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Claims 1-21 are pending wherein claims 1-15 are currently under examination and claims 16-21 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of preparing thixomolded articles/thixomolded articles. Applicant’s election of claims 1-15 in the Response filed on February 4, 2026 was made without traverse.
Claim Rejections - 35 USC § 112
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 2-3 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.
With respect to the recitation “Zn: 0.05-3.0” in claim 2, the Examiner notes that claim 1, upon which claim 2 depends requires “Zn: 0.1-3.0”. Thus, claim 2 is broader than claim 1 in terms of zinc and therefore fails to further limit claim 1.
With respect to the recitation “Zn: 0.05-3.0” in claim 3, the Examiner notes that claim 1, upon which claim 2 depends requires “Zn: 0.1-3.0”. Thus, claim 3 is broader than claim 1 in terms of zinc and therefore fails to further limit claim 1.
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.
Claims 1, 5-8 and 12-15 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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 (Series 4 of Table 1).
Element
Instant Claim
(weight percent)
Beals et al. (‘787)
(weight percent)
Overlap
Al
4.5 – 6.5
6.145
6.145
Zn
0.1 – 3
0.305
0.305
Ca
0 – 1.5
0.12
0.12
Sn
0 – 4
0.01
0.01
Mn
0.1 – 0.5
0.18
0.18
Si
0 – 0.5
0
0
Element
Instant Claim
(weight percent)
Beals et al. (‘787)
(weight percent)
Overlap
B+Sr
0 – 0.5
0.01 Sr
0.01 Sr
Fe
less than 0.1
0
0
Cu
less than 0.l
0
0
Ni
less than 0.01
0
0
Mg
Balance
Balance
Balance
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 rare earth elements and beryllium, these elements would not be excluded by 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 (Series 4 in Table 1).
In regard to claim 6, Beals et al. (‘787) does not require the presence of lithium and therefore reads on the claim (Series 4 in Table 1).
In regard to claims 7-8, Beals et al. (‘787) discloses wherein Series 4 has a yield strength of 17.2 ksi (Series 4 in Table 3). This converts to 118.6 MPa and therefore would read on the claim.
With respect to the recitation “wherein the alloy has a melting range of at least 200°C” in claim 12, Beals et al. (‘787) discloses the same composition (Series 4 in Table 1). Therefore the claimed melting range would be inherent. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 175°C” in claim 13, Beals et al. (‘787) discloses the same composition (Series 4 in Table 1). Therefore the claimed melting range would be inherent. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 150°C” in claim 14, Beals et al. (‘787) discloses the same composition (Series 4 in Table 1). Therefore the claimed melting range would be inherent. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 135°C” in claim 15, Beals et al. (‘787) discloses the same composition (Series 4 in Table 1). Therefore the claimed melting range would be inherent. MPEP 2112.01 I.
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, 4, and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Bronfin et al. (US 2017/0129006).
In regard to claim 1, Bronfin et al. (‘006) discloses magnesium base alloys having compositions relative to that of the instant invention as set forth below [0014].
Element
Instant Claim
(weight percent)
Bronfin et al. (‘006)
(weight percent)
Overlap
Al
4.5 – 6.5
2.6 – 5.5
4.5 – 5.5
Zn
0.1 – 3
0 – 0.35
0.1 – 0.35
Ca
0 – 1.5
0
0
Sn
0 – 4
0 – 0.4
0 – 0.4
Mn
0.1 – 0.5
0.14 – 0.50
0.14 – 0.5
Si
0 – 0.5
0
0
B+Sr
0 – 0.5
0
0
Fe
less than 0.1
0
0
Cu
less than 0.l
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 Bronfin et al. (‘006) 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 Bronfin et al. (‘006) because Bronfin et al. (‘006) 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 Bronfin et al. (‘006) requires the presence of lanthanum, cerium, and beryllium, these elements would not be excluded by this transitional language. MPEP 2111.03.
In regard to claim 5, Bronfin et al. (‘006) does not require the presence of germanium and therefore reads on the claim [0014].
In regard to claim 6, Bronfin et al. (‘006) does require the presence of lithium and therefore reads on the claim [0014].
With respect to the recitation “wherein the alloy has a yield strength of at least 90 MPa” in claim 7, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore, the claim yield strengths would be expected. MPEP 2112.01 I. Additionally, Bronfin et al. (‘006) discloses yield strengths greater than 90 MPa in [0032].
With respect to the recitation “wherein the alloy has a yield strength of at least 100 MPa” in claim 8, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore, the claim yield strengths would be expected. MPEP 2112.01 I. Additionally, Bronfin et al. (‘006) discloses yield strengths greater than 100 MPa in [0032].
With respect to the recitation “wherein the alloy has a yield strength of at least 120 MPa” in claim 9, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore, the claim yield strengths would be expected. MPEP 2112.01 I. Additionally, Bronfin et al. (‘006) discloses yield strengths greater than 100 MPa in [0032].
In regard to claims 10-11, Bronfin et al. (‘006) discloses elongations of at least 12% (claim 25).
With respect to the recitation “wherein the alloy has a melting range of at least 200°C” in claim 12, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore the claimed melting range would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 175°C” in claim 13, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore the claimed melting range would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 150°C” in claim 14, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore the claimed melting range would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy has a melting range of at least 135°C” in claim 15, Bronfin et al. (‘006) discloses substantially similar compositions. Therefore the claimed melting range would be expected. MPEP 2112.01 I.
Claims 1 and 4-15 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
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.
In regard to claim 4, 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 overlap the range of the instant invention. MPEP 2144.05 I.
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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. In view of the rejection provided by the Examiner under 35 U.S.C. 102, no additional prior art has been made of record at this time
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759
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