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 .
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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 8, 10, 13-15, 18 and 21-23 are rejected under 35 U.S.C. 103 as being unpatentable over Cho (US 5,393,357) in view of Pickens et al. (US 5,455,003) (Pickens) and Bes et al. (US 2010/0006186) (Bes).
In reference to claims 8, 10, 13-15, 18 and 21-23, Cho teaches a rolled aluminum-lithium alloy product (claims 1-20) (corresponding to a rolled product based on an aluminum alloy). Cho further teaches the alloy is provided as a cast ingot or billet, the alloy stock is homogenized, hot worked, solution heat treated, rapidly quenched and cold worked (col. 5, line 41 - col. 6, line 8; col. 6, line 54 - col. 7, line 26) (corresponding to a crude form is cast; said crude form is homogenized; said homogenized crude form is hot-worked; the hot-worked product is solution heat-treated; said solution heat-treated product is quenched; said product is cold worked). The cold working includes cold rolling and stretching steps, which follow the solution heat treating and quenching step and preceded an aging step (col. 4, lines 32-35) (corresponding to aging is carried out wherein said product thus cold-worked). The amount of cold rolling and stretching ranged from about 1-20% cold rolling and 0.5-10% stretch (col. 4, lines 35-37) (corresponding to said cold working comprises first cold rolling with a thickness reduction rate comprising between 8 and 12%, then subsequently tensioning in a controlled manner with a permanent set comprising between 0.5 and 2%; the cold working is carried out in two steps: g1) said product is cold rolled with a thickness reduction rate between 9% and 11%; and g2) the cold rolled product is tensioned in a controlled manner with a permanent set between 0.5% and 1.2%).
Cho further teaches the alloy product is hot rolled 1.6 inch (i.e., 40.64 mm) gauge plate (col. 6, lines 58-29; col. 9, lines 9-12). Given that Cho teaches the cold rolling is in an amount of from about 1-20%, it is clear the product has a thickness of 40.23 to 32.51 mm (i.e., 40.64*(1-0.01) = 40.2336; 40.64*(1-0.2) = 32.512) (corresponding to the rolled product with a thickness between 15 and 50 mm).
Cho does not explicitly teach a liquid metal bath based on aluminum is prepared consisting of 4.2 to 4.7 wt% of Cu; 0.85-0.95 wt% of Li; 0.2 to 0.8 wt% of Mg; 0.1 to 0.2 wt% of Zr; 0.0 to 0.27 wt% of Ag; 0.3 to 0.4 wt% of Zn; 0.0 to 0.5 wt% of Mn; at most 0.20 wt% of Fe+Si; optionally an element selected from Cr, Sc, Hf and V, the amount of said element, if selected, being from 0.05 to 0.3 wt% for Cr and for Sc, 0.05 to 0.5 wt% for Hf and for V; other elements at most 0.05 wt% each and 0.15 wt% in total and the remainder being aluminum, as presently claimed.
Pickens teaches an aluminum-copper-lithium alloy having improved fracture toughness and strength at cryogenic temperatures (col. 3, lines 15-17). The alloy is cast into ingot form and comprises 3.0-4.5 wt% Cu, 0.7-1.1 wt% Li, 0-0.6 wt% Ag, 0.3-0.6 wt% Mg, 0-0.75 wt% Zn and a balance of aluminum (Table 1; col. 6, lines 66-67) (corresponding to consisting of 4.2 to 4.7 wt% of Cu; 0.85 to 0.95 wt% of Li; 0.2 to 0.8 wt% of Mg; 0.0 to 0.27 wt% of Ag; 0.3 to 0.4 wt% of Zn and the remainder being aluminum). Other alloying elements including Zr, Ti, Cr, Mn, Hf, Fe, V and combinations thereof may be included in amounts up to a total of about 10 weight percent, wherein the preferred total amount is from 0.01 to about 1.0 weight percent (col. 5, lines 35-44) (corresponding to 0.1 to 0.2 wt% of Zr; 0.0 to 0.5 wt% of Mn; at most 0.20 wt% of Fe+Si; optionally an element selected from Cr, Sc, Hf and V, the amount of said element, if selected, being from 0.05 to 0.3 wt% for Cr and for Sc, 0.05 to 0.5 wt% for Hf and for V; other elements at most 0.05 wt% each and 0.15 wt% in total).
Pickens does not explicitly teach a refiner introduced to the pre-cast alloy, wherein the refiner contains TiC particles, as presently claimed.
