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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 2, 2026, has been entered.
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 4-6 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.
Regarding claims 4-6, claim 4 recites a plurality of carbon fiber pieces, wherein a content of the carbon fiber piece is 1 mass% or more and 20 mass% or less. Although the claim recites a plurality of carbon fiber pieces, it is unclear if the recitation of “a content of the carbon fiber piece” is directed to a singular piece or the plurality of pieces, as antecedent basis is only provided for “a plurality of carbon fiber pieces.”
Additionally, it is unclear if the mass% is based on the molding material, or is in relation to the metal body or in relation to the bonding portion, or some other comparison.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0478025 to Schmid in view of USPN 8,282,748 to Moll and WO 90/09461 to Corbett.
Regarding claims 1-3, Schmid teaches improving the technological mechanical properties in cast magnesium or magnesium-alloy components for engines and vehicles (Schmid, Abstract), such that the components possess sufficient wear resistance with low friction and/or meet the high requirements for strength against dynamic stress (Id., paragraph 0006). Schmid teaches embedding hard, finely lamellar eutectic and solid primarily precipitated magnesium silicide (Id., paragraphs 0007-0010), wherein the component matrix contains 1 to 50 wt% magnesium silicide (Id., paragraph 0011).
Schmid teaches that ceramic fibers, including carbon, can be embedded in the component matrix, with fiber molded bodies being advantageously arranged (Schmid, paragraph 0019). Schmid does not appear to teach thixotropically molding the product or the claimed area fraction and properties of the carbon fibers.
Regarding the molded product, Moll teaches metal matrix composite materials including at least a portion of magnesium and involving at least one production step in which a thixomolding ensues (Moll, Abstract, claim 1). Moll teaches an Mg2Si phase having a volume fraction of at least 2% is incorporated in a metal matrix (Id.). Moll teaches that thixomolding is suitable especially for producing very thin-walled components with high dimensional stability (Id., column 1 line 59 to column 2 line 5), including components for motor vehicles (Id., column 3 lines 14-28).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the component of Schmid, wherein the fiber molded bodies are thixotropically molded, as taught by Moll, motivated by the desire of forming a conventional magnesium matrix composite formed by a process known in the art to be predictably suitable for similar components for similar uses, where thin-walled components with high dimensional stability are desired.
Regarding the claimed carbon fibers, Corbett teaches a similar fiber-organic composition including from about 5% to 50% by volume of uniformly dispersed, non-planar or three-dimensionally random oriented inorganic fiber or whiskers and dispersion of the inorganic fibers or whiskers, molding the mixture leaving a shaped body or preform, and then infiltrating with molten metal to form a metal matrix composite (Corbett, Abstract), wherein the metal is magnesium and magnesium alloys (Id., claims 31-39). Corbett teaches that an organic thermoplastic molding compound such as a wax is added to aid in wetting and dispersion of the fibers (Id., page 10 lines 24-31, page 14 line 12 to page 14 line 22, page 23 lines 11-21). Corbett teaches that the short inorganic fibers may be silicon carbide whiskers or carbon fibers (Id., page 11 lines 9-19) to impart strength and stiffness as a reinforcing phase (Id., page 1 lines 16-22). Corbett teaches that the whiskers have lengths of between about 5 and more than 1,000 microns, and diameters of about 0.05 to 5 microns or 0.01 to 25 microns (Id., page 23 line 22 to page 24 line 18), and average aspect ratios of from about 20 to about 100 (Id., page 27 line 32 to page 28 line 8). Corbett teaches removing a majority but not all of the thermoplastic material, wherein bonding between the fibers is accomplished with silica (Id., page 7 lines 4-30, page 29 line 2 to page 30 line 20). Corbett teaches that low percentages of fibers in the order of 20% by volume or less could be subsequently molded if a fugitive material such as a polymeric organic material is added (Id., page 30 lines 21-30). Corbett teaches that the fibers amount to at least about 10% to about 40% by volume of the metal matrix composite (Id., claim 32).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the component of the prior art combination, wherein the carbon fibers comprise an area fraction and properties, such as within the claimed ranges, as taught by Corbett, motivated by the desire of forming a conventional magnesium matrix composite having predictably suitable amounts and properties of the carbon fibers to provide reinforcing properties, such as strength and stiffness.
Claims 2 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0478025 to Schmid in view of USPN 8,282,748 to Moll and WO 90/09461 to Corbett, as applied to claims 1-3 above, and further in view of USPN 5,041,340 to Ushio.
Regarding claims 2 and 3, the prior art combination appears to teach overlapping fiber lengths and aspect ratio as claimed. Alternatively, Ushio teaches a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties which contains a mixed fiber uniformly dispersed in a light alloy matrix (Ushio, Abstract). Ushio teaches that a magnesium alloy can be used as a light alloy (Id., column 8 lines 20-35). Ushio teaches that the aspect ratio of the carbon fiber may be set in a range of 10 to 150 (Id., column 5 lines 54-59), having an average length of 100 to 200 µm (Id., column 6 line 65 to column 7 line 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the metal matrix composite of the prior art combination, and adjusting and varying the fiber lengths and aspect ratios, such as within the claimed ranges, as taught by Ushio, motivated by the desire of forming a conventional metal matrix composite comprising carbon fiber properties known in the art as being predictably suitable for forming a fiber-reinforced light alloy member excellent in heat conductivity and sliding properties.
Claim Rejections - 35 USC § 102/103
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 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Fabrication of High Performance Magnesium/Carbon-Fiber/PEEK Laminated Composites” to Kuo.
Regarding claims 4-6, Kuo teaches low density and high performance Mg-based laminated composites fabricated by means of sandwiching AZ31 Mg foils with carbon-fiber/polyether ether ketone prepreg through hot pressing (Kuo, Abstract, pages 1613-1619). Kuo teaches that the Mg sheet measured 2 mm in thickness and a density of 1.77 Mg/m3 (Id., page 1614). Kuo teaches that the prepreg contains about 68 mass% carbon fiber, wherein the resulting density and thickness of one prepreg layer are about 1.6Mg/m3 and 120-150µm respectively (Id.). Note that the amount of carbon fibers is within the claimed mass%.
Regarding the preamble, the claimed thixotropic molding material is interpreted as the intended use of the material. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Since Kuo teaches a substantially similar structure and composition as claimed, the composite of Kuo appears suitable for use as claimed.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Kuo, as applied to claims 4 and 6 above, in view of “Effect of short carbon fiber content on SCFs/AZ31 composite microstructure and mechanical properties” to Xu.
Kuo does not appear to teach the length of the carbon fiber. However, Xu teaches magnesium matrix composites containing various content of short carbon fibers reinforcement (Xu, Abstract). Xu teaches that short carbon fibers are coated on AZ31 chips uniformly (Id., page 3, Fig. 2). Xu teaches that the length of the short carbon fibers is between 5-100 µm (Id., page 1). Xu teaches that the composite possesses excellent mechanical properties (Id., page 5).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to make the composite of Kuo, wherein the carbon fibers comprise a length, such as within the claimed range, as taught by Xu, motivated by the desire of forming a conventional Mg-based laminated composite having carbon fiber lengths known in the art as being predictably suitable composites possessing excellent mechanical properties.
Response to Arguments
Applicants’ arguments have been considered but are moot based on the new ground of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER Y CHOI whose telephone number is (571)272-6730. The examiner can normally be reached M-F 9:00 AM - 3:00 PM.
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/PETER Y CHOI/ Primary Examiner, Art Unit 1786
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