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 .
Status of Claims
A new claim set was filed on 12/29/25.
Claims 1 and 6 have been newly amended.
Claims 2-3, 5 and 10-23 have been newly canceled.
Claims 8-9 are withdrawn herein.
Claims 1, 4 and 6-7 are herein under examination.
Foreign Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Election/Restrictions
Applicants’ election of Group I (claims 1, 4, and 6-7) drawn to a cast metal object, is acknowledged. Applicants amended independent claim 1 to narrow the genus of metals and additive and therefore, the election of species is hereby withdrawn. The election was made with traverse.
Applicants have indicated that claims 8-9 (i.e., Group II) read on the elected subject matter (i.e., Group I). Applicants argue that the pending claims are “unified” (Remarks: p. 4).
This is not found persuasive. As indicated in the Restriction requirement, “the groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features….because even though the inventions of these groups require the technical feature of “a cast metal object comprising one or more metals having dispersed throughout an additive (as amended, a halloysite nanotube)” this technical feature is not a special technical feature as it does not make a contribution over the prior art. Even with the newly amended claims the technical feature does not make a contribution over the prior art; for example, Ye (CN 105154722; published: 12/16/15).
As the requirement for restriction is deemed proper, it is maintained and hereby made FINAL. Please note that after a final requirement for restriction, the Applicants, in addition to making any response due on the remainder of the action, may petition the Commissioner to review the requirement. Petition may be deferred until after final action on or allowance of claims to the invention elected, but must be filed not later than appeal. A petition will not be considered if reconsideration of the requirement was not requested. (See § 1.181.).
Claims 8-9 are hereby withdrawn from further consideration by the Examiner, pursuant to 37 CFR 1.142(b), as being drawn to non-elected inventions, there being no allowable generic or linking claim. The instant claims have been examined commensurate with the scope of the elected invention. Applicants timely responded to the restriction requirement in the reply filed 12/29/25.
Accordingly, claims 1, 4 and 6-7 are under current examination.
Claim Rejections - 35 USC § 112(b)
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.
Claim 6 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 6 recites the limitation "said alloy" in line 2. There is insufficient antecedent basis for this limitation in the claim. Claim 6 depends from claim 1. Claim 1 recites the following limitation: “wherein one or more metals is steel, silver or copper alloy”. However, both steel and copper alloy are species of alloys and therefore, it is unclear which alloy is being narrowed in claim 6. Therefore, it is unclear what this limitation refers to and how to interpret the claim.
The Examiner also notes that if “said alloy” was intended to have antecedent basis for “copper alloy” which is recited in claim 1, then the Examiner suggests amending claim 6 to read “wherein said copper alloy further comprises one or more metal selected from the group consisting of
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.
Claims 1, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ye (CN 105154722; published: 12/16/15; in IDS dated 12/7/23).
The English machine language translation of ‘722 is attached herein. The passages cited below which indicate the teachings of the ‘722 publication are based on its English translation.
Ye is directed to aluminum alloy automobile parts blended with halloysite nanotubes and a casting technology thereof (Abstract). Ye teaches a high-plastic composite aluminum alloy automobile component blended with halloysite nanotubes (i.e., dispersed), characterized in that the aluminum alloy component material is made of the following raw materials by weight: aluminum 90-100, silicon 1-2, magnesium 1 -1.5, copper 1-3, iron 0.8-2, zinc 0.5-0.8, halloysite nanotubes 1-2, nano-carbon sol 8-10 with a solid content of 20-25%, impurities ≤0.01 (limitations of instant claims 1, 4 and 6; See Summary of the Invention, 2nd ¶).
Therefore, by teaching all the limitations of claims 1, 4 and 6, Ye anticipates the instant invention as claimed.
Claims 1 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dobrzański et al. (PL 217093; published: 6/30/14), as evidenced by European Steel and Alloy Grades/Numbers (“ENAC-AlSi9”, published: 04/23/15 via Wayback Machine).
