The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 1 May 2024. These drawings are accepted.
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(s) 8-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kim, Yong-Ho, et al. "Microstructure and mechanical properties of Mg–xLi–3Al–1Sn–0.4 Mn alloys (x= 5, 8 and 11 wt%)." Journal of alloys and compounds 583 (2014): 15-20 (hereinafter “Kim”).
Regarding claim 8, Kim teaches a Microstructure and properties of a Mg-Li alloy with varying amounts of Li (see title, abstract, 2. Experimental procedures). Kim teaches examples of alloys with Mg–xLi–3 wt%Al–1 wt%Sn–0.4 wt%Mn (x = 5, 8 and 11 wt%) are prepared (see title, abstract, 2. Experimental procedures). Kim teaches that when x = 8%, the prepared magnesium alloy includes 55% α-phase and 43% β-phase (see 3. Results and discussion). Thus the value of the inequality is met inherently. MPEP 2112. The same composition with the same microstructure cannot have different properties.
The composition of Kim falls entirely in the ranges claimed, anticipating all of those ranges. MPEP 2131.03. The chemical composition, microstructural phase composition, and all limitations of the claim are met by the example of Kim.
Regarding claims 9-13 the composition of Mg–8Li–3 wt%Al–1 wt%Sn–0.4 wt%Mn (x = 5, 8 and 11 wt%) falls entirely within the ranges as claimed anticipating the ranges.
Claim(s) 8-12 and 17-19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019189941 A (document cited by applicant). It is noted that US 20210025037 A1 (hereinafter “Ishizuka”) is the United States equivalent application claiming priority to JP 2019189941 A, and is taken as a faithful English language translation thereof.
Regarding claim 8, Ishizuka teaches Mg-Li alloys (See title). Ishizuka teaches that the alloy includes a Ge element as alloying addition (See SUMMARY OF INVENTION). Ishizuka teaches Example 6 including 11% Li and 0.4%Ge, with 95.0% of Mg + Li (EXAMPLES and Table 1). Ishizuka also teaches Example 4 including 8.8% of Li and 95.1% of Mg + Li (Table 1). The composition of the alloys of the Examples of Ishizuka falls entirely in the claimed range, anticipating the range. MPEP 2131.03.
Ishizuka does not describe any amount of alpha phase in the alloy. Ishizuka teaches that these alloys include a Li-rich precipitated phase ([0024]). This is believed to be the same structure required of a small amount of beta phase. Alternatively, the structure as claimed would have been inherently present in the prior art alloy. The same composition used for the same purpose would have had the same properties inherently. MPEP 2112.01.
Regarding claim 9, Alloy Example 4 meets the claimed composition.
Regarding claims 10-12 the alloy Example 6 and Example 4 meets the claim compositional limitations.
Regarding claim 17, Ishizuka teaches to apply a coating film (see [0021]-[0024], [0039]).
Regarding claim 18, Ishizuka teaches magnesium phosphate ([0021]).
Regarding claim 19, Ishizuka teaches a housing for an imaging device (fig 1, [0018]-[0021]).
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.
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) 1-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim.
Regarding claim 1, Kim teaches a Microstructure and properties of a Mg-Li alloy with varying amounts of Li (see title, abstract, 2. Experimental procedures). Kim teaches examples of alloys with Mg–xLi–3 wt%Al–1 wt%Sn–0.4 wt%Mn (x = 5, 8 and 11 wt%) are prepared (see title, abstract, 2. Experimental procedures). Kim teaches that when x = 11%, the prepared magnesium alloy includes 82% α-phase and 15% β-phase (see 3. Results and discussion). The microstructure is within the ranges of claim 1.
The 11 wt% amount of Li in the composition of Kim is outside the claim range of higher than 11% to 13.5% or less of Li. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case Kim teaches a Mg-Li sheet that is made for electronic housings (see I. Introduction), which includes the same phases as claimed. The only difference is the value of 11 compared with more than 11 to 13.5. The skilled artisan would have expected the materials to behave approximately the same based on the microstructures being the same and the closeness of the compositions. It is not clear that there would be any patentable difference.
Regarding claims 2-4, the composition of Kim meets the limitations.
Regarding claim 5, Kim teaches 82% (see 3. Results and discussion).
Regarding claims 6-7, the composition of Kim meets the limitations.
