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 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 2/9/2026 has been entered.
Response to Arguments
Applicant's arguments filed 2/9/2026, with respect to the 35 U.S.C. 102 rejection over Lin et al. (WO 2020/081150) have been fully considered but they are not persuasive.
With respect to claims 1, 11, and 16, Applicant argues the claimed product recites features not disclosed by Lin. However, the prior art process described in Lin is substantially identical to the process used to make the claimed products. Applicant has not demonstrated that the prior art process results in a different product, nor has Applicant identified any distinguishing aspects between the prior art process and the process used to make the claimed products that result in a patentably distinct product. Therefore, Applicant has not rebutted the presumption that the prior art process of Lin results in a substantially identical product as that claimed. See MPEP 2112.01. The rejection over Lin is therefore maintained.
With respect to claim 16, Applicant also notes the grains of the aluminum alloy in Lin appear to be oriented parallel to the planes in opposition to the claimed features (these arguments also appear applicable to claims 4 and 13). This argument is not persuasive. As previously discussed, Lin does not show a cross section of the aluminum alloy, so it is impossible to know the orientation of grains from the figures of Lin alone. Moreover, the figures in Lin demonstrate the structure of re-melted aluminum alloys to simulate a laser melting additive manufacturing process (see ¶ 163). Laser melted additively manufactured aluminum alloys do not form the basis for any rejection in this Office Action. This argument is not persuasive.
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 6 and 16-22 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.
Claim 6 recites “at least some of the voids in the first zone extend directly from the second microstructures”. Claim 6 does not specify what these second microstructures are. The specification states that voids have the morphology of dissolved oxidized intermetallics, which in turn retain the morphology of unoxidized intermetallics (see ¶ 47). Hence, the voids in the first zone extend from oxidized portions of the microstructures in the second zone (recited in claim 1). However, since claim 6 requires these voids to extend from “second microstructures” which are presumably distinct from the “oxidized portions of the microstructures in the second zone”, claim 6 is broader than what is described in the specification and therefore contains new matter.
Claim 16 recites: “an anodized layer where at least 30% of a thickness of the layer comprises voids”. The specification provides support for “up to 90% of a thickness of the anodized layer includes voids” (see ¶¶ 9, 30, 48). There is insufficient support for the claimed range of “at least 30%”, which is broader than “up to 90%”. Accordingly, claims 16-22 recite subject matter broader than that described in the specification and therefore contain new matter.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-20 and 22 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being unpatentable over Lin et al. (WO 2020/081150).
Regarding claims 1-3, 5-6, 8-9, and 22, Lin discloses an aluminum alloy comprising in wt%: 1-15%, preferably 7.5%-9%, Fe, 1-20% of a rare earth element, 0.1-5.0% of Cu, Mg, Si, Zn, Li or Ag, and up to 4% of In, Sn, Bi or Pb (¶ 3-4). Lin also teaches various exemplary alloys which lie within the claimed composition range (see Tables Ia, Ib). The rare earth element may be cerium and/or lanthanum (¶¶ 3, 7). These ranges lie within the claimed ranges or, in the case of claims 3, 7 and 9, are so substantially similar in scope as to create a case of anticipation. See MPEP 2131.03. Lin further teaches the aluminum alloy undergoes Type II or Type III anodization (¶ 3), with Type II producing an oxide layer having a thickness of 0.05-1.5 mil (1.27 to 38 micron) (¶ 110, see also ¶ 162 with a thickness of 0.8 mil or 20 micron).
