron, copper, cerium, silicon, manganese, magnesium and zinc from the amounts disclosed by Kichizo et al. (‘300) because Kichizo et al. (‘300) discloses the same utility throughout the disclosed ranges.
In regard to claim 24, Kichizo et al. (‘300) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (columns 2-3).
Element
Instant Claim
(weight percent)
Kim et al. (WO ‘047)
(weight percent)
Overlap
Fe + Cu
0.3 – 2.5
0.1 – 0.5
0.3 – 0.5
Ce
0.2 – 9
0.60 – 3
0.6 – 3
Si
0 – 2
0
0
Mn
0 – 1
0
0
Mg
0 – 1
0.1 – 0.6
0.1 – 0.6
Zn
0 – 1
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of iron, copper, cerium, silicon, manganese, magnesium, and zinc for the aluminum base alloy disclosed by Kichizo et al. (‘300) 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 have selected the claimed amounts of iron, copper, cerium, silicon, manganese, magnesium and zinc from the amounts disclosed by Kichizo et al. (‘300) because Kichizo et al. (‘300) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the aluminum alloy has: a yield strength of from 55 MPa to 120 MPa; an ultimate tensile strength of from 175 MPa to 250 MPa; an elongation to failure of from 4% to 12%; or a combination thereof” in claim 25, Kichizo et al. (‘300) discloses substantially similar compositions. Therefore, these properties would be expected. MPEP 2112.01 I.
In regard to claim 28, Kichizo et al. (‘300) discloses electrical conductors (column 1).
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 4, neither Kim et al. (WO ‘047) nor Kichizo et al. (‘300) specify the presence of Al10FeCe2-.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The Examiner is not aware of additional pertinent prior art at this time due to the broad scope associated with the utility of this invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759