The English machine language translation of ‘093 is attached herein. The passages cited below which indicate the teachings of the ‘093 publication are based on its English translation
Dobrzański is directed to composite material with a matrix of cast aluminum alloys and a method for its production, applicable in particular in the aerospace and automotive industries(1st ¶ of Description Section, p. 1). Dobrzański teaches a powder containing halloysite nanotubes, which is mechanically agitated in a ball mill in an alcohol suspension for 10 minutes and then subjected to pressing at 100 MPa; the obtained porous mullite backbone is subjected to pressure infiltration with ENAC AlSi9 alloy preferably at 700 °C under 60 MPa (Second to last ¶ in Description Section, p. 2). As evidenced by European Steel and Alloy Grades/Numbers, ENAC AlSi9 is an aluminum alloy for casting, wherein the following metals are present: Fe, Si, Mn, Ni, Ti, Cu, Pb, Mg, Zn, and Sn, which necessarily reads on the “one or more metals” of instant claims 1 and 6.
Therefore, by teaching all the limitations of claims 1 and 6, Dobrzański anticipates the instant invention as claimed.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1, 4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Ye (CN 105154722; published: 12/16/15; in IDS dated 12/7/23), in view of Kuramoto et al. (US 2021/0108293; published: 4/15/21).
The English machine language translation of ‘722 is attached herein. The passages cited below which indicate the teachings of the ‘722 publication are based on its English translation.
Determination of the Scope and Content of the Prior Art
(MPEP §2141.01)
As noted in the anticipation rejection above Ye anticipates claims 1, 4 and 6-7 and so in anticipating these claims, said claims are also considered obvious under 35 USC 103 over Ye for the reasons set forth below ("lack of novelty is the epitome of obviousness" May, 574 F.2d at 1089, 197 USPQ at 607 (citing In re Pearson, 494 F.2d 1399, 1402, 181 USPQ 641, 644 (CCPA 1974))).
Ye is directed to aluminum alloy automobile parts blended with halloysite nanotubes and a casting technology thereof (Abstract). Ye teaches a high-plastic composite aluminum alloy automobile component blended with halloysite nanotubes (i.e., dispersed), characterized in that the aluminum alloy component material is made of the following raw materials by weight: aluminum 90-100, silicon 1-2, magnesium 1 -1.5, copper 1-3, iron 0.8-2, zinc 0.5-0.8, halloysite nanotubes 1-2, nano-carbon sol 8-10 with a solid content of 20-25%, impurities ≤0.01 (limitations of instant claims 1, 4 and 6; See Summary of the Invention, 2nd ¶).
Ascertainment of the Difference Between the Scope of the Prior Art and Claims
(MPEP §2141.012)
Although Ye teaches its invention relates to the technical field of aluminum alloy automobile parts, Ye does not teach the thickness of the product (e.g., at least 1 mm), as required by instant claim 7. However, such deficiency is cured by Kuramoto.
Kuramoto is directed to aluminum-alloy sheet used in forming automobile body panels (Abstract). Kuramoto teach that the thickness of the aluminum allow sheet is not particularly limited and can be set appropriately in accordance with the application [0081]. For example, if the aluminum-alloy sheet is used as a blank (raw material) of an automobile body panel, a body sheet, or the like (i.e. a three-dimensionally shaped final product), the thickness of the aluminum-alloy sheet can be set as appropriate within the range of, e.g., 0.8-2.5 mm [0081]. As indicated in MPEP §2144.05(I): “In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists.”
Finding of Prima Facie Obviousness Rationale and Motivation
(MPEP §2142-2143)
Ye and Kuramoto are both directed to aluminum alloys used for automobile parts. Based on these teachings, it would have been prima facie obvious to one of ordinary skill in the art, before the invention was effectively filed, to modify the aluminum alloy product of Ye with a thickness ranging from 0.8-2.5 mm as taught by Kuramoto to achieve the predictable result of obtaining a composition suitable for automobile parts (e.g., automobile body panel). One of ordinary skill in the art would have been motivated to do so because Kuramoto teaches that for automobile body panels, the thickness is appropriately set within the range of, e.g., 0.8-2.5 mm, which overlaps with the claimed at least 1 mm thick.
From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art before the invention was effectively filed, as evidenced by the references, especially in the absence of evidence to the contrary.
Thus, the claimed invention was prima facie obvious before the effective filing date of the claimed invention.
Conclusion
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/GENEVIEVE S ALLEY/ Primary Examiner, Art Unit 1617