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 .
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 1-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “element group” in claim 1 is a relative term which renders the claim indefinite. The term “element group” 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. It is unclear how many elements are defined by “element group”. Claims dependent on the above rejected claim are likewise rejected under this statute. Appropriate correction is required.
Claim 1 recites the limitation "the rest" in line 12. There is insufficient antecedent basis for this limitation in the claim.
Claim 15 recites the limitation "the alloy" in line 1. There is insufficient antecedent basis for this limitation in the claim. For the purposes of this Office Action, claim 15’s mention of “the alloy” is held to refer to claim 1’s “die casting alloy”. Appropriate correction is required.
Claims 1-15 are rejected on the basis that it contains an improper Markush grouping of alternatives, see MPEP § 2117.
The Markush grouping of “0-0.8 % of an element or element group selected from the group consisting of chromium (Cr), lead (Pb), lithium (Li), vanadium (V), titanium (Ti), phosphorus (P), molybdenum (Mo), zirconium (Zr), gallium (Ga)” is improper because the alternatives defined by the Markush grouping are not clear. A conjunction (i.e. “and”, “or”, etc.-see MPEP§ 2117) is not present in said grouping, clearly defining the boundary. Claims dependent on the above rejected claim are likewise rejected under this statute. Appropriate correction is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-14 are rejected 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.
Dependent claim 2 states “The die casting alloy according to claim 1, consisting of 0.4-0.9 wt.% silicon”, wherein the transitional phrase "consisting of" excludes any element, step, or ingredient not specified in the claim. In re Gray, 53 F.2d 520, 11 USPQ 255 (CCPA 1931); Ex parte Davis, 80 USPQ 448, 450 (Bd. App. 1948) ("consisting of" defined as "closing the claim to the inclusion of materials other than those recited except for impurities ordinarily associated therewith"), see MPEP 2111.03.
Independent claim 1, upon which claim 2 depends, recites the die casting alloy consists of Fe, Mg, Si, Ca, Zn, Cu, Mn, Ni, an element or element group selected from: (Cr, Pb, Li, V, Ti, P, Mo, Zr, Ga); aluminum and unavoidable impurities. Claim 2’s use of transitional phrase “consisting of” closes the die casting alloy to only Si, which is inconsistent with the other alloying elements listed in independent claim 1, and therefore fails to include all the limitations of independent claim 1. Claims 3-14 contain similar limitations. For the purpose of this Office Action, dependent claims 2-14 are held to be limited to an alloy with not only to the single element listed in said dependent claim, but also the ranges of other elements (i.e. Fe, Mg, Si, Ca, Zn, Cu, etc.) listed in independent claim 1. Appropriate correction is required.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wiesner (US 2019/0119792), cited herein.
Wiesner teaches an aluminum alloy composition (at abstract, etc.) suitable for die casting (see Wiesner at claim 15) consisting of (in wt%):
Claim 1
Wiesner
Mg
0.3-6.0
2.5-6.0 (cl. 6)
0.01-9
3.5-5 (cl. 7)
Fe
0.8-2.0
1.0-1.7 (cl. 4)
0.8-3
1.1-1.5 (cl. 5)
Si
0.3-1.2
0.4-0.9 (cl. 2)
0-0.8
0.5-0.8 (cl. 3)
Ca
0.05-2
0.08-1.5 (cl. 8)
0-0.5*
Zn
0-4
0-1.0 (cl. 10)
0-10
0.1-0.5 (cl. 11)
Cu
0-2.5
-2.0 (cl. 13)
0-4
Mn
0-1.5
0.1-1 (cl. 12)
0-2.5
Ni
0-0.6
-0.1 (cl. 14)
0-0.5%*
Cr, Pb, Li, V, Ga, Ti, P, Mo, Zr
0-0.8
0.01-0.05 V (cl. 8)
0-0.5% V*, Cr*, Mo*, Ga*, Zr*
balance
Al + impurities
*Wiesner teaches these elements in a Markush group
Table 1: instantly claimed alloying ranges vs. Wiesner
which overlaps the claimed ranges of Mg, Fe, Si, Ca, Zn, Cu, Mn, NI, and at least one of (Cr, Pb, Li, V, Ga, Ti, P, Mo, and Zr- see 112(b) rection above). Wiesner does not teach the addition of any elements excluded by the instant “consisting of” transitional phrase (independent claim 1). The phrase “a die casting alloy” (instant claim 1) as claimed is held to define merely an intended use for the alloy composition. Because the prior art teaches an alloy subjected to die casting (see Wiesner at claim 14), Wiesner is held to meet said limitation. See, e.g., In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1431 (Fed. Cir. 1997), MPEP 2111.02.
Because of the overlap in alloying ranges, together with casting by die casting into a structural component, it is held that Wiesner has created a prima facie case of obviousness of the presently claimed invention.
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).
Concerning dependent claims 2-14 (see 112 4th paragraph rejection above), as set forth in Table 1 above, Wiesner teaches an aluminum alloy with broadly overlapping alloying ranges, and therefore meets the instant limitations.
Concerning dependent claim 15, Wiesner teaches forming said alloy into a structural die cast component for automotive applications (Wiesner at claim 14), which meets the claimed limitations.
Conclusion
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
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