Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Status of the Claims
Claims 3 and 6 have been cancelled; Claims 1, 7 and 12 are amended; Claims 13-15 are added as new claims; Claims 1-2, 4-5, and 7-15 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous rejection of Claims 6-7 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 7/23/2026.
Previous rejection of Claims 3 and 6 under 35 U.S.C. 103(a) as being unpatentable over Takagi Toshiaki et al (JP 2010163635 A, listed in IDS filed on 9/12/2024, with on-line translation, thereafter JP’635) in view of Xie (CN 101948957 A, with on-line English translation, listed in IDS filed on 9/12/2024, thereafter CN’957) is withdrawn since these claims have been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 7/23/2026.
Previous rejection of Claims 3 and 6 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-8 of copending application No. 15/933,635 (updated as US patent 10/995,398 B2 listed in IDS filed on 9/12/2024) in view of JP’635 is withdrawn since these claims have been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 7/23/2026.
Previous rejection of Claims 3 and 6 on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-9 of copending application No. 17/185521 (updated as US patent 12,123,086 B2) in view of JP’635 is withdrawn since these claims have been cancelled in view of the Applicant’s “Arguments/Remarks with amendment” filed on 7/23/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 7/23/2026, newly recorded reference(s), and reconsideration, a new ground rejection has listed as following:
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 10 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. In the instant case, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation “extrusion”, and the claim also recites “EACE” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Proper amendment is necessary.
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 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 1-2, 4-5, and 7-14 are rejected under 35 U.S.C. 103(a) as being unpatentable over Takagi Toshiaki et al (JP 2010163635 A, listed in IDS filed on 9/12/2024, with on-line translation, thereafter JP’635) in view of Xie (CN 101948957 A, with on-line English translation, listed in IDS filed on 9/12/2024, thereafter CN’957).
Regarding claims 1, 5-7, and 13, JP’635 teaches a manufacturing process of Mg based alloy with excellent properties (Abstract, claims, and examples of JP’635). JP’635 provides example #2 of Mg based alloy in table 1 with the same alloy composition ranges and grain size as claimed in the instant claims (as shown in the following table). JP’635 teaches forming solid solution of the alloy elements (par.[0036]-[0037] of JP’635). JP’635 does not specify applying the high-purity vacuum distillation technique in the instant claim 1. However, applying a vacuum distillation technique for high purity Mg alloy is a well-known technique as shown by CN’957. CN’957 teaches an Mg with high purity manufactured by a wildly applied high-purity vacuum distillation technique (Abstract and claims of CN’957). CN’957 teaches the distilled Mg with impurities including Mn, Fe, Ni, and /or Cu less than the claimed impurity level (Example and table 2 of CN’957), which meets the impurity levels as recited in instant claim 1. CN’957 teaches applying the Mg alloy purified by the high-purity vacuum distillation technique can be formed as ingot with different shape for further application (par.[0008] of CN’957). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the well-known technique, that is vacuum distillation, as demonstrated by CN’957 in the process of manufacturing the Mg alloy of JP’635 in order to obtain the high purity Mg alloy (Abstract, claims, and examples of CN’957). JP’635 provides experimental conditions including solution treatment at temperature range of 200-500 (par.[0037] of JP’635) and extruding at temperature range 150-350oC (par.[0038] of JP’635), which overlap the claimed annealing temperature and extruding temperature ranges as claimed in the instant claim. Overlapping temperature range creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the annealing temperature and extruding temperature ranges as claimed from the disclosure of JP’635 since JP’635 teaches the same manufacturing process for the same Mg based alloy as claimed with excellent properties throughout whole disclosing range.
Element
From instant Claims 1, 5, 7, and 13 (in wt.%)
JP’635 (in wt%)
#2 in Table 1
Within range
(in wt%)
Al
2.0-10.0 (cl.1)
2.0-8.0 (cl.7)
6.0
6.0
Zn
0.25-1.0 (cl.1)
0.7
0.7
Mg
Base material
balance
balance
From claim 1
JP’635 (in wt%)
#2 in Table 2
Homogenizing annealing (oC)
360-450
Solution treatment 200-500 (par.[0037])
Overlapping 360-450
Extrusion at temperature (oC)
Forming 200-400 including
Extrusion 300 or more
Extrusion temperature range: 150-350 (par.[0038])
Overlapping:
300-350
Grain size (m)
<10 (cl.1)
No more than 7.5 (cl.13)
7.2
7.2
From claim 2 and 4
Annealing time (hr)
4-40 (cl.2)
At least 3 (cl.4)
20
20
From claim 10
Forming method
Extrusion
extrusion
Reads on
From claim 11
Repeat c) and d)
Extrusion and anneal
multiple extrusion and annealing (par.[0037]-[0038] and [0044])
Reads on
From claim 12
Extrusion temperature (oC)
225-400
Extrusion temperature range: 150-350 (par.[0038])
Overlapping:
225-350
Regarding claims 2, 4 and 10, the example #2 of Mg based alloy in table 2 of JP’635 provides same annealing holding time (cl. 2 and 4); and the same extrusion process (cl.10).
