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 .
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-3 in the reply filed on 08/21/2026 is acknowledged. The traversal is on the ground(s) that Cited prior art does not disclose instant claim 1 feature. This is not found persuasive because newly cited reference Yang discloses instant claim 1 feature as indicated in rejection of claims 1-3 below.
The requirement is still deemed proper and is therefore made FINAL.
Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 08/21/2026.
Status of Claims
Claims 1-7 are pending. Claims 1-3 are presented for this examination. Claims 4-7 are withdrawn.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 05/09/2024 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-3 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 pre-AIA the applicant regards as the invention.
The terms “high-strength and high-toughness” in claim 1 are relative terms which renders the claim indefinite. The term “high” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
As a result of rejected claim 1, all dependent claims are rejected under the same statue.
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.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yang (CN107988535A) in view of Li (CN112518170A)
As for claims 1-2, Yang discloses a high strength heat resistant casting aluminum alloy (Title).
Since the aluminum alloy comprises similar Cu amount as claimed, instant claimed Al-Cu series cast aluminum alloy is met. The alloy comprising overlapping compositions as illustrated in Table 1 below. The fact Yang discloses Si <=0.2% (abstract) encompasses instant application disclosed Si <=0.08 (Instant application PGPUB paragraph ).
Table 1
Element
Applicant
(weight %)
Yang et al.
(weight %)
Overlap
(weight %)
Cu
4.6-5.3
4-6
4.6-5.3
Mn
0.45-0.55
0.3-0.8
0.45-0.55
Mg
0.42-0.55
0.1-0.7
0.42-0.55
Ti
0.15-0.25
0.08-0.3
0.15-0.25
Zr
0.05-0.15
0.08-0.45
0.08-0.15
B
0.003-0.011
0.005-0.06
0.005-0.011
Fe
0.03-0.2
<=0.3
0.03-0.2
Si
<=0.08
<=0.2
<=0.08
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
It is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003). Indeed, when the claimed ranges are completely encompassed by the prior art, the obviousness conclusion is even more compelling than in cases of mere overlap. 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. A prima facie case of obviousness also exists in those cases where the claimed range and the prior art range, though not overlapping, are sufficiently close that one skilled in the art would have expected them to have the same or similar properties. Id.; see also In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir. 1997); Titanium Metals Corp. v. Banner, 778 F.2d 775, 783 (Fed. Cir. 1985); and In re Brandt, 886 F.3d 1171, 1177 (Fed. Cir. 2018) (In response to an argument by an Appellant that there must be an overlap between the claimed range and prior art range to find obviousness, the Court stated “[t]he nonbinding holding in [a previous case], however, does not stand for the proposition advanced by Appellants that a claimed range and prior art range must overlap for an examiner to find a prima facie case.”).
Hence, based on the teaching of Yang, it would have been obvious to one skill in the art, to select the amount of each element within the ranges disclosed by Yang in order to arrive at steel of claimed invention.
With respect to claimed Fe:Si and Cu:Mg, First, it is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, in re Cooper and Foley 1943 C.D. 357, 553 O.G. 177; 57 USPQ 117, Taklatwalla v. Marburg, 620 O.G. 685, 1949 C.D. 77, and In re Pilling, 403 O.G. 513, 44 F(2) 878, 1931 C.D. 75. In the absence of evidence to the contrary, the selection of the proportions of elements would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688. In the instant case, absent criticality of claimed Fe:Si and Cu:Mg ratios, prima facie case obviousness is maintained due to overlapping Fe, Si, Cu and Mg amounts.
Second, Yang explicitly discloses inventive Example 3 [0038] having Cu=4 and Mg=0.4 which suggests Cu:Mg=10, hence meeting claimed Cu:Mg=(8-12):1.
Third, Li explicitly discloses Al-Cu series cast alloy with impurity content of Fe/Si mass ratio of 2.5-5 (Claim 4) as Fe and Si are brittle impurity phase which are both harmful element for Al-Cu alloy. (English translation Page 3)
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply Fe/Si mass ratio of 2.5-5 as suggested by Li, in the Al-Cu series cast aluminum alloy of Yang as Li teaches controlling ratio of impurity element of Fe/Si at (2.5-5):1 advantageously improves the strength and plasticity.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Schall (US20120144824) in view of Li.
