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:
17-35
Withdrawn:
32-35
Rejected:
17-31
Amended:
17, 23, 26, 29
New:
NONE
Independent:
17
Claim Interpretation
Amended claim 17 recites the limitation “suited for producing an extruded profile that consists essentially of a recrystallized microstructure which has a yield strength of greater than 260 MPa”, which is held to define an intended use for the alloy bolt product of the claimed composition, see MPEP 2111.02. Further, claim 17, line 2’s limitation of “ with a recrystallized microstructure” does not specify a specific amount of recrystallization; said limitation is interpreted, in light of the instant specification, to be “characterized by” a recrystallized microstructure (in the future condition/use as an extruded profile).
Claim 26 mentions “An extruded profile…obtainable from a continuously cast bolt according to claim 17, having a yield strength of greater than 260 MPa”. The extruded profile is interpreted to have a yield strength of >260 MPa (rather than the cast bolt).
If these interpretations are 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.
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 17-25 are rejected under 35 U.S.C. 103 as being unpatentable over Fourmann et al (US 2022/0025489, previously cited) in view of “Aluminum and Aluminum Alloys” pp. 98-99 (previously cited).
Fourmann teaches at Table 3, an aluminum alloy comprising (in weight%):
Claim 17
dependent claims
Fourmann
ex. F
Fe
>0-0.40
0.17
Mg
0.40-1.2
0.65-1.0 (cl. 18)
0.64
Si
0.60-0.95
0.65-0.95 (cl. 19)
0.88
Cu
>0-0.30
0.10-0.30 (cl. 22)
0.30
Cr
>0-0.35
0.10-0.30 (cl. 23)
0.14
Mn
0.4-0.95
0.45-0.60 (cl. 24)
0.77
Zn
-0.2
-
Ti &/or TiB2
opt.0.005-0.15% Ti &/or
0.005-0.15% TiB2
0.014% Ti
YS
>260 MPa
348 MPa
Ratio Si/Mg
0.90-1.20
1.00-1.10 (cl. 20)
1.375
outside
Ratio Si/Mg
0.95-1.15 (cl. 21)
1.375
outside
Table 1: instant claims vs. Fourmann
which falls within the claimed alloying ranges and meets the claimed yield strength minimum (claims 17, 19, 22, 23).
Concerning the limitation “suited for producing an extruded profile that consists essentially of a recrystallized microstructure which has a yield strength of greater than 260 MPa”, as set forth in the “Claim Interpretation”, above, the limitation “suited for producing an extruded profile that consists essentially of a recrystallized microstructure which has a yield strength of greater than 260 MPa”, is held to be intended use. The alloy of Fourmann is held to be capable of being formed into an extruded profile as claimed (that is, subject to the intended use of extruding, and capable of the claimed properties), because Fourmann teaches said overlapping alloy has excellent extrudability.
Fourmann does not specify a) the secondary dendrite arm spacing (DAS) of the bolt product (cl. 17, 25), b) casting into the form of a “bolt”, or c) an example with the claimed Si/Mg ratio (amended claim 17).
Concerning a), though Fourmann does not specify the DAS of the cast alloy, Fourmann teaches a process of casting said alloy by continuous casting, substantially as claimed in independent claim 17. Further, it would have been obvious to one of ordinary skill in the art to have continuously cast the alloy of Fourmann, while optimizing casting speed/cooling rate, in order to obtain fine DAS such as a DAS of <100µm (cl. 17). “Aluminum and Aluminum Alloys” p. 99 teaches casting with a fast cooling rate produces the predictable result of fine DAS , and wherein continuous cast aluminum alloys have typical DAS of 0.03-0.07 mm (30-70 µm).
Concerning b), Fourmann teaches casting said alloy into a billet (such as by continuous casting) [0016, 0048], and further processing extruding and heat treating. It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention, to have continuous cast the alloy of Fourmann into a variety of shapes, such as continuous casting in the shape of a “bolt” (as described in the instant specification, see for instance [0006], etc.) because Fourmann teaches casting said alloy into billets of various sizes (examples).
Concerning c), though Fourmann does not teach examples of an alloy with a Si/Mg ratio within the amended range of instant claim 17, the ranges of Si and Mg taught by Fourmann (see Table 2 below) the broad ranges of (0.85-1.10% Si)/(0.60-0.80% Mg) broadly overlap the claimed ratio (i.e. 0.85 Si/0.80 Mg =1.06, etc.), and therefore the broad ranges taught by Fourmann render a product with the claimed Si/Mg ratio at best an obvious variant of the prior art products.
Therefore it is held that Fourmann together with “Aluminum and Aluminum alloys” have created a prima facie case of obviousness of the presently claimed invention.
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). In the instant case, “Aluminum and Aluminum Alloys” teaches casting with a fast cooling rate produces the predictable result of fine DAS (p 99).
Concerning claims 18 and 24, Fourmann teaches broad alloying ranges of:
Claim 17
dependent claims
Fourmann
Fe
>0-0.40
-0.25
Mg
0.40-1.2
0.65-1.0 (cl. 18)
0.60-0.80
Si
0.60-0.95
0.65-0.95 (cl. 19)
0.85-1.10
Cu
>0-0.35
0.10-0.30 (cl. 22)
0.30-0.90
Cr
>0-0.35
0.10-0.30 (cl. 23)
0.05-0.18
Mn
0.4-0.95
0.45-0.60 (cl. 24)
0.40-0.80
Zn
-0.2
-0.03
Ti &/or TiB2
opt.0.005-0.15% Ti &/or
0.005-0.15% TiB2
-0.05 Ti
Table 2: instant claims vs. Fourmann
which overlaps the claimed ranges of Fe, Mg, Si, Cu, Cr, Mn, Zn, and Ti (instant claims 18, 24), and therefore meets the instant limitations.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning the Si/Mg ratio limitation of claims 20 and 21, the broad ranges of (0.85-1.10% Si)/(0.60-0.80% Mg) broadly overlap the claimed ratio (i.e. 0.85 Si/0.80 Mg =1.06, etc.), and therefore the broad ranges taught by Fourmann meets the claimed Si/Mg ratio.
Concerning claims 20, 25, see above discussion of DAS.
Response to Amendment/Arguments
In the reply filed 1/7/26 applicant amended claims 17, 23, 26, and 29; 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 an aluminum alloy with the claimed alloying ranges, continuously cast as a bolt, and “suited for producing an extruded profile that consists essentially of a recrystallized microstructure which has a yield strength of greater than 260 MPa”, has not been found persuasive. As set forth in the “Claim Interpretation”, above, the limitation “suited for producing an extruded profile that consists essentially of a recrystallized microstructure which has a yield strength of greater than 260 MPa”, is held to be intended use. The alloy of Fourmann is held to be capable of being formed into an extruded profile as claimed (that is, subject to the intended use of extruding), because Fourmann teaches said alloy has excellent extrudability.
Allowable Subject Matter
Claims 26-31 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.
The following is an examiner’s statement of reasons for allowance: the closest prior art, Fourmann et al, does not teach or suggest an extruded profile product with the Al-Mg-Si composition as claimed, complete with the instant 0.40-0.95% Mn and 0.10-0.35% Cr AND the profile consists essentially of a recrystallized microstructure, substantially as presently claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
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.
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 4/30/26
Prosecution Insights