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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 10/13/25 has been entered.
Status of Claims
Pending:
1-7, 9-10, 12, 14-21
Withdrawn:
NONE
Rejected:
1-7, 9-10, 12, 14-21
Amended:
1, 12
Objected:
9, 10, 21
New:
NONE
Independent:
1
Claim Interpretation
As stated previously on the record, the instant claims refer to “an AlMgSc-series aluminum alloy product”, which is interpreted as an aluminum alloy with the major alloying element of Mg (also known as 5xxx series alloys) and with the addition of Sc. If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where any alternate interpretation is supported in the original specification) in response to this action.
As stated previously, claims 9 and 10 mention “high temperature forming”, wherein “high temperature” is further described in said claims as being the final annealing temperature. If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where any alternate interpretation is supported) in response to this action
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 1-7, 12, 14-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP H1180914 A (JP’914, previously cited) in view of Telioui et al (US 2009/0226343, cited herein).
JP’914 teaches a method of making an Al-Mg alloy sheet product by semi-continuously casting, soaking, hot rolling, and final annealing at 260-340°C for time ≥1 hr. (abstract), followed by cooling slowly at a rate 3-20°C/hr. in order to improve stress corrosion resistance of said sheet [0008]. Though JP’914 does not mention the temperature said sheet is slowly cooled to, cooling is the last process step of forming the Al-Mg sheet of JP’914 (and must be below the final annealing temperature of 260-340°C). It would have been within the level of one of ordinary skill in the art, given the disclosure of JP’914, to have slowly cooled the annealed Al-Mg alloy sheet product to room temperature, in order to save costs/facilitate ease of storing. Cooling from the final annealing temperature taught by JP’914 includes cooling from 250°C to 200°C at a cooling rate of 3-20°C/hr. (wherein Δ50°C/ (3°C/hr.)=16.7 hr., Δ50°C/ (20°C/hr.)=2.5 hr.; wherein cooling from 250°C to 150°C =Δ100°C/ (3°C/hr.)=33.3 hr., Δ100°C/ (20°C/hr.)=5 hr.), and therefore includes cooling from 250°C to 150°C for a time of 5-33.3 hr. total, which overlaps the presently claimed cooling in a first temperature range of about 250°C to about 200°C in an equivalent time of more than 4 hrs., together with cooling in a second temperature range from about 200°C to about 150°C in an equivalent time of more than 0.2 hrs. (independent claim 1; that is, cooling after final annealing taught by JP’914 takes 5-33.3 hr., which overlaps the claimed >4 hours + >0.2 hrs., that is, >4.2 hrs.).
Concerning the alloying ranges recited in instant claim 1, JP’914 [0009-0010] and Telioui teach an alloy comprising (in wt.%):
Instant cl. 1
JP’914
Mg
3.0-6.0
3.5-6%
Sc
0.02-0.5
(preferably 0.1-0.3 taught by Telioui)
Mn
-1%
-0.5%*
Zr
-0.3%
-0.5%*
Cr
-0.5%*
Ti
0.005-0.1
Cu
-0.5%*
Zn
0.5-1.5%
Fe
-0.5%*
Si
-
Impurities and Al
balance
balance
*=optional, one or more
Table 1: alloying ranges of cl. 1 vs. JP’914 & Telioui
which overlaps the claimed alloying ranges of Mg, Mn, Zr, Cr, Ti, Cu, Zn, Fe, Si, balance aluminum and impurities (instant claim 1).
JP’914 does not teach said Al-Mg alloy contains Sc. However, Telioui teaches the addition of 0.1-0.3% Sc (Telioui [0049]) to Al-Mg sheet product alloys improves weldability, reduces coarsening rate, and inhibits recrystallization thereby enabling an aluminum alloy product with improved combination of properties [0082]. It would have been obvious to one of ordinary skill in the art to have added 0.1-0.3% Sc as taught by Telioui to the Al-Mg alloy of JP’914, in order to reduce coarsening rate, inhibit recrystallization, and improve weldability (as taught by Telioui at [0049-0050].
