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:
1-11, 13-25
Withdrawn:
18-23
Rejected:
1-11, 13-17, 24, 25
Amended:
1, 15
New:
24, 25
Independent:
1, 18
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) 1-3, 5-11, 13-17, 24, 25 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al (US 2017/0107599, cited in IDS filed 9/10/24).
Wang teaches an aluminum alloy product in the “as-cast” condition (examples), said alloy comprising (in wt%):
Claim 1
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 (amended claim 1, dependent claims 13-14). Wang does not specify the amount of unavoidable/inevitable/incidental impurities (cl. 1, 13, 14). However, one of skill in the art would understand that incidental impurities would inherently be present for the prior art of Wang, at least on the order of ppm. Therefore Wang is held to meet said limitation.
Concerning the yield strength limitation of instant claims 1 and 2, 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 expected for the HPDC aluminum alloy product of Wang, as for the instant invention (such as bend angle and microstructural phases).
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.
Because of the overlap in alloying ranges and ratios, and because the claimed properties are expected for the prior art as for the instant invention (see discussion above), 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 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 10 and new claim 25, Wang teaches Cu: 0-0.5% and Mg:0-0.6%, which broadly overlaps and therefore meets the claimed ratio of Cu/Mg (4-2):1, as well as Cu/Mg of 3:1.
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”.
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]).
Concerning claim 24, see above discussion of expected properties (including microstructure phases).
Concerning claim 25, see above discussion of Cu/Mg ratio.
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 (previously cited).
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.
Response to Amendment/Arguments
In the response filed on 4/7/26 applicant amended claims 1 and 15 and added new claims 24 and 25. No new matter has been added.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest, and further teaches away, from the claimed Cu range of 0.3-0.8%, has not been found persuasive. Wang teaches 0-0.5% Cu (which he describes as either “Cu-free” or “low-Cu” [0014, 0045]) is effective to achieve an excellent combination of superior mechanical properties, reduced porosity, and suitable corrosion (see Wang at [0009], [0014-0015]). Wang teaches the benefits of low amounts of Cu -namely, Cu is known to improve artificial aging response and provide strength/hardening improvements [0009-0010], [0014-0015]), and keeping Cu to a maximum of 0.5% is effective to reduce porosity and improve corrosion.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the criticality of the claimed V and Sr ranges together with the critical Cu/Mg ratio has not been found persuasive. The prior art teaches alloying ranges of V, Sr, and Cu/Mg ratio that broadly overlap the claimed ranges. With respect to the overlap, applicant has not shown specific evidence of unexpected results, or criticality of the presently claimed ranges (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
Evidence of unexpected properties may be in the form of a direct or indirect comparison of the claimed invention with the closest prior art which is commensurate in scope with the claims. See In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980) and MPEP §716.02(d) - § 716.02(e). With respect to said indirect comparison, applicant a) may compare the claimed invention with prior art that is more closely related to the invention than the prior art relied upon by the examiner, In re Holladay, 584 F.2d 384, 199 USPQ 516 (CCPA 1978); Ex parte Humber, 217 USPQ 265 (Bd. App. 1961), or b) show criticality of the instant range. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Applicant’s argument that the instant invention is allowable because the prior art does not teach examples within the claimed ranges has not been found persuasive.
Patents are relevant as prior art for all they contain, and nonpreferred embodiments constitute prior art, MPEP 2123. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Concerning the instant case, though Wang does not teach examples within the claimed alloying ranges, Wang teaches alloying ranges that overlap the claimed ranges (see discussion above). With respect to the overlap, applicant has not shown specific evidence of unexpected results fully commensurate in scope with the instantly claimed ranges (see MPEP 716.02 d).
Applicant’s argument that the instant invention is allowable because the prior art does not teach the bend angle has not been found persuasive. It is maintained that Wang teaches an overlapping 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 expected for the overlapping HPDC aluminum alloy product of Wang, as for the instant invention (including bend angle).
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.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 6/27/26
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