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 the Claims
Claims 1-20 are pending wherein claims 1-9 are under examination and claims 10-15 are withdrawn from consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected dissolvable aluminum alloy with gallium, zinc and copper and claims 16-20 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected aluminum alloy with indium, bismuth and zinc. Applicant’s election of claims 1-10 was made with traverse in the Response filed on September 25, 2026.
First, Applicant traverses on the ground that each of claims 12-15 require gallium, indium and bismuth.
In response, the Examiner notes that claim 12 does not require the presence of indium and bismuth and while claim 1 requires the presence of about 0.01 to 1.5 weight percent indium and about 0.01 to 1.5 weight percent bismuth, any amount of indium and/or bismuth including 10 weight percent of each in a reference may read on claim 12 whereas for claim 1 that would not be the case.
Second, the Applicant traverses on the ground that claim 3 recites a dissolvable alloy comprising gallium, indium, and bismuth each “from about 0.01 to about 1.5 wt%” together with “from about 5.1 wt% to about 6.1 wt% zinc” and “from about 1.2 wt% to about 2.0 wt% copper” through its dependency from claims 1 and 2; claim 12 recites those same six constituents in those same amounts, through its dependency from claims 10 and 11; claims 3 and 12 therefore read on a single alloy; and the grouping of claim 3 in the first species and claim 12 in the second species places overlapping claims in supposedly distinct groupings and the same exists between claims 3 and 17, which recites indium, bismuth, zinc and copper in the same amounts through its dependency from claim 16.
In response, the claims are rendered distinct by the independent claims without delving into examination of the dependent claims. Since patentability first has to be considered with regard to the independent claim alone and then if not patentable, then the Examiner must delve into whether the dependent claims are patentable or not in view of that independent claim. In essence, a prior art that has gallium, indium and bismuth in the same or overlapping amounts with 4 weight percent copper and 2 weight percent zinc would anticipate claim 1 but would not read on claims 10 and claims 16 at all. Thus, the scope of search for claim 1 would be different than the scope of search of claims 10 and 16.
Third, the Applicant primarily argues that the Office has not stated any reason why the identified species are patentably distinct from one another and the particular reasons relied on by the examiner for holding inventions as claimed are either independent or distinct should be concisely stated. The Applicant additionally argues that the action identifies no search or examination burden at all and every requirement to restrict has two aspects with the second being why there would be a serious burden and/or examination burden on the examiner if restriction is not required and to demonstrate a serious search burden, the Examiner must show by appropriate explanation, separate classification, a separate status in the art or a different field of search and the action makes no showing of these and identifies no non-prior art issue relevant to one groping but not another that would establish a serious examination burden.
In response, the Examiner notes that since patentability first has to be considered with regard to the independent claim alone and then if not patentable, then the Examiner must delve into whether the dependent claims are patentable or not in view of that independent claim. In essence, a prior art that has gallium, indium and bismuth in the same or overlapping amounts with 4 weight percent copper and 2 weight percent zinc would anticipate claim 1 but would not read on claims 10 and claims 16 at all. Thus, the scope of search for claim 1 would be different than the scope of search of claims 10 and 16. Finally, the Examiner notes that although some of the searching may overlap, to examine both of these inventions would require not only additional searching but also would require consideration of additional 112 issues, consideration of the combinability of prior art references, the formulation of rejections, etc. Therefore, the requirement is still deemed proper and is therefore made FINAL.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Reding (US 3,878,081).
In regard to claim 1, Reding (‘081) discloses an aluminum base alloy having 0.06 weight percent bismuth, 0.01 weight percent gallium and 0.02 weight percent indium (Example 1 in Table 1).
With respect to the recitation “so as to be dissolvable in KCl at about 2.1% by weight and about 93° with a dissolving rate in a range from about 10 to about 100 mg/cm2/hr, yield strength in a range of from about 25 to about 45 ksi, ultimate tensile strength in a range of from about 35 to about 60 ksi, and elongation in a range of from about 4 to about 15% at room temperature” in claim 1, since the alloy in Example 1 of Table 1 has the same composition, this property would be inherent.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Reding (US 3,878,081).
In regard to claim 1, Reding (‘081) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (claim 1).
Element
Instant Claim
(weight percent)
Reding (‘081)
(weight percent)
Overlap
Ga
about 0.01 – 1.5
about 0.005 – 0.05
about 0.01 – 0.05
In
about 0.01 – 1.5
about 0.005 – 0.5
about 0.01 – 0.5
Bi
about 0.01 – 1.5
about 0.02 – 2
about 0.02 – 1.5
Al
Balance
Balance
Balance
The Examiner notes that the amounts of gallium, indium and bismuth disclosed by Reding (‘081) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of gallium, indium and bismuth from the amounts disclosed by Reding (‘081) because Reding (‘081) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “dissolvable” in the claims, this pertains to a capability and since alloys would be capable of being dissolved under particular circumstances, this recitation has been considered optional language that is not required. MPEP 2111.04.
