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 .
DETAILED ACTION
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-11, 19-20, drawn to product, classified in C22C21/02.
II. Claims 12-18, drawn to process of making, classified in B22D17/00.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case, that the product as claimed can be made by another and materially different process such as by sand casting or mold casting.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
the inventions have acquired a separate status in the art in view of their different classification
the inventions have acquired a separate status in the art due to their recognized divergent subject matter
the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with Mr Gerald M. Keller on 06/30/2026 a provisional election was made with traverse to prosecute the invention of Group I, claims 1-11 and 19-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 12-18 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Status of Claims
Claims 1-20 are pending. Claims 1-11 and 19-20 are presented for this examination. Claims 12-18 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 03/07/2025 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 § 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) 1-11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Wang (US20170107599A1) in view of Park (WO2020040602A1) and APA.
As for claims 1-11 and 19-20, Wang discloses a new high pressure die casting aluminum alloy comprising overlapping composition as required by instant claims 1, 5-11 and 19 as illustrated in Table 2 below.
Table 2
Element
Applicant
(weight %)
Wang et al.
(weight %)
Overlap
(weight %)
Si
6.5-7.5
7-15
7-7.5
Cu
0.05-0.3
0-0.5
0.05-0.3
Mg
0.1-0.6
0-0.6
0.1-0.6
Fe
0.2-1.5
0-1
0.2-1
Cr
Greater 0-0.3
Mn
Greater 0-0.15
0-1
Greater 0-0.15
Cr (Claim 5)
0.1-0.15
Cu (Claim 5)
0.05-0.1
0-0.5
0.05-0.1
Fe (Claim 5)
0.2-0.6
0-1
0.2-0.6
Cr (Claim 6)
0.1-0.15
Mn (Claim 6)
0.05-0.15
0-1
0.05-0.15
Cu (Claim 6)
0.05-0.1
0-0.5
0.05-0.1
Fe (Claim 6)
0.2-0.6
0-1
0.2-0.6
Cr (Claim 7)
0.1-0.15
Cu (Claim 7)
0.05-0.1
0-0.5
0.05-0.1
Fe (Claim 7)
0.25-0.6
0-1
0.25-0.6
Mg (Claim 7)
0.5-0.6
0-0.6
0.5-0.6
Cr (Claim 8)
0.05-0.1
Cu (Claim 8)
0.1-0.15
0-0.5
0.1-0.15
Fe (Claim 8)
0.25-0.65
0-1
0.25-0.65
Cr (Claim 9)
0.05-0.1
Mn (Claim 9)
0.05-0.15
0-1
0.05-0.15
Cu (Claim 9)
0.1-0.15
0-0.5
0.1-0.15
Fe (Claim 9)
0.25-0.65
0-1
0.25-0.65
Cr (Claim 10)
0.05-0.1
Cu (Claim 10)
0.1-0.15
0-0.5
0.1-0.15
Fe (Claim 10)
0.25-0.65
0-1
0.25-0.65
Mg (Claim 10)
0.5-0.6
0-0.6
0.5-0.6
Cu (Claim 11)
0.05-0.2
0-0.5
0.05-0.2
Wang also discloses corrosion rate of less than about 0.1 mm/year (Claim 20) which overlaps claims 1, 2 and 19 required less than or equal to 0.003. YS above about 150 MPa overlaps claim 19 required YS range. Strain rate above about 1.8 % overlaps claim 19 required elongation to fraction rate.
With respect to claim 3 and claim 19 corrosion rate formula, how the corrosion rate defined is product by process limitation in the product claim.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product. In the instant case, how the corrosion rate is measured or defined does not change the characteristic on the product itself. Hence, it is not given patentable distinction over prior art.
With respect to claim 4 and claim 19 equation, 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.
Wang differs from instant claims 1, 5-10 and 19 such that it does not disclose (1) Cr being greater than 0-0.3% and (2) HPDC used as electronic module housing and (3) the module housing component having at least one coating free mating surface.
With respect to (1) and (3), Park discloses similar Al alloy by high pressure die casting. Park explicitly discloses the die cast aluminum alloy does not require post processing such as coating of die casting parts. Park also explicitly discloses presence of Cr 0.01-0.5% to inhibit grain growth thereby prevent stress corrosion and cracking. (English translation page 6 paragraph 4)
Hence, it would have been obvious to one skill in the art, at the time the invention is made to add Cr amount of Park, and no coating of formed die casting part, in the HPDC aluminum alloy of Wang for the benefit of preventing stress corrosion and cracking.
With respect to (2), Applicant’s admitted prior art discloses Aluminum alloy as desirable material for use in the manufacture of electrical component is well known in the art. (instant application PGPUB [0002]) due to combination of high corrosion resistance, thermal conductivity and machinability.
