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
Claims 1-14 are amended in view of applicant’s preliminary amendment filed 10/26/2023. Therefore, claims 1-14 are currently under examination.
Claim Interpretation
The term “An aluminum casting alloy for near net shaped casting of structural or non-structural component” as recited in claim 1 is interpreted to mean an Al alloy that is casted into a product having a shape is very close to the desired final product shape, which is consistent with what is commonly known in the Al alloy casting art.
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.
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.
Claims 11-14 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.
Claim 11 recites the limitation "the as-cast state" in line 3 and “the range of 280 to 300MPa” in lines 4-5. There are insufficient antecedent bases for these limitations in the claim.
Claim 12 recites the limitation "the as-cast state" in line 3 and “the range of 300 to 340MPa” in lines 4-5. There are insufficient antecedent bases for these limitations in the claim.
Claim 13 recites the limitation "the manufacture of a cast part" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Additionally, claim 13 recites “c) subjecting the cast part to a T4 temper treatment which involves a solution heat treatment at temperatures of 460 to 480 °C for 2 to 24 h optionally followed by a forced air or water quenching and natural aging for 7 to 75 days”. There are two steps after the phrase “optionally followed by”. First step is a forced air or water quenching step, and the second step is natural aging step. It is unclear if the forced air or water quenching step is optional, or the natural aging step is optional, or if both steps are optional. In other words, the scope of claimed natural aging is not well defined since it is unclear whether the natural aging step as claimed is a mandatory step or an optional step.
Claim 14 recites the limitation "the manufacture of a cast part" in line 1. There is insufficient antecedent basis for this limitation in the claim.
Additionally, claim 14 recites “c.1) the heat treatment is a T4 temper treatment which involves a solution heat treatment at temperatures of 460 to 480 °C for 2 to 24 h optionally followed by a forced air or water quenching and natural aging for 7 to 75 days”. There are two steps after the phrase “optionally followed by”. First step is a forced air or water quenching step, and the second step is natural aging step. It is unclear if the forced air or water quenching step is optional, or the natural aging step is optional, or if both steps are optional. In other words, the scope of claimed natural aging is not well defined since it is unclear whether the natural aging step as claimed is a mandatory step or an optional step.
Claims 2-7 and 9-10 are 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.
Claim 2 recites “the Zn content is not more than 5.5% by mass”. However, its parent claim 1 recites “Zn: 4.5-7.5%”(by mass). The scope of Zn content of claim 2 is broader than the scope of Zn content in parent claim 1, because the scope of Zn content of claim 2 does not include a lower limit.
Claim 3 recites “the Zn content is at least 4.6% by mass”. However, its parent claim 1 recites “Zn: 4.5-7.5%”(by mass). The scope of Zn content of claim 3 is broader than the scope of Zn content in parent claim 1, because the scope of Zn content of claim 3 does not include an upper limit.
Claim 4 recites “the Mg content is not more than 1.0 % by mass”. However, its parent claim 1 recites “Mg: 0.7-2.0%”(by mass). The scope of Mg content of claim 4 is broader than the scope of Mg content in parent claim 1, because the scope of Mn content of claim 4 does not include a lower limit.
Claim 5 recites “the Mg content is at least 0.8 % by mass”. However, its parent claim 1 recites “Mg: 0.7-2.0%”(by mass). The scope of Mg content of claim 5 is broader than the scope of Mg content in parent claim 1, because the scope of Mn content of claim 5 does not include an upper limit.
Claim 6 recites “the Fe content is not more than 1.5 % by mass”. However, its parent claim 1 recites “Fe: 0.8-2.0%”(by mass). The scope of Fe content of claim 6 is broader than the scope of Fe content in parent claim 1, because the scope of Fe content of claim 6 does not include a lower limit.
Claim 7 recites “the Fe content is at least 1.0 % by mass”. However, its parent claim 1 recites “Fe: 0.8-2.0%”(by mass). The scope of Fe content of claim 7 is broader than the scope of Fe content in parent claim 1, because the scope of Fe content of claim 7 does not include a upper limit.
Claim 9 recites “wherein the alloy contains at least 0.05 % by mass of Ti”. However, its parent claim 1 recites “Ti: ≤ 0.2%”(by mass). The scope of Ti content of claim 9 is broader than the scope of Ti content in parent claim 1, because the scope of Ti content of claim 9 does not include an upper limit.
