DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 July 2026 has been entered.
Response to Amendment
In view of the amendments to claim 9, the 35 U.S.C. 102/103 rejections under Koç, Funda Gül, et al. "Mechanical properties of Al-Ni cast alloys." Proceedings of the 23rd international conference on metallurgy and materials; Czech Republic. 2014 (Koc) have been modified. These changes were necessitated by these amendments.
In view of the amendments to claim 15, the 35 U.S.C. 103 rejections under RU 2001145 (RU ‘145) have been withdrawn.
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.
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.
Claim 10 is 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 10 depends from independent claim 9. Claim 9 sets forth the range of nickel being 5 to 5.5 wt. %, however claim 10 sets forth the range of nickel being 4.75 to 5.75%. Therefore, the range of the dependent claim is broader the range set forth in the claim from which it depends.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 11 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 11 ultimately depends from claim 9. Claim 9 sets forth the range for nickel being 5 to 5.5 wt. %. Claim 11 sets forth this exact range with no further additional limitations.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102 / § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 9-11 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Koç, Funda Gül, et al. "Mechanical properties of Al-Ni cast alloys." Proceedings of the 23rd international conference on metallurgy and materials; Czech Republic. 2014 (Koc).
In regards to independent claim 9 and dependent claims 10, 11 and 14, Koc is directed to studying Al-Ni alloys with nickel contents between 1-15 wt.%. (Abstract) Effects on nickel and wear resistance of aluminum were studied. Id. Pure aluminum and pure nickel were used in the production of the samples. (§2. Experimental) Different nickel containing specimens with 1 to 5 wt. % nickel were obtained after a casting process. Id. Figure 1 of this reference shows the microstructures of alloys with the addition of 0, 1, 2, 3, 4, and 5 wt. % of nickel. (§3.1 Microstructural Investigations) This reference includes samples that would fall within the claimed compositional ranges.
As to the claimed properties set forth in the instant claims, these properties appear to be the result of the composition. The specification does not appear to forth any particular processes or other conditions that must be met in order to achieve these properties other than the composition. As set forth above, the prior art sets forth compositional amounts that fall within the claimed ranges. Therefore, it would be expected that the product of the prior art would have these properties.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-3, 7, 15-17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2013/0199680 (Apelian).
In regards to independent claims 1 and 15 and dependent claims 2-3, 7, 16-17, and 20, Apelian is directed to an aluminum alloys that can be processed by conventional high pressure die castings and are dispersion-strengthened. (¶1) The composition includes 2 to 6% nickel, 0.1 to 0.4% zirconium, 0.1 to 0.4% vanadium, up to 5% manganese, up to 2% iron, up to 1% titanium, and a balance of nickel. (¶13-20) The alloy may also include up to 2% by weight magnesium, up to 2% by weight hafnium, up to 1% by weight titanium, up to 1% by weight molybdenum, up to 1% by weight chromium, up to 0.5% by weight silicon, up to 0.5% by weight copper and up to 0.5% by weight zinc. (¶25) These ranges overlap the claimed ranges. The ranges also include zero values for the excluded elements set forth in the claims or fails to recite the presence of such additional elements. Therefore, a prima facie case of obviousness exists.
As to the claimed properties set forth in the instant claims, these properties appear to be the result of the composition. As set forth above, the prior art sets forth compositional ranges that overlap the claimed ranged. Silicon, copper, magnesium, zinc, or tin are either not present or are not required components. The specification does not appear to forth any particular processes or other conditions that must be met in order to achieve these properties other than the composition. Therefore, it would be expected that the product of the prior art would have these properties, including the thermal conductivity, microstructure, solidus temperature, and dispersoids. Thus, it appears the prior art would meet the claimed limitations.
Claims 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over 8,950,465 (Lin).
In regards to independent claim 9 and dependent claims 10-12, Lin is directed to a shape cast product. (Abstract) Al-Ni casting alloys have good combination of strength, electromechanical formability, and castability among other properties. (18:58-60) Lin teaches an Al-Ni casting alloy comprising and in some instances consists essentially of from about 0.5 wt. % to about 8.0 wt. %, the balance being incidental elements and impurities. (18:61-65) This would overlap the claimed range for the high conductivity parent material.
As to claims 13-14, the claimed properties appear to be the result of the composition. As set forth above, prior art sets forth compositional ranges that overlap the claimed ranged. The specification does not appear to forth any particular processes or other conditions that must be met in order to achieve these properties other than the composition. Therefore, it would be expected that the product of the prior art would have these properties, including the thermal conductivity. Thus, it appears the prior art would meet the claimed limitations.
Response to Arguments
Applicant's arguments filed 15 July 2026 have been fully considered but they are not persuasive.
Applicant argues that Koc does not discuss thermal conductivity or solidus temperature. Applicant asserts that because there is no data on these properties the prior art cannot be relied upon for the claimed limitations.
