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 .
Response to Amendment and Status of Claims
Acknowledgement is made of Applicant’s amendments to the claims, filed August 29, 2025. Claim 1 and Claim 35 are amended, and Claims 37-44 are newly added. Claim 22 is cancelled. No new matter has been added.
Claims 13-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected inventions, Groups II and III, drawn to drawn to a method of manufacturing a rolled or forged product based on an aluminum alloy and to a structural element of an aircraft, respectively, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on September 8, 2020.
Claims 1-6, 10, 12-15, 20, 24, 26-27 and 29-44 are pending, and Claims 1-6, 10, 12, 20, 24, 26-27 and 29-44 are currently considered in this office action.
Declaration
The Declaration of Dr. Ricky Whelchel, recognized inventor of the instant invention, under 37 CFR 1.132 filed August 29, 2025 is insufficient to overcome the rejection of claim 1, and dependent claims thereof, based upon the rejection over Pickens in view of Boselli’12 and Danielou, as set forth in the last Office action because:
Declarant argues that the references of Pickens, Boselli’12 and Danielou do not teach the claimed composition or the claimed properties (para. 4).
This argument is not found persuasive.
Pickens discloses the claimed ranges of Cu, Li, Zn, Mg, Zr, Mn, Ag, Fe+Si, Ti, Sc, Cr, Hf and V, with teachings by Boselli and Danielou to further limit the ranges of Ti, Zr and Mn, and of Sc, Cr, Hf and V (Claim 1 rejection). Pickens, Boselli and Danielou further disclose and teach the instant process, and therefore one of ordinary skill in the art would appreciate the invention of Pickens, Boselli and Danielou to possess the claimed properties as well (see rejection of Claim 1). Declarant has not shown that an alloy according to Pickens, Boselli and Danielou would not possess the claimed properties.
Declarant argues that Example 2 of the instant invention cites alloys 58 and 59 demonstrates the surprising and unexpected properties claimed. Declarant explains that Example 2 simulates the properties of a thick plate, for which the simulation is an industry standard for assessing properties because producing thicker alloy products for testing is impractical (para. 5-6).
Declarant points to alloys 58, 59, 61 and 62, and argues that alloys 59 and 62, comprising 0.12% Ag and 0% Zn, and 0.14% Ag and 0.70% Zn, comprised a high variance in yield stress, while alloys 58 and 61, which comprise 0% Ag and 0.68% and 0.66% Zn, respectively, comprised a much lower variance in yield stress. Applicant argues the variance of yield stress indicates whether the mechanical properties of a composition can be maintained throughout a thickness range of 40-150mm, and that the data demonstrates criticality to the Zn and Ag content (para. 9-10).
This argument is not found persuasive.
Yield stress variance of a 40-150mm plate is not currently a claimed feature, and the argument is not commensurate in scope with the claims. Further, this feature appears to be directed to multiple products of different thicknesses and/or processes, rather than a single product as claimed (see 112b rejection below). Additionally, Pickens discloses the claimed values for Ag (0%, an optional element) and Zn (most preferred 0-0.75), wherein examples by Pickens further show the obviousness of selecting values within those ranges such as 0% Ag and 0.65% Zn (see Table 2, example steel X).
Regarding unexpected results, Declarant only provides one example demonstrating a value just outside of the claimed range for Ag and for which is otherwise commensurate in scope with the claimed ranges (alloy 62), and does not comprise any data for alloys with values of Zn which are both close and inside and outside of the claimed range. Declarant only provides alloys comprising values of Zn within the claimed range (alloys 58, 61 and 62), and otherwise only provides 1 alloy with no Zn (alloy 59). Thus, the number of data points is insufficient to show the criticality of Zn.
Declarant argues that Alloys 54-57 and 71-72 demonstrate the criticality of Mg. Declarant argues that only Mg values within the claimed range comprise the claimed toughnesses.
This argument is not found persuasive.
Declarant only provides one example which comprises Mg outside of the claimed range. There are an insufficient number of data points to demonstrate criticality, and multiple data points close to and both inside and outside of the claimed range are required to show unexpected results or criticality (see MPEP 716.02(d).II).
Declarant argues that 10 alloy compositions and 36 plates are a sufficient number in industry to demonstrate a superiority of a claimed composition and the criticality of Zn, Ag an Mg (para. 12).
