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 the Claims
Claims 1, 13, and 15-23 are pending wherein claims 2-12 and 14 are canceled.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 13 and 15-23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect “wherein, when present, tin is included in the aluminum alloy sheet product has one of the impurities” there is no mention of tin in the specification and there is no reference to it being one of the impurities and therefore the Examiner considers this to be new matter that lacks support in the specification.
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, 13 and 15-23 are rejected under 35 U.S.C. 103 as being unpatentable over Bohner et al. (US 2012/0273098).
In regard to claim 1, Bohner et al. (‘098) discloses aluminum alloy sheet metal components having compositions relative to that of the instant invention as set forth below [0031-0032].
Element
Instant Claim
(weight percent)
Bohner et al. (‘098)
(weight percent)
Overlap
Si
0.7 – 1.4
0 – 0.7
0.7
Mg
0.7 – 1.3
0.3 – 5.5
0.7 – 1.3
Zn
0.70 – 3.0
2 – 8
2 – 3
Cu
0.55 – 1.3
0 – 4.5
0.55 – 1.3
Fe
0.01 – 0.30
0 – 0.8
0.01 – 0.30
Mn
0 – 0.70
0 – 1
0 – 0.70
Cr
0 – 0.15
0.05 – 1
0.05 – 0.15
Zr + Ti
0 – 0.45
0.04 – 0.50
0.04 – 0.45
V
0 – 0.20
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of silicon, magnesium, zinc, copper, iron, manganese, chromium, zirconium, titanium and vanadium in the aluminum alloys disclosed by Bohner et al. (‘098) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to have selected the claimed amounts of silicon, magnesium, zinc, copper, iron, manganese, chromium, zirconium, titanium and vanadium from the amounts disclosed by Bohner et al. (‘098) because Bohner et al. (‘098) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein, when present, tin is included in the aluminum alloy sheet product as one of the impurities” in claim 1, Bohner et al. (‘098) does not require the presence of tin and therefore reads on the claim.
With respect to the recitation “wherein the aluminum alloy sheet product has a thickness of from 1.0 to 4.0 mm” in claim 1, Bohner et al. (‘098) discloses wherein the thickness would range form 0.5 to 10 mm [0030].
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of at least 235 MPa when naturally aged for 90 days and then paint baked at 180°C for 20 minutes” in claim 1, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein (wt.% Mg)/(wt. % Si) is not greater than 1.4:1” in claim 1, the ratio of Mg:Si in Bohner et al. (‘098) would range from about 0.43 to ∞, which would encompass the range of the instant invention.
With respect to the recitation “wherein the total amount of Si+Mg+Zn+Cu is not greater than 4.25 wt.%” in claim 1, the range in Bohner et al. (‘098) would be from 2.3 to 16.7, which would overlap the range of the instant invention.
In regard to claim 13, Bohner et al. (‘098) discloses making automobile sheets from the aluminum alloys [0002].
With respect to the recitation “wherein the aluminum alloy sheet realizes a TYS-LT of not greater than 175 MPa at 90 days of natural aging (“TYS-90NA”)” in claim 15, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a (TYS-90NA) minus (TYS-7NA) of not greater than 20 MPa” in claim 16, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of at least 235 MPa when naturally aged for 30 days and then paint baked at 180°C for 20 minutes” in claim 17, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of at least 240 MPa when naturally aged for 90 days and then paint baked at 180°C for 20 minutes” in claim 18, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of at least 220 MPa when naturally aged for 90 days and then paint baked at 180°C for 20 minutes” in claim 19, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of at least 225 MPa when naturally aged for 90 days and then paint baked at 180°C for 20 minutes” in claim 20, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of least 350 MPa when naturally aged for 30 days and then artificially aged at 180°C for 8 hours” in claim 21, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of not greater than 150 MPa at 7 days of natural aging (“TYS-7NA”)” in claim 22, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy sheet product realizes a TYS-LT of not greater than 145 MPa at 7 days of natural aging (“TYS-7NA”)” in claim 23, Bohner et al. (‘098) discloses wherein the aluminum alloy would have substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed June 23, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the Office Action of March 23, 2026 applies an unduly restrictive written description standard by requiring an express species-by-species listing of every possible impurity, even though the specification expressly describes the claimed alloy as including impurities as part of the alloy balance and places quantitative limits on those impurities. The Applicant further argues that paragraph [0002] states that the disclosed aluminum alloys include recited Si, Mg, Zn, Cu, Fe, Mn, Cr, ZR, V and Ti with “the balance being aluminum, optional incidental elements and impurities”; paragraph [0003] discloses the same composition framework; and paragraph [0016] confirms that “the balance of the aluminum alloy is generally aluminum, optional incidental elements and impurities.” and explains that minor additional elements may be present without departing from the described alloy so long as the desired characteristics are retained. Additionally, the Applicant argues that the specification provides concrete bounds for the impurity genus and [0017] states that the new aluminum alloys may contain low amounts of impurities, including embodiments with “not greater than 0.15 wt.%, in total, of the impurities” and “not greater than 0.05 wt.% of each of the impurities,” and another embodiment with “not greater than 0.10 wt.% in total, of the impurities” and “not greater than 0.03 wt% of each of the impurities”. The working disclosure examples are consistent with this disclosure and the original disclosure conveys to a person of ordinary skill in the art that the inventors possessed the claimed subject matter and here claim 1 does not require any minimum tin content and does not recite tin as a principal alloying element but rather states only that “when present” tin is included as one of the impurities.
