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:
1-15, 17
Withdrawn:
10-14
Rejected:
1-9, 15, 17
Amended:
1, 9, 10, 15
New:
NONE
Independent:
1, 9, 10
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3-7, 15 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Guiglionda et al (US 2019/0153577).
Guiglionda teaches an aluminum alloy sheet product comprising (in wt%):
Claim 1
Guiglionda, [0037] preferred
Guiglionda ex. G
(Table 12, 16)
Si
0.65-0.85
0.6-0.75
0.66
Mg
0.40-0.59
0.5-0.6
0.53
Fe
0.05-0.35
0.1-0.25
0.18
Mn
0.04-0.13
-0.1
0.07
Cu
0-0.20
-0.1
-
Cr
0-0.15
Zr
0-0.15
Ti
0-0.15
-0.05
0.04
Zn
0-0.10
V
0-0.05
Mg/Si
0.47-0.90
0.80
YS(LT)
after aging 180°C 20 min + 2% prestrain
≥215 MPa
212 MPa
*after aging 185°C for 20 min + 2% stretch
Table 1: comparison of instant claims w Guiglionda
wherein ex. G of Guiglionda (see Table 12) falls within the claimed alloying ranges of Si, Mg, Fe, Mn, Cu, Cr, Zr, Ti, Zn, V, and meets the instant Mg/Si ratio (independent claim 1). More particularly concerning Cu, Cr, Zr, Zn, and V, Guiglionda does not mention the presence of said elements and therefore said elements are held to be substantially absent and/or zero in the prior art alloys, which falls within the instantly claimed maximums.
Concerning claim 1’s amended limitation requiring “an LT tensile yield strength of at least 215 MPa when aged at 180°C for 20 minutes with (2%) prestrain”, Guiglionda does not teach the yield strength under these conditions (Guiglionda teaches an LT tensile yield strength (LT TYS) of 212 MPa for example G (see Guiglionda at Table 12), under slightly different conditions). However, because Guiglionda teaches an aluminum alloy that falls within the claimed alloying ranges, then the same property (ies) would be inherently expected in the prior art alloy (for a given aging regimen, heat treatment temper, or as otherwise claimed), as for the instant invention.
Because Guiglionda teaches an example within the claimed alloying ranges, and the claimed properties would be inherently expected for the given conditions, by virtue of the identical composition taught by the prior art, it is held that Guiglionda anticipates the presently claimed invention.
Concerning claims 3-7, Guiglionda teaches ranges of Si, Mg, and Mg/Si that meet the instant minimums/maximums (see Table 1 above for example and range of Guiglionda), and therefore meet the instant limitations.
Concerning claim 15, see above discussion of expected properties. Further, though Guiglionda does not teach one of: n-value (10-20%) of ≥0.245 in T4 temper, or LT uniform elongation≥21% in T4 temper, or VDA bend angle of ≥140°, because Guiglionda teaches an aluminum alloy that falls within the claimed alloying ranges, then the same property (ies) would be inherently expected in the prior art alloy (for a given aging regimen, heat treatment temper, or as otherwise claimed), 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.
The examiner asserts that “products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. 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). Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Claim Rejections - 35 USC § 103
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 2 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Guiglionda et al (US 2019/0153577), as applied to claims above.
Guiglionda teaches an aluminum alloy sheet product comprising (in wt%):
Claim 9
Claim 2
Guiglionda, broad [0032, 0037]
Si
0.70-0.80
≥0.675
0.5-0.8
Mg
0.49-0.59
0.3-0.8
Fe
0.09-0.29
-0.5
Mn
0.06-0.10
-0.3
Cu
0.09-0.17
-0.3
Cr
0.01-0.05
Opt. 0.01-0.4
Zr
0-0.15
Ti
0.01-0.05
-0.15
Zn
-0.05
V
-0.05
Mg/Si
0.61-0.84
Table 2: comparison of claims 2 & 9 w Guiglionda
wherein the alloying ranges of Si, Mg, Fe, Mn, Cu, Cr, Zr, Ti, Zn, and V taught by Guiglionda overlap the claimed alloying ranges of Si, Mg, Fe, Mn, Cu, Cr, Zr, Ti, Zn, V. More particularly concerning Zr, Zn, and V, Guiglionda does not mention the presence of said elements and therefore said elements are held to be substantially absent/zero, which falls within the instantly claimed maximums. Guiglionda teaches ranges of Mg and Si that meet the claimed Mg/Si ratio.
Concerning the amended limitation requiring “an LT tensile yield strength of at least 215 MPa when aged at 180°C for 20 minutes with (2%) prestrain”, Guiglionda does not teach the yield strength under these conditions. However, because Guiglionda teaches an aluminum alloy that falls within the claimed alloying ranges, then the same property (ies) would be expected (for a given heat treatment temper), as for the instant invention.
Because Guiglionda teaches compositions overlapping the claimed alloying ranges, it is held that Guiglionda 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).
Claim Rejections - 35 USC § 102/103
Claims 8 and 17 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Guiglionda et al (US 2019/0153577), as applied to claim 1 above.
