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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/14/2026 has been entered.
Status of Claims
Claims 1-18 are canceled. Claims 19 and 20 are pending where no claims have been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims have been maintained
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0169705 A1 to Knustad.
Regarding claims 19-20, Knustad discloses a treatment alloy for treating a base metal to produce compacted graphite iron overlapping the instantly claimed composition range as follows (Knustad, abstract, para [0018]):
Element
Claimed wt%
Knustad wt%
Overlaps?
La
7-30
0-10
Yes
Si
40-50
40-80
Yes
Ca
0.5-3
0.1-10
Yes
Al
0.5-3
0-5
Yes
Fe
Balance
Balance
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Knustad including the instantly claimed because Knustad discloses the same utility throughout the disclosed ranges.
Regarding the limitations “consisting of” and “wherein [sic] the treatment alloy contains no magnesium,” the alloy of Knustad need not comprise any elements not recited above, and specifically does not disclose or suggest adding Mg to the treatment alloy of Knustad.
Response to Arguments
Applicant's arguments filed 1/14/2025 have been fully considered but they are not persuasive.
Applicant argues that Knustad is directed to an inoculant and thus does not disclose the instantly claimed limitation of “treatment alloy for treating a base metal to produce compacted graphite iron.” This is not found persuasive because Knustad is used for inoculating a base metal to produce compacted graphite iron, and inoculating is a type of treatment, and the inoculation of Knustad is done to produce compacted graphite iron. Thus, Knustad is directed to a “treatment alloy for treating a base metal to produce compacted graphite iron. Additionally, 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. In the instant case, the alloy of Knustad could be used as a “treatment alloy for treating a base metal to produce compacted graphite iron.”
Applicant argues that Knustad describes a two stage framework involving magnesium for producing compacted graphite iron whereas the instant specification is directed to a process for directly controlling graphite morphology without magnesium. This is not found persuasive because the instant claims are directed to an alloy, not a method of using the alloy.
Applicant argues that the overlapping ranges of Knustad are not disclosed as ranges for a magnesium-free treatment alloy. This is not found persuasive because the Mg-free alloy of Knustad is used for inoculating a base metal to produce compacted graphite iron, and inoculating is a type of treatment, and the inoculation of Knustad is done to produce compacted graphite iron. Thus, the Mg-free alloy Knustad is directed to a “magnesium-free treatment alloy.”
Applicant argues that Knustad cannot reasonable be used to satisfy a claim that is directed to a treatment alloy containing no magnesium in the context of a magnesium-free CGI formation strategy. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that the magnesium free alloy is in the context of a magnesium-free CGI formation strategy) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues that Knustad does not teach the same utility throughout the claimed ranges. This is not found persuasive because Knustad teaches uniform utility as a treatment alloy for producing compact graphite iron throughout the disclosed ranges of Knustad.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738