This argument is not found persuasive.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d).II). While 10 alloys were tested, only one alloy of relevance was outside the claimed range for Ag (alloy 62), only one alloy provided was outside the claimed range for Zn (alloy 59), and only one alloy was outside the claimed range for Mg (alloy 72). A sufficient number of alloys to demonstrate the Ag range, a sufficient number of alloys to demonstrate the Zn range, and a sufficient number of alloys to demonstrate the Mg range, are not provided.
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Claim Interpretation
Regarding Claim 1, and dependent claims thereof, Examiner interprets that the claim requires an alloy with a thickness of 40-150mm, and that an alloy with a thickness of 40-75mm must meet the criteria designated for these thicknesses (see criteria (i) and (ii) for thicknesses of 40-75mm, lines 22-25 of Claim 1; see also dependent Claims requiring 40-75mm members). Examiner interprets that if the alloy comprises a thickness of 76-150mm, the limitations directed to these thicknesses in the broader statement (see criteria (iii)-(vi) in lines 26-33 of Claim 1) and the limitations directed to these thicknesses in the narrower statement (criteria (i)-(iii) in lines 36-44; see also dependent Claims requiring either 76-120mm thicknesses or 121-150mm thicknesses) are each required.
Regarding Claim 1, and dependent Claims 24, 26-27, 31-33 and 36, Examiner interprets that the limitations directed to mathematical descriptions of the KIC values, while involving the manipulation of the yield stress (MPa), have KIC values with units of MPa√m. For example, Claim 1 recites, for a 76-150mm product, an optional (i) “KIC (T-L) of at least -0.1 Rp0.2(LT)+77”, which is interpreted to mean a KIC of -0.1*(numerical value of the Rp0.2(LT))+77, with the units MPa√m.
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 35 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.
Regarding Claim 35, the claim recites forming a plate thickness of 27mm; however, dependent Claim 1 recites wherein the thickness of the product is 40-150mm, which is mutually exclusive from the thickness of Claim 35. Therefore, it is unclear what the thickness of the claimed product is. Further, this feature also appears to be directed to multiple products subjected to different processes (i.e., different products, different thicknesses of 27mm vs 40-150mm), rather than the single product as claimed.
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.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 10, 12, 20, 24, 26-27 and 29-44 are rejected under 35 U.S.C. 103 as being unpatentable over Pickens (previously cited and cited by Applicant in IDS filed May 31, 2018, US 5,455,003 A) in view of Boselli (previously cited, US 20120225271 A1), Danielou (previously cited and cited by Applicant in IDS filed May 31, 2018, US 20090159159 A).
Regarding Claim 1, Pickens discloses a rolled or forged aluminum-based alloy product (Col. 6, line 66 – Col. 7, line 4; Col. 7, lines 11-13) comprising the following % by weight:
Element
Claim 1 (wt%)
Pickens (wt%)
Citation
Overlap
Cu
3.2-4.0
3.0-4.5
Table 1, most pref.
3.2-4.0
Li
0.80-0.95
0.7-1.1
Table 1, most pref.
0.80-0.95
Zn
0.45-0.70
0-0.75
Table 1, most pref.
0.45-0.70
Mg
0.15-0.43
0.3-0.6
Table 1, most pref.
0.3-0.43
Zr
0.07-0.15
0.01-1.0*
Col. 5, lines 43-45; Table 2, values such as 0.14-0.15%
0.07-0.15
Mn
0.1-0.6
0.01-1.0*
Col. 5, lines 43-45
0.1-0.6
Ag
<0.10
0-0.6
Table 1, most pref.
0 to <0.10
Balance
Al
Al
Col. 3, line 52
*range disclosed for grain refiner elements
Pickens discloses including Zr, Ti, Cr, Mn, Hf and V as grain refiners in a preferred total amount of 0.01-1.0wt%, and discloses wherein compositions preferably comprise a combination of Ti and Zr, with working examples comprising 0-0.04% Ti and 0.14-0.17% Zr (Col. 5, lines 4-52; Table 2, Ti and Zr values). Amounts of 0-0.04% Ti and 0.14-0.17% Zr read on the claimed amount of at least one of 0.01-0.15% Ti and 0.07-0.15% Zr.
Pickens does not disclose the presence of Mn in the working examples, nor a specific individual range for Mn; however, it would be obvious to one of ordinary skill in the art would to include up to 0.86% Mn for compositions comprising 0-0.04% Ti and 0.14-0.17% Zr, in order to satisfy a total preferred grain refiner amount of up to 1.0wt%, as desired by Pickens (Col. 5, lines 4-52, wherein Ti, Zr and Mn may be included as grain refiners).
