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:
1-7, 10, 12, 14-21
Withdrawn:
10
Rejected:
1-7, 12, 14-21
Amended:
1
New:
NONE
Independent:
1, 10
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-7, 12, 14-21 are rejected under 35 U.S.C. 103(a) as being unpatentable over WO 2009/036953A (WO’953, previously cited) in view of CN 102886511A (CN’511, cited herein).
Concerning instant independent claim 1, WO’953 teaches an Al-Cu-Li alloy wrought product that overlaps the claimed ranges of Cu, Li, Mg, Zr, Ag, Mn, Ti, Zn, Fe, Si (WO’953 at abstract), see Table 1 below for comparison.
Instant cl. 1
WO 2009/036953
Cu
4.0-4.6
4.2-4.5 (cl. 2)
3.4-5
Li
0.7-1.2
0.8-1.0 (cl. 3)
0.9-1.7
Mg
0.5-0.65
0.2-0.8
Zr
0.10-0.20
0.10-0.15 (cl. 7)
0.05-0.3
Ag
0.15-0.30
0.20-0.27 (cl. 18)
0.1-0.8
Mn
0.05-0.35
0.10-0.25 (cl. 5)
0.2-0.35 (cl. 17)
0.1-0.9
Fe
-0.2 Fe+Si
-0.08% Fe+Si (cl. 16)
<0.15
Si
<0.5
Zn
0.25-0.45
0.30-0.40 (cl. 4)
-1.5
At least one selected from:
0.05-0.3 Cr
0.05-0.3 Sc
0.05-0.5 Hf
0.05-0.5 V
0.01-0.15 Ti
at least 1
0.01-0.08 Ti (cl 8)
1 or more:
0.03-0.3 Ti
0.05-0.3 Cr
0.05-0.4 Sc
0.05-0.4 Hf
Table 1: instant claims vs. WO’953
Concerning claim 1 thickness and CYS/Kapp/TYS-CYS property limitations, WO’953 teaches said alloy is formed by rolling (examples) to plate or sheet thickness of <0.5 inch to up to 11 inches (page 7), which encompasses the claimed thickness range.
WO’953 does not teach a) the claimed CYS/Kapp/TYS-CYS properties combinations at mid-thickness for a given thickness of 8-50mm or b) incorporating grain refiner(s) of TiC and AlTixCy with the claimed characteristics.
Concerning b), CN’511 teaches incorporating TiC grain refiner to aluminum melts with a master alloy of 2-10% Ti and 0.1-1.6% C balance aluminum [0010] (wherein the ranges of Ti and C taught by said master alloy meet the claimed AlTixCy with x/y>4), which CN’511 teaches is effective for the predictable result of undelayed grain refinement (abstract), and wherein higher amounts of TiC provide finer grains (see Table, CN’511 at [0017]). It would have been obvious to one of ordinary skill in the art to have added Ti to the Al-Cu alloy of WO’953 as TiC (within the ranges of Ti taught by primary reference of WO’953), because CN’511 teaches said Al-TiC addition is particularly effective to provide undelayed grain refinement (see CN’511 at abstract). Further, the claimed condition of AlTixCy with x/y>4 is met by WO’953 and CN’511, because the prior art of WO’953 together with CN’511 teaches overlapping alloying range of Ti, and ratios of Ti and C that meet the claimed x/y>4.
Concerning a), because WO’953 together with CN’511 teach an overlapping alloy together with a substantially identical process of working and heat treating, then substantially the same fracture toughness, compressive yield strength, tensile yield strengths for a given thickness is expected, as for the instant invention.
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.
Therefore, it is held that WO’953 together with CN’511 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 2-5, 7, and 8, as set forth in Table 1 above, WO’953 teaches overlapping alloying ranges. Concerning claim 6, the ranges of Zn, Mg, and Ag taught by WO’953 broadly overlap the claimed 0.95-1.35% (Zn+Mg+Ag) range.
Concerning claims 4-7 and 15-18, WO’953 teaches overlapping ranges of Cu, Li, Mg, Ag, Mn, Fe, Si, Zn, Zr (see Table above for comparison), and touches the claimed maximum of 0.05% Cr, Sc, Hf of claim 15.