Bes teaches a process for fabrication of a rolled aluminum alloy product ([0003]). The process including adding a refining agent containing particles of AlTiC type phase into the bath ([0016]). Bes further teaches using a refining agent containing the right proportion of AlTiC type phase gives a very particular microstructure of the as-cast product ([0034]) (corresponding to a refiner is introduced into said bath). AlT3C0.15 is used as the refiner in an amount of from 0.5 kg/t to 5 kg/t, wherein the refiner adds from 50-630 ppm Ti (i.e., 0.005-0.063 wt% Ti) ([0061]; [0070]; Table 1 and 3-4) (corresponding to the Ti content is comprised between 0.01 to 0.15 wt%, said refiner contains TiC particles, wherein the refiner has the formula AlTixCy which is also written ATxCy where x is wt.% of Ti and y is wt.% of C for 1 wt% of Al and x/y > 4; the refiner containing TiC particles is introduced in a form and an amount such that an amount of TiC identical to that added when a refiner AT3C0.15 at a rate of 2 to 5 kg/t of aluminum alloy is added).
Bes further teaches the resistance to damage is increased significantly when the liquid metal is refined with a wire containing AlTiC type phases, wherein AlTiC type phases are any Al-Ti-C ternary phase and any Ti-C binary phase in an aluminum matrix; this term includes the AlTiC2 and TiC phases in particular ([0065]; [0034]) (corresponding to said refiner contains TiC particles).
In light of the motivation of Bes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to add the refiner to the pre-cast alloy of Pickens, in order to provide an increased resistance to damage.
In light of the motivation of Pickens in view of Bes, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the aluminum-lithium alloy of Cho be the aluminum alloy of Pickens in view of Bes, in order to provide an alloy that has improved fracture toughness and strength at cryogenic temperatures.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Given that the rolled aluminum-lithium alloy of Cho in view of Pickens and Bes is substantially identical to the present claimed rolled product in composition, structure and produced by a substantially identical process, it is clear that the rolled aluminum-lithium alloy of Cho in view of Pickens and Bes would intrinsically satisfy Kapp (L-T) ≥ -0.5 Rcp0.2(L) + 386, with Kapp (L-T) is a value of an apparent stress intensity facto at rupture defined according to standard ASTM E561 (2015) measured on CCT test specimens of width W=406 mm and thickness B = 6.35 mm, and Rcp0.2(L) is a compressive yield strength measured at 0.2% compression according to standard ASTM E9 (2018).
Where 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 (I).
It is noted that the present claims are drawn to a product and not drawn to a method of making. Claims 8 and 21 define the product by how the product was made (i.e., obtained by a method comprising successively a)-h), cold working comprises first cold rolling with a thickness reduction rate comprising between 8 and 12%, then subsequently tensioning in a controlled manner with a permanent set comprising between 0.5 and 2%). Therefore, claims 8 and 21 are product-by-process claims. Thus, “[E]ven though product by process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Cho in view of Pickens and Bes meets the requirements of the claimed product, Cho in view of Pickens and Bes clearly meets the requirements of the present claim.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim 8, 10, 13-14, 18 and 22-23 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 13 of copending Application No. 17/051,659 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other for the reasons set forth below.
In reference to claims 8, 10, 13-14, 18 and 22-23, copending claim 13 requires a product based on an aluminum alloy comprising, in percentage by weight, 4.0 to 4.6% by weight of Cu, 0.7 to 1.2% by weight of Li, 0.5 to 0.65% by weight of Mg, 0.10 to 0.20% by weight of Zr, 0.15 to 0.30% by weight of Ag, 0.25 to 0.45% by weight of Zn, 0.05 to 0.35% by weight of Mn, at most 0.20% by weight of Fe+Si, at least one element selected from Cr, Sc, Hf, V and Ti, the amount of said element, if selected, being from 0.05 to 0.3% by weight for Cr and for Sc, 0.05 to 0.5% by weight for Hf and for V (copending claim 1) (corresponding to a rolled product based on an aluminum alloy obtained by a method comprising successively: a) a liquid metal bath based on aluminum is prepared consisting of 4.2 to 4.4 wt% of Cu; 0.85 to 0.95 wt% of Li; 0.5 to 0.7 wt% of Mg; 0.1 to 0.2 wt% Zr; 0.2 to 0.27 wt% of Ag; 0.3 to 0.4 wt% Zn; 0.0 to 0.5 wt% Mn; at most 0.20 wt% of Fe+Si; optionally an element selected from Cr, Sc, Hf and V, the amount of said element, if selected, being from 0.05 to 0.3 wt% for Cr and for Sc, 0.05 to 0.5 wt% for Hf and for V and from 0.01 to 0.15 wt%). Other elements at most 0.05% by weight each and 0.15% by weight in total, the remainder being aluminum (copending claim 1) (corresponding to other elements as unavoidable impurities at most 0.05 wt% each and 0.15 wt% in total and the remainder being aluminum).
