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 .
Election/Restrictions
Applicant's election with traverse of group I claims 1-17 in the reply filed on 11/25/25 is acknowledged. Claims 18-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected group II, there being no allowable generic or linking claim. The traversal is on the ground(s) that the special technical feature is not known. This is not found persuasive because the claimed features of an alloy composition with aluminum and the claimed minimum YS and minimum bend angle are known, as set forth in rejections below.
The requirement is still deemed proper and is therefore made FINAL.
Claim Interpretation
The term “about” is used throughout the instant claims and the specification, and is described in the instant specification at [0108]: “to represent a value, amount, or characteristic close to the stated value, amount, or characteristic that still performs a desired function or achieves a desired result” and “may refer to an amount that is within less than 10% of, within less than 5% of, within less than 1% of, within less than 0.1% of, and within less than 0.01% of the stated amount, depending on the desired function or desired result” (see instant specification at [0108]).
Claim 1 lines 4-5 recites “as-cast and without further processing” which is interpreted to mean no further steps of heat treating, aging, surface finishing occur (see specification at [0046, 0087].
Claim 1, lines 3-5 mentions certain properties (yield strength bending angle in a 3 mm section thickness) are present under the condition: “when as-cast and without further processing” (see interpretation of “further processing” above); however, the instant claim does not directly recite product-by-process step(s) including casting together with the elimination of “further processing”. For the purposes of this action, the claims are being given their broadest reasonable interpretation consistent with the specification, i.e. this phrase is being interpreted to mean that the claimed properties are present conditionally (when the instant product is put through said condition), in other words, that the instant product is capable of said property (upon undergoing the instant product by process condition).
If this interpretation is not consistent with applicant’s intended interpretation, please clarify (including where said interpretation is found in the original specification) in response to this action.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear if incidental impurities are intended to be limited to “at most about 0.1 wt%” each or total. For the purposes of this action, claim 15 is interpreted to be limited to “at most about 0.1 wt%” each, which is held to be the broadest reasonable interpretation in light of the instant specification. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 5-9, 11, 16 are rejected under 102(a)(1) as anticipated by Wang et al (US 2017/0107599, cited in IDS filed 9/10/24).
Wang teaches an aluminum alloy (Al-Si) composition (which meets the instant composition limitation, instant claim 1) in the “as-cast” condition (examples). Wang at Fig. 5 teaches said Al-Si alloy exhibits a yield strength of 185 MPa in said “as-cast” condition (which meets the minimum strength of instant claims 1 and 2, and meets the instantly claimed condition of “as-cast and without further processing” limitation). Wang teaches said alloy is processed by high pressure die casting (HPDC) to produce said “as-cast” condition (see Wang at abstract), which the instant specification (see [0064], etc) teaches is important for achieving the claimed properties of bend angle and yield strength.
Wang does not specify the bend angle of a 3 mm section thickness (claim 1, 3), or the microstructural phases present (cl. 5-9). However, because Wang teaches an Al-Si alloy processed identically to the process of the present invention- high pressure die cast without further processing (see instant specification at examples, etc.) then the same properties are inherently expected for the HPDC aluminum alloy product of Wang, as for the instant invention (such as bend angle and microstructural phases). Therefore, it is held that Wang anticipates the presently claimed invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same...[footnote omitted]." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112.
Concerning claims 2 and 3, see above discussion of bend angle and yield strength.
Concerning claims 5-9, see above discussion of expected properties (including microstructure phases).
Concerning claim 11, Wang does not specify the ORF (related to corrosion/oxidation resistance, see instant specification at [0082-0085]) with respect to A380. However, because Wang teaches an Al-Si alloy processed identically to the process of the present invention- high pressure die cast without further processing (see instant specification at examples, etc.) then the same corrosion properties are inherently expected for Wang, as for the instant invention (such as ORF with respect to A380). Therefore, it is held that Wang anticipates the presently claimed invention.
Concerning claim 16, Wang teaches casting said Al-Si alloy into an automotive component [0001], which meets the instant limitation of “an automobile article”.
Claim(s) 1-3, 10, 16 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Masse et al (US 2020/0114468).
Masse teaches an aluminum alloy product intended for automobile parts [0001], said alloy product exhibiting a bend angle of≥60° and a yield strength/(Rp0.2)≥ 280MPa [0100] for sheets 0.5-4 mm thick, which meets the instant yield strength and bend angle minimums (claims 1-3). Though Masse teaches a different process to achieve said properties, Masse regardless anticipates an alloy product with aluminum comprising a yield strength ≥130 MPa and bend angle ≥20° at a 3 mm thickness, as presently claimed. Therefore it is held that Masse anticipates the claimed invention.