Concerning claim 12, WO’953 teaches said alloy is formed into an aerospace part such as fuselage sheet, upper wing plate, lower wing plate, thick plate for machined parts, or thin sheet for stringers (page 5 lines 28-30), which meets the instant limitations.
Concerning claim 14, because WO’953 teaches an alloy product with overlapping alloying ranges, then substantially the same properties, such as density, are expected for the prior art, as for the instant invention.
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.
Concerning claims 19-21, WO’953 does not teach the claimed CYS/Kapp/TYS-CYS properties. However, as set forth supra, because the combination of WO’953 and CN’511 teach an overlapping alloy and substantially similar process of working and heat treating, then substantially the same fracture toughness, compressive yield strength, tensile yield strengths for a given thickness is expected, as for the instant invention. Therefore, it is held that WO’953 and CN’511 have created a prima facie case of obviousness of the presently claimed invention.
Response to Arguments
In the response filed on 1/20/26, applicant submitted various arguments traversing the rejections of record, as well as a 1.132 declaration.
Applicants argument that the instant invention is allowable because the prior art does not teach or suggest the amended feature of TiC and a refiner with the formula of AlTixCy has not been found persuasive. As set forth above, CN’511 teaches incorporating TiC grain refiner to aluminum melts with a master alloy of 2-10% Ti and 0.1-1.6% C balance aluminum [0010] (wherein the ranges of Ti and C taught by said master alloy meet the claimed AlTixCy with x/y>4), which CN’511 teaches is effective for the predictable result of undelayed grain refinement (abstract), and wherein higher amounts of TiC provide finer grains (see Table, CN’511 at [0017]). It would have been obvious to one of ordinary skill in the art to have added Ti to the Al-Cu alloy of WO’953 as TiC (within the ranges of Ti taught by primary reference of WO’953), because CN’511 teaches said Al-TiC addition is particularly effective to provide undelayed grain refinement (see CN’511 at abstract). Further, the claimed condition of AlTixCy with x/y>4 is met by WO’953 and CN’511, because the prior art of WO’953 together with CN’511 teaches overlapping alloying range of Ti, and ratios of Ti and C that meet the claimed x/y>4.
The declaration under 37 CFR 1.132 filed 1/20/26 is insufficient to overcome the rejection of claims based upon WO’953 as set forth in the last Office action because of reasons a), b), and c) below.
Concerning reason a), comparison must be done under identical condition except for the novel features of the invention. In re Brown, 173 USPQ 685 and In re Chapman, 148 USPQ 711.
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).
In the instant case, the 1.132 declaration at item 6 “New 1 was homogenizied… hot rolled… solution heat-treated…quenched in cold water and tensioned with a permanent elongation of 3%...all the alloys were subject to an ageing at 155°C for 20 hours” and at item 15 recites “all alloys tested were subject to the same ageing conditions (at 155°C for 20 hours)”. The process steps beyond aging that the other examples (beyond “New 1”) are subject to, have not clearly been set forth.
Concerning b), none of the alloys listed in Table 1 of the declaration clearly meet the amended limitations of “at least one element selected from Cr, Sc, Hf and V”, “Ti is present in the form of particles of TiC”, and/or “further comprises a refiner, wherein the refiner has a formula AlTixCy”. Appropriate correction/explanation is required.
Concerning reason c), it is maintained that comparative example alloy 8 exhibits a Rcp0.2 (L) = 587 MPa, wherein 587 MPa = 590MPa -rounded to 2 significant digits, wherein the instant claims recite 2 significant digits for said Rcp0.2 (L). 587 MPa is held to be a close approximation of 590MPa, within the precision of the instant claims. Therefore, comparative example 8 meets the instant properties as claimed (Rcp0.2 (L) = 590MPa, rounded to 2 significant digits). Additionally, for comparative example 8: Rcp0.2 (L) = 590MPa, and
Kapp (L-T)≥-0.48* Rcp0.2 (L)+355.2
Kapp (L-T)≥-0.48* Rcp0.2 (L)+355.2=72, wherein Kapp (L-T)=72MPa
and therefore meets the instantly claimed properties (even though alloying ranges of Mg, Zn, and Mn are outside the claimed ranges). In conclusion, Declarant has not clearly established criticality of the claimed alloying ranges/unexpected results, in view of the overlapping ranges taught by the prior art.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 5/14/26
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