Guiglionda teaches an aluminum alloy that meets the alloying ranges of claim 1 (see Table 1 above).
Guiglionda further teaches a final sheet thickness is typically 0.5-2 mm [0045], which overlaps the claimed thickness limitation. Guiglionda teaches ≥50% recrystallized structure is obtained (abstract), which meets the claimed “at least 51% by volume fraction recrystallized grains” limitation.
Concerning claim 8, Guiglionda does not specify the % cube texture or weighted average grain size (cl. 8). However, because Guiglionda teaches a substantially overlapping Al-Mg-Si alloy composition, together with processing by steps of casting, homogenizing, hot rolling to achieve high recrystallization, cold rolling to final thickness, aging to a T4 temper, and heat treating to simulate bake hardening [0039-0045, 0064], which are substantially identical to the working and heat treatment steps of the instant invention (examples, [0082]), then substantially the same properties would be inherently expected for the alloy sheet product of Guiglionda, as for the instant invention (such as grain size and % cube texture). Therefore, because Guiglionda teaches an alloy composition within the claimed ranges, together with a substantially identical method of processing by working and heat treating (and the instantly claimed grain size and cube texture is held to be inherently expected), it is held that Guiglionda anticipates the presently claimed 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.
Alternatively, Guiglionda discloses producing the prior art sheet product by a process that includes homogenizing, hot rolling, and cold rolling, heat treating. Guiglionda discloses variations in the time and temperature of homogenization (500-590°C, time 0.5-24 hr) and percentages and temperature of the rolling steps (Guiglionda para [0039-0046]: hot rolling with a starting & finishing temperatures such that ≥50% recrystallization occurs, cold rolling ≥65% in order to optimize grain size and improve hemming and surface properties [0047]). It would have been obvious for one of ordinary skill in the art, forming the products of Guiglionda, to vary those parameters (within the constraints set forth in that reference) to obtain the desired microstructural properties (such as grain size, cube texture, see Guiglionda at [0045]), in the final sheet product. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Therefore, at a minimum, it is held that Guiglionda has created a prima facie case of obviousness of the presently claimed invention.
Concerning new claim 17, because Guiglionda meets the instant product configuration of an aluminum alloy with alloying ranges within the claimed ranges, together with a LT tensile yield strength within the claimed maximum, it is held that Guiglionda anticipates the instant invention. Alternatively, applicant has not shown the claimed alloy produced by the product by process step of “continuous casting” is materially different than the ingot cast alloy of the prior art. Therefore it is held that Guiglionda has created a prima facie case of obviousness of the presently claimed invention.
Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[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) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
Response to Amendment
In the response filed on 11/17/25 applicant amended claims 1, 9, 10, 15; and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the amended limitation requiring “an LT tensile yield strength of at least 215 MPa when aged at 180°C for 20 minutes with (2%) prestrain”, has not been found persuasive. As set forth above, Guiglionda does not teach the yield strength under these conditions (Guiglionda teaches an LT tensile yield strength (LT TYS) of 212 MPa for example G (see Guiglionda at Table 12)). However, because Guiglionda teaches an aluminum alloy that falls within the claimed alloying ranges, then the same property (ies) would be inherently expected in the prior art alloy (for a given aging regimen, heat treatment temper, or as otherwise claimed), as for the instant invention.
Further, applicant argues the instant invention is allowable none of the examples of Guiglionda meet the instantly amended yield strength limitation. This has not been found persuasive. As set forth in Table 1 above, Guiglionda teaches an LT tensile yield strength (LT TYS) of 212 MPa for example G (see Guiglionda at Table 16), which is a close approximation of the claimed LT TYS minimum of “at least 215 MPa” (212 is a close approximation, within 1%, of 215). In view of the disclosure of Guiglionda, one of skill in the art would expect the LT tensile yield strength taught by Guiglionda to be a close approximation of the claimed minimum.
Applicant’s argument that the instant invention is allowable because a POSITA would expect a higher temperature (185°C taught by Guiglionda, vs 180°C recited in the instant independent claims) to result in an increased yield strength, and therefore aging at 180°C the alloy of Guiglionda would be inferior, has not been found clearly persuasive. Applicant’s statements have been considered, however, to be of probative value, any objective evidence should be supported by actual proof. Objective evidence which must be factually supported by an appropriate affidavit or declaration to be of probative value includes evidence of unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the applicant. See MPEP 716.01(c).
For the instant case, applicant has not shown specific evidence that aging (at 180°C) the substantially identical Al-Mg-Si alloy of Guiglionda results in inferior strength compared to the instant alloy under the claimed conditions. Applicant has not provided evidence of the proposed trend of the strength, when comparing aging at 185°C taught by Guiglionda (which applicant argues produces higher strength, thereby implying lower strength when adjusting aging to 180°C) and aging at 180°C (as claimed). Applicant has not clearly shown Guiglionda teaches an alloy with inferior YS, under the claimed conditions.
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.
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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 1/1/26