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:
1-12, 14-21
Withdrawn:
1-6
Rejected:
7-12, 14-21
Amended:
NONE
New:
21
Independent:
1, 7
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6/10/25 has been entered.
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.
Claims 7-12, 14-21 are rejected under 35 U.S.C. 103 as being unpatentable over Bray (US 8,673,209) in view of Dumont (US 7,520,945, cited on the IDS received 12/16/21).
Bray teaches a process for manufacturing a thick plate product from 7xxx series aluminum alloy by DC casting an ingot, homogenizing 800-900°F (430-480°C), hot rolling into a plate ≤4 inches thick (≤102 mm), solution heating 850-900°F (450-480°C), quenching, stress relieving 1-3% and artificial aging (column 6 lines 57-column 7 line 20), which meets the claimed processing steps of casting, homogenizing, hot rolling, solution heating, stress relieving, and artificially aging. Bray touches the boundary of the claimed thickness minimum of 102 mm, and therefore suggests hot rolling to form a product that meets said limitation. Bray teaches applying said process to a 7xxx alloy with a composition:6.8-8.5% Zn, 1.5-2.00% Mg, 1.75-2.3% Cu, 0.05-0.3% Zr, balance aluminum (abstract), which overlaps the claimed alloying ranges (independent claim 7, dependent claims 16-19, new claim 21).
Bray does not teach a) hot rolling at a starting temperature controlled to ensure recrystallization is ≥75% at mid-thickness, b) minimum hot rolling starting temperature within the claimed expressions of claim 7, or c) maximum hot rolling starting temperature within the claimed expressions of claim 7.
Concerning a), secondary reference Dumont (who is drawn to 7xxx series alloys rolled sheet products with improved fatigue properties) teaches low Zr (0.04-0.09%, column 2 line 18) enables a high recrystallization rate 35-90% (column 2 line 44), which is beneficial for low fatigue crack growth rate (abstract, Fig. 2). Further, Dumont teaches low hot rolling at starting temperatures ≤420°C (column 3 line 50) additionally effects the recrystallization rate (see Dumont ex. #859198). Though Dumont does not teach an example of the combination of low hot rolling starting temperature together with low Zr amount, the examples along with the disclosure of Dumont clearly suggest the additive effect of both low Zr and low hot rolling starting temperature. Further, the broad disclosure of Dumont directly suggests combining both low Zr and low hot rolling starting temperature (see Dumont at claim 13).
Concerning b), neither Bray nor Dumont specify relating the Zr to the minimum hot rolling starting temperature. However, the hot rolling starting temperatures taught by Dumont (≤420°C) together with the preferred low Zr content of 0.05-0.09% taught by Dumont meets the instant limitation. For instance, for Zr=0.05%:
≥145*Zr-0.313 -20
≥ 145*0.05-0.313-20 = ≥350°C
and wherein ≥ 350°C is within Dumont’s hot rolling start temperature range of ≤420°C, and therefore Dumont meets said limitation.
Concerning c), neither Bray nor Dumont specify relating the Zr to the maximum hot rolling starting temperature. However, concerning independent claim 7’s limitation relating the Zr to the maximum hot rolling starting temperature, the hot rolling starting temperatures taught by Dumont (≤420°C) together with the preferred low Zr content of 0.05-0.09% taught by Dumont meets the instant limitation. For instance, for Zr=0.05%:
≤145*Zr-0.313 +20
≤ 145*0.05-0.313+20 ≤ 390°C
and wherein ≤ 390°C is within Dumont’s hot rolling start temperature range of ≤420°C, and therefore Dumont meets said limitation.
It would have been obvious to one of ordinary skill in the art to have performed the process of manufacturing an 7xxx alloy thick plate taught by Bray, together with a low hot rolling starting temperature and low Zr (as taught by Dumont) in order to recrystallize the grain structure (within the claimed ≥75% at mid thickness) and thereby achieve the predictable result of improving the fatigue crack growth resistance (by virtue of critical low Zr, as taught by Dumont column 3 line 31). Therefore it is held that Bray together with Dumont have created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 8, which relates the hot rolling starting temperature to the Zr amount, the hot rolling starting temperatures taught by Dumont (≤420°C) together with the preferred low Zr content of 0.05-0.09% taught by Dumont meets the instant limitation. For instance, for Zr=0.05%:
≥145*Zr-0.313 -10
≥ 145*0.05-0.313-10 = ≥360°C
and wherein ≥ 360°C is within Dumont’s hot rolling start temperature range of ≤420°C, and therefore Dumont meets said limitation.
