CTFR 18/527,664 CTFR 82933 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Examiner Note During the interview of May 11, 2026, it was discussed to modify the range of aluminum to 13.5 to 15 weight percent. It was also discussed that utilizing “about” in combination with 13.5 would have a scope that would include 13 weight percent and would not distinguish from the prior art. Status of the Claims Claims 1, 3-17 and 19 are pending wherein claims 1, 3, 6, 8, 12, 14-15 and 19 are amended and claims 2 and 18 are canceled. Status of Previous Rejections The previous rejection of claims 6, 8, 12 and 14 under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends is withdrawn in view of the Applicant’s amendments to claims 6, 8, 12 and 14. The previous rejection of claims 1, 3-7 and 9-13 as being unpatentable over Guo et al. (US 2019/0119793) is withdrawn in view of Applicant’s arguments and Applicant’s amendment to claims 1 and 15. The previous rejection of claims 1-2 and 4-17 under 35 U.S.C. 103 as being unpatentable over Regazzoni et al. (US 4,997,622) is withdrawn in view of the Applicant’s amendment to claims 1 and 15. Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim s 1, 3-17 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Tukeda et al. (US 2001/0026768) . In regard to claim 1, Tukeda et al. (‘768) discloses magnesium base alloys having compositions relative to that of the instant invention as set forth below [0017]. Element Instant Claim (weight percent) Tukeda et al. (‘768) (mass percent) Overlap Al about 13.5 – 15 10 – 13 13/about 13.5 Zn greater than 0 – about 0.5 less than 0.8 greater than 0 – about 0.5 Si greater than 0 – about 1.5 0.3 – 1.5 0.3 – 1.5 Mg Balance Balance Balance The Examiner notes that the amounts of aluminum, zinc and silicon in the magnesium based alloys disclosed by Tukeda et al. (‘768) 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, and silicon from the amounts disclosed by Tukeda et al. (‘768) because Tukeda et al. (‘768) discloses the same utility throughout the disclosed ranges. With respect to the recitation “for diecasting with reduced defects” in claim 1, the Examiner considers this a recitation of intended use that would not further limit the structure of the magnesium based alloys. MPEP 2111.02 II. In regard to claim 3, Tukeda et al. (‘768) discloses 10 to 13 mass percent aluminum, which overlaps the range of the instant invention since “about 14 wt%” would include 13 weight percent [0017]. In regard to claim 4, Tukeda et al. (‘769) discloses the presence of impurities and elements such as Be, Ca, Sr, Ba, Mm at 10 ppm to 0.1%, which overlaps the range of the instant invention ([0017] and [0038-0039]). With respect to the recitation “wherein the magnesium alloy has CSI of less than about 250” in claim 5, Tukeda et al. (‘768) discloses a substantially similar composition. Therefore, the claimed property would be expected. MPEP 2112.01 I. In regard to claim 6, Tukeda et al. (‘768) discloses less than 0.8 mass percent zinc, which encompasses the range of the instant invention [0017]. MPEP 2144.05 I. In regard to claim 7, Tukeda et al. (‘768) discloses 0.3 to 1.5 mass percent silicon, which overlaps the range of the instant invention [0017]. MPEP 2144.05 I. In regard to claim 8, Tukeda et al. (‘768) discloses 0.3 to 1.5 mass percent silicon, which overlaps the range of the instant invention [0017]. MPEP 2144.05 I. In regard to claim 9, Tukeda et al. (‘768) discloses wherein the magnesium based alloys would be made by casting ([0002] and [0040]). With respect to the recitation “made by thixomolding” in claim 9, the Examiner notes that the claims are drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. In regard to claim 10, Tukeda et al. (‘769) discloses the presence of impurities and elements such as Be, Ca, Sr, Ba, Mm at 10 ppm to 0.1%, which overlaps the range of the instant invention ([0017] and [0038-0039]). With respect to the recitation “wherein the magnesium alloy has CSI of less than about 250” in claim 11, Tukeda et al. (‘768) discloses a substantially similar composition. Therefore, the claimed property would be expected. MPEP 2112.01 I. In regard to claim 12, Tukeda et al. (‘768) discloses less than 0.8 mass percent zinc, which encompasses the range of the instant invention [0017]. MPEP 2144.05 I. In regard to claim 13, Tukeda et al. (‘768) discloses 0.3 to 1.5 mass percent silicon, which overlaps the range of the instant invention [0017]. MPEP 2144.05 I. In regard to claim 14, Tukeda et al. (‘768) discloses 0.3 to 1.5 mass percent silicon, which encompasses the range of the instant invention [0017].. In regard to claim 15, Tukeda et al. (‘768) discloses magnesium base alloys having compositions relative to that of the instant invention as set forth below [0017]. Element Instant Claim (weight percent) Tukeda et al. (‘768) (mass percent) Overlap Al about 13.5 – 15 10 – 13 13/about 13.5 Zn about 0.1 – 0.5 less than 0.8 about 0.1 – 0.5 Si about 0.5 – 1.0 0.3 – 1.5 about 0.5 – 1 Mg Balance Balance Balance The Examiner notes that the amounts of aluminum, zinc and silicon in the magnesium based alloys disclosed by Tukeda et al. (‘768) 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, and silicon from the amounts disclosed by Tukeda et al. (‘768) because Tukeda et al. (‘768) discloses the same utility throughout the disclosed ranges. With respect to the recitation “for diecasting with reduced defects” in claim 15, the Examiner considers this a recitation of intended use that would not further limit the structure of the magnesium based alloys. MPEP 2111.02 II. In regard to claim 16, Tukeda et al. (‘769) discloses the presence of impurities and elements such as Be, Ca, Sr, Ba, Mm at 10 ppm to 0.1%, which overlaps the range of the instant invention ([0017] and [0038-0039]). With respect to the recitation “wherein the magnesium alloy has CSI of less than about 250” in claim 17, Tukeda et al. (‘768) discloses a substantially similar composition. Therefore, the claimed property would be expected. MPEP 2112.01 I. In regard to claim 19, Tukeda et al. (‘768) discloses 10 to 13 mass percent aluminum, which overlaps the range of the instant invention since “about 14 wt%” as claimed would be close enough to establish prima facie obviousness [0017]. MPEP 2144.05 I . Response to Arguments 07-37 AIA Applicant's arguments filed May 27, 2026 have been fully considered but they are not persuasive. Applicant primarily argues that as acknowledged by the Examiner during the telephone interview and as set forth in the Examiner’s interview summary, the reference to Tukeda et al. (‘768) teaches away from aluminum above 13 weight percent and the reference is not available for the purposes of an obviousness rejection. In response, the Examiner notes that should “about” be removed claims 1 and 15 as it pertains to aluminum and the minimum aluminum content claimed is 13.5 weight percent, the Examiner agreed that the claims would be distinct from Tukeda et al. (‘768). However, that is not what the Applicant’s amendment is. As such, the Examiner has modified the grounds of rejection accordingly to reflect the new scope of the claims presented by Applicant. Conclusion 07-40 AIA 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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 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, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /JESSEE R ROE/Primary Examiner, Art Unit 1759 Application/Control Number: 18/527,664 Page 2 Art Unit: 1759 Application/Control Number: 18/527,664 Page 3 Art Unit: 1759 Application/Control Number: 18/527,664 Page 4 Art Unit: 1759 Application/Control Number: 18/527,664 Page 5 Art Unit: 1759 Application/Control Number: 18/527,664 Page 6 Art Unit: 1759 Application/Control Number: 18/527,664 Page 7 Art Unit: 1759 Application/Control Number: 18/527,664 Page 8 Art Unit: 1759
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