Thus, based on the well-known material requirement for electrical component formed of aluminum alloy, applicant’s invention would be merely a “new” use of a known material with expected success in the absence of unexpected result. See MPEP 2112 I SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, it would have been obvious to one skill in the art, at the time the inventio is made to use Wang in view of Park’s HPDC aluminum alloy as starting precursor material, to make electrical component with expected success.
Claim(s) 1-11 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Park (WO2020040602A1) in view of Luo (WO20221829371).
As for claims 1-11 and 19-20, Park discloses an aluminum alloy for die casting (Title), such as high pressure casting (English translation Page 2 Background art paragraph 1 line 4).
The Al alloy has excellent corrosion resistance and die casting parts formed from the Al alloy does not require electrodepositing or chemical coating (English translation Page 4 paragraph 8 lines 2-3)which suggests at least one coating free surface as required by instant claims 1 and 19.
The Al alloy has overlapping compositions as required by instant claims 1, 5-11 and 19 as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Park et al.
(weight %)
Overlap
(weight %)
Si
6.5-7.5
3-10
6.5-7.5
Cu
0.05-0.3
0.01-1.5
0.05-0.3
Mg
0.1-0.6
0.1-2
0.1-0.6
Fe
0.2-1.5
0.01-1.3
0.2-1.3
Cr
Greater 0-0.3
0.01-0.5
0.01-0.3
Mn
Greater 0-0.15
0.01-0.5
0.01-0.15
Cr (Claim 5)
0.1-0.15
0.01-0.5
0.1-0.15
Cu (Claim 5)
0.05-0.1
0.01-1.5
0.05-0.1
Fe (Claim 5)
0.2-0.6
0.01-1.3
0.2-0.6
Cr (Claim 6)
0.1-0.15
0.01-0.5
0.1-0.15
Mn (Claim 6)
0.05-0.15
0.01-0.5
0.05-0.15
Cu (Claim 6)
0.05-0.1
0.01-1.5
0.05-0.1
Fe (Claim 6)
0.2-0.6
0.01-1.3
0.2-0.6
Cr (Claim 7)
0.1-0.15
0.01-0.5
0.1-0.15
Cu (Claim 7)
0.05-0.1
0.01-1.5
0.05-0.1
Fe (Claim 7)
0.25-0.6
0.01-1.3
0.25-0.6
Mg (Claim 7)
0.5-0.6
0.1-2
0.5-0.6
Cr (Claim 8)
0.05-0.1
0.01-0.5
0.05-0.1
Cu (Claim 8)
0.1-0.15
0.01-1.5
0.1-0.15
Fe (Claim 8)
0.25-0.65
0.01-1.3
0.25-0.65
Cr (Claim 9)
0.05-0.1
0.01-0.5
0.05-0.1
Mn (Claim 9)
0.05-0.15
0.01-0.5
0.05-0.1
Cu (Claim 9)
0.1-0.15
0.01-1.5
0.1-0.15
Fe (Claim 9)
0.25-0.65
0.01-1.3
0.25-0.65
Cr (Claim 10)
0.05-0.1
0.01-0.5
0.05-0.1
Cu (Claim 10)
0.1-0.15
0.01-1.5
0.1-0.15
Fe (Claim 10)
0.25-0.65
0.01-1.3
0.25-0.65
Mg (Claim 10)
0.5-0.6
0.1-2
0.5-0.6
Cu (Claim 11)
0.05-0.2
0.01-1.5
0.05-0.2
It is noted Park does not explicitly disclose HPDC Aluminum alloy is used in electronic module power housing.
It should be noted applicant’s invention would be merely a “new” use of a known material with expected success in the absence of unexpected result. See MPEP 2112 I SOMETHING WHICH IS OLD DOES NOT BECOME PATENTABLE UPON THE DISCOVERY OF A NEW PROPERTY “The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977).
Luo discloses HPDC aluminum alloy employed for high volume and cost efficient production parts used in electronic industry such as smartphone and laptop cases are well known in the art. (English translation Page 7 )
smartphone and laptop cases formed of HPDC aluminum alloy read on instant claimed high pressure die cast integrated power electronics housing component.
Hence, it would have been obvious to one skill in the art, at the time the invention is made to apply HPDC aluminum alloy of Park, as the precursor material of electronic smart phone and laptop of Luo with expected success.
With respect to claim 2 and claim 19 corrosion rate, it is interpreted as property of claimed aluminum alloy.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
With respect to claim 3 and claim 19 corrosion rate formula, how the corrosion rate defined is product by process limitation in the product claim.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product. In the instant case, how the corrosion rate is measured or defined does not change the characteristic on the product itself. Hence, it is not given patentable distinction over prior art.
With respect to claim 4 and claim 19 equation, 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.
With respect to claim 20 required YS and elongation to fracture rate, they are both properties limitations of claimed product.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, since the HPDC product of Park in view of Guo has compositions that meet the instant application composition and is made from a similar process step by HPDC, it is therefore reasonable to believe that the claimed property limitations would have naturally flowed following the suggestion of Park in view of Guo. See MPEP 2112.01 I.
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.
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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.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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