Co-pending claim 13 further requires 0.015 to 0.15 wt% Ti (copending claim 1). The Ti is present in the form of particles of TiC (copending claim 9). A refiner, wherein the refiner has a formula AlTixCy, where x and y are the contents of Ti and C in % by weight for 1% wt% of Al, and x/y > 4 (copending claim 13) (corresponding to a refiner is introduced into said bath so that a Ti content is between 0.01 to 0.15 wt%; wherein said refiner contains TiC particles, wherein the refiner has a formula AlTixCy, where x and y are the contents of Ti and C in % by weight for 1% wt% of Al, and x/y > 4).
Co-pending claim 13 further requires the product has a thickness of between 8 and 50 mm, the product having, at a mid-thickness: a compression yield strength Rcp0.2(L) ≥ 590 MPa; a toughness Kapp (L-T) ≥ 60 MPa√m, with Kapp(L-T) the value of the apparent stress intensity factor at rupture according to standard ASTM E561 (2015) measured on CCT test specimens of width W = 406 mm and thickness B = 6.35 mm; and wherein Kapp(L-T) ≥ -0.48* Rcp0.2(L)+355.2 (corresponding to the rolled product with a thickness between 15 and 50 mm has, at a mid-thickness Kapp(L-T) ≥ -0.5* Rcp0.2(L)+386, with Kapp(L-T) expressed in MPa√m, a value of an apparent stress intensity factor at rupture according to standard ASTM E561 (2015) measured on CCT test specimens of width W = 406 mm and thickness B = 6.35 mm).
As set forth in MPEP 2144.05, in the case where the claimed range “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).
While copending claim 13 does not require the specific method steps of claim 8, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that copending claim 13 meets the requirements of the claimed product, copending claim 13 clearly meets the requirements of the present claim.
Further, while copending claim 13 further includes a difference between the tensile yield strength Rp0.2(L) and the compressive yield strength Rcp0.2(L) is less than or equal to 10 MPa. In light of the open light of the present claims, i.e., “comprising” it is clear that the present claims would open the inclusion of the additional limitation of the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
In response to amended claim 21, the previous 35 U.S.C. 112(d) rejections of record are withdrawn.
Applicant’s request that the double patenting rejections be held in abeyance is noted. However, the double patenting rejection will be maintained until such time as the rejection is properly overcome.
Applicant primarily argues:
“superior mechanical properties of the present invention are strictly tied to the specific composition and processing conditions as claimed.”
Remarks, p. 12
The examiner respectfully traverses as follows:
The Declaration filed 11/21/2025 has been fully considered, however, the data to establish unexpected results is not persuasive for the reasons set forth below.
Firstly, the data is not commensurate in scope with the scope of the claims. Specifically, the data shows a rolled product produced (a) using three specific aluminum alloy compositions (i.e., alloy 2, new 1 and new 3) consisting of specific amounts of specific elements, (b) using a specific refiner (i.e., AlT3C0.15) added at a specific rate (i.e., 4 kg/t or 2.7 kg/t), (c) homogenizing at a specific temperature (i.e., 510ºC or 500-520ºC), (d) hot working at a specific input and output temperature to obtain a specific thickness (i.e., 28 mm), (e) solution heat-treating at specific temperatures and times and quenching with water at a specific temperature, (f) cold working at a specific reduction rate followed by tensioning with a specific permanent elongation (i.e., LAF 10%+Tension 1%; 8.1%+0.7%), (g) ageing at specific temperatures for a specific amount of time and (h) specific thickness, Rp0.2(L), Rcp0.2(L), Kapp (L-T) and Kq(L-T) values. While the claims broadly encompass a rolled product obtained by a method comprising a liquid bath having (a) any composition based on aluminum consisting, in wt%, of any amount of Cu between 4.2 to 4.4, any amount of Li between 0.85 to 0.95, any amount of Mg between 0.5 to 0.7, any amount of Zr between 0.1 to 0.2, any amount of Ag between 0.2 to 0.27, any amount of Zn between 0.3 to 0.4, any amount of Mn between 0 to 0.5, any amount of Fe+Si up to 0.2 and optionally any one of Cr, Sc, Hf and V in any amount of between 0.5 to 0.3 for Cr and Sc and 0.05 to 0.5 for Hf and V; any amount of Ti between 0.01 to 0.15 wt% in said bath, (b) using any refiner containing TiC particles having the formula AlTxCy which is also written ATxCy where x is wt.% of Ti and y is wt.% of C for 1 wt% of Al, and x/y > 4 and added at any rate, (c) homogenizing at any temperature between 450ºC and 550ºC for any period of time between 5 and 60 hours, (d) hot working at any input and output temperature for any amount of time, (e) solution heat treating at any temperature between 490ºC and 530ºC for any time between 15 minutes to 8 hours, and quenching with any substance at any temperature, (f) cold working at any thickness reduction rate between 8 and 12% and subsequently tensioning at any permanent set between 0.5 and 1.2%, (g) aging at any temperature between 130ºC and 170ºC for any time between 5 and 100 hours and (h) having any thickness between 15 and 50 mm, any Rp0.2, Kq(L-T), any Kapp(L-T) and any Rcp0.2 satisfying Kapp(L-T) ≥ -0.5Rcp0.2+386, any Rp0.2 Kq(L-T).
