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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/12/26 has been entered.
Status of Claims
Pending:
1-3, 5-18
Withdrawn:
NONE
Rejected:
1-3, 5-18
Amended:
NONE
New:
18
Independent:
1, 11
Claim Interpretation
Claim 1, lines 9-10 mentions certain properties are present under the condition: “a 5.00 inch version of the modified wrought 7085 aluminum alloy product in a T7451 or T7651 temper”; however, said (product) claim is not limited to a modified 7085 alloy in a T7451 or T7651 temper (nor is said claim limited to a 5.00 inch product version). For the purposes of this action, the claims are being given their broadest reasonable interpretation consistent with the specification, i.e. this phrase is being interpreted to mean that the claimed product is capable of exhibiting said property.
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 1-3, 5-17 are rejected under 35 U.S.C. 103 as being unpatentable over CN103233148A (CN’148), cited on IDS dated 12/28/2017.
CN’148 teaches a wrought Al-Zn-Cu-Mg alloy comprising (in wt%) the values listed in Table 1 below (see CN’148 at abstract, examples, etc), which overlaps the alloying ranges of Zn, Mg, Cu, Zr, Cr, Mn, Si, Fe, and Ti of instant claims 1, 5-8, 11-13 (including the scope of “modified wrought 7085 alloy” with the claimed ranges of Cr, Zr, and Mn). CN’148 teaches close examples to the presently claimed range- see ex. 7 and ex. 14 of CN’148 (see Table 1 above for comparison).
Claim 1
cl. 5
cl. 6
cl. 7
cl. 8
Claim 11
cl. 12
cl. 13
CN’148
broad
CN’148
ex. 7
CN’148
ex. 14
7085
+ 0.080-0.250% Cr
+opt.0.07-0.15% Zr
+opt. 0.15-0.50% Mn
Zn
7.0-8.0
6.0-10.0
5.5-10
7.10
7.80
Mg
1.2-1.8
1.3-2.3
1.5-2.8
1.90
(outside cl. 1)
2.10
(outside cl. 1)
Cu
1.3-2.0
1.2-2.6
1.5-2.5
1.80
1.90
Zr
(opt. 0.07-0.15)
≤0.03
0.07-0.15
0.07-0.15
-0.15
0.07-0.15
0.01-0.20
0.11
0.08
Cr
0.080-0.250
0.080-0.250
0.01-0.50
0.10
0.11
Mn
(opt. 0.15-0.50)
0.15-0.50
0.25-0.45
-0.5
0.15-0.50
0.05-0.50
0.14
(outside cl. 1)
0.20
Si
-
-0.15
≤0.50
0.10
0.10
Fe
-0.15
≤0.50
0.20
0.15
Ti
-0.15
Typically
0.04
0.04
0.04
Table 1: instant claims vs. CN’148 broad disclosure and Ex. 7 & 14
Example 7 meets the instant Si, Fe, Cu, Cr, and Zn of instant claim 1 (but is outside cl. 1’s Mn and Mg ranges), meets the Cr and Mg inequalities (for the given values of A5, B5, C5, etc. as well as the Cu and Zn amounts of example 7, the inequalities would result: Mg≥0.58% Mg and Mg≤2.17% Mg, wherein the Mg amount in said example falls within these ranges).
Concerning independent claim 11, example 7 meets the instant Si, Fe, Cu, Cr, Mg, Mn, and Zn of instant claim 11, and meets the Cr and Mg inequalities (for the given values of A5, B5, C5, etc.).
Thickness limitations
Concerning the thickness recited in instant claims 1, 9-11, CN’148 teaches a product thickness 0.1-200mm (0.04-7.8 in, see CN’148 translation p 7 etc.), which broadly overlaps the instantly claimed thickness range and therefore meets said thickness limitations.
Property limitations
CN’148 does not teach the Kmax-dev (independent claims 1, 11), or Kmax-dev, KIC fracture toughness (as compared to an equivalent 7xxx with ≤0.01% Cr and ≤0.02% Mn at equivalent strength- cl. 2, 3, 14-17), or phases present (i.e. E phase & Al3Zr of cl. 15, 16). See above “Claim Interpretation” section, and discussion of conditional properties. Further, because CN’148 teaches a substantially overlapping Al-Zn-Mg-Cu-Cr alloy product, complete with overlapping ranges of dispersoid elements Cr+Zr, Cr+Mn, or Cr+Mn+Zr taught by the instant specification [0004-0006] to be critical to achieving the claimed crack deviation resistance, then substantially the same properties are expected in the prior art (such as improvement in Kmax-dev and KIC), and phases (such as E phase & Al3Zr), for a given temper and thickness, as in the instant 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).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Because CN’148 teaches an overlapping Al-Zn-Mg-Cu-Cr alloy product, and the claimed properties (such as L-S crack deviation resistance) would be expected by virtue of said overlap in alloying elements (for a given temper), it is held that CN’148 has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 11’s transitional phrase, CN’148 does not teach the addition of any elements clearly excluded by the “consisting essentially of” transitional phrase.