With respect to the recitation “for a component of a downhole tool” in the claim 1, the Examiner considers this an intended use that would not further limit the structure of the aluminum alloy. MPEP 2111.02 II.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Reding (US 3,878,081) as applied to claim 1, and further in view of Tang et al. (The effect of zinc on the aluminum anode of the aluminum air battery).
In regard to claim 2, Reding (‘081) discloses aluminum alloys as set forth above, but Reding (‘081) fails to specify wherein zinc would added.
Tang et al. discloses adding 5.07 weight percent zinc to aluminum alloys in order to decrease the number of the indium-enriched segregative phases (page 315).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add 5.07 weight percent, as disclosed by Tang et al., to the aluminum alloys, as disclosed by Reding (‘081), in order to decrease the number of the indium-enriched segregative phases (page 315).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Reding (US 3,878,081)
as applied to claim 1, and further in view of Haiyan et al. (Effect of cerium addition on microstructure and texture of aluminum foil for electrolytic capacitors).
In regard to claim 9, Reding (‘081) discloses aluminum alloys as set forth above, but Reding (‘081) does not specify a content of cerium.
Haiyan et al. discloses adding cerium in an amounts up to 0.012 weight percent to aluminum substrates would decrease the thickness of aluminum oxide formed on the surface of those substrates (page 134, right column and page 137, left column).
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Xiao et al. (CN 108251721 A) in view of Talbot et al. (Effects of sodium and bismuth in aluminum-magnesium alloys).
In regard to claim 1, Xiao et al. (CN ‘721) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below that would have been hot worked (abstract, [0010] and [0024]).
Element
Instant Claim
(weight percent)
Xiao et al. (CN ‘721)
(weight percent)
Overlap
Ga
about 0.01 – 1.5
1 – 3
1 – about 1.5
In
about 0.01 – 1.5
0.2 – 2
0.2 – about 1.5
Bi
about 0.01 – 1.5
-
-
Al
Balance
Balance
Balance
The Examiner notes that the amounts of gallium and indium disclosed in Xiao et al. (CN ‘721) overlap the amounts of the instant invention, which is prima facie obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of gallium and indium from the amounts disclosed by Xiao et al. (CN ‘721) because Xiao et al. (CN ‘721) discloses the same utility throughout the disclosed ranges.
With respect to the claimed content of bismuth, Xiao et al. (CN ‘721) does not specify the bismuth content.
Talbot et al. discloses adding 0.01 to 0.02 weight percent bismuth to aluminum alloys in order to restore ductility after hot working (abstract).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filiing of the instant invention to add 0.01 to 0.02 weight percent bismuth, as disclosed by Talbot et al., to the aluminum alloys, as disclosed by Xiao et al. (CN ‘721), in order to restore the ductility, as disclosed by Talbot et al. (abstract).
With respect to the recitation “dissolvable” in the claims, this pertains to a capability and since alloys would be capable of being dissolved under particular circumstances, this recitation has been considered optional language that is not required. MPEP 2111.04.
With respect to the recitation “for a component of a downhole tool” in the claim 1, the Examiner considers this an intended use that would not further limit the structure of the aluminum alloy. MPEP 2111.02 II.
In regard to claim 2, Xiao et al. (CN ‘721) discloses 5 to 10 weight percent zinc, which encompasses the range of the instant invention (abstract and [0010]).
In regard to claim 3, Xiao et al. (CN ‘721) discloses 2 to 5 weight percent copper, which overlaps the range of the instant invention (abstract and [0010]). MPEP 2144.05 I.
In regard to claim 4, Xiao et al. (CN ‘721) discloses 1.5 to 5 weight percent magnesium, which encompasses the range of the instant invention (abstract and [0010]).
Allowable Subject Matter
Claims 5-8 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.
In regard to claim 5, neither of the prior art to Reding (‘081), Tang et al., Haiyan et al. nor Talbot et al. disclose or adequately suggest adding about 0.18 to about 2.0 weight percent chromium to a dissolvable alloy for a component of a downhole tool comprising from about 0.01 to about 1.5 weight percent gallium, about 0.01 to about 1.5 weight percent indium, about 0.01 to about 1.5 weight percent bismuth, about 5.1 to about 6.1 weight percent zinc, about 1.2 to about 2.0 weight percent copper, about 2.1 to about 2.9 weight percent magnesium.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All pertinent prior art references have been cited in this Office Action and the Examiner does not have any knowledge of additional references that would be considered pertinent at this time.
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759
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