Further concerning claim 1, JP’914 does not specify a mass loss of ≤15 mg/cm2 (before and after being sensitized). However, because JP’914 together with Telioui teach a process of casting, rolling, and annealing, followed by cooling at a slow rate (which JP’914 teaches is beneficial for low corrosion, see JP’914 at [0006]), together with an alloy that overlaps the claimed alloying ranges, then substantially the same mass loss (directly related to corrosion, see instant specification at [0020]) is expected to occur in a product made according to the prior art, as for the instant invention. Further, JP’914 teaches cooling after final annealing is a result effective variable, wherein the predictable result of slow cooling is decreased corrosion (see JP’914 at claim 1, Tables 2 &3).
Changes in temperature, concentrations, or other process conditions of an old process does not impart patentability unless the recited ranges are critical, i.e. they produce a new and unexpected result. However, said parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
It would have been obvious to one of ordinary skill in the art to have added 0.1-0.3% Sc (taught by Telioui) to the Al-Mg alloy taught by JP’914 (intended for further forming) in order to reduce the coarsening rate and recrystallization (see discussion above). Further, substantially the same mass loss is expected to result for the process taught prior art as for the instant invention, as the prior art teaches an overlapping alloy together with a substantially identical process of forming (including slow cooling to decrease corrosion). It is therefore held that the combined disclosures of JP’914 together with Telioui have created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 2 and 3, the cooling time of 5-33.3 hr. taught by JP’914 (calculated as set forth above) overlaps the claimed first and second times.
Concerning claim 4, the final annealing temperature taught by JP’914 is 260-340°C (see discussion above), which falls within the claimed final annealing temperature of 250-400°C, and therefore meets the instant limitation.
Concerning claims 5-7, JP’914 teaches forming a rolled product typically 1.5 mm thick ([0014], abstract), which meets the instant rolled product and thickness limitation.
Concerning claims 12, 16-20, JP’914 [0009-0010] and Telioui teach an alloy comprising (in wt.%):
cl. 12
other
JP’914
Mg
3.0-6.0
3.2-4.8 (cl. 16)
3.5-6%
Sc
0.02-0.5
0.02-0.40 (cl. 17)
(0.1-0.3% Sc see Telioui[0049])
Mn
-1%
0.3-1.0 (cl. 18)
-0.5%*
Zr
-0.3%
0.05-0.3 (cl. 19)
-0.5%*
Cr
-0.3%
-0.5%*
Ti
-0.2%
0.01-0.2 (cl. 20)
0.005-0.1
Cu
-0.2%
-0.5%*
Zn
-1.5%
0.5-1.5%
Fe
-0.4%
-0.5%*
Si
-0.3%
-
Impurities and Al
balance
balance
*=optional, one or more
Table 1: alloying ranges of cl. 12, 16-20 vs. JP’914
which overlaps the claimed alloying ranges of Mg, Sc, Mn, Zr, Cr, Ti, Cu, Zn, Fe, Si, balance aluminum and impurities (instant claims 12, 16-20).
Concerning claims 14-15, JP’914 does not specify the mass loss. However, as set forth above, because JP’914 together with Telioui teach a process of casting, rolling, and annealing, followed by cooling at a slow rate (which JP’914 teaches is beneficial for low corrosion, see JP’914 at [0006]), performed on an overlapping Al-Mg-Sc alloy composition, then substantially the same mass loss is expected to occur in a product made according to the prior art, as for the instant invention.
Response to Amendment/Arguments
In the response filed 10/13/25 applicant amended claims 1, 12 and submitted various arguments traversing the rejections of record.
Applicant’s argument that secondary reference of WO’471 does not teach adding Sc to the Al-Mg-Zn of JP’914 together with the amended step of “homogenizing or preheating the ingot to a temperature range of from 320C to 470C” as set forth in instant amended claim 1 has been found persuasive.
The closest prior art to the presently amended claims is held to be JP’914 in view of Telioui (see rejections above).
Allowable Subject Matter
Claims 9, 10, 21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Concerning claims 9 and 10, the closest prior art, JP’914 and/or Chitrani (US 2008/0257462, previously cited), do not teach or suggest the presently claimed method of high temperature forming an AlMgSc alloy product at the final annealing temperature, followed by slow cooling, substantially as set forth in instant claims 9 and 10.
Concerning claim 21, the closest prior art of JP’914 teaches a cooling rate of 3-20°C/hr., which does not meet cooling in the first temperature range of about 250°C to about 2000C in an equivalent time of >26 hrs. (which implies 50°C/26hr cooling rate of approx. <1.9°C/hr., which is not suggested or taught by JP’914).
Conclusion
12. 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 2/12/26