Further, Boselli teaches including 0.05-0.50wt% of at least one of Zr, Sc, Cr, V and Hf in order to form solid state second phase particles, thereby controlling solid state grain structure during thermal processes such as recovery and recrystallization. Boselli teaches wherein values are chosen to maintain the elements below maximum solubility, and wherein 0.07-0.15wt% Zr is included (para. [0011]-[0012]).
Boselli also teaches adding up to 0.15wt% Ti in order to refine the as-cast grain structure, and including at least 0.1wt% Mn and not greater than 0.6wt% Mn in order to refine the grain structure by forming manganese dispersoids and to enhance the strength when in solid solution (para. [0013]; para. [0010]).
Similarly, Danielou teaches adding 0.01-0.15wt% Ti as a refining agent, including 0.04-0.18wt% Zr, and adding 0.2-0.8wt% Mn (preferably 0.3-0.5% Mn), in order to form manganese dispersoids, thereby avoiding stress localization and stress at grain boundaries and contributing to a low propensity to crack branching (Abstract; para. [0040]-[0041]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have specifically included 0.07-0.15wt% Zr, 0.01-0.15wt% Ti, and 0.1-0.6% Mn, such as 0.3-0.5% Mn, as taught by Boselli and Danielou, for the invention disclosed by Pickens. One would be motivated to use these amounts of Zr, Ti and Mn in order to control solid state grain structure during thermal processing while maintaining levels below maximum solubility (see teaching by Boselli for Zr), to control the as-cast grain structure (see teaching by Boselli and Danielou for Ti), and in order to increase mechanical strength through solid solutioning of Mn and to refine the grain size, reduce stress localization and grain boundary stress, and reduce the propensity for crack branching, through the formation of manganese dispersoids (see teachings by Boselli and Danielou).
The ranges taught by Boselli and Danielou, including 0.07-0.15wt% Zr, 0.01-0.15wt% Ti, and 0.1-0.6wt% Mn, fall within the claimed ranges of 0.07-0.15% Zr, 0.1-0.6% Mn and at least one of 0.01-0.15% Ti, and further fall within the range for total amount of grain refiners of 0.01-1.0wt%, as desired by Pickens. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Ag, Pickens discloses Ag as an optional element, wherein Ag may be 0% (see Table 1, most preferred; Table 2, examples W and Y comprise 0% Ag). Further, Danielou teaches wherein Ag is high cost and economically prohibitive (para. [0042]). Therefore, it would have been obvious to one of ordinary skill in the art to exclude the optional element Ag from the composition of Pickens, because Pickens already discloses wherein the amount may be 0%, and further in order to reduce the cost of the alloy (see teaching by Danielou).
Regarding Zn, Pickens further teaches wherein Zn provides beneficial effects such as increased aging response and increased strength without affecting cryogenic fracture toughness (Col. 11, lines 61-63; Col. 18, line 64-Col. 19, line 5). Therefore, it would be obvious to one of ordinary skill in the art to have used a non-zero amount of Zn, and in amounts such as the values suggested for use in the Ag-free working example compositions, ranging from 0.39-0.75% Zn (see Table 2, Ex. W, X, Y; Col. 19, lines 1-2), or the range suggested by Boselli comprising 0.40-0.50% Zn (Boselli, para. [0009]), either of which overlap with the most preferred range of Pickens (Table 1) and overlap with the claimed range of 0.4-0.7% Zn. One would be motivated to do this in order to improve aging response and mechanical strength without affecting cryogenic fracture toughness (see teaching by Pickens above).
Pickens further discloses wherein other elements and combinations thereof, including Fe, are optional (see Col. 5, lines 36-41), and thus are inclusive of 0%. Pickens is silent towards Si and therefore one of ordinary skill in the art would appreciate that the composition of Pickens comprises 0% Si. A composition which comprises 0% Si and 0% Fe, as disclosed by Pickens, reads on the claimed limitation of Fe+Si ≤ 0.20 (for example, see Table 2 compositions which comprise 0% Si and 0% Fe).