Concerning claim 9, which relates the hot rolling starting temperature to the Zr amount, the hot rolling starting temperatures taught by Dumont (≤420°C) together the preferred low Zr content of 0.05-0.09% meet the instant limitation. For instance, for Zr=0.05%:
≤145*Zr-0.313 +10
≤ 145*0.05-0.313+10 ≤ 380°C
and wherein ≤ 380°C is within Dumont’s hot rolling start temperature range of ≤420°C, and therefore Dumont meets said limitation.
Concerning claim 10, which mentions the equivalent aging time at 155°C for 8-30 hrs, the aging taught by Bray (example 1) of 121°C for 6 hrs, 153°C for 7 hrs, and 121°C for 6 hrs meets the instant equivalent time.
Concerning claim 11, Bray teaches solution heating 850-900°F (450-480°C), which overlaps the claimed range of 460 to about 510°C.
Concerning claim 12, Bray broadly teaches 2 step aging or 3 step aging processes (column 7 line 36-column 8 line 9). Bray teaches an example (example 2) with aging steps of: 250°F (121°C) for 6 hrs, followed by 308°F (153°C) for 7 hrs, which falls within the instant aging steps, and therefore meets the instant limitation.
Concerning claim 14, Bray teaches homogenizing at 800-900°F (430-480°C) (column 6 lines 63-64), but does not specify a holding time. However, it is held to be within the level of one of ordinary skill in the art to homogenize an Al alloy ingot, such as the Al-Zn ingot taught by Bray, by holding the Al-Zn alloy ingot at the temperature taught therein of 430-480°C for a time period sufficient to create a homogeneous structure for a given workpiece size (such as within the claimed 5-30 hrs). In other words, the use of the word “homogenizing” in Bray implies holding the alloy at a high temperature for a time necessary to eliminate or decrease chemical segregation in the alloy.
Concerning claim 15, as set forth above, Dumont teaches low hot rolling at starting temperatures ≤420°C (column 3 line 50), which overlaps the claimed hot rolling entry temperature range and therefore meets the instant limitation.
Concerning claims 16-19, and new claim 21, Bray teaches applying said process to a 7xxx alloy with a composition: 6.8-8.5% Zn, 1.5-2.00% Mg, 1.75-2.3% Cu, balance aluminum (abstract), which overlaps the claimed alloying ranges (Zn, Mg, Cu, and Cu+Mg). Secondary reference of Dumont teaches 0.05-0.09% Zr is preferable, which encompasses the narrowly claimed range of 0.05-0.08% Zr (cl. 19), and therefore meets the instant limitation.
Concerning claim 20, Bray teaches conventional grain refiners such as Ti (or Ti together with B) can be added to his Al-Zn alloy (column 6 lines 58-60), but does not specify a typical amount of Ti. It would have been obvious to one of ordinary skill in the art, to have added small amounts of Ti to the Al-Zn alloy of Bray and processed as set forth above, because Bray teaches it is beneficial to include Ti as a grain refining addition, and because Dumont teaches Al-Zn alloys with low amounts of Ti such as: 0.039% Ti, 0.021% Ti, and 0.038% Ti (Table 1) achieve a good combination of properties (Table 2). Therefore, given the teachings of Bray and Dumont, it would have been prima facie obvious to have added Ti in the amounts of 0.02-0.04% (see Table 1 of Dumont) to the Al-Zn alloy of Bray for the predictable purpose of grain refining/optimizing mechanical properties.
Response to Amendment/Arguments
In the response filed 6/10/25 applicant added new claim 21 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 there is no motivation to combine primary reference of Bray with secondary reference of Dumont, thereby achieving an improvement in fatigue crack growth resistance, has not been found persuasive. Similarly, Applicant’s argument that the instant invention is allowable because the prior art does not connect recrystallization rate with achieving an improvement in fatigue crack growth resistance, has not been found persuasive.
