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, 2, 4, 5, 8-10, 13-15, 21, 22
Withdrawn:
13-15
Rejected:
1, 2, 4, 5, 8-10, 21, 22
Amended:
NONE
New:
NONE
Independent:
1, 2, 22
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0786535A (EP’535, previously cited) in view of Hayashi et al. (U.S. Patent 6,110,297, previously cited) and WO 2007/076980A (WO’980, previously cited).
EP’535 teaches a method of producing 6xxx series aluminum sheet by a process comprising:
Claim 2
EP’535
Support in EP’535
Casting 6xxx to form ingot
Casting 6xxx to form ingot
Example 1
Homogenizing
Homogenizing ≥500°C
Typically 8 hrs
Abstract, examples
Hot roll
200-500°C
Hot roll 350-450°C
abstract
Hot roll exit temp <260°C
Hot roll exit 200-300°C
Immediately annealing
350-450°C
holding at anneal temp 1-5 hrs
Interanneal “when necessary” to achieve specified thickness
(parameters not given)
P 4 line 3
Cooling to room temp.
-
Cold rolling
Cold roll
P 4 lines 3-8
Continuous anneal and SHT
SHT ≥500°C typically ≤1 min
P 4 lines 9-19
Quenching to temperature 500-200°C at rate 10-50°C/s
Quench at rate ≥5°C/s to Temp≤100°C
Abstract, examples
Reheating the quenched sheet to 55-110°C, coiling
-
Table 1: Comparison of instant claim 2 to EP’535
which meets the process steps of casting, homogenizing, hot rolling, annealing, cold rolling, continuous SHT comprising continuously annealing the sheet, and quenching, substantially as stated in claim 2. Further concerning quenching after SHT, EP’535 teaches quenching to ≤100°C which includes quenching to, and subsequently through, the claimed range of 500-200°C, and therefore meets said limitation. Concerning the instant alloying ranges, including the limitation of “wherein the Cr+Mn is at least 0.10 wt%”, EP’535 teaches applying said process to a 6xxx alloy with: 0.4-1.7% Si, 0.2-1.2% Mg, and at least one selected from 1.0% or less Cu, 1.0% or less Zn, 0.5% or less Mn, 0.2% or less Cr, 0.2% or less V, 0.2% or less Zr (p 2 lines 58-p 3 line 2), which overlaps the claimed alloying ranges (including the Cr +Mn minimum). EP’535 further teaches Cu increases the strength in said range (p 3 lines 27-28) and Mn, Cr, Zr, and V in said ranges increase the strength and decrease the crystal grain size, and prevent a rough surface after forming (p 3 lines 32-33). It would have been within the level of EP’535 to optimize the alloying ranges of Mn and Cr (such as within the claimed Mn+Cr minimum of 0.10%) in order to increase the strength and decrease the grain size (as taught by EP’535 p 3 lines 32-33).
EP’535 does not specify: a) cooling to room temperature after (intermediate) annealing b) parameters for intermediate annealing, including the annealing in a batch type manner, c) reheating to 55-110°C and coiling after quenching (claims 1, 2, and 22) or d) hot rolling exit coiling.
Concerning a), it would have been within the level of one of ordinary skill in the art, given the disclosure of EP’535, to have cooled the 6xxx workpiece of EP’535 to room temperature following intermediate annealing (and before cold rolling at said lower temperature), because cold rolling, by definition, occurs at low temperatures, including room temperature. Further, EP’535 teaches cold rolling with intermediate annealing as needed (see EP’535 p 4, line 3).
Concerning b), EP’535 does not specify the intermediate annealing temperature and typical hold time. However, Hayashi, also drawn to working and heat treating 6xxx sheets, teaches intermediate annealing at temperatures 350-420°C is sufficient to improve formability (see Hayashi at column 5 lines 15-25). Hayashi teaches a typical hold time at said intermediate annealing temperature is 1-4 hours (see examples). Further, Hayashi teaches an example in which the material is charged to a batch furnace for this annealing (see Hayashi col. 8, ll. 12-13) and therefore suggests “batch annealing”. It would have been obvious to one of ordinary skill in the art to have performed the intermediate annealing of Hayashi by batch annealing at temperatures of 350-420°C and hold time of 1-4 hr, taught by Hayashi, because Hayashi teaches said annealing temperature is sufficient to improve formability (column 5 lines 15-25).
