724891Notice 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 1-37 are pending and are presented for this examination.
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 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 1-37 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 pre-AIA the applicant regards as the invention.
Instant claims 1, 13, 25 and 37 recite an alloy comprising Mg, Mn, Si, Zr and Al. Without reciting amount of Al, it is unclear whether Al content is the base material of the alloy or merely an microalloying element of the alloy. Since the base material of claimed alloy is lacking, instant claims fails to particularly point out and distinctly claim the subject matter of claimed invention.
Instant claims 6-12, 18-24, 30-36 recited “an as-printed alloy”. It is unclear whether the recited as-printed alloy is the same additive manufactured alloys of claims 1, 13 and 25 or a different alloy from additive manufactured alloys of claims 1, 13 and 25. Clarification is required.
As a result of rejected 1, 13, 25 and 37, all dependent claims are also rejected under the same statue.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-5, 9-12 and 37 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Chen (CN107502795A).
As for claims 1-5, 9-12 and 37, Chen anticipated instant claims as follows.
Chen discloses a high strength additive manufacturing Al alloy. Inventive Example 1 ([0028]) has elemental alloy compositions all within instant claims 1-5 and 37 required ranges as illustrated in Table 1 below. Broad range of tensile strength is >=450 MPa ([0017]) Hence, instant claims 9-12 required UTS ranges are all met.
Table 1
Element
Applicant
(weight %)
Chen et al.
(weight %)
Inventive Example 1 ([0028])
Within
(weight %)
Mg
2.5-5.3
3
3
Mn
0.01-4
0.2
0.2
Si
0.1-1.5
0.1
0.1
Zr
0.01-2
0.02
0.02
Ti (Claims 2-3)
0.01-2
0.15
0.15
Zn (Claims 4-5)
0.01-3
0.25
0.25
Mn (Claim 37)
0.01-2.9
0.2
0.2
Si (Claim 37)
0.01-3.9
0.1
0.1
Zr (Claim 37)
0.01-2.8
0.02
0.02
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) 1-37 are rejected under 35 U.S.C. 103 as being unpatentable over Li (CN108330344A).
As for claims 1-37, Li discloses a 3D printed 7xxx aluminum alloy. ([0001]) Hence, instant claimed additive manufacturing alloy is met.
The 7xxx aluminum alloy has broad ranges of elemental compositions overlapping with instant claimed ranges as illustrated in Table 4 below. ([0008]) The as-printed alloy has UTS>=300 MPa and elongation >=12% ([0034]) which overlaps instant claims 6-12, 18-24, 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)
0.01-4
0.1-6.3
0.1-4
Si(Claim 1)
0.1-1.5
0.1-6
0.1-1.5
Zr(Claim 1)
0.01-2
0-6
0.01-2
Ti (Claims 2-3, 14-15,26-27)
0.01-2
0-6.2
0.01-2
Fe (Claims 4-5, 16-17, 28-29)
0.01-2.5
0-6
0.01-2.5
Mg(Claim 13)
2.0-5.3
2.1-6.9
2.1-5.3
Mn(Claims 13, 25)
0.7-2.9
0.1-6.3
0.7-2.9
Si(Claims 13, 25)
0.1-0.8
0.1-6
0.1-0.8
Zr(Claims 13, 25)
0.01-1
0-6
0.01-1
Mn (Claim 37)
0.01-2.9
0.1-6.3
0.1-2.9
Si (Claim 37)
0.01-3.9
0.1-6
0.1-3.9
Zr (Claim 37)
0.01-2.8
0-6
0.01-2.8
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.
Hence, based on the teaching of Li, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Li in order to arrive at alloy of claimed invention.
Claim(s) 1, 4-13, 16-25 and 28-37 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (CN110724891A).
As for claims 1, 4-5, 13, 16-17, 25, 28-29 and 37, Zhu discloses an additive manufacturing Al alloy obtained by heat treatment to control UTS and elongation. The Al alloy has broad ranges of elemental composition overlapping instant claimed ranges as illustrated in Table 2 below.
Table 2
Element
Applicant
(weight %)
Zhu et al.
(weight %)
Claim 8
Overlap
(weight %)
Mg (Claim 1)
2.5-5.3
3-10
3-5.3
Mn(Claim 1)
0.01-4
0.3-1
0.3-1
Si(Claim 1)
0.1-1.5
0.01-3
0.1-1.5
Zr(Claim 1)
0.01-2
0.2-0.6
0.2-0.6
Zn (Claims 4-5, 16-17, 28-29)
0.01-3
0.01-0.2
0.01-0.2
Mg(Claim 13)
2.0-5.3
3-10
3-5.3
Mn(Claims 13, 25)
0.7-2.9
0.3-1
0.7-1
Si(Claims 13, 25)
0.1-0.8
0.01-3
0.1-0.8
Zr(Claims 13, 25)
0.01-1
0.2-0.6
0.2-0.6
Mn (Claim 37)
0.01-2.9
0.3-1
0.3-1
Si (Claim 37)
0.01-3.9
0.01-3
0.01-3
Zr (Claim 37)
0.01-2.8
0.2-0.6
0.2-0.6
In addition, Inventive Example 2 [0044] discloses elemental composition ranges all within or overlapping claimed ranges as illustrated in Table 3 below.
Table 3
Element
Applicant
(weight %)
Zhu et al.
(weight %)
Inventive Example 2 ([0045]
Within/Overlap
(weight %)
Mg (Claim 1)
2.5-5.3
4.5
4.5
Mn(Claim 1)
0.01-4
0.5
0.5
Si(Claim 1)
0.1-1.5
0.01
Broad:0.01-3
0.1-1.5
Zr(Claim 1)
0.01-2
0.3
0.3
Zn (Claims 4-5, 16-17, 28-29)
0.01-3
0.2
0.2
Mg(Claim 13)
2.0-5.3
4.5
4.5
Mn(Claims 13, 25)
0.7-2.9
0.5
Broad:0.3-1
0.7-1
Si(Claims 13, 25)
0.1-0.8
0.01
Broad:0.01-3
0.1-0.8
Zr(Claims 13, 25)
0.01-1
0.3
0.3
Mn (Claim 37)
0.01-2.9
0.5
0.5
Si (Claim 37)
0.01-3.9
0.01
0.01
Zr (Claim 37)
0.01-2.8
0.3
0.3
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.
Hence, based on the teaching of Zhu, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Zhu in order to arrive at alloy of claimed invention.
As for claims 6-9, 18-21, 30-33, Zhu discloses Inventive Example 2 has UTS= 417 MPa and elongation at 18%. Hence, instant claimed elongation and UTS are met.
As for claims 10-12, 22-24, 34-36, Zhu discloses UTS at about 514 MPa can be obtained after solid solution treatment. ([0040]) Hence, instant claimed UTS are met.
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 1-37 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 1-37 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 1-37 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.
Conclusion
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/JENNY R WU/Primary Examiner, Art Unit 1733
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