In response, the Examiner notes that the recitation “wherein, when present, tin is included in the aluminum alloy sheet product as one of the impurities” limits the scope of the alloy to exclude tin almost entirely from the claimed compositions which was a scenario that may not have conceived at the time of the invention. None of the impurities are specified in the Examples in the Specification so not all of the elements present are specified in the specification. Had the disclosure added tin for some reason and there was an example with tin and without tin, then Applicant would be able to capture the feature without the tin if so desired, but to not mention tin at all throughout the entire specification and then mention it now in a claim may unintentionally impact the other elements and/or other impurities and thus limit the source materials of the alloy especially since the transitional phrase of the claims recite “comprising” leaving the claims open to all, unrecited elements well other than the tin now which is only present as an impurity.
Second, the Applicant primarily argues that Bohner et al. (‘098) discloses silicon is less than or equal to 0.7 weight percent in the alloy table at paragraph and the overlap asserted in the Action is only at the single endpoint of 0.70 weight percent and Bohner et al. (‘098) does not teach any silicon amounts greater than 0.7 weight percent. The Applicant further argues that Bohner et al. (‘098) does not identify silicon as a result-effective variable to be optimized or otherwise increased beyond the stated range. The Applicant further argues that the Action does not explain why a person having ordinary in the art would have selected the broad ranges of Bohner et al. (‘098) to arrive at Applicant’s specific coupled constraints and Bohner et al. (‘098) discloses zinc from 2 to 8 weight percent, 0.3 to 5.5 weight percent magnesium, copper up to 4.5 weight percent, and silicon up to 0.7 weight percent at paragraph [0031], but does not disclose or suggest selecting those elements to satisfy both Mg/Si ≤ 1.4 and Si+Mg+Zn+Cu ≤ 4.25 and there is no reason that a person of ordinary skill in the art would increase the silicon amount or tailor directly according to the Applicant’s claim, absent Applicant’s own disclosure.
In response, the Examiner notes that the compositions disclosed by Bohner et al. (‘098) overlap the amounts of the instant invention. In the case where the claimed ranges "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); MPEP 2144.05 I. The ratio of Mg:Si in Bohner et al. (‘098) would range from about 0.43 to ∞, which would encompass the range of the instant invention. Additionally, the range in Bohner et al. (‘098) would be from 2.3 to 16.7, which would overlap the range of the instant invention.
Third, the Applicant primarily argues that the Office Action inherency-style assertion that the claimed TYS-LT properties “would be expected” lacks the required factual basis and Bohner et al. (‘098) discusses producing structural sheet metal components and obtaining yield strength after its heat treatment process, but Bohner et al. (‘098) does not disclose the claimed 90-day natural aging followed by 180°C/20-minute paint-bake condition. The Applicant further argues that Bohner et al. (‘098) does not show that products within the broad ranges naturally satisfy Applicant’s specific time-dependent natural aging and paint bake strength profile.
In response, the Examiner notes that “at 90 days of natural aging”, “at 7 days of natural aging” or “when naturally aged for […] and then paint baked at 180°C for 20 minutes” are limitations that are optional or a condition not required of the product and merely expected when the alloy product undergoes such a condition. MPEP 2112.01 I. and MPEP 2111.04. If one having ordinary skill in the art takes the composition disclosed by Bohner et al. (‘098) and subjects to the same conditions, substantially similar properties would be expected.
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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