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Claims 1-3 and 5-21 are pending wherein claims 1-3 are amended, claim 4 is canceled and claims 16-21 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claims 2-3 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends is withdrawn in view of the Applicant’s amendment to claims 2-3. The previous rejection of claims 1, 5-8 and 12-15 under 35 U.S.C. 102(a)(1) as being anticipated by Beals (US 2009/0196787) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1 and 6-15 under 35 U.S.C. 103 as being unpatentable over Bronfin et al. (US 2017/0129006) is withdrawn in view of the Applicant’s amendment to claim 1.
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 1-2 and 5-15 are rejected under 35 U.S.C. 103 as being unpatentable over Beals (US 2009/0196787).
In regard to claim 1, Beals et al. (‘787) discloses magnesium base alloys having compositions relative to that of the instant invention as set forth below ([0031] and claim 1).
Element
Instant Claim
(weight percent)
Beals et al. (‘787)
(weight percent)
Overlap
Al
4.5 – 6.5
about 6 – 7.5
about 6 – 6.5
Zn
0.1 – 3
about 0.2 – 0.45
about 0.2 – 0.45
Ca
0 – 1.5
about 0.01 – 0.9
about 0.01 – 0.9
Sn
0 – 4
about 0.01 – 0.12
about 0.01 – 0.12
Mn
0.1 – 0.5
about 0.15 – 0.25
about 0.15 – 0.25
Si
0 – 0.5
0
0
B+Sr
0 – 0.5
about 0.01 – 0.11
about 0.01 – 0.11
Fe
less than 0.1
0
0
Cu
less than 0.1
0
0
Ni
less than 0.01
0
0
Mg
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, zinc, calcium, tin, manganese, silicon, boron, strontium, iron, copper and nickel for the magnesium based alloys disclosed by Beals et al. (‘787) 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 instant invention to select the claimed amounts of aluminum, zinc, calcium, tin, manganese, silicon, boron, strontium, iron, copper and nickel from the amounts disclosed by Beals et al. (‘787) because Beals et al. (‘787) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “comprising” in claim 1, the claim is open to additional, unrecited elements so even though Beals et al. (‘787) requires the presence of lanthanum, cerium, and beryllium, these elements would not be excluded by this transitional language. MPEP 2111.03.
Still regarding claim 1, since tin is less than 2, P = (32 x wt. % Zn) + (9 x wt. % Ca) + (18 x wt. % Sn), P would range from about 6.67 to about 24.66 in Beals et al. (‘787), which would be close enough to establish prima facie obviousness. MPEP 2144.05 I.
In regard to claim 2, Beals et al. (‘787) discloses magnesium base alloys having compositions relative to that of the instant invention as set forth below ([0031] and claim 1).
Element
Instant Claim
(weight percent)
Beals et al. (‘787)
(weight percent)
Overlap
Al
4.5 – 6.5
about 6 – 7.5
about 6 – 6.5
Zn
0.1 – 3
about 0.2 – 0.45
about 0.2 – 0.45
Ca
0 – 1.5
about 0.01 – 0.9
about 0.01 – 0.9
Sn
0 – 4
about 0.01 – 0.12
about 0.01 – 0.12
Mn
0.1 – 0.5
about 0.15 – 0.25
about 0.15 – 0.25
Si
0 – 0.5
0
0
B+Sr
0 – 0.5
about 0.01 – 0.11
about 0.01 – 0.11
Fe
less than 0.1
0
0
Cu
less than 0.1
0
0
Ni
less than 0.01
0
0
Mg
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, zinc, calcium, tin, manganese, silicon, boron, strontium, iron, copper and nickel for the magnesium based alloys disclosed by Beals et al. (‘787) 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 instant invention to select the claimed amounts of aluminum, zinc, calcium, tin, manganese, silicon, boron, strontium, iron, copper and nickel from the amounts disclosed by Beals et al. (‘787) because Beals et al. (‘787) discloses the same utility throughout the disclosed ranges.
With respect to the transitional language “consisting essentially of” in claim 2, while Beals et al. (‘787) discloses the presence of about 1 to about 3.5 weight percent rare earth metals, the instant specification does not indicate that the presence of rare earth metals would be detrimental to the claimed alloys and therefore Beals et al. (‘787) would still read on the alloy with this transitional language. MPEP 2111.03.
In regard to claim 5, Beals et al. (‘787) does not require the presence of germanium and therefore reads on the claim ([0031] and claim 1).
In regard to claim 6, Beals et al. (‘787) does not require the presence of lithium and therefore reads on the claim ([0031] and claim 1).
In regard to claim 7-9, Beals et al. (‘787) discloses substantially similar compositions. Therefore, the claimed yield strengths would be expected. MPEP 2112.01 I.
In regard to claims 10-11, Beals et al. (‘787) discloses substantially similar compositions. Therefore, the claimed elongations to failure would be expected. MPEP 2112.01 I.
In regard to claims 12-15, Beals et al. (‘787) discloses substantially similar compositions. Therefore, the claimed melting range would be expected. MPEP 2112.01 I.
Allowable Subject Matter
Claim 3 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 3, the prior art to Beals et al. (‘787) discloses the presence of about 1 to about 3.5 weight percent rare earth metals and therefore an alloy consisting of 4.5 to 6.5 weight percent aluminum, 0.10 to 3.0 weight percent zinc, 0.10 to 3.0 weight percent calcium, 0 to 4 weight percent tin, 0.1 to 0.5 weight percent manganese; 0 to 0.5 weight percent silicon; 0 to 0.5 weight percent of boron and strontium; less than 0.1 weight percent iron; less than 0.1 weight percent copper; less than 0.01 weight percent nickel and the balance magnesium would distinguish from Beals et al. (‘787) [0031].
Response to Arguments
Applicant's arguments filed June 12, 2026 have been fully considered but they are not persuasive.
The Applicant primarily argues that the processability index of the alloy of Beals et al. (‘787) is 6.67 to 24.66 and that is below the claimed Processability Index minimum of 25 and that amount extends to 150 which is far above Beals et al. (‘787). The Applicant further argues that Beals et al. (‘787) discloses a minimum of 1% rare earth elements.
In response, the Examiner notes that all of elements in Beals et al. (‘787) are disclosed with “about” language so the processability index of Beals et al. (‘787) would be about 6.67 to about 24.66, which would overlap or would be close enough to 25 to establish prima facie evidence of obviousness. MPEP 2144.05 I. Additionally, the Examiner agrees that Beals et al. (‘787) discloses a minimum of 1% rare earth elements and has objected to claim 3 for that reason as “consisting of” transitional language would exclude rare earth elements as set forth in claim 3. MPEP 2111.03.
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
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