Claim 10 recites “wherein the alloy contains at least 0.1 % by mass of V”. However, its parent claim 1 recites “V: ≤ 0.2%”(by mass). The scope of V content of claim 10 is broader than the scope of V content in parent claim 1, because the scope of V content of claim 10 does not include an upper limit.
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 § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-3, 6-8 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shankar et al. US 2019/0376166(Shankar).
Shankar teaches an Al casting alloy for near net shaped casting of structural components, wherein the Al casting alloy having an alloy composition that applies to the instant claims as follows:
Al casting alloy
(mass%)
Instant Application
(mass%)
Shankar
(mass%)
Table 9 Alloy SIB #1
(mass%)
Zn
4.5-7.5
2-10 [0008]
5.0
Mg
0.7-2.0
0.5-5
2.0
Fe
0.8-2.0
0.5-5
1.5
Si
< 0.3
≤ 0.5
0
Cu
< 0.1
< 0.4
0
V
≤ 0.2
≤ 0.5
-
Ti
≤ 0.2
≤ 0.5
0
B
≤ 0.04
≤ 0.5
-
Unavoidable impurities
Sum ≤ 0.1
Impurities(claim 2)
-
Balance Al
Balance Al
Balance Al [0025]
Balance Al
Regarding claims 1-3 and 6-8, the Al casting alloy SIB #1 in Table 9 of Shankar has the same chemical composition as claimed Al casting alloy.
Regarding claim 12, the amounts of Zn and Mn in the Al casting alloy of SIB #1 as taught by Shankar reads on the claimed amounts of Zn and Mg. Table 12 of Shankar further teaches at F21 temper(F-temper) the Al casting alloy has an ultimate tensile strength of 315 MPa, a yield strength of 200 and elongation of 3.80(i.e. rounds up to 4). Therefore, the Al casting alloy SIB #1 of Shankar has the same ultimate tensile strength, the same yield strength and the same elongation as claimed Al casting alloy.
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.
Claim(s) 4-5, 9-11 and 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Shankar et al. US 2019/0376166(Shankar).
The teachings of Shankar are discussed in section 9 above.
Regarding claims 4-5 and 9-10, the broader scope of Shankar teaches an Al casting alloy having amounts of Mg, Ti and V that encompasses the claimed amounts of Mg, Ti and V. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regarding claim 11, the broader scope of Shankar teaches an Al casting alloy having an amount of Mg encompasses the claimed amount of Mg as recited in claim 11.
Regarding claims 13-14, Shankar further teaches a process for manufacturing a cast Al alloy part comprising providing an Al melt having a composition discussed above[0149], casting a cast part from the Al melt[0149-0150], subjecting the cast part to a T4 temper treatment comprising a solution heat treatment at 460° for 3.5 or 24 hrs followed by water quench, followed by aging at room temperature(Table 11, T4-1 and T4-2, and claim 8). The solution heat treatment temperature and duration in the process of Shankar read on the claimed solution heat treatment temperature and duration.
Additionally, although the natural aging as taught by Shankar is 1-24 hours rather than the claimed 7-75days, the examiner still concludes that the broadest scope of the process of Shankar encompasses the claimed natural aging since the Al casting alloy of Shankar, which would have been placed in storage prior to application, would have continued to age naturally at room temperature during storage for days until further processing, absent persuasive evidence that the claimed natural aging duration of 7-75 days is significant.
Lastly, since the Shankar teaches a process for manufacturing an Al casting alloy part that uses an Al alloy having a composition that is significantly similar to the claimed Al casting alloy composition and undergoing the significantly similar manufacturing steps as claimed, one of ordinary skill in the art would have expected that the cast Al alloy made by the process of Shankar to have significantly similar properties such as claimed ultimate tensile strength, yield strength and elongation, as showing in Tables 8 and 12 of Shankar.
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 1-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,634,795. Although the claims at issue are not identical, they are not patentably distinct from each other because claims 1-18 of U.S. Patent No. 11,634,795 teaches an Al alloy having compositions that encompasses the claimed Al alloy composition and is manufactured by a process comprising casting and solution heat treatment at similar process conditions, wherein the tensile strength and yield strength of the produced Al alloy encompasses the claimed tensile strength and yield strength.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/ Primary Examiner, Art Unit 1733