As for claims 1-2, Schall discloses an aluminum based alloy produced by casting process [0040]. The alloy comprises overlapping composition as illustrated in Table 2 below.
Table 2
Element
Applicant
(weight %)
Schall et al.
(weight %)
Overlap
(weight %)
Cu
4.6-5.3
2.7-5
4.6-5
Mn
0.45-0.55
0.16-2.8
0.45-0.55
Mg
0.42-0.55
0.2-1.9
0.42-0.55
Ti
0.15-0.25
0.05-1.3
0.15-0.25
Zr
0.05-0.15
0.1-0.3
0.1-0.15
B
0.003-0.011
0.01-1.35
0.01-0.011
Fe
0.03-0.2
0-5
0.03-0.2
With respect to claimed Fe:Si and Cu:Mg, they are rejected for the same reasons set forth in the rejection over Yang in view of Li above.
Claim(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over Li’297 (CN104451297A) in view of Li and Yang (CN107988535A).
As for claims 1-3, Li’297 discloses an aluminum copper aluminum alloy produced by melting and casting, the alloy having high strength comprising overlapping composition as illustrated in Table 3 below. [0005].
The fact Li discloses Si <=0.8% ([0005]) encompasses instant application disclosed Si <=0.08% (Examples in Table 1 of instant application).
With respect to claimed Fe:Si and Cu:Mg ratios, they are rejected for the same reason set forth in rejection over Yang and Li above.
Li does not expressly disclose Zr and B as claimed.
Yang discloses similar Al-Cu series cast aluminum alloy. Yang explicitly discloses Zr 0.08-0.45 and B 0.005-0.06% for the benefit of generating heat resistance reinforcing phase with Al so as to improve heat resistant performance. [0018].
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Zr and B amount as disclosed by Yang, to the Al-Cu series cast aluminum alloy of Li as Yang teaches addition of Zr and B advantageously improve heat resistant performance.
Table 3
Element
Applicant
(weight %)
Li et al.
(weight %)
Overlap
(weight %)
Cu
4.6-5.3
3.3-4.6
4.6
Mn
0.45-0.55
0.5-1
0.5-0.55
Mg
0.42-0.55
0.4-1.8
0.42-0.55
Ti
0.15-0.25
<0.2
0.15-0.2
Zr
0.05-0.15
B
0.003-0.011
Fe
0.03-0.2
<=0.8
0.03-0.2
V(Claim 3)
<=0.05
0
0
Ga(Claim 3)
<=0.03
0
0
Ni(Claim 3)
<=0.01
<=0.2
<=0.01
Zn(Claim 3)
<=0.03
<=0.8
<=0.03
P(Claim 3)
<=0.002
0
<=0.002
Be(Claim 3)
<=0.0008
0
<=0.0008
Sn(Claim 3)
<=0.01
<=0.2
<=0.01
Response to Argument
Applicant argues that neither CN’617 nor CN’220 discloses claim 1 required feature, argument is not commensurate in scope of rejection of the record.
Applicant also argues Fe:Si ratio is a key factor affecting alloy’s structure and performance, argument is not commensurate in scope of claim 1 which neither requires structure nor performance of the alloy. Second, according to MPEP 716.01(c): “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965}. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.” Also according to MPEP 2144.05(III)(A): “Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.” Here, applicant’s attorney refers to unexpected results from the claimed formulation, however, no showings of such results are made. In the instant case, there is NO comparative examples in the instant application demonstrating Fe:Si outside claimed ratio would result inferior mechanical properties. In other words, where is the criticality of Fe:Si ratio ? the answer is NONE.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II and MPEP 2144.05 III.
Lastly, Li explicitly discloses Fe:Si ratio of 2.5-5, which meets claimed Fe:Si ratio range.
Hence, applicant is invited to submit 132 Declaration demonstrating criticality of Fe:Si ratio.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JENNY R WU/Primary Examiner, Art Unit 1733
Prosecution Insights