Patent Application 15734066 - ALUMINUM ALLOY METHOD FOR PRODUCING AN ENGINE

Title: ALUMINUM ALLOY, METHOD FOR PRODUCING AN ENGINE COMPONENT, ENGINE COMPONENT, AND USE OF AN ALUMINUM ALLOY TO PRODUCE AN ENGINE COMPONENT

Application Information

Invention Title: ALUMINUM ALLOY, METHOD FOR PRODUCING AN ENGINE COMPONENT, ENGINE COMPONENT, AND USE OF AN ALUMINUM ALLOY TO PRODUCE AN ENGINE COMPONENT
Application Number: 15734066
Submission Date: 2025-05-14T00:00:00.000Z
Effective Filing Date: 2020-12-01T00:00:00.000Z
Filing Date: 2020-12-01T00:00:00.000Z
National Class: 420
National Sub-Class: 548000
Examiner Employee Number: 77256
Art Unit: 1733
Tech Center: 1700

Rejection Summary

102 Rejections: 0
103 Rejections: 2

Cited Patents

The following patents were cited in the rejection:

US 0169716🔗

Office Action Text

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:
1-9, 11-15
Withdrawn:
NONE
Rejected:
1-9, 11-13, 15
Amended:
1, 8, 9
New:
NONE
Independent:
1, 8, 9
Objected to:
14

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 1-3, 5-9, 11, 12 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (US 2019/0169716, with filing date December 1, 2017).
Wang (at abstract, [0017], etc.) teaches an aluminum alloy comprising (in wt%):

cl. 1
Dependent cl.
cl. 13(1)
cl. 14 (8)
cl. 15 (9)
Wang
Si
10 to <13%
11 to <12.5% (cl. 2)
11.0 to <12.5
11.0 to <12.5
11.0 to <12.5
3-12
Cu
1.5 to <2.6%
1.8 to <2.6% (cl. 3)
1.8 to <2.6
1.8 to <2.6
1.8 to <2.6
0.5-2.0
Mg
0.5-1.5
0.8 -1.2% (cl. 4)
*outside
0.8-1.2
*outside
0.8-1.2
*outside
0.8-1.2
*outside
0.2-0.6
Fe
0.1-0.7
0.4-0.6% (cl. 5)
0.4-0.6
0.4-0.6
0.4-0.6
-0.5
Mn
0.1-0.4

-0.5
Zr
>0.01 to <0.3

0-0.3
V
>0.08 to <0.2

0-0.3
Ti
0.05 to <0.2

0-0.3
P
0.0025-0.008

0-0.05 [0011]
Ratio Fe/Mn

2:1 (cl. 6)
2/1 to 5/1
2/1 to 5/1
2/1 to 5/1

Fe+Mn

≤0.9 (cl. 7)
≤0.9
≤0.9
≤0.9
0-1.0

Table 1: Comparison of Instantly Claimed Alloying Ranges Vs. Prior Art of Wang

which overlaps the claimed ranges of Si, Cu, Mg, Fe, Mn, Zr, V, Ti, P (amended claims 1-3, 5, 8, 9). Wang does not teach the presence of any elements excluded by the amended “consisting of” transitional phrase (cl. 1, 8, 9). Because Wang teaches an aluminum alloy with overlapping alloying ranges, it is held that Wang has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish 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 claim 6, which mentions a Fe/Mn ratio of at least 2:1, the ranges of Fe and Mn taught by Wang (≤0.5% Fe and ≤0.5% Mn) overlap said ratio (for instance, for Fe=0.5% and Mn=0.25%, Fe/Mn ratio is 2, which meets the instant limitation).
Concerning claim 7, which mentions Fe+Mn ≤0.9, the ranges of Fe and Mn taught by Wang (≤0.5% Fe and ≤0.5% Mn) overlap the combined maximum.
Concerning claims 8 and 9, Wang teaches alloying ranges that overlap those of independent claims 8 and 9 (see Table 1 above for teachings of Wang). Further, Wang teaches said alloy can be processed into engine components (abstract) by permanent mold casting (wherein gravity casting is a type of permanent mold casting, see Wang [0007]), which meets the instant process limitation of claim 8 and product configuration of claim 9.
Concerning claim 11, which mentions a Fe/Mn ratio of 2:1 to 5:1, the ranges of Fe and Mn taught by Wang (≤0.5% Fe and ≤0.5% Mn) overlap said ratio (for instance, for Fe=0.5% and Mn=0.25%, Fe/Mn ratio is 2, which meets the instant limitation).
Concerning claim 12, Wang teaches casting said alloy into an engine component (abstract) by permanent mold casting (wherein gravity casting is a type of permanent mold casting, see Wang [0007]), but does not specify a piston for an internal combustion engine. However, it would have been within the level of one of ordinary skill in the art, given the disclosure of Wang, to have cast the Al-Si alloy of Wang into a variety of engine components, such as a piston for an internal combustion engine, because Wang teaches said alloy has excellent castability and strength properties (examples, etc.)