Concerning c), WO’980, who is also drawn to forming and heat treating 6xxx aluminum alloy sheets intended for automobile applications, teaches the application of a low temperature heat treatment after solution heating and quenching (termed “pre-bake treatment”, meaning prior to paint baking), wherein the 6xxx alloy sheet is reheated to 50-120°C and coiled at said temperature for said pre-bake treatment, in order to improve the paint bake response (see WO’980 at column 6 lines 5-7, Table 2, column 8 lines 1-3). It would have been obvious to one of ordinary skill in the art to have added a step of pre-baking at 50-120°C and coiling at said pre-bake temperature (taught by WO’980, which overlaps the claimed reheating and coiling temperature), following the process of casting, homogenizing, hot and cold rolling, annealing, solution heating and quenching taught by the combination of EP’535 and Hayashi, in order to provide the predictable result of improving the paint bake response (taught by WO’980 column 8 lines 1-3).
Concerning d), it would have been within the level of one of ordinary skill in the art, given the disclosures of EP’535 and Hayashi, to have coiled after hot rolling and before intermediate annealing, in order to facilitate intermediate annealing in a batch type/coiled manner.
Therefore the combined disclosures of EP 0786535A, Hayashi et al. and WO 2007/076980A would have suggested a method as claimed to one of ordinary skill in the art.
Claims 1, 4, 5, 9-10, 22 are rejected under 35 U.S.C. 103 as being unpatentable over EP 0786535A (EP’535) in view of WO 2007/076980A (WO’980).
Concerning independent claims 1 and 22, EP’535 teaches a method of producing 6xxx series aluminum sheet by a process comprising:
Claim 1
Claim 22
Claims depend. on cl. 1
EP’535
Support in EP’535
Casting 6xxx to form ingot
Casting 6xxx to form ingot
Casting 6xxx to form ingot
Example 1
Homogenizing
Homogenizing
Homog. 500-600°C
t≤10 hrs (cl. 5)
Homogenizing ≥500°C
Typically 8 hrs
Abstract, examples
Hot roll
200-500°C
Hot roll
200-500°C
Hot roll 350-450°C
abstract
Hot roll exit temp <260°C
Hot roll exit temp <300°C
Hot roll exit 200-300°C
Cold roll
Cold roll
Cold roll
P 4 lines 3-8
Batch annealing 350-450°C
Batch annealing 350-450°C
holding at anneal temp 1-5 hrs
Includes heating at a rate 40-60C/h and (cl. 8)
Interanneal (parameters not given)
P 4 line 3
Cooling to room temp.
-
Cold rolling
Cold rolling
Cold roll
P 4 lines 3-8
Continuous anneal and SHT
Continuous anneal and SHT
SHT 500-580°C (cl. 9)
SHT time≤ 1 min (cl. 10)
SHT ≥500°C typically ≤1 min
P 4 lines 9-19
Quenching to temperature 500-200°C at rate 10-50°C/s
Quenching to final quench temperature
Quench at rate ≥5°C/s to Temp≤100°C
Abstract, examples
Reheating the quenched sheet to 55-110°C, coiling
-
Table 2: Comparison of instant claims to EP’535
which meets the process steps of casting, homogenizing, hot rolling, 1st cold rolling, annealing, 2nd cold rolling, continuous SHT, and quenching, substantially as stated in claims 1 and 22. Further concerning quenching after SHT, EP’535 teaches quenching to ≤100°C which includes quenching to, and subsequently through, the claimed range of 500-200°C, and therefore meets said limitation. Concerning the instant alloying ranges, including the limitation of “wherein the Cr+Mn is at least 0.10 wt%”, EP’535 teaches applying said process to a 6xxx alloy with: 0.4-1.7% Si, 0.2-1.2% Mg, and at least one selected from 1.0% or less Cu, 1.0% or less Zn, 0.5% or less Mn, 0.2% or less Cr, 0.2% or less V, 0.2% or less Zr (p 2 lines 58-p 3 line 2), which overlaps the claimed alloying ranges (including the Cr +Mn minimum). EP’535 further teaches Cu increases the strength in said range (p 3 lines 27-28) and Mn, Cr, Zr, and V in said ranges increase the strength and decrease the crystal grain size, and prevent a rough surface after forming (p 3 lines 32-33). It would have been within the level of EP’535 to optimize the alloying ranges of Mn and Cr (such as within the claimed Mn+Cr minimum of 0.10%) in order to increase the strength and decrease the grain size (as taught by EP’535 p 3 lines 32-33).