Claim(s) 1-7 and 13-16 are rejected under 35 U.S.C. 103 as being obvious over JP 2019189941 A (document cited by applicant). It is noted that US 20210025037 A1 (hereinafter “Ishizuka”) is the United States equivalent application claiming priority to JP 2019189941 A, and is taken as a faithful English language translation thereof.
Regarding claim 1, Ishizuka teaches Mg-Li alloys (See title). Ishizuka teaches that the alloy includes a Ge element as alloying addition (See SUMMARY OF INVENTION). Ishizuka teaches Example 6 including 11% Li and 0.4%Ge, with 95.0% of Mg + Li (EXAMPLES and Table 1).
The 11 wt% amount of Li in the composition of Ishizuka is outside the claim range of higher than 11% to 13.5% or less of Li. However, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985). In this case Ishizuka teaches a Mg-Li sheet that is made for electronic housings (see [0042]), which includes the same composition. The only difference is the value of 11 compared with more than 11 to 13.5. Alternatively, Ishizuka teaches that a functional range of Li would be 0.5-15% by mass in a broad alloy composition (see [0031]). The modification of the alloy Example 6 so as to include more Li would have been an obvious matter to the skilled artisan, where Ishizuka teaches to add up to 15% of Li ([0031]), overlapping the claimed amount of Li.
The skilled artisan would have expected the materials to behave approximately the same. Ishizuka teaches that these alloys include a Li-rich precipitated phase ([0024]). This is believed to be the same structure required of a small amount of beta phase. Alternatively, the structure as claimed would have flowed naturally from the properties of the prior art, where the prior art Example 6 differs from the claim only in a nominal amount of lithium of 11% vs more than 11%. It would have been an obvious matter to have altered the example by adding more Li, resulting in the same composition claimed.
Regarding claim 2, Ishizuka teaches a broad range of Ge may be 0.1-0.8% (see [0027]). The modification of the alloy Example 6 so as to include less Ge would have been an obvious matter to the skilled artisan, where Ishizuka teaches to add 0.1-0.8% of Ge ([0027]) overlapping the claimed amount of Ge.
Regarding claim 3-4, and 6 the alloy Example 6 meets the claim compositional limitations.
Regarding claim 5, Ishizuka does not teach the claimed microstructure. The skilled artisan would have expected the materials to behave approximately the same. Ishizuka teaches that these alloys include a Li-rich precipitated phase ([0024]). This is believed to be the same structure required of a small amount of beta phase. Alternatively, the structure as claimed would have flowed naturally from the properties of the prior art, where the prior art Example 6 differs from the claim only in a nominal amount of lithium of 11% vs more than 11%.
Regarding claim 7, the composition of Example 6 meets the ese elemental ranges except for Ca. Ishizuka teaches a broad range of Ca may be 0.1-2 % (see [0033]). The modification of the alloy Example 6 so as to include less Ca would have been an obvious matter to the skilled artisan, where Ishizuka teaches to add 0.1-2% of Ca ([0033]) overlapping the claimed amount.
Regarding claim 13, Ishizuka is applied to the claim as stated in the rejection of claim 8 above.
Ishizuka teaches a broad range of Ca may be 0.1-2 % (see [0033]). The modification of the alloy Example 6 so as to include less Ca would have been an obvious matter to the skilled artisan, where Ishizuka teaches to add 0.1-2% of Ca ([0033]) overlapping the claimed amount.
Regarding claim 14, Ishizuka teaches to apply a coating film (see [0021]-[0024], [0039]).
Regarding claim 15, Ishizuka teaches magnesium phosphate ([0021]).
Regarding claim 16, Ishizuka teaches a housing for an imaging device (fig 1, [0018]-[0021]).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 11840749 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because applicant’s patented claims describe an overlapping composition including Li, Ge, and other elements. Based on the overlapping composition the selection of an alloy with the same composition as claimed would have required no more than a routine investigation of the prior patented alloy. The prior patent claims describe a housing for electronics or imaging devices (claims 9-12). Although the prior patent does not disclose the microstructural phases, it is believed that the se would have flowed naturally from the teachings of the prior art. The same alloy composition, used for the same purposes, would have exhibited the same properties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2022/0307108 A1 teaches a Mg-Li alloy with overlapping composition. US 20200063242 A1 teaches manufacture of light alloys including Mg alloys that may include Li. US 20170369972 A1 teaches Mg-Li alloys with overlapping compositions.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
Prosecution Insights