DETAILED ACTION
Response to Amendment
In view of the amendments to claim 9, the prior art rejections directed to claims 9-14 have been modified. These changes were necessitated by this amendment.
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 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 13-14, 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 15-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over RU 2001145 (RU ‘145).
In regards to independent claim 15-17 and 20, RU ‘145 seeks to improve the heat resistance, casting properties, and strength at room temperature of aluminum alloys. (Lines 50-51) RU ‘145 teaches 3.0-6.5% Nickel, 0.5-2.0% manganese, 0.2-0.8% scandium, 0-0.3% zirconium, and the rest being aluminum. (Lines 52-64) Nickel within these limits provides high casting properties and improves heat resistance. (Line 66) These ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness exists.
As to the properties set forth in the claims, these properties appear to be the result of the composition. As set forth above, RU ‘145 sets forth compositional ranges that overlap the claimed ranged. This material includes manganese and zirconium. It does not contain silicon, copper, magnesium, zinc, or tin. 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.
Claim 12 and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over 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).
As to claim 12, 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) This range overlaps the claimed value. Therefore, a prima facie case of obviousness exists.
As to claims 13 and 14, 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. Therefore, it would be expected that the product of the prior art would have these properties within the overlapping portions of the ranges, including the thermal conductivity. Thus, it appears the prior art would meet the claimed limitations.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2013/0199680 (Apelian).as applied to claim 1 above, and further in view of U.S. Patent Number 9,963,770 (Rios)
As set forth above in regards to claim 1, Apelian is directed to an aluminum alloys that can be processed by conventional high pressure die castings and are dispersion-strengthened. (¶1) This reference does not explicitly set forth the addition of cerium within the alloy.
In the same field of endeavor of cast aluminum alloys, Rios is directed to a cast alloy includes aluminum and from about 5 to about 30 weight percent of at least one material selected from the group consisting of cerium, lanthanum, and mischmetal. (Abstract) Cerium is the most abundant of the rare earths and often accounts for half of the yield. (10:1-3) The use of cerium produces a high-temperature stable alloy that is cast using low-cost rare earth elements for less than many modern alloys which are not stable at high temperatures. (10:7-11) The alloys that contain high cerium content with low silicon content exhibit exceptional casting characteristics and mechanical property stability at temperatures at or above 230 C. (11:42-46)
It would have been obvious to one of ordinary skill in the art to have included cerium as taught by Rios within the aluminum alloy of Apelian. One of ordinary skill in the art would have been motivated by the desire and expectation of combining prior art elements according to known methods to yield predictable results, including utilizing a low-cost additive that alloys for exceptional casting characteristics while providing mechanical property stability.
Response to Arguments
Applicant's arguments filed 16 March 2026 have been fully considered but they are not persuasive.
Applicant argues that claim 9 has been amended to include a thermal conductivity property. Applicant asserts that there is not description or suggestion in Koc for this feature. Applicant asserts that the Examiner has not asserted inherency and provided no evidence of record that Al-Ni alloys at 4.5 to 6 wt. % Ni would inherently achieve the claimed properties.
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 Apelian sets forth a mandatory controlled thermal aging step after casting. Applicant asserts that this is a fundamentally different end state from the instant application’s post-braze condition.
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)
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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 argues that claim 15 recites “the balance being aluminum and impurities.” Applicant asserts that this language does not encompass an element that is present at mandatory functional levels, producing substantial effects on properties. Applicant concludes that RU ‘145 does not fall within the scope of claim 15.
Claim 15 utiliizes the transitional phrases of “comprising” and “further comprising” when setting forth the matrix and composition of the low conductivity alloy. Applicant has explicitly defined the term “comprising” in the instant specification.
As used herein, the terms “comprises,” “comprising,” “includes,” “including,” “has,” “having” or any contextual variants thereof, are intended to cover a non-exclusive inclusion. For example, a process, product, article, or apparatus that comprises a list of elements is not necessarily limited to only those elements, but may include other elements not expressly listed or inherent to such process, product, article, or apparatus. Further, unless expressly stated to the contrary, “or” refers to an inclusive or and not to an exclusive or. For example, a condition “A or B” is satisfied by any one of the following: A is true (or present) and B is false (or not present), A is false (or not present) and B is true (or present), and both A and B is true (or present). (¶16 of Specification)
Therefore, comprising is being interpreted to cover a non-exclusive inclusion. For example, a composition that comprises a list of elements is not necessarily limited to only those elements, , but may include other elements not expressly listed. Therefore, the instant claim does not exclude additional elements beyond those set forth in the instant claim from being present.
Therefore, Applicant’s argument is not found to be persuasive.
Applicant asserts that a review of Lin’s experimentally disclosed compositions reveals that every Al-Ni alloy disclosed in Lin contains intentional additions beyond nickel and aluminum. Applicant asserts that the Al-Ni alloys contain manganese, titanium, and boron as intentional additions.
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
Here, Lin sets forth a broader teaching of an Al-Ni casting alloy that comprises 0.5 to 8.0 wt. % nickel. (18:61-65) Other elements are not mandatory additions. Therefore, the broader disclosure clearly provides for a composition that is solely aluminum and nickel.
The teaching of the further elements of manganese, titanium, and boron are optional additions. Lin explicitly teaches that the Al-Ni alloys “may include minor amounts of incidental elements and impurities.” (23:59-61) The word “may” clearly indicates that it is an option. The teaching of these further embodiments does not constitute a teaching away from the broader disclosure.
Even the portions cited by Applicant in the argument support this position. When discussing the presence of titanium, Applicant cited column 23, lines 5-10. This includes “When titanium is included in the alloy…”(23:5-10) The word when clearly indicates that if titanium is present not that it is necessarily present.
This is further supported by the claims of Lin. Independent claims 1 and 6 both clearly set forth “an Al-Ni casting alloy comprising from about 0.5 wt. % to about 8.0 wt. % Ni” with no further required elements being listed. The further dependent claims do not even add further elements to this binary alloy. This again demonstrates that the further incidental elements and impurities are optional additions and are not necessarily present.
Therefore, this argument is not found to be persuasive.
Applicant argues that Kop does not describe or suggest the features of claim 9. Applicant asserts that the claims are not prima facie obvious over Kop.
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 the combination of Apelian in view of Rios for the reasons set forth above in regards to Apelian.
This argument is not found to be persuasive.
For the reasons set forth above in regards to the response to the arguments directed at Apelian individually, this argument is not found to be persuasive.
Citation of Pertinent Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Number 12,378,642 has a common assignee and common inventors. A high performance die castable aluminum alloy is described therein, wherein the aluminum alloy is characterized as having a high yield strength and high conductivity compared to conventional aluminum alloys, and also a high flowability and low susceptibility to hot tearing when die cast. (Abstract) The aluminum alloy may contain 4-6 wt. % nickel, a yield strength of at least about 90 MPa, and an electrical conductivity of at least about 48% IACS. (Abstract)
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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