While Pickens does not expressly disclose wherein the other elements (see Col. 5, lines 36-37) are limited to <0.05 % each and <0.15% total, these additional elements are optional, and therefore inclusive of 0%, which reads on the claimed range such that other elements are <0.05% each and <0.15% total. Additionally, it would be obvious to one of ordinary skill in the art to limit impurities or unintentionally added elements to be as low as possible in order to reduce contamination and to reduce detrimental effects to properties.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens does not expressly disclose examples wherein the thickness is the smaller dimension in a cross-section such that the smaller dimension is between 40-150mm; however, Pickens discloses plate products, and wherein the thickness of plates comprises any thickness above 0.250 inches (Col. 7, lines 22). Pickens also discloses casting 6.5inch (165mm) diameter ingots, which one of ordinary skill in the art would appreciate could be easily hot worked to a thickness of 40-150mm for the smaller dimension of the plates cross-section.
Further, Danielou teaches hot rolling ingots into thicker plates ranging from 60- 100mm, or more (para. [0045]; para. [0047]; para. [0049]-[0050]). One of ordinary skill in the art would appreciate this thickness to be the smaller dimension for a cross section of a plate member.
Similarly, Boselli teaches rolling ingots into plates and comprising thickness from at least 50.8mm and up to 152.4mm, in order to achieve improved properties (para. [0004]; para. [0020]).
It would be obvious to one of ordinary skill in the art that plates of Pickens include thicknesses (smaller dimension in a cross section) within the claimed range, and those taught by Danielou by Boselli (60-100mm or more, or 50.8-152.4mm, respectively), in order to produce a thick plate and one therefore achieves improved properties (see teaching by Boselli above). Additionally, it would be obvious and routine for one of ordinary skill in the art to form a product such as by hot working and/or hot rolling, comprising a thickness in the claimed range, as a change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.IV.A.
Pickens fails to disclose the claimed yield strengths and toughness features for a product comprising the claimed thicknesses (40-75mm, 76-120mm or 121-150mm).
However, Pickens discloses a substantially similarly process as the instant invention wherein the product is rolled or forged, solution treated, quenched, stress relieved optionally by stretching, and aged tempered (see Col. 7, lines 3-4 and 11-13; see Col. 6, lines 36-41; see instant invention, Pg. 10, lines 10-11 and 27-28; Pg. 11, lines 16-17).
Pickens specifically discloses casting from an induction melting furnace, homogenizing at 450C for 16 hours and 504C for 8hours, hot working (extruding), solution heat treating for 1 hr just below the solidus, quenching, cold work stretching from 0-12% (preferably 3-9%), and artificially aging from 120-180C for 2-48 (preferably 24) hours (Col. 6, lines 29-65; see instant invention process, Pg. 6, lines 3-18).
While these particular parameters are for an extruded bar, Pickens teaches wherein the product after casting may be a wrought product formed by rolling or forging (Col. 7, lines 11-16). Pickens therefore recognizes the art equivalence of rolling, extrusion and forging in techniques for hot working.
Further, Danielou teaches a substantially similar process for a rolled product, wherein an aluminum alloy is casted from a melt, homogenized at 470-510C for 2-30 hours, followed by hot working in the form of hot rolling (para. [0011]-[0013]). Danielou teaches that the rolled product is then subjected to solution heat treatment for 0.25-4 hours at 490-540C, followed by cold water quenching in order to obtain a solution-treated, unrecrystallized product, while avoiding dispersoid coarsening (para. [0045]). Like Pickens, Danielou also discloses stretching from 2-5%, and aging at 130-160C for 12-50 hours (para. [0017]; para. [0046]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted hot rolling for the hot working (extrusion) disclosed by Pickens, as taught by Pickens and Danielou, in order to form the rolled plate product disclosed by Pickens (see Col. 7, lines 11-13 of Pickens), because Pickens recognize the art equivalence of hot-rolling, extrusion and forging for hot-working a wrought product, and because the other processing steps of Danielou (before and after hot-working/hot-rolling) are the same and overlap with those of Pickens.
Additionally, it would have been obvious to have specifically used the solution heat treatment temperatures (490-540C) and cold water quenching, taught by Danielou, for the invention disclosed by Pickens, in order to obtain a solution-treated, unrecrystallized product which avoids dispersoids coarsening (see teaching by Danielou above). One of ordinary skill in the art would appreciate these temperatures would be just below the solidus temperature of the alloy (as desired by Pickens) in order to be considered solution heat treatment temperatures.
