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 .
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 22 and 30 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.
Claim 22 recites the limitation “an aluminum casting that is provided by using and casting the aluminum alloy for casting”, which renders the claim indefinite. It is unclear the meaning of/how the casting is “provided by using and casting”. Claim 30 contains a similar limitation. Appropriate correction/explanation is required.
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 15-17, 19-25, 27-34 are rejected under 35 U.S.C. 103 as being unpatentable over Choi (US 2020/0056269) cited on IDS received 11/28/23.
Choi (at abstract, [0007], etc.) teaches an aluminum alloy comprising (in wt%):
cl. 15
(Al alloy for casting)
cl. 23
(Al alloy for casting)
cl. 31
(Al alloy powder)
cl. 33
(Al alloy powder)
Choi
Si
5-20% (cl. 17)
5-20% (cl. 25)
6-10
Cu
8.01-18
9-15.5 (cl. 21)
8.01-18
9-15.5 (cl. 29)
8.01-18
8.01-18
2-13
Ni
1.0-10
1.0-10
1.0-10
1.0-10
0-3
Mn
0.01-0.75
0.01-0.75
0.4-4
Fe
0.01-0.8
0.01-0.8
0.4-2
P
0.0001-0.1
(cl. 19)
0.0001-0.1 (cl. 27)
-0.05
Mg
0.01-3 (cl. 20)
0.01-3 (cl. 28)
0-2
Table 1: instant claims vs. prior art of Choi
which overlaps the alloying ranges of Si, Cu, Ni, Mn, Fe, P, and Mg in instant claims 15, 17, 19-21, 23, 25, 27-29, 31, and 33. Further, Choi teaches said alloy can be processed by casting (such as squeeze casting, die casting, gravity casting [0009]) or can be manufactured in powder form intended to be further processed by consolidation/lamination techniques including 3D printing or for coatings [0009], which meets the limitations “for casting” of independent claims 15 and 23, as well as “aluminum alloy powder for lamination formation” of independent claims 31 and 33. Because Choi teaches an overlapping aluminum alloy composition, together with casting or forming into powder, it is held that Choi 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 16 and 24, which recite an inequality relationship relating Cu and Ni, Choi teaches ranges of Cu and Ni that overlap the claimed condition. For instance, for a Cu=9% and Ni=3% (within the ranges of Choi) 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, Choi teaches amounts of Cu and Ni that meet the instant conditions of claims 16 and 24.
Concerning dependent claims 22 and 30, Choi teaches casting said alloy, which meets the instant limitation (see also 112(b) rejection above).
Concerning claim 32, Choi teaches said alloy can be manufactured in powder form intended to be further processed by consolidation/lamination techniques including 3D printing [0009], which meets the limitation “using the aluminum alloy powder for lamination formation”.
Allowable Subject Matter
Claims 18 and 26 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: concerning dependent claims 18 and 26, which recite an inequality relationship relating Cu, Ni, and Si, Choi does not teach ranges of Cu, Ni, and Si that meet the claimed condition. For instance, for values of Cu=13%, Ni=3%, Si=10 (maximum amounts taught Choi that are within the claimed ranges) the claimed condition:
30.0
≤
S
i
+
0.94
*
C
u
+
2.02
*
N
i
≤
42.5
30.0
≤
10
+
0.94
*
13
+
2.02
*
3
≤
42.5
30.0
≤
28.28
≤
42.5
[Wingdings font/0xE0] NO
The closest prior art of Choi does not teach or suggest the claimed limitation, substantially as set forth in claims 18 or 26.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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 3/7/26