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:
13, 15, 16, 17
Withdrawn:
NONE
Rejected:
13, 15, 16, 17
Amended:
13, 16, 17
New:
NONE
Independent:
13
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 13, 15-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Amended claim 13 line 16 refers to the limitation “preselecting a 7xxx aluminum alloy composition for the casting step”, however, it is unclear how this “preselected 7xxx alloy” relates to the 7xxx alloy recited in lines 5-13 of claim 13.
Claim 13 lines 10-11 recites the limitation “grain structure control materials comprise at least one of Zr, Cr, Sc, and Hf” which renders the claim indefinite, due to the “comprise” open-ended transitional phrase. It is unclear if the grain structure control elements are limited to the elements recited, see MPEP 2173.05(h) “Alternative Limitations”.
A Markush grouping is a closed group of alternatives, i.e., the selection is made from a group "consisting of" (rather than "comprising" or "including") the alternative members. Abbott Labs., 334 F.3d at 1280, 67 USPQ2d at 1196. If a Markush grouping requires a material selected from an open list of alternatives (e.g., selected from the group "comprising" or "consisting essentially of" the recited alternatives), the claim should generally be rejected under 35 U.S.C. 112(b) as indefinite because it is unclear what other alternatives are intended to be encompassed by the claim. See In re Kiely, 2022 USPQ2d 532 at 2* (Fed. Cir. 2022).
Appropriate correction/explanation is required. Claims dependent on the above rejected claim are likewise rejected under this statute.
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 13, 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Miyasato (US 5,865,911).
Miyasato teaches a process for producing a wrought 7xxx series alloy comprising steps of:
Amended Claim 13
Miyasato
Casting an ingot or billet
Casting an ingot (col 5 line 51-52)
Homogenizing, T homog ≥ 614.4+(55.2)*Cu + (83.1)*Mg -(1.8)*Zn
Homogenizing 890-900F (column 6 lines 1-2)
Hot working
Hot working (column 6 lines 9-39)
Optionally cold working
-
Solution heating and quenching
SHT 840-900°F and quenching (column 6 lines 40-42)
Opt. stretching or compressing 1-5%
Opt. stretch 1-3% (column 6 lines 59-60)
Artificially aging
t(eq)=7-20 hrs, where Tref=160C/320F
2nd aging 250-350F, wherein 2nd aging ≥10F than 1st (cl. 15)
Artificially aging (column 7 lines 1-67)
Such as 250F 4-24 hr +325F 4-10 hrs
T(eq)≤19 hr (cl. 16)
T(eq)≤18 hr (cl. 17)
Table 1: instant claims vs. Miyasato
which meets the claimed processing steps of casting, homogenizing, hot working, solution heating, quenching, stretching, and artificially aging. Miyasato at abstract teaches applying said process on a Al-Zn-Mg-Cu alloy comprising (in wt%):
Miyasato
Zn
5.5-6.5
5.2-6.8
Mg
1.3-1.7
1.6-2.0
Cu
1.7-2.3
1.7-2.4
Mn
<0.15
Zr, Cr, Sc, Hf
-1.0
0.03-0.3% Zr
Ti
-0.15
Table 2: Claimed Alloying Ranges vs. Miyasato
which overlaps the instant alloying ranges. Miyasato teaches products up to 6 inches thick (which meets the amended thickness) can be formed from performing the above process on the Al-Zn-Mg-Cu alloy of Table 2 , which meets the instant “preselected 7xxx aluminum alloy composition”.
The claimed “determining a homogenization treatment” based on the empirical formula recited in amended claim 13 is not specified by Miyasato. However, for values of Cu, Mg, and Zn within the range taught by Miyasato of Cu=2.0, Mg=1.7, Zn=6.5, the instant:
T homog ≥ 614.4+(55.2)*Cu + (83.1)*Mg -(1.8)*Zn
T homog ≥ 614.4+(55.2)*(2.0) + (83.1)*(1.7) -(1.8)*(6.5)
T homog≥854 F
wherein homogenizing taught by Miyasato of 890-900F (column 6 lines 1-2) meets said minimum. Further, Miyasato teaches the selection of a high homogenization temperature, and that homogenization temperature is based on the alloy content (column 5 line 45, wherein the alloy content effects the melting temperature; and wherein high homogenization temperatures are desired while avoiding incipient melting, column 5 lines 40-47). Though Miyasato does not specify homogenizing according the claimed equation (relating homogenization temperature to Cu, Mg, and Zn amounts), Miyasato teaches homogenizing at temperatures that broadly overlap the claimed temperature range, and teaches homogenization temperature is a result effective variable, dependent on alloy content. It would have been obvious to one of ordinary skill in the art, to have optimized the homogenization temperature during the process of working and heat treating taught by Miyasato, in order to maximize the elements in solution without inciting incipient melting (column 5 line 41).