Thus, the product of Pickens, Boselli and Danielou comprises the claimed composition (see above), and is produced by substantially identical processes to that of the instant invention (see processing steps above for Pickens and Danielou; see instant specification, Pg. 6, lines 3-18). It would have been obvious to one of ordinary skill in the art that the alloy of Pickens, Boselli and Danielou, when formed into a plate comprising the claimed thicknesses of either 40-75mm, 76-120mm or 121-150mm (see teachings for plate thickness by Boselli and Danielou), comprises the corresponding yield strength and Kapp toughness values as claimed, because the product of Pickens, Boselli and Danielou comprises the claimed composition and has substantially identical processing as that of the instant invention.
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, 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). See MPEP 2112.01.
Regarding Claim 2, Pickens discloses wherein the magnesium content is at most 0.55-1.5*Ag (see Table 1, most preferred Mg is 0.3 to 0.6%). For example, when Ag is 0-0.10%, a Mg content of 0.55-1.5*Ag would be max 0.40-0.55% (see also compositions W and Y, wherein Ag is 0%, and 0.33% and 0.41% Mg is below the maximum allowed content of 0.55%).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 3, Pickens further discloses wherein the copper content is:
Element
Claimed
Pickens
Citation
Overlap
Cu
3.3-3.8
3.0-4.5
Table 1, most pref.; Ex. W and Y in Table 2, comprising 3.61 and 3.5% Cu
3.3-3.8
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 4, Pickens further discloses wherein the zinc content is:
Element
Claimed
Pickens
Citation
Overlap
Zn
0.50-0.60
0-0.75
See Table 1, most pref.
0.50-0.60
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5, Boselli and Danielou disclose wherein the Mn content is 0.1-0.6% Mn, or further 0.3-0.5% Mn, which reads on and overlaps the claimed range of 0.20-0.40% (see Claim 1 teachings above; Boselli, para. [0010]; Danielou, para. [0041]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 6, Pickens further discloses wherein the Li content is:
Element
Claimed
Pickens
Citation
Overlap
Li
0.84-0.93
0.7-1.1
Table 1, most pref.; Table 2, Ex. W
0.84-0.93
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 10, Pickens discloses wherein the Mg content and Ag content are:
Element
Claimed
Pickens
Citation
Overlap
Mg
0.34-0.43
0.3-0.6
Table 1, most pref.; Ex. Y in Table 2
0.34-0.43
Ag
<0.05
0-0.6
Table 1, most pref.; Ex. Y in Table 2
0 to <0.05
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 12, Pickens and Danielou disclose the instant process (see rejection of Claim 1 above), but Pickens does not disclose wherein the number of days before failure tested according to ASTM standards G47 and G49 at mid-thickness for a stress in the ST direction equal to 350 MPa is at least 30 days.
Danielou further teaches wherein the number of days before failure tested according to ASTM standards G47 for a stress in the ST direction equal to 350 MPa is at least 30 days in order to have good resistance to stress corrosion cracking (para. [0051]).
It would have been obvious to one of ordinary skill in the art at the time that the invention was filed that the alloy of Pickens, Boselli and Danielou comprise at least 30 days before failure when tested at mid-thickness for a stress in the ST direction equal to 350 MPa, according to ASTM standards G47 and G49, as taught by Danielou, in order to have improved resistance to stress corrosion cracking (see teaching above).
Additionally, the alloy of Pickens, Boselli and Danielou comprise the claimed composition and the same processing as the instant invention (see Claim 1 above), and therefore it would be obvious that the alloy of Pickens, Boselli and Danielou also comprise the claimed features. 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, 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). See MPEP 2112.01.
Regarding Claim 20, Pickens further discloses wherein the copper content is:
Element
Claimed
Pickens
Citation
Overlap
Cu
3.4-3.7
3.0-4.5
Table 1, most pref.; Table 2, Ex. W and Y
3.4-3.7
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 22, Pickens further discloses wherein the Ag content is:
Element
Claimed
Pickens
Citation
Overlap
Ag
<0.1
0-0.6
Table 1, most pref.; Table 2, Ex. F, W and Y
0 to <0.1
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 24, Claim 26, Claim 39 and Claim 43, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 40-75mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli above).
Pickens fails to disclose (i) the claimed yield strengths in the L-T direction and claimed toughness values for KIC- in the T-L direction at quarter thickness, or (ii) the claimed yield strength in the S-T direction and the claimed toughness values for KIC- in the S-L direction at midthickness, as required by (Claim 24), (Claim 26), (Claim 39) and (Claim 43).