Secondly, the data does not show the amount of Ti in the metal bath, using the upper and lower claimed limits of Cu, Li, Mg, Zr, Ag, Zn, Mn, Fe+Si, using any of Cr, Sc, Hf, V, using the upper and lower limits for the temperatures and times for homogenizing, solution heat-treating and aging or the upper and lower limits for the cold-working – both the reduction rate and permanent set, and ageing.
As set forth in MPEP 716.02(d), whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support”. In other words, the showing of unexpected results must be reviewed to see if the results occurred over the entire claimed range, In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). Applicants have not provided data to show that the unexpected results do in fact occur over the entire claimed range of the above variables.
refiner
Cu
Li
Mg
Zr
Ag
Zn
Mn
Fe+Si
Ti
Rcp0.2
-0.5Rcp0.2 + 386
Kapp
claim 8
AT3C
4.2-4.4
0.85-0.95
0.5-0.7
0.1-0.2
0.2-0.27
0.3-0.4
0-0.5
up to 0.2
0.01-0.15
Alloy 5
-
4.2
0.88
0.54
0.13
0.19
0
0.33
0.07
-
570
101
105
Thirdly, Applicant argues that the superior mechanical properties of the present invention are strictly tied to the specific composition and processing conditions as claimed. However, co-pending application 17/051,659 (US 2021/0310108) shows working example 5, aged for 20 hours at 155ºC, has a composition outside the claimed range and is processed outside the processing conditions claimed (i.e., tensioned with a permeant elongation of 3.2%) and has the superior mechanical properties as claimed (i.e., Kapp(L-T) ≥ -0.5*Rcp0.2+386). See Table below. Thus, it is not clear the superior mechanical properties are in fact strictly tied to the composition and processing conditions as claimed.
Lastly, there are no proper side-by-side comparison between the working example and the comparative examples. The “closets” side-by-side comparison appears to be Example 2-D and Example 2-C or 1-F and 4-H. However, the permanent set and reduction rate of the cold rolling are different and the ageing is done at temperatures for examples 2-D and 2C. While 1-F and 4-H differ in amounts of Cu, Li, Mg, Ag, Zn, Mn, ageing time and the permanent set and reduction rate of the cold rolling. Therefore, it is unclear if the disadvantageous properties are due to reduction rate of cold rolling, tensioning with a permanent set outside the claimed range, ageing or only occur due to the combination of some or all of the differing variables.
Even if there were proper side-by-side comparisons, the data to establish unexpected
results remains unpersuasive for the reasons set forth above, i.e., the data is not commensurate in
scope with the scope of the present claims.
Applicant further argues:
“Applicant notes that none of the cited references has recognized the superior mechanical properties described in the present application that are derived from combining the particular alloy composition with the particular working conditions. Accordingly, the claimed invention is not obvious in view of the cited references.”
Remarks, p. 12
The examiner respectfully traverses as follows:
Firstly, it is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Secondly, it is not clear how the prior art can disclose the same rolled product as presently claimed comprising the same types and amount of components as presently claimed and produced by a substantially identical process as presently claimed and not possess the properties claimed. The Office realizes that the claimed properties are not positively stated by the prior art. However, the prior art teaches all of the claimed ingredients and claimed amounts and a substantially identical process as claimed. Therefore, the claimed properties would be inherently necessarily be capable of being achieved by the prior art. If it is Applicant’s position that this would not be the case: (1) evidence would need to be provided to support this position; and (2) it would be the Office's position that the application contains inadequate disclosure in that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients and claimed amounts.
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 Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARY I OMORI/Primary Examiner, Art Unit 1784