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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claim 1, in the reply filed on 11/30/2025 is acknowledged.
Claims 2-6 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 11/30/2025.
Claim Objections
Claim 1 is objected to because of the following informalities: the claim term “RE,” occurring in lines 3, 4, and 5, is an acronym for rare earth (element) and is preferably replaced with the written out term, for example, “rare earth elements”. Appropriate correction is required.
It is also noted for the purposes of compact prosecution that Claim 2, currently withdrawn, would be objected to for minor informalities, wherein the preamble should recite “A method…” rather than the currently recited “The method.” Claims 3-6 reciting “The method of claim 2…” are in proper form.
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 is rejected under 35 U.S.C. 103 as being unpatentable over Qiu (CN 112680645A)(machine translation 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 (RE)) overlapping the claimed relationship of RE elements. 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 RE, La, and Ce 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 110863130A drawn to a magnesium alloy.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735