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 40-75mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strengths in the L-T direction and claimed toughness values for KIC- in the T-L direction at quarter thickness, and/or the claimed yield strength in the S-T direction and the claimed toughness values for KIC- in the S-L direction at midthickness.
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, 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). See MPEP 2112.01.
Regarding Claim 27, Claim 40 and Claim 44, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 76-120mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli in Claim 1 above, wherein thickness is 60-100mm or more, or up to 152.4mm).
Pickens fails to disclose (i) the claimed yield strengths in the L-T direction and claimed toughness values for KIC- in the T-L direction at quarter thickness, or (ii) the claimed yield strength in the S-T direction and toughness values for KIC- in the S-L direction, as required by (Claim 27), (Claim 40) and (Claim 44).
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 76-120mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the L-T direction and the claimed Kic toughness values in the T-L direction at quarter thickness, and/or the claimed yield strength in the S-T direction and the claimed Kic toughness values in the S-L direction at mid thickness.
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, 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). See MPEP 2112.01.
Regarding Claim 29 and Claim 42, Pickens discloses wherein the silver content is 0 (See Table 1, most pref., see Table 2 showing examples comprising 0% Ag). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 30, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 40-75mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli above).
Pickens fails to disclose the claimed toughness values of Kapp in the L-T direction and the claimed yield strength in the L direction.
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 40-75mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the L direction, the claimed Kapp toughness values in the L-T direction, as claimed.
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, 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). See MPEP 2112.01.
Regarding Claim 31, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 76-120mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli in Claim 1 above, wherein thickness is 60-100mm or more, or up to 152.4mm).
Pickens fails to disclose the (i) claimed toughness values for Kapp- in the L-T direction and the claimed yield strengths in the L direction, or (ii) the claimed yield strength in the L-T direction and toughness KIC values in the T-L at quarter thickness..
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 76-120mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the L direction and the claimed toughness Kapp values in the L-T direction, and/or the claimed yield strength values in the L-T direction and the claimed Kic toughness values in the T-L direction at quarter thickness.
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, 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). See MPEP 2112.01.
Regarding Claim 32, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 121-150mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli in Claim 1 above, wherein thickness is 60-100mm or more, or up to 152.4mm).
Pickens fails to disclose the (i) claimed toughness values for Kapp- in the L-T direction and claimed yield strengths in the L direction, or (ii) the claimed yield strength in the S-T direction and toughness KIC values in the S-L at mid thickness.
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 121-150mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the L direction and the claimed toughness Kapp values in the L-T direction, and/or the claimed yield strength values in the S-T direction and the claimed Kic toughness values in the S-L direction at mid thickness.
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, 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). See MPEP 2112.01.
Regarding Claim 33, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 121-150mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli in Claim 1 above, wherein thickness is 60-100mm or more, or up to 152.4mm).
Pickens fails to disclose the claimed yield strengths in the S-T direction and the claimed toughness values for KIC- in the S-L direction.
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 121-150mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the L direction and the claimed toughness Kapp values in the S-T direction and the claimed Kic toughness values in the S-L direction at mid thickness.
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, 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). See MPEP 2112.01.
Regarding Claim 34, Pickens, Boselli and Danielou discloses the following % by weight:
Element
Claim 34 (wt%)
Pickens (wt%)
Citation
Boselli
(Claim 1 rej.)
Danielou
(Claim 1 rej.)
Cu
3.3-3.8
3.0-4.5
Table 1, most pref.
Li
0.84-0.93
0.7-1.1
Table 1, most pref.
Zn
0.50-0.60
0-0.75
Table 1, most pref.
Mg
0.34-0.43
0.3-0.6
Table 1, most pref.
Zr
0.07-0.15
0.01-1.0
Col. 5, lines 43-45; Table 2, ex. W and Y (0.14%, 0.15%)
0.07-0.15% (para. [0012])
0.04-0.18wt% (para. [0040])
Mn
0.2-0.4
0.01-1.0
Col. 5, lines 43-45
0.1-0.6%, further 0.2-0.4%
(para. [0010])
0.2-0.8wt%, pref. 0.3-0.5%
(para. [0041]).
Ag
<0.05
0-0.6
Table 1, most pref.