This argument is not found to be persuasive.
A review of the specification failed to turn up any particular process parameters or conditions that are necessary to achieve the claimed thermal conductivity. Both the prior art and the instant application set forth casting the product. The instant application does not appear to set forth any particular requirements for the casting method or parameters for the casting method. Accordingly, it appears that this feature flows from the composition itself. Accordingly, since the prior art sets forth the composition and casting method it appears that it would be expected to have the claimed properties.
Therefore, this argument is not found to be persuasive.
Applicant asserts that a person of ordinary skill in the art reading Apelian would understand that both Zr and V are required to achieve Apelian’s intended invention.
This arguments is not found to be persuasive.
The instant claims relevant under the rejection under Apelian do not preclude the presence of zirconium and/or vanadium. Claim 1 sets forth that the composition must be free or substantially free of silicon, copper, magnesium, zinc, and tin. Vanadium and/or zirconium are not included on this exclusion list.
Further, claims 1 and 15 clearly set forth the optional presence of vanadium. Therefore, it is unclear why Applicant is arguing that Apelian provides not teaching or suggestion to omit vanadium.
As to Zirconium, in addition to this element not being excluded by the instant claims rejected by Apelian, the specification sets forth that zirconium can be present in amounts that overlap the range set forth in Apelian. (See Table 1)
Applicant argued that Apelian’s properties depend on a specific thermal aging schedule and not the composition alone. Applicant asserts that this is different than the brazing process that defines Applicant’s brazing parent material.
This argument is not found to be persuasive.
The instant application appears to simply set forth a general process of casting for the production method with no further parameters or process conditions that would be necessary. Apelian’s process would fall within this generic teaching. Beyond this, the instant application does not set forth any conditions for brazing beyond a general teaching in Table 2 of “Post-Braze”.
This instant specification discusses “a brazing parent material” that is configured to be brazed. (¶10 of Specification) The instant specification sets forth that “the brazing parent material is configured to be brazed with conventional brazing processes including, but not limited to vacuum brazing, controlled atmosphere brazing (CAB) brazing (sic), and induction brazing, that are normally only able to be used on wrought aluminum alloy parent materials.” (¶10 of Specification) The instant specification sets forth that “the brazeable parent material can be made of Aluminum in combination of at least one high temperature solid solution element based on the FCC α-Al matrix. (¶12 of Specification)
The terms “brazing parent material” and “brazeable parent material” indicate that the properties that the Applicant is discussing is found in a pre-brazed state. The parent brazing material is to brazed, not has been brazed. A review of the specification indicates that the properties, including those claimed in instant claims, are seen in the parent material.
The instant application does not even set forth any conditions on the type of brazing that can be performed on the material. Therefore, if these properties are the result of brazing, the instant application fails to set forth any guidance on what conditions would be necessary to achieve such properties beyond the generic teaching of brazing.
Additionally, the reference to the temperatures of 585 to 610 C by Applicant is only referenced in the specification in paragraph 9 when discussing Figure 1, which was used to identify alloy systems having solidus temperatures below the braze range, alloy systems having solidus temperatures above the braze range. (¶9)
This Figure shows the thermal conductivity and solidus temperatures of Al-Si castings and Al-Mg castings, Brazeable castings, Pure Aluminum, and Wrought Aluminums from the 3000, 5000, and 6000 series. The figure is directed to Cast Alloy systems, not to brazed systems. This again shows that the properties are dependent upon the composition itself.
Therefore, Applicant’s arguments are not found to be persuasive.
Applicant asserts that Lin is in a field of endeavor that differs materially from the claimed invention. Applicant also argues that Lin does not set forth the thermal conductivity or solidus temperature.
This argument is not found to be persuasive.
Lin sets forth a cast aluminum alloy having a composition that overlaps the claimed range. As set forth in the Final Rejection, mailed on 6 April 2026, it would be expected that the product of the prior art would have the claimed properties. The field of endeavor is not relevant. Applicant has not set forth arguments or evidence rebutting this position.
Applicant argues that the “consisting essentially of’ transition in claim 9 excludes Lin’s preferred embodiments.
This argument is not found to be persuasive.
Applicant notes, “[t]he Office Action correctly notes that Lin’s broader disclosure encompasses binary Al-Ni alloys without Mn.” (Page 11) Applicant’s own admission demonstrates that Lin’s disclosure includes compositions that are binary and do not include Mn. Mn is not a required element.
The range taught by Lin overlaps the claimed ranges. Therefore, a prima facie case of obviousness is established. Applicant has failed to rebut this prima facie obviousness.
Applicant argues that Rios fails to cure the alleged deficiencies of Apelian. This argument is not found persuasive for the reasons discussed above in regards to Apelian.
Conclusion
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 Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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