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:
1-4, 6, 10, 12, 14-17, 19, 23, 26, 27, 29-38
Withdrawn:
NONE
Rejected:
1-4, 6, 10, 12, 14-17, 19, 23, 26, 27, 29-38
Amended:
26, 27, 35
New:
38
Independent:
1, 14, 26, 35
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-4, 6, 10, 12, 14-17, 19, 23, 29-34, 38 are rejected under 35 U.S.C. 103 as being unpatentable over Beslin et al (US 2020/0308681, previously cited) in view of Tundal et al (2015/0129090, previously cited).
Beslin (at [0043], Table 6, Table 10, etc.) teaches an Al-Si-Mg alloy comprising (in wt%):
cl. 1
cl. 10
cl. 26
Beslin ex. B
Beslin ex. D
Beslin preferred ranges
Si
within quad.
0.85-1.10
0.85-1.10
1.0
0.8
0.6-1.1
Mg
0.60-0.80
0.60-0.80
0.7
0.7
0.4-0.9
Mn
0.40-0.80
0.6
0.5
0.3-0.9
Cu
0.30-0.90
0 (outside)
0.8
0.2-1.0
Cr
0.05-0.18
0.1
0.1
≤0.3*
Fe
-0.25
0.2
0.2
≤0.3
Ti
-0.05
-
-
≤0.1*
Zr
-0.03
0.1 (outside)
0.1 (outside)
≤0.2*
Zn
-0.03
-
-
-
B
-0.01
-
-
-
*=1 or more of
Mg/Si
0.7
0.875
Table 1: claim 1 vs. Beslin
which overlaps the claimed ranges of Si, Mg, Mn, Fe, Cr, Cu, Ti, Zr, Zn, and B (claims 1, 10, 12, 14, 23, 26, 38). Further, Beslin at ex. B and ex. D teach ranges of Si and Mg that fall within the quadrilateral of claim 1 (as well as the quadrilateral of claim 12), which have small amounts of excess Mg (as defined in instant claim 1) and therefore meets the instant excess Mg limitation.
E
x
c
e
s
s
M
g
(
e
x
.
B
)
=
M
g
-
S
i
-
M
n
+
F
e
+
C
r
3
1.16
=
0.70
-
1.0
-
0.6
+
0.2
+
0.1
3
1.16
=
0.10
E
x
c
e
s
s
M
g
(
e
x
.
D
)
=
M
g
-
S
i
-
M
n
+
F
e
+
C
r
3
1.16
=
0.70
-
0.8
-
0.5
+
0.2
+
0.1
3
1.16
=
0.24
Concerning the instant transitional phrase to “consisting of” (cl. 1, 14, 26), as shown in Table 1 above, Beslin does not require alloying elements excluded by the instant “consisting of” transitional phrase, and therefore meets said limitation.
Concerning the limitation (cl. 1, 14, 26) of “the final extruded profile has a tensile yield strength of at least 350 MPa”, Beslin teaches yield strengths of up to 428 MPa (Table 3, ex. A-8) and elongation of 11.1% (Table 3, ex. A-8), which fall within the claimed minimum and therefore meet the instant limitation.
Beslin teaches said alloy is processed by extrusion (to final profiles, in accord with the present claims) used for structural components of automobiles (abstract, examples). Beslin teaches a process of forming said alloy product by homogenizing, extruding, artificially aging, which meets the instant product by process steps (claims 1, 14, 26).
Concerning independent claims 1, 14, and 26’s limitation of: “a microstructure that is at least 50% non-recrystallized” Beslin does not specify the resulting microstructure is characterized by “non-recrystallized” grain structure (also known in the art as “unrecrystallized” or “fibrous”). However, Tundal, who is drawn to heat treating and extruding substantially similar Al-Mg-Si alloys into extruded profiles (Fig. 28) with improved strength, corrosion resistance, and crush properties (abstract), teaches the presence of dispersoid elements Mn+Cr together with homogenizing at high temperatures between 540-580°C [0058] substantially similar Al-Mg-Si alloys achieves an unrecrystallized grain structure, taught to be beneficial for corrosion and crush properties (see Tundal at cl. 1, examples, [0053]). It would have been obvious to one of ordinary skill in the art to have performed the process of homogenizing, extruding, and aging the Al-Mg-Si alloy with added Mn and Cr taught by Beslin, while ensuring a predominately non-recrystallized microstructure (as taught by Tundal), because Tundal teaches an non-recrystallized grain structure for Al-Mg-Si alloy extrusions is beneficial for corrosion and crush properties (see Tundal at cl. 1, examples, [0053]), and achievable by controlling Cr and Mn amounts together with controlling homogenization temperature (to specific ranges that fall within ranges of Mn, Cr, homogenization temperature of Beslin).
It is held that Beslin together with Tundal have 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).
Mg/Si ratio
Concerning claims 2-4, 15-17, which mention Mg/Si ratio, Beslin teaches a preferred Mg/Si ratio of lower than 1 [0036], and for alloys B and D teaches Mg/Si ratios of 0.7 and 0.875 respectively, which fall within the claimed ranges and therefore meets the instant limitations.