Ti
0.01-0.15
0.01-1.0
Col. 5, lines 41-45; Table 2, ex. W and Y (0.04%, 0.02%)
up to 0.15wt% (para. [0013])
0.01-0.15wt% (para. [0040])
Other
<0.05 ea. <0.15 total
0%
See Claim 1 Rej.
Balance
Al
Al
Col. 3, line 52
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 35, Pickens and Danielou disclose the claimed and instant process (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli above).
Pickens fails to disclose the difference in yield stress for a 27mm plate quenched in water at different temperatures (90C and 25C).
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 and Claim 34 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, comprise the claimed variance in yield stress when further formed to a 27mm and quenched in the claimed manner.
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, 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). See MPEP 2112.01.
Regarding Claim 36, Pickens and Danielou disclose the claimed and instant process, and forming thicknesses of 76-120mm (see Claim 1 rejection above; see Col. 7, lines 22; see teachings of Danielou and Boselli in Claim 1 above, wherein thickness is 60-100mm or more, or up to 152.4mm).
Pickens fails to disclose the claimed (i) the claimed toughness values for Kapp- in the T-L direction and claimed yield strengths in the LT direction, or (ii) the claimed yield strength in the S-T direction and toughness KIC values in the S-L at mid thickness.
However, Pickens, Boselli and Danielou disclose the claimed composition and the same processing as the instant invention (see details in the rejection of Claim 1 above). Therefore, it would have been obvious to one of ordinary skill that the alloy of Pickens, Boselli and Danielou, at a thickness of 76-120mm (see teaching by Danielou and Boselli above in Claim 1 regarding thicknesses), comprise the claimed yield strength values in the LT direction and the claimed toughness Kapp values in the T-L direction, and/or the claimed yield strength values in the S-T direction and the claimed Kic toughness values in the S-L direction at mid thickness.
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, 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). See MPEP 2112.01.
Regarding Claim 37, Pickens, Danielou and Boselli’12 disclose the claimed ranges for Cu, Li, Zn, Mg, Zr, Mn, Ag, (Fe+Si), Ti, Sc, Cr, Hf and V, and other elements and balance of Al above (see compositional table above in Claim 1), Pickens discloses wherein Ag is optional and may be 0%, which reads on the claimed range of <0.05 Ag, and Pickens does not disclose requiring any elements outside of those claimed. Therefore, the composition of Pickens, Danielou and Boselli’12 reads on the claim language ‘consisting essentially of’.
Regarding Claim 38, Pickens discloses wherein Mg is 0.3-0.6%, which reads on the claimed range of 0.34-0.43% Mg (Table 1, most. Pref). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 41, Pickens, Boselli and Danielou discloses the following % by weight:
Element
Claim 34 (wt%)
Pickens (wt%)
Citation
Boselli
(Claim 1 rej.)
Danielou
(Claim 1 rej.)
Cu
3.3-3.8
3.0-4.5
Table 1, most pref.
Li
0.84-0.93
0.7-1.1
Table 1, most pref.
Zn
0.50-0.60
0-0.75
Table 1, most pref.
Mg
0.34-0.43
0.3-0.6
Table 1, most pref.
Zr
0.07-0.15
0.01-1.0
Col. 5, lines 43-45; Table 2, ex. W and Y (0.14%, 0.15%)
0.07-0.15% (para. [0012])
0.04-0.18wt% (para. [0040])
Mn
0.2-0.4
0.01-1.0
Col. 5, lines 43-45
0.1-0.6%, further 0.2-0.4%
(para. [0010])
0.2-0.8wt%, pref. 0.3-0.5%
(para. [0041]).
Ag
<0.05
0-0.6
Table 1, most pref.
Ti
0.01-0.15
0.01-1.0
Col. 5, lines 41-45; Table 2, ex. W and Y (0.04%, 0.02%)
up to 0.15wt% (para. [0013])
0.01-0.15wt% (para. [0040])
Other
<0.05 ea. <0.15 total
0%
See Claim 1 Rej.
Balance
Al
Al
Col. 3, line 52
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens, Danielou and Boselli’12 disclose the claimed ranges for Cu, Li, Zn, Mg, Zr, Mn, Ag, (Fe+Si), Ti, Sc, Cr, Hf and V, and other elements and balance of Al above (see compositional table above), Pickens discloses wherein Ag is optional and may be 0%, which reads on the claimed range of <0.05 Ag, and Pickens does not disclose requiring any elements outside of those claimed. Therefore, the composition of Pickens, Danielou and Boselli’12 reads on the claim language ‘consisting essentially of’.