Lin does not expressly teach the claimed three zone structure with microstructures extending across the boundary between the anodized layer (representing first and second zones) and the unoxidized alloy (representing a third zone) or the presence of elongated voids in the first zone. However, the instant specification states that Al-Ce alloys form intermetallic phases which anchor anodized product to the unoxidized alloy (¶ 32). This anchoring is responsible for microstructures which extend across the boundary between anodized layer and unoxidized alloy (¶ 44). The alloy composition of Lin is substantially identical to the exemplary Al-12Ce-1Fe-0.4Mg alloy of the specification (see Spec., ¶¶ 40, 63-83). Both undergo Type II anodization (see Spec., ¶¶ 40, 65). Accordingly, one of ordinary skill in the art would expect the anodized alloy of Lin to also exhibit the claimed anodized layer structure comprising the claimed first and second zones as claimed, with respect to microstructures extending across a boundary and the presence of elongated voids in the first zone resulting from dissolution of a rare earth element oxidized intermetallic phase, because a substantially identical aluminum alloy composition is being subjected to an identical anodization treatment. Thus, it is presumed that the resulting product is substantially identical to the claimed product, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 4, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy is obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the orientation of intermetallic microstructures, which also lend their morphology to the orientation of the voids in the anodized layer, in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 7, Lin teaches a more preferable range of rare earth element being 3%-12% (¶ 4). Exemplary aluminum alloys contain rare earth metal content within the claimed range (see Table Ib, alloys 15-16).
Regarding claim 10, Lin teaches that the aluminum alloy may be formed on a building substrate via additive manufacturing (¶ 75). The building substrate can be any metal product (¶ 75), which includes metals having a different composition from the aluminum alloy.
Regarding claim 11, Lin discloses an aluminum alloy comprising in wt%: 1-15% Fe, 1-20% of a rare earth element, 0.1-5.0% of Cu, Mg, Si, Zn, Li or Ag, and up to 4% of In, Sn, Bi or Pb (¶ 3). The rare earth element may be cerium and lanthanum (¶¶ 3, 7). Lin further teaches the aluminum alloy undergoes Type II or Type III anodization (¶ 3), and produces an oxide zone having a thickness of 0.05-1.5 mil (1.27 to 38 micron) (¶ 110).
Lin does not expressly teach the presence of elongated microstructures extending across the boundary between the anodized layer and the unoxidized alloy. However, the instant specification states that Al-Ce alloys form intermetallic phases which anchor anodized product to the unoxidized alloy (¶ 32). This anchoring is responsible for microstructures which extend across the boundary between anodized layer and unoxidized alloy (¶ 44). Moreover, the alloy composition of Lin is substantially identical to the exemplary Al-12Ce-1Fe-0.4Mg alloy of the specification (see Spec., ¶¶ 40, 63-83). Both undergo Type II anodization (see Spec., ¶¶ 40, 65). Accordingly, one of ordinary skill in the art would expect the anodized alloy of Lin to also exhibit the claimed microstructures extending across a boundary between an anodized layer and unoxidized alloy that transition from an intermetallic phase to an oxidized intermetallic phase across the boundary, because a substantially identical aluminum alloy composition is being subjected to an identical anodization treatment. Thus, it is presumed that the resulting product is substantially identical to the claimed product, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 12, since Lin discloses a substantially identical aluminum alloy that is subjected to the same anodization process, one of ordinary skill in the art would expect oxides of both aluminum and cerium to form in the oxide phase of the anodized layer, resulting in the claimed interconnected structure, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 13, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy is obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the orientation of intermetallic microstructures, which also lend their morphology to the orientation of the voids in the anodized layer, in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 14, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy can also be obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the size and orientation of microstructures in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112. Lin also teaches processing the aluminum alloy into sheets for additive manufacturing by sheet lamination (¶ 63). This necessarily entails forming an additively manufactured component on a building substrate. The building substrate can be any metal product (¶ 75), which includes metals having a different composition from the aluminum alloy.
Regarding claim 15, Lin does not expressly teach the claimed structure of the anodized layer. However, the instant specification states that performing anodization on Al-Ce alloys produce the zoned anodized surface, as well as intermetallic phases (Spec., ¶ 39). The instant specification further states dissolution of rare earth element oxidized intermetallic phase occurs during the anodization process, resulting in the claimed zone structure in the anodized layer (Spec., ¶ 47-49). Accordingly, one of ordinary skill in the art would expect the anodized layer of Lin to also exhibit the claimed anodized layer structure, absent objective evidence to the contrary. See MPEP 2112.