Excess Mg
Concerning claims 6 and 19, which mention excess Mg, as set forth supra, Beslin at ex. B and ex. D teach amounts of Si and Mg that meet the instant excess Mg limitation. The alloying ranges taught by Beslin above also are drawn to ranges of Mg and Si that meet the instant limitation.
Process
Concerning claims 29 and 30, Beslin teaches a wall thickness of 2.7-3.0 mm (Table 2), which falls within the claimed range.
Concerning claims 31 and 32, Beslin teaches a hollow extruded profile with at least one internal cavity (Figure 1).
Concerning claims 33 and 34, Beslin teaches elongation of up to 11.1% (Table 3, ex. A-8), which fall within the claimed minimums and therefore meet the instant limitations.
Claims 26, 27, 35-37, are rejected under 35 U.S.C. 103 as being unpatentable over Beslin and Tundal, and further in view of Parson (US 2013/0319585, previously cited).
Beslin and Tundal are discussed above. Beslin teaches the Al-Mg-Si alloy composition (see Table 1 above). Concerning the method of claim 26, Beslin and Tundal teach: casting a billet out of said Al-Mg-Si alloy [0037], homogenizing at preferred range 540-580°C 2-10 hr (Tundal at [0058], optimized to distribute dispersoids, and support non-recrystallized grain structure), extruding to form an extruded product, quenching after extrusion [0044], and artificially aging [0050-0055], which overlaps the instant process steps and parameters (cl. 26, 35-37). Neither Beslin nor Tundal teach specific extrusion parameters used (such as extrusion ratio of up to 70/1, or ram speed of up to 6 mm/sec, claim 26, claim 35).
However, Parson, who is also drawn to extruding and heat treating Al-Mg-Si type alloys, teaches lower extrusion ratios <40/1 [0036] together with slower ram speeds (4-10 mm/sec) support non-recrystallized or fibrous grain structure [0047, 0051], Table 1. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have extruded the Al-Mg-Si alloy of Beslin and Tundal with an extrusion ratio of <40:1, together with a ram speed 4-10 mm/sec, because Parson teaches said parameters are effective to produce non-recrystallized microstructure, thereby achieving excellent strength/formability properties (see Parson at examples).
Concerning claim 27, Parson teaches extrusion ratios <40/1 [0036] are effective to produce non-recrystallized microstructure, which overlaps and therefore meets the claimed extrusion ratio range.
Concerning claims 36 and 37, Beslin teaches artificially aging after extrusion (see discussion above) and therefore meets the instant limitation.
Response to Amendment
In the reply received 3/2/26 applicant amended claims 26, 27, 35; added new claim 38, and submitted various arguments traversing the rejections of record. No new matter has been added. The previously applied 112(b) rejections have been overcome.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest a non-recrystallized microstructure, or that secondary reference of Tundal teaches away from the claimed invention because Tundal is drawn to different ranges of Mg and Si compared to primary reference of Beslin, has not been found persuasive. Similarly, applicant’s argument that the instant invention is allowable because Tundal prefers low amounts of dispersoid particles, and the claimed dispersoids and strength are not obvious in view of Tundal has not been found persuasive. Secondary reference Tundal teaches overlapping amounts of dispersoid elements Mn + Cr (Table 1, [0060], etc). Though secondary reference of Tundal does not teach Mg and Si or strength ranges within the claimed rangers, Tundal is relied on to teach motivation for unrecrystallized microstructure. More particularly (and as set forth above), it would have been obvious to one of ordinary skill in the art to have performed the process of homogenizing, extruding, and aging the Al-Mg-Si alloy with added Mn and Cr taught by Beslin, while ensuring a predominately non-recrystallized microstructure (as taught by Tundal), because Tundal teaches an non-recrystallized grain structure for Al-Mg-Si alloy extrusions is beneficial for corrosion and crush properties (see Tundal at cl. 1, examples, [0053]), and achievable by controlling Cr and Mn amounts together with controlling homogenization temperature (to specific ranges that fall within ranges of Mn, Cr, homogenization temperature of Beslin).
Applicant’s argument that the instant invention is allowable because the prior art does not teach the claimed process has not been found persuasive. As set forth above, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have extruded the Al-Mg-Si alloy of Beslin and Tundal with an extrusion ratio of <40:1, together with a ram speed 4-10 mm/sec and quenching after extrusion (Beslin [0044]), because Parson teaches said extrusion parameters (together with dispersoid particles, that suppress recrystallization, [0029]) are effective to produce non-recrystallized microstructure, thereby achieving excellent strength/formability properties (see Parson at examples). In summary, Tundal teaches it is known to control parameters to support a non-recrystallized microstructure for Al-Mg-Si alloy extrusions.
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 Mon-Thurs 7am-3pm.
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, 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.
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.
/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
Prosecution Insights