DETAILED ACTION
Claims 18-34 are pending and currently under review.
Claims 1-17 are cancelled.
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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed applications, Application No. 61/942,879, 61/981,425, 15/641,439, 15/294,957, and 14/627236 fail to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Specifically, none of these applications disclose a first, second, and third additive material having a composition as claimed.
The examiner notes that prior-filed application 62/569,004 does indeed disclose the aforementioned features and therefore the instant application receives the benefit of the prior-filed application date of 10/06/2017.
Claim Objections
Claim 32 is recited twice in the instant claims filed 3/13/2024. The examiner considers the second recitation of claim 32 on p.6 of the claims to be re-numbered to new claim 34. Appropriate correction is required.
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 19, 21, 23, 25, 27, 29, 31, and 34 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 19 recites that the magnesium material includes one or more of the first, second, and third additive materials prior to heating. This scope includes all three additive materials included prior to heating. However, claim 19 depends upon claim 18, which expressly requires step f) of introducing one or more of the first, second, and third materials after heating. Therefore, it is unclear to the examiner as to the scope of the instant claims because the scope of claim 19 is apparently contradictory to the scope of independent claim 18. For example, if all three additives are included prior to heating (which is encompassed in claim 19), then none of the additives can be included after heating as required in step f). The examiner interprets the above limitations to merely further require that at least some additives are added prior to heating while still meeting the claim scope of claim 18 that at least some additives are added after heating.
Claims 20-21 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. Claims 20-21 recite that the second additive can include bismuth and silver. However, claims 20-21 depend upon independent claim 18, wherein bismuth and silver are never recited. Therefore, it is unclear as to whether bismuth and silver can be included or not since they were never recited as potential additives. The examiner interprets claims 20-21 to not require bismuth or silver.
Claims 28-31 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. Claims 28-31 recite that the first additive includes Cu or Co, respectively. However, Cu and Co are recited in claim 18 as second additive elements, not first additive elements. Therefore, it is unclear to the examiner as to whether claims 28-31 are meant to refer to second additive elements, or whether claims 28-31 are mean to require a further addition of Cu or Co as first additive elements in addition to another second additive element. The examiner interprets these claims to merely require Cu or Co as second additive elements.
Claims 32 and 34 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. Claims 32 and 34 recite that the second additive includes Ca. However, Ca is recited in claim 18 as a third additive element, not a second additive element. Therefore, it is unclear to the examiner as to whether claims 32 and 34 are meant to refer to third additive element, or whether claims 32 and 34 are meant to require a further addition of Ca as a second additive element in addition to another third additive element. The examiner interprets these claims to merely require Ca as a third additive element.
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.
Claims 19, 21, 23, 25, 27, 29, 31, and 34 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 19 requires addition of one or more additives prior to heating, which fails to further narrow the scope of claim 18 which requires one or more additives added after heating as explained above. 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.
Claims 20-21 are 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. Claims 20-21 require bismuth and silver as second additives, which fails to further narrow the scope of claim 18 wherein bismuth and silver are not recited as potential second additive elements. 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
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 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(s) 18, 20, 22, and 24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bae et al. (CN101137762, machine translation referred to herein).
Regarding claims 18, Bae et al. discloses a method of forming a cast Mg alloy composite having precipitation strengthening (ie. in situ precipitation) [0013, 0026, 0052]; wherein said method includes providing raw material of Mg and other elements such as Al up to 6 atomic percent, Cu up to 2 atomic percent, and Ca up to 2 atomic percent among others, followed by melting of the Mg, subsequent addition of additives, and then casting and solidification [0026, 0058, 0062]. The examiner notes that the Al, Cu, and Ca of Bae et al. meets the claimed limitations of a first, second, and third additive material, respectively, as well as the claimed amounts of Mg and Al. The examiner further notes that melting of Mg would naturally require heating of Mg to at least or above a solidus temperature, and at least some degree of mixing of molten alloy components and cooling to below a solidus temperature would naturally occur in casting and solidification as recognized by one of ordinary skill.