Said SHT step of EP’535 meets the instant limitation of “after the second cold rolling step, the continuous anneal and solution heat treatment process comprising continuously annealing the sheet”( claim 1, 22).
EP’535 does not specify: a) cooling to room temperature after (intermediate) annealing or b) parameters for intermediate annealing, including the parameter of batch intermediate annealing or c) reheating to 55-110°C and coiling after quenching.
Concerning a), it would have been within the level of one of ordinary skill in the art, given the disclosure of EP’535, to have cooled the 6xxx workpiece of EP’535 to room temperature following intermediate annealing (and before cold rolling at said lower temperature), because cold rolling, by definition, occurs at low temperatures, including room temperature. And further because EP’535 teaches cold rolling with intermediate annealing as needed (see EP’535 p 4 line 3).
Concerning b), EP’535 does not specify the intermediate annealing temperature and typical hold time. However, EP’535 teaches intermediate annealing occurs “as-needed” before final cold rolling (such that a reduction of ≥50% occurs during final stage of cold rolling) see EP’535 at p 4 lines 3-4. WO’980 teaches intermediate annealing during cold rolling at 300-450°C (WO’980 p 6 lines 3-4) leads to an improved combination of high formability and good strength (examples). It would have been obvious to one of ordinary skill in the art to have intermediate annealed as set forth by WO’980 (together with a sufficient time for the sheet to reach equilibrium, such as within the claimed hold time 1-5 hrs), after hot rolling and before final cold reduction occurs, because EP’535 teaches intermediate annealing “as-needed”, and because WO’980 teaches an improved combination of formability and strength.
Changes in temperature, concentrations, or other process conditions (in the instant case, holding time of the intermediate annealing) of an old process does not impart patentability unless the recited ranges are critical, i.e. they produce a new and unexpected result. However, said parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Concerning c), WO’980, which is also drawn to forming and heat treating 6xxx aluminum alloy sheets intended for automobile applications, teaches the application of a low temperature heat treatment after solution heating and quenching (termed “pre-bake treatment”, meaning prior to paint baking), wherein the 6xxx alloy sheet is reheated to 50-120°C and coiled at said temperature for said pre-bake treatment, in order to improve the paint bake response (see WO’980 at column 6 lines 5-7, Table 2, column 8 lines 1-3). It would have been obvious to one of ordinary skill in the art to have added a step of pre-baking at 50-120°C and coiling at said pre-bake temperature (taught by WO’980, which overlaps the claimed reheating and coiling temperature), following the process of casting, homogenizing, hot and cold rolling with intermediate annealing, solution heating and quenching taught by the combination of EP’535 and WO’980, in order to provide the predictable result of improving the paint bake response (taught by WO’980 column 8 lines 1-3).
Concerning claim 4, EP’535 teaches an overlapping composition (page 2 line 58- page 3 line 2).
Concerning claim 5, EP’535 teaches an overlapping homogenization temperature and time (see table 2 above).
Concerning dependent claims 9 and 10, EP’535 teaches parameters that fall within the claimed ranges (see Table 2 above for comparison).
Therefore the combined disclosures of EP 0786535A and WO 2007/076980A would have suggested a method as claimed to one of ordinary skill in the art.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over EP 0786535A (EP’535), and WO’980 as applied to claim 1 above, and further in view of De Smet (US 2016/0002761).
EP’535 and WO’980 are discussed above.
EP’535 and WO’980 do not specify the cooling rate after intermediate annealing. However, De Smet (also drawn to process of forming and heat treating 6xxx alloy sheets) teaches cooling at a rate of ≥1°C/s following intermediate annealing [0034] is sufficient to provide improved formability for 6xxx alloy sheets [0034], which overlaps the instant cooling rate after intermediate annealing. It would have been obvious to one of ordinary skill in the art to have performed the casting, homogenizing, hot rolling, cold rolling, annealing, cold rolling, and SHT of EP’535 and WO’980, together with cooling at a rate of ≥1°C/s following intermediate annealing taught by De Smet, in order to improve formability (as taught by De Smet [0034]).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over EP’535, and WO’980 as applied to claim 1 above and further in view of Wycliffe (US 5,913,989).
