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 Claims
Claims 1-12 and 25-36 are pending and are presented for this examination. Claims 1 and 6-12, 25, 30-36 are amended. Claims 13-24 and 37 are cancelled.
Status of Previous Rejection
112 2nd paragraph rejections of claims 1-37 are withdrawn in view of amendment.
102 rejections by Chen and 103 over Zhu are both withdrawn in view of amendment.
103 rejections over Li are maintained.
In addition, 112 1st paragraph rejection of claims 1-2 and 25-36 are rendered in view of amendment of claims 1 and 25.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 01/21/2024, 01/31/2024, 05/07/2024, 08/27/2024, 10/30/2024, 04/10/2025, 05/29/2025, 07/30/2025, 09/05/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12 and 25-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
It is noted instant claims 1 and 25 are amended to require Si between 0.5-3.9%. The amendment is neither supported by original disclosure nor original claims. Instant application PGPUB paragraphs [0117] through [0119] merely discloses Si as 0.1-1.5%. Because 0.5-3.9% is not narrower than 0.1-1.5%, and amended upper limit of 3.9% is much broader than original upper limit of 1.5%, instant claims 1 and 25 render new matter.
As a result of rejected claims 1 and 25, all dependent claims are also rejected under the same statue.
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) 1-12 and 25-36 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN108330344A).
As for claims 1-12 and 25-36, Li discloses a 3D printed 7xxx aluminum alloy. ([0001]) Hence, instant claimed additive manufacturing alloy, in which the alloy is aluminum based is met.
The 7xxx aluminum alloy has broad ranges of elemental compositions overlapping with instant claimed amended ranges as illustrated in Table 4 below. ([0008]) The alloy has UTS>=300 MPa and elongation >=12% ([0034]) which overlaps instant claims 6-12 and 30-36 required UTS and elongation ranges respectively.
Table 4
Element
Applicant
(weight %)
Li et al.
(weight %)
[0008]
Overlap
(weight %)
Mg (Claim 1)
2.5-5.3
2.1-6.9
2.5-5.3
Mn(Claim 1)
0.4-4
0.1-6.3
0.4-4
Si(Claim 1)
0.5-3.9
0.1-6
0.5-3.9
Zr(Claim 1)
0.7-2
0-6
0.7-2
Ti (Claims 2-3, 26-27)
0.01-2
0-6.2
0.01-2
Fe (Claims 4-5, 28-29)
0.01-2.5
0-6
0.01-2.5
Mn(Claim 25)
1.1-4
0.1-6.3
1.1-4
Si(Claim 25)
0.5-3.9
0.1-6
0.5-3.9
Zr(Claim 25)
0.7-1.9
0-6
0.7-1.9
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003)
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12 and 25-36 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-39 of U.S. Patent No. 12,378,643. Although the claims at issue are not identical, they are not patentably distinct from each other because claimed inventions are directed to an Al-based alloy with Mg, Mn, Si, Zr ranges overlapping. The U.S. Patent No. 12,378,643 also teaches the alloy is an additive manufacturing alloy.
Claims 1-12 and 25-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 and 17-42 of co-pending Application No. 16/526,679. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to an Al-based alloy with Mg, Mn, Si, Zr ranges overlapping. The co-pending application also teaches the alloy is an additive manufacturing alloy.
Hence, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by the co-pending application in order to arrive at alloy of claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 and 25-36 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-46 of co-pending Application No. 18/814,143. Although the claims at issue are not identical, they are not patentably distinct from each other because both claimed inventions are directed to an Al-based alloy with Mg, Mn, Si, Zr ranges overlapping. The co-pending application also teaches the alloy is an additive manufacturing alloy.
Hence, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by the co-pending application in order to arrive at alloy of claimed invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Argument
Applicant first indicates in 06/23/2026 Remarks page 6 that no new matter has been added to the claims. Such indication is in clear error because amended Si range is new matter according to 112 1st paragraph rejection above.
Applicant then argues that office action did not provide any articulated reasons with some rational underpinning or set forth a prima facie case, argument is not persuasive because under U.S. patent law, a prima facie case of obviousness exists when the prior art teaches a range that overlaps with the claimed range, even if the prior art’s range is broad and the claim’s range is narrow. This is because overlapping ranges are considered “similar” and “approaching” under MPEP § 2144.05, and courts have held that such overlap supports an obviousness rejection unless the applicant can rebut it. In the instant case, examiner provided obviousness evidence supported by Table 1 above which clearly shows a wide overlapping range. Hence, applicant’s allegation that examiner merely provides conclusionary statement is completely untrue.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) In the instant case, where is the objective evidence ? The answer is NONE.
Applicant then argues reference’s disclosed range is so broad as to encompass a very large number of possible distinct composition. It should be noted even if the prior art’s range is much wider, the mere fact that the claimed range falls within it is enough to establish a prima facie case. The Federal Circuit has emphasized that “once the challenger establishes overlapping ranges, the court must evaluate whether the patentee has established that the claimed range is critical”. In the instant case, reference’s disclosed range falls within the prior art’s range. Hence, if the prior art teaches a broad range that overlaps the claimed narrow range, a prima facie case of obviousness generally still exists, unless the applicant can demonstrate that the claimed range is critical or produces unexpected results. Since applicant fails to present any objective evidence demonstrating criticality of claimed range or unexpected result. Hence, prima facie case obviousness is maintained.
“Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range, see MPEP § 716.02(d) - § 716.02(e)”.
Applicant lastly argues there would not have been any motivation to try to narrow down the immense number of possibilities disclosed by Li and Zhu, it should be noted according to MPEP 2131.03 II clearly states “What constitutes a “sufficient specificity” is fact dependent. If the claims are directed to a narrow range, and the reference teaches a broader range, other facts of the case, must be considered when determining whether the narrow range is disclosed with “sufficient specificity” to constitute an anticipation of the claims.” In the instant case, size of the overlapping range is extensive. Hence, claimed narrow range is disclosed with “sufficient specificity” by prior at. Second, examiner does not rely “obvious to try” rational at all. Hence, argument is incommensurate in scope of current art rejection. Lastly, [0009] of Li discloses a narrower range close to claimed range.
In conclusion, prima facie case of obviousness due to overlapping can be overcome by evidence of criticality or unexpected result. Absent evidence of criticality or unexpected result, prima facie case of obviousness is maintained. Hence, applicant is invited to submit 132 Declaration demonstrating criticality of claimed ranges or unexpected result.
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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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