Bae et al. does not expressly teach that galvanically-active intermetallic phases are precipitated or a dissolution rate as claimed. However, the examiner submits that these features would have naturally flowed from the disclosure of Bae et al. Specifically, Bae et al. discloses an identical Mg alloy composition and an identical method of manufacture of melting and casting, such that identical properties of intermetallic phases and dissolution rate would have naturally flowed absent concrete evidence to the contrary.
Regarding claims 20, 22, and 24, Bae et al. discloses the method of claim 18 (see previous). As stated above, Bae et al. teaches inclusions of Cu up to 2 atomic percent and Ca up to 2 atomic percent, which meet the instant claims.
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.
The factual inquiries 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.
Claim(s) 19, 21, 23, 25-29, and 32-34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (CN101137762, machine translation referred to herein).
Regarding claim 19, 21, 23, 25, 27, 29, and 34, Bae et al. discloses the method of claim 18 (see previous). As stated above, Bae et al. discloses addition of additives after melting Mg; however, Bae et al. does not expressly teach addition of additives prior to melting of Mg. However, the examiner submits that this feature is merely a change in order of processing steps, which is prima facie obvious absent a clear indication that said order of steps is significant. See MPEP 2144.04(IV)(C). Specifically, it is noted that additive addition both prior to melting and after melting achieve the same result of an alloyed Mg material. Therefore, the examiner cannot consider the instant claim to be distinct over the disclosure of Bae et al. because a mere change in processing steps (ie. additive addition prior to melting vs. after melting) would still achieve the same effect of an alloyed Mg material.
Regarding claims 21, 23, 25-29, 32, and 34, Bae et al. discloses the method of claim 19 (see previous). As stated above, Bae et al. teaches inclusions of Cu up to 2 atomic percent, Ca up to 2 atomic percent, in amounts that still further overlap with the claimed ranges (see previous). Bae et al. further teaches Ni can be included in up to 2 atomic percent, which overlaps with the claimed Ni range [0051].
Regarding claim 33, the examiner notes that the limitation of claim 33 are identical to those of claim 18 with the further recitation of the Mg composite being a downhole tool having a shape as claimed. Bae et al. discloses all of the limitations of claim 18 as explained above. The examiner notes that the recitation of “for use in downhole operations” is an instance of intended use which, upon further consideration, is not considered to impart any further distinct structure to the claimed composite because the body of the claim already fully and intrinsically sets forth all of the structural features of the composite and “for use in downhole operations” is merely an instance of the purpose of the composite rather than any distinct definition of the claimed limitations. See MPEP 2111.02. Accordingly, the composite of Bae et al., which is identical to that as claimed, would be entirely capable of being used in downhole operations. The examiner further notes that the recitations of a “sleeve, a frac ball…” are merely instances of a particular shape, which is prima facie obvious because any particular shape is matter of engineering design choice that would have been obvious depending on the desired application. Furthermore, one of ordinary skill in the art of metallurgy would know that casting as taught by Bae et al. is well-known to be capable of forming any desired simple shape such as a tube or ball. See MPEP 2144.04(IV)(B). Nonetheless, Bae et al. further teaches the alloy as a cladding material or depicts a ring shape, which meets the limitation of a sleeve or tube.
Claim(s) 30-31 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bae et al. (CN101137762, machine translation referred to herein) in view of Heublein et al. (US 2002/0004060).
Regarding claims 30-31, Bae et al. discloses the method of claims 18 and 25 (see previous). Bae et al. does not expressly teach an inclusion of Co as claimed. Heublein et al. discloses that Ni, Co, Cu, among other elements, are known alloying elements in Mg alloys that improve biological, mechanical, and chemical properties [0014]. In other words, Heublein et al. discloses Co and other elements such as Ni and Cu to be art-recognized equivalent alloying elements for improving properties of Mg alloys as stated above. Therefore, it would have been obvious to one of ordinary skill to substitute Co for the Ni or Cu in an amount of up to 2 atomic percent as taught by Bae et al. because it is obvious to substitute art-recognized equivalents for the same purpose of improving alloy properties. See MPEP 2144.06(II).
Conclusion
No claims allowable.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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