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 1-21 are pending wherein claims 4, 6, 8, 10, 11, 13-14, 16-18 and 20-21 have been preliminarily amended. Claims 1-20 are currently under examination and claim 21 is withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of producing magnesium-rare earth alloys. Applicant’s election of claims 1-20 was made with traverse in the Response filed on August 4, 2026. Applicant traverses on the grounds that the Examiner has not established that unity of invention is lacking because a finding of overlapping ranges giving rise to a prima facie case of obviousness is not the same as a showing that the claimed subject matter makes no contribution over the prior art; the special technical feature must be assessed in terms of the contribution of the claimed invention, considered as a whole, makes over the prior art; the Examiner has addressed individual elements in isolation but has not shown that the specific combination recited in claim 1, including the Gd:Nd ratio of 0.40 to 0.63 is disclosed in Lyon (WO ‘811); and therefore the Examiner has not shown that unity of invention is lacking.
In response, the Examiner has pointed to a reference with broad levels of gadolinium and neodymium and other elements (claim 1 of Lyon (WO ‘811)), but if the teachings of claims 1-2 and 4 in Lyon (WO ‘811) is considered, the ratio of gadolinium to neodymium would include 1:2.5, which would be a ratio of 0.4 and thus it would appear that Lyon (WO ‘811) when considered in it’s more preferred embodiments, would provide subject matter that meets the special technical feature of the instant invention. The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Hoeschele, 406 F.2d 1403, 160 USPQ 809 (CCPA 1969). MPEP 2144.05 II. Therefore, Applicant’s arguments are not persuasive and the restriction has still been deemed proper and therefore made FINAL.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Lyon (WO 2005/035811 A1).
In regard to claim 1, Lyon (WO ‘811) discloses magnesium-rare earth alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
Lyon (WO ‘811)
(weight percent)
Overlap
Gd
1.32 – 1.8
1 – 2.7
1.32 – 1.8
Nd
2 – 3.6
2.5 – 3.5
2.5 – 3.5
Zr
0.55 – 0.7
0.2 – 1
0.55 – 0.7
Zn
0.2 – 0.4
0 – 1.3
0.2 – 0.4
Mg
at least 85
at least 85
at least 85
The claimed amounts of gadolinium, neodymium, zirconium, zinc and magnesium disclosed by Lyon (WO ‘811) 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 gadolinium, neodymium, zirconium, zinc and magnesium from the amounts disclosed by Lyon (WO ‘811) because Lyon (WO ‘811) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the ratio of Gd:Nd (wt%) is 0.40-0.63” in claim 1, Lyon (WO ‘811) discloses a ratio of 0.285 to 1.08, which would encompass the range of the instant invention (claims 1-2 and 4).
With respect to the recitation “having an Ultimate Tensile Strength when sand cast into a 200 mm x 200 mm x 25.4 mm plate and subjected to a T6 ageing process, of at least 310 MPa as measured according to ASTM B557M-15” in claim 2, this language is considered to be optional language which would not require the property to be present. MPEP 2111.04. Additionally, Lyon (WO ‘811) discloses a substantially similar composition that would have been sand cast and therefore this property would be expected (page 18 and claims). MPEP 2112.01 I.
With respect to the recitation “having an Ultimate Tensile Strength, when sand cast into a 200 mm x 200 mm x 25.4 mm plate and subjected to a T6 ageing process, of at least 315 MPa as measured according to ASTM B557M-15” in claim 3, this language is considered to be optional language which would not require the property to be present. MPEP 2111.04. Additionally, Lyon (WO ‘811) discloses a substantially similar composition that would have been sand cast and therefore this property would be expected (page 18 and claims). MPEP 2112.01 I.
With respect to the recitation “wherein the ratio of Gd:Nd (wt%) is 0.40-0.61” in claim 4, Lyon (WO ‘811) discloses a ratio of 0.285 to 1.08, which would encompass the range of the instant invention (claims 1-2 and 4).
With respect to the recitation “wherein the ratio of Gd:Nd (wt%) is 0.40-0.57” in claim 5, Lyon (WO ‘811) discloses a ratio of 0.285 to 1.08, which would encompass the range of the instant invention (claims 1-2 and 4).
In regard to claims 6-7, Lyon (WO ‘811) discloses 1 to 2.7 weight percent gadolinium, which encompasses the ranges of the instant invention (claim 4).
In regard to claims 8, Lyon (WO ‘811) discloses 2.5 to 3.5 weight percent neodymium, which overlaps the range of the instant invention (claim 2).
In regard to claims 9, Lyon (WO ‘811) discloses 2.5 to 3.5 weight percent neodymium, which encompasses range of the instant invention (claim 2).
In regard to claim 10, Lyon (WO ‘811) discloses 0.2 to 1 weight percent zirconium, which encompasses the range of the instant invention (claim 1).
In regard to claims 11-12, Lyon (WO ‘811) discloses at least 85 weight percent magnesium, which encompasses the ranges of the instant invention (claim 1).
In regard to claim 13, Lyon (WO ‘811) discloses no more than 0.05 weight percent silver (claim 1).
With respect to the recitation “wherein the alloy, when sand cast into a 200 mm x 200 mm x 25.4 mm plate and subjected to a T6 ageing process, has a mean planar grain size of 10-100 µm as measured according to ASTM E112-13” in claim 14, this language is considered to be optional language which would not require the property to be present. MPEP 2111.04. Additionally, Lyon (WO ‘811) discloses a substantially similar composition that would have been sand cast and therefore this property would be expected (page 18 and claims). MPEP 2112.01 I.
With respect to the recitation “when sand cast into a 200 mm x 200 mm x 25.4 mm plate and subjected to a T6 ageing process, has a mean planar grain size of 20-80 µm as measured according to ASTM E112-13” in claim 15, this language is considered to be optional language which would not require the property to be present. MPEP 2111.04. Additionally, Lyon (WO ‘811) discloses a substantially similar composition that would have been sand cast and therefore this property would be expected (page 18 and claims). MPEP 2112.01 I.
In regard to claim 16, Lyon (WO ‘811) discloses wherein a second phase would be formed at the grain boundaries (page 5).
With respect to the recitation “wherein the alloy, when sand cast into a 200 mm x 200 x 25.4 mm plate and subjected to a T6 ageing process, comprises at least 98% of said first crystal phase” in claim 17, this language is considered to be optional language which would not require the property to be present. MPEP 2111.04. Additionally, Lyon (WO ‘811) discloses a substantially similar composition that would have been sand cast and therefore this property would be expected (page 18 and claims). MPEP 2112.01 I.
In regard to claims 18-20, Lyon (WO ‘811) discloses wherein the alloys would be used in aerospace applications such as helicopter gearboxes and jet engine components, which include electrical components (page 1).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Luo, Alan A. "Magnesium casting technology for structural applications." journal of Magnesium and Alloys 1.1 (2013): 2-22.
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759
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