EP’535 and WO’980 are discussed above.
EP’535 and WO’980 do not mention the heating rate to the interannealing temperature. However, Wycliffe (drawn to a process of forming and heat treating aluminum alloy sheets in a batch type manner), teaches aluminum sheets are heated to the batch annealing temperature at a heating rate of 25-50°C/hr (examples) in order to obtain low earing rates/ good forming properties (see Table 1). It would have been obvious to one of ordinary skill in the art, to have performed the casting, homogenizing, hot rolling, cold rolling, intermediate annealing, cold rolling, and SHT of EP’535 and WO’980, wherein heating to the intermediate annealing temperature occurs at a heating rate of 25-50°C/hr (taught by Wycliffe), in order to obtain low earing rates/ good forming properties.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP §§ 706.02(l)(1) - 706.02(l)(3) for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 2, 4, 5, 8-10, 21, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 12-15 of US patent 11,932,928 (reference application).
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US’928 recite a method of casting, homogenizing/heat treating at 510-580°C for t≥0.5 hr, hot rolling with an exit temperature 250-400°C, cold rolling, heat treating at 520-590°C (wherein said temperature range is typical of continuous annealing), quenching, and aging at low temperatures 50-130°C.
Concerning claim 1, it would have been within the level of one of ordinary skill in the art, given the claims of US’928 to have hot rolled between 200-500°C, as said temperature range is above the recrystallization temperature of the 6xxx alloy.
Concerning claims 1 and 8, it would have been within the level of one of ordinary skill in the art, given the claims of US’928 to have intermediate annealed during cold rolling (such as batch annealed within the claimed 350-450°C for a hold time of 1-5 hr), in order to provide the predictable purpose of decreasing strain/improving formability/workability.
Concerning claim 5, claim 1 of US’928 teaches an overlapping homogenization temperature.
Concerning claims 1, 4, 22 the Al-Mg-Si alloy taught by the claims of US’928 of 6xxx (US’928 at claim 1) broadly overlaps the claimed alloying ranges (claims 1, 3, 4).
Concerning claims 9, 10 & 12, it would have been within the level of one of ordinary skill in the art, given the claims of US’928, to have solution heated with a continuous furnace at 500-580°C for t≤1 min (followed by conventional quenching and reheating/aging) in order to provide the predictable purpose of solutionizing precipitates.
Claims 1, 4, 5, 8-10, 21, 22 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,995,397.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of US’397 recite a method of casting, homogenizing, hot rolling, cold rolling, solution heat treating (i.e. solutionizing, quenching, aging), which meets the casting, homogenizing, hot rolling, cold rolling, and solution heating, quenching, coiling, and pre-aging (US’397 at cl. 1, 10), steps of instant claim 1. Concerning the instant cooling rate after solution heating of 10-50°C/s (claims 1, 2), claim 2 of US’397 teaches quenching after solution heating with air, which overlaps said cooling rate.
It would have been within the level of one of ordinary skill in the art, given the claims of US’397 to have intermediate annealed in a batch type furnace during cold rolling between 350-450°C (claim 1), together with the claimed heating rate and hold time (instant claims 1 & 8), in order to provide the predictable purpose of decreasing strain/improving formability/ workability.
Concerning claims 1, 4, 22 the 6xxx alloy taught by the claim 1 of US’397 overlaps the instant ranges.
Further concerning claim 1, it would have been within the level of one of ordinary skill in the art, given the claims of US’397 to have hot rolled between 200-500°C, as said temperature range is above the recrystallization temperature of the 6xxx alloy.
Concerning claim 5, it would have been within the level of one of ordinary skill in the art, given the claims of US’397, to have homogenized at high temperatures (such as within the claimed 500-600C), in order to provide the predictable purpose of a homogeneous structure.
Concerning claims 9 & 10, it would have been within the level of one of ordinary skill in the art, given the claims of US’397, to have solution heated with a continuous furnace at 500-580°C for t≤1 min in order to provide the predictable purpose of solutionizing precipitates.
Concerning the instant cooling rates recited in claim 21, claim 22 of US’397 teaches quenching with water or air, which meets the instant cooling rate ranges.
Response to Arguments
In the response filed on 12/22/25 submitted various arguments traversing the rejections of record.