Claims 1-3, 5-18 are rejected under 35 U.S.C. 103 as being unpatentable over Benedictus (US 2005/0189044) cited on IDS dated 08/10/2017.
Benedictus teaches a wrought Al-Zn-Cu-Mg alloy comprising (in wt%) the values listed in Table 2 below (see Benedictus at abstract, examples, etc), which overlaps the alloying ranges of Zn, Mg, Cu, Zr, Cr, Mn, Si, Fe, and Ti of instant claims 1, 5-8, 11-13, new claim 18 (including the scope of “modified wrought 7085 alloy” with the claimed ranges of Cr, Zr, and Mn). Benedictus teaches a close example to the presently claimed range- see ex. 6 of Benedictus (see Table 2 below for comparison).
Claim 1
cl. 5
cl. 6
cl. 7
cl. 8
Claim 11
cl. 12
cl. 13
cl. 18
Benedictus broad
Benedictus ex. 6
7085
+ 0.080-0.250% Cr
+opt.0.07-0.15% Zr
+opt. 0.15-0.50% Mn
Zn
7.0-8.0
6.0-10.0
5.5-10
7.4
Mg
1.2-1.8
1.3-2.3
1.5-2.8
1.82
Cu
1.3-2.0
1.2-2.6
1.5-2.5
1.68
Zr
(opt. 0.07-0.15)
≤0.03
0.07-0.15
0.07-0.15
-0.15
0.07-0.15
0.01-0.20
0.10
Cr
0.080-0.250
0.080-0.250
0.01-0.50
-
(outside claim 1, 11)
Mn
(opt. 0.15-0.50)
0.15-0.50
0.25-0.45
-0.5
0.15-0.50
-0.02
0.05-0.50
-
Si
-
-0.15
≤0.50
<0.04
Fe
-0.15
≤0.50
<0.06
Ti
-0.15
Typically
0.04
0.01
Table 2: instant claims vs. Benedictus
Example 6 of Benedictus meets the instant Si, Fe, Cu, Mg, Zr, and Zn of instant claim 1 (but is outside cl. 1 & 11’s Cr ranges). More particularly with respect to the Mg amount taught by Benedictus in Example 6 of 1.82% Mg, it is noted that Mg is recited in the instant claims to the precision of tenths (ex. 1.2-1.8% Mg). Benedictus teaches 1.82% Mg in example 6, which rounded to the same precision of the instant claims is 1.8% Mg, which touches the boundary of the claimed Mg range and therefore meets said limitation. The broad ranges of Zn, Mg, Cu, Cr, Mn, and Zr meets the Cr and Mg inequalities (for the given values of A5, B5, C5, etc. as well as the Cu=1.8 and Zn=7.1, which are within the ranges taught by Benedictus, the inequalities would result: Mg≥0.58% Mg and Mg≤2.17% Mg, wherein the Mg amount in said example falls within these ranges).
Thickness limitations
Concerning the thickness recited in instant claims 1, 9-11, Benedictus teaches a product thickness 2.5-11 inches [0070], which broadly overlaps the instantly claimed thickness range.
Property limitations
Benedictus does not teach the Kmax-dev (independent claims 1, 11), or Kmax-dev, KIC fracture toughness (as compared to an equivalent 7xxx with ≤0.01% Cr and ≤0.02% Mn at equivalent strength- cl. 2, 3, 14-17), or phases present (i.e. E phase & Al3Zr of cl. 15, 16). See above “Claim Interpretation” section, and discussion of conditional properties. Further, because Benedictus teaches a substantially overlapping Al-Zn-Mg-Cu-Cr alloy product, complete with overlapping ranges of dispersoid elements Cr+Zr, Cr+Mn, or Cr+Mn+Zr taught by the instant specification [0004-0006] to be critical to achieving the claimed crack deviation resistance, then substantially the same properties are expected in the prior art (such as improvement in Kmax-dev and KIC), and phases (such as E phase & Al3Zr), for a given temper and thickness, as in the instant invention.
Further, it would have been obvious to one of ordinary skill in the art to have substituted (or partially substituted) Cr for Zr for example 6 of Benedicts because Benedictus teaches Zr and Cr are suitable dispersoid formers [0024], added to control grain structure and quench sensitivity [0021].
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).
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Because Benedictus teaches an overlapping Al-Zn-Mg-Cu-Cr alloy product, and the claimed properties (such as L-S crack deviation resistance) would be expected by virtue of said overlap in alloying elements (for a given temper), it is held that Benedictus has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 11’s transitional phrase, Benedictus does not teach the addition of any elements clearly excluded by the “consisting essentially of” transitional phrase.
