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 .
The indicated allowability of claims 18 and 26 is withdrawn in view of the newly discovered reference(s) to Schulz (US 2020/0362792), cited on the IDS received 7/7/26. Rejections based on the newly cited reference(s) follow.
Drawings
The drawings received on 11/28/23 are acknowledged.
Status of Claims
Pending:
18, 26, 35-56
Withdrawn:
50, 56
Rejected:
18, 26, 35-49, 51-55
Amended:
18, 26
New:
35-56
Independent:
18, 26
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 18, 26, 35-49, 51-55 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.
Independent claims 18, 26, 45, and 51 contain a phrase (“condition”) outside the period of the corresponding claim, which renders the claim indefinite (each claim must begin with a capital letter and end with a period. Periods may not be used elsewhere in the claims except for abbreviations. See Fressola v. Manbeck, 36 USPQ2d 1211 (D.D.C. 1995), see MPEP 608.01(m)). Dependent claims 35, 40, 46, and 52 contain similar phrases outside the period of that claim. Appropriate correction is required. Claims dependent on the above rejected claim are likewise rejected under this statute.
Election/Restrictions
Newly submitted claims 50 and 56 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: said claims are drawn to a lamination product made from the aluminum alloy powder. The special technical feature that connects new claims 50 and 56 (drawn to a lamination product) to pending claims 18, 26, 35-49, 51-55 (drawn to aluminum alloy for casting, or aluminum alloy powder) is the aluminum alloy composition, which is held to be known (see rejections above).
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 50 and 56 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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 18, 26, 35-44 are rejected under 35 U.S.C. 103 as being unpatentable over Schulz (US 2020/0362792) cited on IDS received 7/7/26.
Schulz (at abstract, etc.) teaches an aluminum alloy comprising (in wt%):
cl. 18
(Al alloy for casting)
cl. 26
(Al alloy for casting)
cl. 45
(Al alloy powder)
cl. 33
(Al alloy powder)
Schulz
Si
5-20%
5-20%
5-20%
5-20%
8-17
Cu
8.01-18
9-15.5 (cl. 38)
8.01-18
9-15.5 (cl. 43)
8.01-18
8.01-18
2-10
Ni
1.0-10
1.0-10
1.0-10
1.0-10
1-6
Mn
0.01-0.75
0.01-0.75
0.1-4
Fe
0.01-0.8
0.01-0.8
0.1-3.5
P
0.0001-0.1
(cl. 36)
0.0001-0.1 (cl. 41)
-0.05
Mg
0.01-3 (cl. 37)
0.01-3 (cl. 42)
0.1-2
Table 1: instant claims vs. prior art of Schulz
which overlaps the alloying ranges of Si, Cu, Ni, Mn, Fe, P, and Mg in instant claims 18, 26, 36-38, 40-43. Further, Schulz teaches said alloy can be processed by casting (such as gravity casting, see Schulz at abstract), which meets the limitations “for casting” of independent claims 18 and 26. Concerning the inequality in instant claims 18 and 26, for Si=8-17%, Cu=2-10%, and Ni=1-6%, taught by Schulz, the below equation is 11.9-38.52, which meets the claimed inequality:
30.0
≤
S
i
+
0.94
*
C
u
+
2.02
*
N
i
≤
42.5
30.0
≤
17
+
0.94
*
10
+
2.02
*
6
≤
42.5
30.0
≤
38.52
≤
42.5
[Wingdings font/0xE0] YES
and therefore Schutz meets the instant inequality limitation.
Because Schulz teaches an overlapping aluminum alloy composition (complete with values of Cu, Si, and Ni that meet the instant inequality), together with processing said alloy by casting, it is held that Schulz has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning dependent claims 35 and 40, which recite an inequality relationship relating Cu and Ni, Schulz teaches ranges of Cu and Ni that overlap the claimed condition. For instance, for a Cu=9% and Ni=3% (within the ranges of Schulz) the claimed condition:
10
≤
C
u
+
0.87
*
N
i
≤
23.5
10
≤
9
+
0.87
*
3
≤
23.5
10
≤
12.87
≤
23.5
[Wingdings font/0xE0] YES
Therefore, Schulz teaches amounts of Cu and Ni that meet the instant conditions of claims 35 and 40.
Claims 45-49, 51-55 are rejected under 35 U.S.C. 103 as being unpatentable over Schulz (US 2020/0362792) in view of Choi et al (US 2020/0056269, previously cited).
Schulz is discussed in paragraphs above. Schulz does not teach forming said alloy into powder (independent claims 45 and 51). However, Choi, drawn to similar Al-Cu-Si-Ni alloys, teaches forming substantially identical Al-Cu-Si-Ni alloys into powder is useful for coatings or consolidation/lamination techniques [0009]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have formed the Al-Cu-Si-Ni alloy composition of Schulz into powder, and because Choi teaches Al-Cu-Si-Ni alloys formed into powder exhibits excellent utility and strength [0020]. It is held that Schulz and Choi have created a prima facie case of obviousness of the presently claimed invention.
Concerning dependent claims 46-49, 52-55, see above discussion of Schulz. Schulz teaches alloying ranges that meet the instant ranges and inequality relationships.
Response to Amendment
In the response filed on 7/14/26 applicant amended claims 18 and 26, and added new claims 35-56. No new matter has been added.
The indicated allowability of claims 18 and 26 is withdrawn in view of the newly discovered reference(s) to Schulz (US 2020/0362792). The closest prior art to the presently amended claims is held to be Schulz or Schulz and Choi.
Additionally, it is noted that independent claims 18, 26, 45, and 51 contain a phrase (“condition”) outside the period of the corresponding independent claim, which renders the claim indefinite (see above 112b rejection).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