Regarding claims 16-18, Lin discloses an aluminum alloy comprising in wt%: 1-15% Fe, 1-20% of a rare earth element, 0.1-5.0% of Cu, Mg, Si, Zn, Li or Ag, and up to 4% of In, Sn, Bi or Pb (¶ 3). The rare earth element may be cerium and lanthanum (¶ 3). Lin further teaches the aluminum alloy undergoes Type II or Type III anodization (¶ 3).
Lin does not expressly teach the claimed structure of the anodized layer, specifically the void ratio in the anodized layer or the morphology of oxidized intermetallic phases. However, the instant specification states that performing anodization on Al-Ce alloys produce the claimed anodized surface, as well as intermetallic phases (Spec., ¶ 39). The instant specification further states dissolution of rare earth element oxidized intermetallic phase occurs during the anodization process, resulting in the claimed zone structure in the anodized layer (Spec., ¶ 47-49). Moreover, the alloy composition of Lin is substantially identical to the exemplary Al-12Ce-1Fe-0.4Mg alloy of the specification (see Spec., ¶¶ 40, 63-83). Both undergo Type II anodization (see Spec., ¶¶ 40, 65). Accordingly, one of ordinary skill in the art would expect the anodized alloy of Lin to also exhibit the claimed anodized structure comprising the claimed voids and void ratio in the anodized layer. Thus, it is presumed that the resulting product is substantially identical to the claimed product, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 19, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy can also be obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the size and orientation of microstructures in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112. Lin also teaches processing the aluminum alloy into sheets for additive manufacturing by sheet lamination (¶ 63). This necessarily entails forming an additively manufactured component on a building substrate. The building substrate can be any metal product (¶ 75), which includes metals having a different composition from the aluminum alloy.
Regarding claim 20, Lin does not expressly teach the claimed three zone structure with microstructures extending across the boundary between the anodized layer (representing first and second zones) and the unoxidized alloy (representing a third zone) or the presence of elongated voids in the first zone. However, one of ordinary skill in the art would expect the anodized alloy of Lin to also exhibit the claimed anodized layer structure comprising the claimed first and second zones as claimed, because a substantially identical aluminum alloy composition is being subjected to an identical anodization treatment. Thus, it is presumed that the resulting product is substantially identical to the claimed product, absent objective evidence to the contrary. See MPEP 2112.
With respect to the void dimensions, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy can also be obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the size and orientation of microstructures, which also lend their morphology to the orientation of the voids in the anodized layer, in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (WO 2020/081150), as applied to claim 1, further in view of PFI (“Hard Coat Anodizing Services”).
Regarding claim 21, the limitations of claim 22 have been addressed above. Lin does not expressly teach an anodized layer of greater than 50 microns. However, Lin teaches the anodized layer can be obtained by a Type II or Type III anodizing process (¶ 3). PFI teaches the Type III anodizing process is used to create anodized layers having a thickness greater than those of the Type II anodizing process, up to 0.003” thick (about 76 microns) (p. 2). It would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to produce a thicker anodized coating using a Type III anodizing process because the Type III process produces an extremely hard, abrasion resistant anodized coating having more durability and a smoother finish (PFI, p. 2).
With respect to the void dimensions, the aluminum alloy of Lin can be obtained by high pressure die casting (¶ 63). The specification states the aluminum alloy can also be obtained by high pressure die casting (see Spec., ¶ 64). Since these are the same process, one of ordinary skill in the art would expect the size and orientation of microstructures, which lend their morphology to the orientation of the voids in the anodized layer, in Lin to be the same as that claimed, absent objective evidence to the contrary. See MPEP 2112.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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