Applicant’s argument that the instant invention is allowable because EP’353 does not teach or suggest parameters for intermediate annealing, nor does EP’353 specify annealing in a batch type manner, has not been found persuasive. Similarly, applicant’s argument that the prior art does not teach or suggest a reason to select batch annealing at the claimed process stage or for the purposes described by applicant has not been found persuasive.
EP’535 teaches hot rolling, intermediate annealing as needed (see EP’535 p 4, line 3), and cold rolling to final gauge, but does not specify the intermediate annealing temperature and typical hold time. Hayashi, also drawn to working and heat treating 6xxx sheets, teaches intermediate annealing at temperatures 350-420°C is sufficient to improve formability (see Hayashi at column 5 lines 15-25). Hayashi teaches a typical hold time at said intermediate annealing temperature is 1-4 hours (see examples). Further, Hayashi teaches an example in which the material is charged to a batch furnace for this annealing (see Hayashi col. 8, ll. 12-13) and therefore suggests “batch annealing”. It would have been obvious to one of ordinary skill in the art to have performed the intermediate annealing of Hayashi by batch annealing at temperatures of 350-420°C and hold time of 1-4 hr, taught by Hayashi, for the process of forming 6xxx alloy sheets taught by EP’535 (and before final reduction is reached), because EP’535 teaches intermediate annealing “as needed” prior to final cold reduction, and Hayashi teaches said annealing temperature leads to the predictable result of improving formability (column 5 lines 15-25).
Applicant’s representative argues EP’535 does not teach or suggest batch annealing at intermediate gauge at 350-450°C for 1-5 hrs, nor does the prior art recognize the criticality of performing batch annealing immediately after hot rolling at a low exit temperature for the purpose of controlling Mg2Si precipitate size, reducing roping, or increasing downstream productivity (arguments p 9). EP’535 teaches intermediate annealing occurs prior to final cold rolling (i.e. after hot rolling and before final cold reduction occurs), which broadly includes intermediate annealing after hot rolling/before cold rolling starts (as well as intermediate annealing after cold rolling has started). Secondary reference of WO’980 teaches the typical temperature and times of batch-type intermediate annealing, as well as the predictable result of said batch intermediate annealing- increase of formability. Applicant has not shown specific evidence of unexpected results (unexpected combination of strength and formability, etc.) with respect to the predictable result (increase in formability) taught to be known by the prior art.
Reason for combining references or modifying prior art does not have to be the same as that of applicant. In re Kemps, 97 F.3d 1427, 1430, 40 USPQ 2d 1309, 1311 (Fed. Cir. 1996); In re Dilon, 919F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990)(en banc), see MPEP 2144. The strongest rationale for combining references is a recognition, expressly or impliedly in the prior art or drawn from a convincing line of reasoning based on established scientific principles or legal precedent, that some advantage or expected beneficial result would have been produced by their combination. In re Sernaker, 702 F.2d 989, 994-95, 217 USPQ 1, 5-6 (Fed. Cir. 1983). See also Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick, 464 F.3d 1356, 1368, 80 USPQ2d 1641, 1651 (Fed. Cir. 2006).
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the property synergy achieved by the instant invention (arguments p 10) has not been found persuasive. In particular, “Applicant notes that a person of ordinary skill in the art, using the teachings of EP’535, Hayashi, and WO’980, alone or in any combination, would not have any motivation to perform a batch annealing step immediately after the hot rolling at the reroll/intermediate gauge as required by the claim” (arguments p 10) has not been found persuasive. EP’535 teaches intermediate annealing occurs prior to final cold rolling (i.e. after hot rolling and before final cold reduction occurs), which broadly includes intermediate annealing after hot rolling/before cold rolling starts (as well as intermediate annealing after cold rolling has started).
Further, applicant argues the claimed process consistently delivers high T4 yield strength and high after paint-bake yield strength as well as excellent bendability and hemmability as compared to self-annealing routes (arguments p 11). Evenso, applicant hasn’t shown specific evidence of unexpected results (T4 YS, paint bake response, hemmability, bendability, etc.) with respect to the closest prior art of record.
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP §716.02(d) - § 716.02(e). With respect to said indirect comparison, applicant a) 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), or b) show criticality of the instant range. 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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
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), see also MPEP 716.02(e). “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). MPEP 716.02(e).
Conclusion
THIS ACTION IS MADE FINAL. 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 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 1/9/26