Concerning claim 10, Masse teaches an example with Cu/Mg (0.200/0.10)=2, which meets the claimed ratio (Alloy 1, Table 1).
Concerning claim 16, Masse teaches an aluminum alloy product intended for automobile parts [0001], which meets the instant limitation.
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.
Claim(s) 10, 12-15, 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang, as applied to claims above.
Wang is discussed in paragraphs above.
Concerning claims 12-14, Wang teaches an aluminum alloy comprising (in wt%):
Claim 12
Claim 13
Claim 14
Wang
Si
about 6-11%
about 6.5-7.5%
about 6-11%
7-15
Cu
about 0.3-0.8%
about 0.4-0.8%
about 0.3-0.8%
0-0.5
Mn
about 0.3-0.8%
about 0.3-0.7%
about 0.3-0.8%
0-1.0
Mg
about 0.1-0.4%
about 0.1-0.4%
about 0.15-0.4%
0-0.6
Fe
about ≤0.5%
about ≤0.4%
about ≤0.5%
0-1.0
V
about 0.05-0.15%
about 0.05-0.15%
about 0.05-0.15%
0-0.5
Sr
about 0.01-0.05%
about 0.01-0.03%
about 0.01-0.05%
0-0.1
Ti
about ≤0.15%
about ≤0.15%
about ≤0.15%
0-0.5
Cr
about ≤0.03%
about ≤0.03%
about ≤0.03%
-
Al and impurities
remainder
remainder
remainder
balance
Table 1: alloying ranges of instant claims vs. Wang
wherein the aluminum alloy of Wang overlaps the claimed alloying ranges of Si, Cu, Mn, Mg, Fe, V, Sr, Ti, Cr, and Al (dependent claims 12-14). Wang does not specify the amount of unavoidable/inevitable/incidental impurities (cl. 12-14). However, one of skill in the art would understand that incidental impurities would inherently be present, at least on the order of ppm. Concerning claim 10, Wang teaches Cu: 0-0.5% and Mg:0-0.6%, which meets the claimed ratio of Cu/Mg (4-2):1.
Because of the overlap in alloying ranges and ratios, it is held that Wang has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be 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 claim 15, Wang does not specify the amount of unavoidable/inevitable impurities. However, it would have been obvious to one of ordinary skill in the art, given the disclosure of Wang, to have minimized the impurities of the Al-Si alloy of Wang to about ≤0.1%, in order to produce consistent/homogenous products (see Wang at examples, Fig. 3).
Concerning claim 17, though Wang does not specify forming said Al-Si alloy into an automotive chassis part, it would have been within the level of one of ordinary skill in the art, given the disclosure of Wang, to have formed the Al-Si alloy of Wang into a variety of structural automotive parts, such as a chassis part, because Wang teaches said Al-Si alloy exhibits excellent mechanical properties and is useful for structural automotive parts (examples, [0001]).
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wang, as applied to claims above, further in view of “Die Casting”, ASM Handbook Vol. 2A p 175-192 (cited herein).
Concerning claim 4, which states “the alloy comprises a flow length of at least about 1.8m”, flow length (fluidity) for a given alloy is dependent on alloy composition together with processing conditions (and is therefore interpreted to be partly a product by process limitation). This is further supported by “Die Casting”, which teaches adjusting Si amount to improve fluidity (p 180, and wherein Al-Si die casting alloys often contain up to 11.5% Si see Fig. 15 p 181) and adjusting processing parameters (including pressure, temperature, thickness, etc.) for a given alloy to effect metal flow and flow length when high pressure die casting (p 178, 179). It would have been obvious to one of ordinary skill in the art to have optimized the fluidity/flow length of the Al-Si alloy of Wang (such as within the claimed ≥1.8 m), during the process of high pressure die casting taught by Wang, in order to produce a satisfactory cast product (as taught by “Die Casting” p 178, 179). Alternatively, because “flow length” is held to be a product by process limitation (for a given Al-Si alloy, wherein higher Si promotes fluidity and castability, “Die Casting” at p 180), and because applicant has not shown the Al-Si alloy HPDC product of Wang is materially different from the aluminum alloy with the claimed “flow length” (instant claim 4), it is held that Wang has created a prima facie case of obviousness of the presently claimed invention.
Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (citations omitted). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 1/8/26