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 .
Claim Status
An amendment, filed 4/21/2026, is acknowledged. Claim 1 is amended; claims 7-9 are newly added. Claims 1-9 are currently pending, claims 2-6 are withdrawn.
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 1 and 7-9 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 1 recites “rare earth elements 0.5%~1%...wherein the rare earth elements consist of La and Ce, which account for 35% to 65% of the total added rare earth elements.” Thus, the claim recites the closed transitional phrase with regard to La and Ce as rare earth elements, but then requires that La and Ce make up only 35-65% of the rare earth elements of the alloy. As a result, the scope of the required composition is indefinite as it is unclear what rare earth elements and/or what content of such elements are required by the claim. For the purposes of examination, the claim is interpreted to require La and Ce making up 35-65% of the present rare earth elements and additionally require at least one unnamed rare earth element making up the remainder of the rare earth element(s) in the alloy. Claims 7-9 are indefinite based on their dependency.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Qiu (CN 112680645A)(machine translation previously provided).
With respect to Claim 1, Qiu teaches a cast magnesium alloy with good compression strength properties (and thus, deemed to meet the claimed “high strength” which requires no particular properties or measurements), the alloy having a composition, in mass %, as follows (pgs. 1, 3-4, and 7 of translation):
Claim 1
Qiu
Zn
7.0
2-12
Al
3.0-5.0
2-12
Mn
0.3-0.5
0-0.8
RE (rare earth)
0.5-1 total, including La + Ce, wherein La + Ce is 35-65% of RE
La: 0-3
Ce: 0-3
Sm: 0.1-6
Mg
Balance wherein total inevitable impurities are 0.04 or less
Balance with unavoidable impurities
Other
-
Zr: 0-0.3
Si: 0-0.5
Ca: 0-1
Sr: 0-2
Ag: 0-0.5
Compositional ranges including zero (e.g. Qiu ranges of Zr, Si, Ca, Sr, and Ag) are interpreted as optional elements. It is further noted that while the claim limits the inevitable impurities, the claim does not use a closed transitional phrase. Therefore, the claim is interpreted to allow for additional, unrecited elements in excess of the claimed impurities provided that such elements are intentionally added. Thus, Qiu teaches a cast magnesium alloy with compositional ranges overlapping each of the instantly claimed ranges, including content of La, Ce, and Sm (another rare earth element) overlapping the claimed compositions and relationships of rare earth elements. (see also interpretation of claim 1 in the 112(b) rejection above). It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Furthermore, regarding the composition-based relationship of rare earth elements in the instant claim, the instantly claimed relationship fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the magnesium alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition relationship, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based relationship because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
Finally, with respect to the limitation “among them, Mn, La, and Ce are added in the form of Mg-5wt.%Mn, Mg-30wt.% and Mg-30wt.%Ce intermediate alloys respectively,” this limitation is drawn to the method in which the claimed cast alloy is made and therefore, constitutes a product-by-process limitation. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” Here, the intermediate alloys used to form the final composition to do limit the structure/composition of the final cast alloy and therefore, are not provided patentable weight. As a result, as Qiu teaches a magnesium alloy meeting the claimed ranges, it is deemed to meet the instant claim.
With respect to Claims 7-9, Qiu teaches compositional ranges of Al, Mn, and rare earth elements overlapping the respectively claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 4/21/2026 have been fully considered but they are not persuasive.
Applicant argues that “Applicant’s magnesium alloy contains only two rare earth elements, La and Ce” “[w]hereas, Qiu’s magnesium alloy contains the rare earth element Sm.” (Remarks, p. 5). This argument is not found persuasive. Claim 1 requires that the La and Ce account for only 35-65% of htre total added rare earth elements, and therefore, specifically requires the presence of at least one rare earth element other than La and Ce. The contradictory limitations of claim 1 are further rendered indefinite, as detailed above in the 112(b) rejection.
Applicant also argues that “Applicant’s rare earth elements La and Ce account for 35% and 65% of the total added rare earth elements, respectively. Whereas, Qiu’s rare earth elements La and Ce could not account for 35% and 65% of the total added rare earth elements since there is the additional Sm included.” (Remarks, p. 6). This argument is not found persuasive. By limiting the content of La and Ce to 35-65% of added rare earth elements, the claim requires additional rare earth element content and thus, the inclusion of Sm, in fact, meets the claim limitations. In other words, if Applicant intends to strictly limit the claimed alloy to La and Ce as rare earth elements, the claims should be amended such that La and Ce account for 100% of rare earth elements, not 35-65%, or alternatively, amend the claims to recite that La and Ce each separately account for 35-65% of the total rare earth elements which consist of La and Ce.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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