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 Claims
Pending:
6-16
Withdrawn:
NONE
Rejected:
6-10, 13-15
Amended:
6
New:
11-16
Objected to:
11, 12, 16
Independent:
6
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.
Claim 7 is 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 7, which is dependent on independent claim 6, recites the limitation “wherein the composition is formed by adding individual alloy constituents and/or correspondingly selecting and sorting the recycled material”. Applicant explains in the response filed 4/15/26 “claim 7 does not negate or override the recycled material requirement of claim 6; rather, it describes the manner in which the desired alloy composition is attained while still using the recycled material required by the independent claim”. However, the exclusive option “adding individual alloy constituents” (which is implied by the “or” conjunction) appears to be distinct from, and not require, recycled components. Further, it is unclear the relationship of “alloy constituents” (claim 7) to either the recycled material or primary aluminum of independent claim 6, upon which claim 7 depends. Appropriate correction/ explanation is required.
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.
Claims 6-10, 13-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wiesner (US 2019/0119791) in view of ASM Vol. 2A p 143-164.
Concerning independent claim 6, Wiesner teaches a process for making an Al-Si composition from recycled material added to non-recycled (primary) aluminum, said Al-Si alloy composition comprising (in wt%):
Claim 6
Claim 9
Wiesner
Si
8.0-11.5
8.0-9.0
8.5-11.5
Fe
≤0.3
0.25-0.3
0.02-0.5
Cu
≤0.1
0.05-0.1
0.1-0.5
Mn
0.3-0.8
0.3-0.4
0.3-0.8
Mg
0.1-0.6
0.1-0.6
0.1-0.5
Ti
≤0.25
0.15-0.25
0.02-0.25
balance
impurities
≤0.1% each
≤0.4% total
≤0.1% each
≤0.4% total
Table 1: instant claims vs. Wiesner
which overlaps the claimed alloying ranges of Si, Fe, Cu, Mn, Mg, and Ti (instant claims 6, 9). Wiesner teaches said alloy is formed from 50-70% recycled metal [0048], which meets the instant ≥50wt% recycled metal (instant claim 1), and touches the boundary of the claimed ≥70wt% recycled material (claim 8). Wiesner does not teach the amount of impurities allowed in the resulting Al-Si alloy (instant claim 6, 9).
However, ASM Vol. 2A teaches that minimizing impurities is important for high mechanical properties and for improving surface properties (p 153). It would have been obvious to one of ordinary skill in the art to have minimized the impurities of the Al-Si alloy formed from 50-70% recycled metal taught by Wiesner, such as within the claimed ranges of ≤0.1% each and ≤0.4% total, in order to maximize mechanical properties (as taught by ASM Vol. 2A, p 153).
Concerning claim 7, Wiesner teaches sorting recycled material and selecting high-grade recycling material [0049], which meets the instant limitation of “selecting and sorting the recycled material”.
Concerning claim 9, as discussed above, the combination of Wiesner and ASM Vol. 2A teaches an overlapping Al-Si alloy (see Table 1) together with motivation to minimize impurities, which meets the instant limitations.
Concerning claim 10, Wiesner teaches forming a component of said Al-Si alloy formed from 50-70% recycled material (see Wiesner at examples), which meets the instant limitation.
Concerning claim 13-14, Wiesner teaches forming said alloy by die casting into a die casting component, which meets the instant limitations.
Allowable Subject Matter
Claims 11, 12, and 16 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. The closest prior art, Wiesner, does not teach or suggest a process of forming the claimed Al-Si-Mn-Mg alloy with the claimed alloying ranges, complete with at least 80% by weight recycled material added (claim 11, 16) or complete with at least 90% by weight recycled material added (claim 12).
Response to Amendment/Arguments
In the response filed on 4/15/2026 applicant amended claim 6, added claims 11-16, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s argument that claim 7 is not indefinite has not been found persuasive. As set forth above, the exclusive option “adding individual alloy constituents” (which is implied by the “or” conjunction) appears to be distinct from, and not require, recycled components. Further, it is unclear the relationship of “alloy constituents” (claim 7) to either the recycled material or primary aluminum of independent claim 6.
Applicant’s argument that the instant invention is allowable because one of skill in the art would not be motivated to select the claimed composition from that of the prior art, has not been found persuasive.
Similarly, applicant’s argument that the instant invention is allowable because the prior art does not teach examples within the instant alloying ranges, has not been found persuasive. Patents are relevant as prior art for all they contain, and nonpreferred embodiments constitute prior art, MPEP 2123.
Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." 27 F.3d at 554, 31 USPQ2d at 1132.).
For the instant case, the disclosure of Wiesner is not limited to the preferred embodiments/examples. Wiesner teaches alloying ranges of Si, Fe, Cu, Mn, Mg, and Ti that overlap or touch the boundary of the claimed alloying ranges, and therefore a prima facie case of obviousness has been made.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "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 Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the claimed impurity limits (independent claims 6, 9) has not been found persuasive. As set forth above, “ASM Handbook Vol 2A” p 153 teaches controlling impurities and defects, in order to improve mechanical properties. This is further evidenced by “ASM Handbook Vol 2A” p 122, which states “impurities may have a significant effect on the properties of a casting, so it is important to consider their effects”, and “ASM Handbook Vol 2A” p 120 at Table 1, which gives typical impurity ranges (i.e. “others”) for similar 3xx Al-Si alloys to be a maximum of 0.15wt% total and 0.05% each.
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 JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/
Examiner, Art Unit 1733 6/22/26
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