The present inventors have apparently found the claimed low Zr ranges together with low hot rolling temperatures, for 7xxx of the claimed composition, leads to substantial improvement in crack deviation. The prior art of Dumont teaches a different reason to combine low Zr ranges together with low hot rolling temperatures for 7xxx series alloys, such as those of the primary reference of Bray. It is well-settled that it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) and MPEP 2144(IV).
As set forth above, secondary reference Dumont (who is drawn to 7xxx series alloys rolled sheet products with improved fatigue properties) teaches low Zr (0.04-0.09%, column 2 line 18) enables a high recrystallization rate 35-90% (column 2 line 44), which is beneficial for low fatigue crack growth rate (abstract, Fig. 2). Further, Dumont teaches low hot rolling at starting temperatures ≤420°C (column 3 line 50) additionally effects the recrystallization rate (see ex. #859198). It is acknowledged that Dumont teaches, for ex #859198 (low hot rolling temperature, but not low Zr), that though the “recrystallization rate itself has a small effect in near-threshold regions; nominal curves are slightly different due to a roughness induced closure effect, the crack path being more tortuous” Dumont at column 3 lines 42-45. Even so, and though Dumont does not teach an example of the combination of low hot rolling starting temperature together with low Zr amount, the examples along with the disclosure of Dumont clearly suggest the additive effect of both low Zr and low hot rolling starting temperature. Further, the broad disclosure of Dumont directly suggests combining both low Zr and low hot rolling starting temperature (see Dumont at claim 13).
It would have been obvious to one of ordinary skill in the art to have performed the process of manufacturing an 7xxx alloy thick plate taught by Bray, together with a low hot rolling starting temperature and low Zr (as taught by Dumont) in order to recrystallize the grain structure (within the claimed ≥75% at mid thickness) and thereby achieve the predictable result of improving the fatigue crack growth resistance (as taught by Dumont).
Applicant’s argument that the instant invention is allowable because new claim 21, drawn to a Cu amount of 2.00-2.20% is not obvious in view of the combination of Bray and Dumont has not been found persuasive. Bray is drawn to an Al-Zn alloy with 1.75-2.3% Cu, which encompasses claim 21’s range. Applicant points out that the examples of secondary reference of Dumont do not have Cu within claim 21’s range of 2.00-2.20%, however, Dumont’s broad disclosure is drawn to Al-Zn alloy with 1.5-2.5% Cu (column 2 line 18), overlaps the Cu ranges of both primary reference of Bray and new claim 21. Claim 21 is held to be prima facie obvious in view of Bray and Dumont, due to the overlap in alloying ranges (together with overlapping processing steps, as set forth above).
Concerning applicant’s argument that the prior art does not teach examples within the instant alloying ranges, patents are relevant as prior art for all they contain, and nonpreferred embodiments constitute prior art, MPEP 2123. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Applicant’s argument that the instant invention is allowable because Dumont is drawn to the recrystallization at quarter thickness and not mid thickness has not been found persuasive. Though Dumont is concerned with quarter thickness recrystallization, Dumont shows in Figure 2 and describes in his specification at column 5 lines 38-39, that “no significant effect of the specimen orientation or location was observed on Fig. 2”, that is, when tested a quarter and mid thickness, the results were not significantly different.
Applicant’s argument that the instant invention is allowable because Dumont does not provide specific guidance to select a hot rolling starting temperature within the claimed ranges, and sufficient to achieve 75% recrystallized grains at mid-thickness has not been found clearly persuasive. See above discussion of mid-thickness vs quarter-thickness. Further, the low hot rolling starting temperature taught by Dumont of ≤420°C (column 3 line 50), together with a low Zr content of 0.05-0.09%, leads to hot rolling starting minimum and maximum ranges that meet the expressions in independent claim 7 at item c) (as set forth supra), and therefore Bray in view of Dumont has created a prima facie case of obviousness of the presently claimed invention. With respect to the broad overlap of hot rolling starting temperature taught by the prior art, applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 1/2/26