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).
Because Miyasato teaches an overlapping process of casting, homogenizing, hot working, solution heating, quenching, stretching, and artificially aging a 7xxx series aluminum alloy with alloying ranges that overlap the claimed alloying ranges, and because Miyasato teaches homogenization temperature is a result effective variable dependent on alloy content, it is held that Miyasato has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 15-17, the aging times and temperatures taught by Miyasato overlap the claimed temperatures and times (see Table 1 above), and therefore Miyasato is held to meet the instant limitations.
Claims 13, 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Dangerfield et al (US 2006/0191609).
Dangerfield teaches a process for producing a wrought 7xxx series alloy comprising steps of:
Claim 13
Dangerfield
Casting an ingot or billet
Casting an ingot [0065]
Homogenizing
T homog ≥ 614.4+(55.2)*Cu + (83.1)*Mg -(1.8)*Zn
Homogenizing
860-930F
Hot working
Hot working
Optionally cold working
-
Solution heating and quenching
SHT 850-920°F and quenching
Opt. stretching or compressing 1-5%
Opt. stretching or compressing ≤5%
Artificially aging
1st aging 200-300F
2nd aging 250-350F, wherein 2nd aging ≥10F than 1st (cl. 15)
Artificially aging [0066]
1st 230-250F 5-12 hr 2nd 310-330F 5-30 hrs
t(eq)=7-20 hrs, where Tref=160C/320F (cl. 16)
T(eq)≤19 hr (cl. 17)
Table 3: instant claims vs. Dangerfield
which meets the claimed processing steps of casting, homogenizing, hot working, solution heating, quenching, stretching/compressing, and artificially aging. Dangerfield at abstract teaches applying said process on a Al-Zn-Mg-Cu alloy comprising (in wt%):
cl. 1
Dangerfield
Zn
5.5-6.5
6.2-7.2
Mg
1.3-1.7
1.5-2.4
Cu
1.7-2.3
1.7-2.1
Mn
<0.15
0-0.04
Zr, Cr, Sc, Hf
-1.0
0.06-0.13% Zr
Ti
-0.15
Table 4: Alloying ranges of Claim 13 vs. Dangerfield
which overlaps the instant alloy composition. Dangerfield teaches products 2-10 inches thick can be formed from performing the above process on the Al-Zn-Mg-Cu alloy of Table 4, which overlaps and therefore meets amended claim 13’s thickness limitation.
Concerning amended claim 13, the claimed “determining a homogenization treatment” based on the empirical formula recited in amended claim 13 is not specified by Dangerfield.
However, for values of Cu, Mg, and Zn within the range taught by Dangerfield of Cu=2.0, Mg=1.7, Zn=6.5, the instant:
T homog ≥ 614.4+(55.2)*Cu + (83.1)*Mg -(1.8)*Zn
T homog ≥ 614.4+(55.2)*(2.0) + (83.1)*(1.7) -(1.8)*(6.5)
T homog≥854 F
wherein homogenizing taught by Dangerfield of 860-930F [0065] meets said minimum, and therefore meets the instant limitation.
Because Dangerfield teaches an identical process of casting, homogenizing, hot working, solution heating, quenching, stretching, and artificially aging a 7xxx series aluminum alloy with alloying ranges that overlap the claimed alloying ranges, it is held that Dangerfield has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 15-17, the aging times and temperatures taught by Dangerfield overlap the claimed temperatures and times (see Table 3 above), and therefore Dangerfield is held to meet the instant limitations.
Response to Amendment/Arguments
In the response filed 8/19/25 applicant amended claims 13, 16, and 17, 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 claimed “determining a homogenization treatment” based on the empirical formula recited in amended claim 13 has not been found persuasive. The prior art teaches homogenizing at temperatures within the claimed equations (see discussion above). Further, Miyasato teaches the selection of a high homogenization temperature, and that homogenization temperature is based on the alloy content (column 5 line 45, wherein the alloy content effects the melting temperature; and wherein high homogenization temperatures are desired while avoiding incipient melting, column 5 lines 40-47). Though Miyasato does not specify homogenizing according the claimed equation (relating homogenization temperature to Cu, Mg, and Zn amounts), Miyasato teaches homogenizing at temperatures that broadly overlap the claimed temperature range, and teaches homogenization temperature is a result effective variable, dependent on alloy content. It would have been obvious to one of ordinary skill in the art, to have optimized the homogenization temperature during the process of working and heat treating taught by Miyasato, in order to maximize the elements in solution without inciting incipient melting (column 5 line 41).
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 12/6/25