Regarding claims 8-9, CN’957 teaches an Mg with high purity manufactured by a wildly applied high-purity vacuum distillation technique (Abstract and claims of CN’957). CN’957 teaches the distilled Mg with impurities including Mn, Fe, Ni, and /or Cu less than the claimed impurity level (Example and table 2 of CN’957), which meets the impurity levels as recited in the instant claims.
Regarding claims 11-12, JP’635 teaches multiple extrusion and annealing (par.[0037]-[0038] and [0044] of JP’635), which reads on the limitation of claim 11 and overlaps the claimed process conditions as claimed in instant claim 12. Overlapping in process temperature range creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize process temperature range as disclosed from the disclosure of JP’635 in view of CN’957 since JP’635 in view of CN’957 teaches the same Mg-Al-Zn alloy throughout the whole disclosed range.
Regarding claim 14, it is noted that the solution treatment temperature range of 200-500oC for 1-30 hours disclosed by JP’635 (par.[0037] of JP’635) overlaps the claimed ageing temperature range of 20-300oC and reads on the ageing time period as claimed in instant claim. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the ageing temperature as claimed from the disclosure of JP’635 since JP’635 teaches the same manufacturing process for the same Mg based alloy as claimed with excellent properties throughout whole disclosing range.
Claim 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over JP’635 in view of CN’957, and further evidenced by Zhang et al (CN 109182858 B, with on-line translation, thereafter CN’858).
Regarding the newly added claim 15, it is noted that the solution treatment temperature range of 200-500oC disclosed by JP’635 (par.[0037] of JP’635) overlaps the claimed ageing temperature range of 20-275oC as claimed in instant claim. MPEP 2144 05 I. The ageing time period is considered as an experimental parameter which can be obtained by design experiment. This position is evidenced by CN’858. CN’858 teaches a manufacturing process for a heat-resistant magnesium alloy (Abstract of CN’858). CN’858 indicates applying homogenizing treatment at temperature 300-550oC for 9.5-10 hours and ageing at temperature 150-300oC for 01-200 hours (claim 1 of CN’858), which reads on the claimed ageing temperature and overlaps the claimed ageing period as claimed in the instant claim.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-2, 4-5, and 7-15 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-8 of copending application No. 15/933,635 (updated as US patent 10,995,398 B2 listed in IDS filed on 9/12/2024) in view of JP’635.
Regarding instant claims 1-2, 4-5, and 7-13, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-8 of copending application No. 15/933,635 (updated as US patent 10/995,398 B2) teaches all of the essential Mg based alloy compositions and impurities, which reads on the Mg alloy in instant claim 1. The disclosure of copending application No. 15/933,635 (updated as US patent 10,995,398 B2) indicates vacuum distillation for producing Mg; annealing and extrusion (examples of 10,995,398 B2). Regarding the claimed process steps, JP’635 teaches multiple extrusion and annealing (par.[0037]-[0038] and [0044] of JP’635), which overlaps the claimed process conditions as claimed in the instant claims. Overlapping in process condition creates a prima facie case of obviousness. MPEP 2144 05 I. It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize process conditions as disclosed in JP’635 in view of copending application No. 15/933,635 (updated as US patent 10,995,398 B2) since JP’635 teaches the same Mg-Al-Zn alloy throughout the whole disclosed range.
Regarding the newly added claims 14-15, the disclosure of copending application No. 15/933,635 (updated as US patent 10,995,398 B2) indicates applying ageing treatment for the Mg alloy. (Col.7, lns.46-54 of US patent 10,995,398 B2).
Claims 1-2, 4-5, and 7-15 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over claims 1-9 of copending application No. 17/185521 (updated as US patent 12,123,086 B2) in view of JP’635.
Regarding claims 1-2, 4-5, and 7-15, although the conflicting claims are not identical, they are not patentable distinct from each other because claims 1-9 of copending application No. 17/185521 (updated as US patent 12,123,086 B2) teaches all of the essential Mg based alloy compositions and impurities and same manufacturing process steps. Regarding the Zn amount in the instant claims, JP’635 teaches multiple extrusion and annealing (par.[0037]-[0038] and [0044] of JP’635) for the same Mg-Al-Mg alloy (Example #2 in table 1 of JP’635). It would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize process conditions as disclosed in JP’635 in view of claims 1-9 of copending application No. 17/185521 (updated as US patent 12,123,086 B2) since JP’635 teaches the same Mg-Al-Zn alloy throughout the whole disclosed range.
Regarding the newly added claims 14-15, the disclosure of copending application No. 17/185521 (updated as US patent 12,123,086 B2) indicates applying ageing treatment for the Mg alloy. (Col.7, lns.30-38 of US patent 12,123,086 B2).
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2, 4-5, and 7-15 have been considered but they are in view of the new ground rejection as stated above. Regarding the Applicant’s arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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