Response to Amendment/Arguments
In the response filed on 1/12/26 applicant added new claim 18 and submitted various arguments traversing the rejections of record.
Applicant’s argument that CN’148 would not achieve the claimed crack deviation resistance because CN’148 does not contain examples of thick plate products, or because a POSITA would know there are significant differences between thick and thin 7xxx products and would not expect to achieve the claimed crack deviation resistance based on the embodiments of CN’148, has not been found clearly persuasive. Even though CN’148 does not contain examples of thick products, the broad disclosure of CN’148 includes products with thickness as great as 200 mm or 7.8 inches (see discussion above). Applicant has provided no reason why, given the disclosure of a thickness as large as 200 mm in the prior art, that one having knowledge of said prior art would not produce thick plate products given the disclosure of CN’148.
It is maintained that the declaration under 37 CFR 1.132 filed 12/23/22 is insufficient to overcome the rejection of claims 1-3, 5-17 based upon CN’148 because declarant has not clearly shown the claimed crack deviation resistance is not inherent/expected for the overlapping alloy product of CN’148.
Though CN’148 does not specify crack deviation of their aluminum alloy product or teach examples of thick plates, the crack deviation resistance of the instant invention results from the claimed alloying ranges of Cr combined with Mn &/or Zr and formed into a thick plate (declaration at items 10-14). Because CN’148 teaches a substantially overlapping Al-Zn-Mg-Cu-Cr alloy product, complete with overlapping ranges of dispersoid elements Cr +Zr, Cr+Mn, or Cr+Mn+ Zr taught by the instant specification [0004-0006] as well as the 1.132 declaration filed 12/23/22 at item 9, etc. to be critical to achieving the claimed crack deviation resistance, combined with a product thickness 0.1-200mm (see CN’148 translation p 7), then substantially the same properties are expected for the alloy product of the prior art (i.e. improvement in Kmax-dev and KIC).
Though declarant (as well as in the response filed 1/12/26 p 8) points to comparison examples in the instant specification that “are generally comparable” to alloy 7 and alloy 14 of CN’148, applicant/ declarant has not shown a clear comparison to the closest applied prior art (nor has applicant stated/set forth a position that comparison examples Alloys 29 and 30 are more closely related to the instant invention than the prior art relied upon by the examiner). In the instant case, declarant has not addressed or explained the deviations in composition between the comparative examples in the instant specification (i.e. ‘400 application Ex. 4 Alloys 29 and 30), and the closest examples of the applied prior art (i.e. Ex. 1 Alloy 7 and Ex. 2-3 Alloy 8 of CN’148). Additionally, it is unclear how the deviation in specimen size/ simulated conditions used to predict the Kmax-dev of Alloys 29 and 30 at Table 15, affects the results. More particularly, the properties in Table 15 are extrapolated/simulated properties (see pg pub at [0088]), intended to predict the properties for a 5 inch plate, of the alloy compositions of Alloy 29 and 30. It is unclear how these simulated properties (estimated to simulate cooling for a thicker specimen of 5.00 in thickness) are clearly (and accurately) representative of the closest prior art (or, compare the instant invention to prior art that is more closely related to the invention than the prior art relied upon by the examiner).
An affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. In re Burckel, 592 F.2d 1175, 201 USPQ 67 (CCPA 1979). “A comparison of the claimed invention with the disclosure of each cited reference to determine the number of claim limitations in common with each reference, bearing in mind the relative importance of particular limitations, will usually yield the closest single prior art reference.” In re Merchant, 575 F.2d 865, 868, 197 USPQ 785, 787 (CCPA 1978) (emphasis in original). Where the comparison is not identical with the reference disclosure, deviations therefrom should be explained, In re Finley, 174 F.2d 130, 81 USPQ 383 (CCPA 1949), and if not explained should be noted and evaluated, and if significant, explanation should be required. In re Armstrong, 280 F.2d 132, 126 USPQ 281 (CCPA 1960).
Applicants may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner. In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961).
With respect to applicant’s argument of additional advantages or latent properties (improvement of crack deviation resistance, etc.), prima facie obviousness is not rebutted by merely recognizing additional advantages or latent properties present in an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979), see MPEP 2145. The instant specification emphasizes the importance of dispersoid elements Cr, Zr, and/or Mn in the claimed alloy toward achieving the claimed improvement of crack deviation resistance. The prior art teaches 0.20-0.60% total Cr+Mn+Zr, and therefore encompasses the claimed ranges. Though the prior art does not recognize that the presence of dispersoid elements Cr, Mn, and Zr lead to improvement in crack deviation resistance, said property would be expected to be present by virtue of the overlap in alloying ranges (complete with Cr, Mn, and/or Zr) taught by CN’148.
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 on Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 3/16/26