Claims 1-7, 9, 11, 13, 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2009-191367A (JP’367).
JP’367 (at abstract, p 5, etc.) teaches an aluminum alloy comprising (in wt%):

cl. 1
Dependent cl.
cl. 13(1)
cl. 14 (8)
cl. 15 (9)
JP’367
Si
10 to <13%
11 to <12.5% (cl. 2)
11.0 to <12.5
11.0 to <12.5
11.0 to <12.5
10.5-13.5
Cu
1.5 to <2.6%
1.8 to <2.6% (cl. 3)
1.8 to <2.6
1.8 to <2.6
1.8 to <2.6
2.5-5.5
Mg
0.5-1.5
0.8 -1.2% (cl. 4)
0.8-1.2
0.8-1.2
0.8-1.2
0.3-1.5
Fe
0.1-0.7
0.4-0.6% (cl. 5)
0.4-0.6
0.4-0.6
0.4-0.6
0.15-0.65
Mn
0.1-0.4

0.1-1.0*
Zr
>0.01 to <0.3

0.04-0.3*
V
>0.08 to <0.2

0.01-0.15*
Ti
0.05 to <0.2

0.01-0.2*
P
0.0025-0.008

0.003-0.02* (translation p 5)
Ratio Fe/Mn

2:1 (cl. 6)
2/1 to 5/1
2/1 to 5/1
2/1 to 5/1

Fe+Mn

≤0.9 (cl. 7)
≤0.9
≤0.9
≤0.9
0-1.0

*=1 or more of

Table 2: Comparison of Instantly Claimed Alloying Ranges Vs. Prior Art of JP’367
which overlaps the claimed ranges of Si, Cu, Mg, Fe, Mn, Zr, V, Ti, P (amended claims 1-7, 9, 13, 15). JP’367 does not teach the presence of any elements excluded by the amended “consisting of” transitional phrase (cl. 1, 9). Because JP’367 teaches an aluminum alloy with overlapping alloying ranges, it is held that JP’367 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish 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).

Further concerning claim 9, which mentions an engine component processed by gravity casting (wherein gravity casting is held to be a product by process step), product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps, see MPEP 2113.
"[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.

For the instant case, JP’367 meets the product configuration of an engine component with overlapping alloying ranges. Though JP’367 does not specify the product-by-process step of gravity casting, applicant has not shown said process step materially affects the claimed product configuration/is unobvious in view of the product of JP’367.
Concerning new claims 13 & 15, JP’367 teaches overlapping alloying ranges (see discussion above). Concerning the limitation of Fe/Mn between 2/1 to 5/1, the ranges of Fe and Mn taught by JP’367 (0.15-0.65% Fe and 0.1-1.0% Mn) broadly overlap said ratio (for instance, for Fe=0.5% and Mn=0.25%, Fe/Mn ratio is 2, which meets the instant limitation). Concerning the limitation of Fe+Mn≤0.9, the ranges of Fe and Mn taught by JP’367 (0.15-0.65% Fe and 0.1-1.0% Mn) overlap the combined maximum (for instance, for Fe=0.5% and Mn=0.25%, Fe+Mn=0.75, which meets the instant limitation).

Allowable Subject Matter
Claim 14 is 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 to claim 14 is held to be Wang et al, who teaches permanent mold casting (which qualifies as gravity casting) an Al-Si-Cu alloy with 0.2-0.6% Mg. Wang does not teach or suggest the claimed method of gravity casting an alloy with the claimed alloying ranges of Si, Cu, Mn, Zr, V, Ti, P, complete with 0.8-1.2% Mg. JP’367 is drawn to ingot casting and forging Al-Si-Cu alloys with elevated Mg, but does not teach or suggest gravity casting said alloy, as set forth in instant claim 14.

Response to Amendment/Arguments
In the response filed on 1/3/25 applicant amended claims 1, 8, 9, and submitted various arguments traversing the rejections of record.
Applicant’s amendment filed 1/3/25 was sufficient to overcome the previously applied 103 rejections in view of EP’310. EP’310 teaches the presence of 0.5-1.5% Ni, which is excluded by the instant “consisting of” transitional phrase, together with the deletion of a Ni maximum. The closest prior art to the presently amended claims is held to be Wang or JP’367.

Conclusion
9. 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.

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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733

/J.C.M/Examiner, Art Unit 1733 5/6/25