Response to Arguments
Applicant’s arguments, filed August 29, 2025, with respect to Claim 1, and dependent claims thereof, rejected under 35 U.S.C. 103 over Pickens in view of Danielou and Boselli (previously cited as Boselli’12) have been fully considered but are respectfully not found persuasive.
Applicant argues that a similar EP application was deemed allowable and therefore the current invention should be patentable as well (Pg. 13).
This argument is not found persuasive.
A US patent application is not deemed patentable based on the allowances of other countries and different patent prosecutions.
Applicants argues that the claimed invention exhibits unexpected results with respect to the composition and mechanical strength and damage tolerance, and the claimed composition exhibits consistent mechanical properties across the thickness range of 40-150mm.
Applicant argues that Dr. Whelchel explains the unexpected results in the declaration, including the dependence of yield stress variance on the claimed Zn content (Pg. 14-17).
This argument is not found persuasive.
As explained in the response to the Declaration above, the yield stress variance is not a currently claimed feature for a 40-150mm plate (see Claim 1 requirements), and is not commensurate in scope. Further, this feature appears to be directed to multiple products of different thicknesses rather than a single product as claimed.
Regarding Zn, only one data point is provided which comprises Zn outside of the claimed range while otherwise comprising all other elements within the claimed ranges, and one data point is insufficient to demonstrate the criticality for the Zn range. Additionally, Pickens discloses 0% Ag and comprising Zn within the claimed range, and further comprises by example, an alloy comprising 0% Ag and 0.45% Zn (see Table 2).
Applicant argues that a sufficient number of alloys, up to 10 compositions, have been tested to demonstrate criticality of the claimed ranges (Pg. 18).
This argument is not found persuasive.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (see MPEP 716.02(d).II). While 10 alloys were tested, only one alloy of relevance was outside the claimed range for Ag (alloy 62), only one alloy provided was outside the claimed range for Zn (alloy 59), and only one alloy was outside the claimed range for Mg (alloy 72). A sufficient number of alloys to each demonstrate the Ag range, the Zn range, and a sufficient number of alloys to demonstrate the Mg range, are not provided.
Applicant argues that Danielou and Boselli teach away from the claimed invention, because Danielou teaches only up to 0.05wt% Zn, and Boselli teaches a Li content of 0.975-1.385%. Applicant argues that to apply the teachings of Danielou and Boselli, one would need to comprise the Zn contents of Danielou and the Li contents of Boselli (Pg. 19-20).
This argument is not found persuasive.
Danielou is applied to further limit the ranges for Ti, Zr and Mn. Danielou discloses Ti and Zr as refining agents during casting, and Mn dispersoids regarding the Mn range of 0.3-0.5% Mn (para. [0041]). Danielou does not disclose an interaction of Mn dispersoids with Zn, nor wherein Zn affects the refining capabilities and interacts with the elements of Ti and Zr. Danielou does not provide any teachings regarding Zn other than stating the range.
Thus, the teachings of Danielou are applicable to Pickens because Danielou comprises no disclosure, and therefore no teaching away, from applying the ranges of Zr, Mn and Ti to an alloy comprising Zn. Additionally, Boselli is similarly applied to further limit the ranges for Ti, Zr and Mn. The ranges of Ti, Zr and Mn overlap the ranges taught by Danielou. Boselli teaches these ranges are applicable to a composition comprising up to 1% Zn.
Boselli also does not teach wherein the ranges disclosed for Ti, Zr and Mn are only applicable for a specific range of Li. Boselli does not disclose that the Ti, Zr or Mn ranges are limited by Li, or whereby these elements interact with Li to provide the relied upon teachings. Alternatively, Boselli teaches wherein Mn interacts with the Al to form particulates, and with silicon (when included) (see para. [0010]; para. [0013]). Further, Danielou demonstrates the obviousness to add the ranges of Ti, Zr and Mn to an alloy comprising 0.8-0.95% Li (see para. [0044] of Danielou).
Applicant argues that the cited references do not teach the features recited in Claim 35. Applicant argues that Pickens does not disclose the claimed quenching temperature (Pg. 20).
This argument is not found persuasive.
The quenching temperature is directed to a plate size outside the claimed thickness of Claim 1. The quenching temperature is also