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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/21/26 has been entered.
Status of Claims
Claims 1-8 and 17-24 are examined in this office action as claims 9-16 are withdrawn as directed to a non-elected invention, claims 17-24 are new, and claim 1 was amended in the reply dated 1/21/26.
Specification
The disclosure is objected to because of the following informalities:
Applicant notes two different ways for calculating the property of necking elongation (Az): 1) Az= A(bzw. A5)-Ag on pg. 6 of applicant’s specification, 4th paragraph and 2) the product of subtracting elongation at break (A5) from uniform elongation (Ag) (Applicant’s specification, pg. 10, last paragraph and Table 3 on pg. 11). However, in Table 3 (Applicant’s specification, pg. 11, first paragraph) shows that the properties for P1 is A5=12.8 and Ag=8.7 meaning that A5-Ag should equal 4.1. However, in Table 3, this value is shown as being 3.7.
Likewise, the properties for I1 is A5=12.4 and Ag=6.7 meaning that A5-Ag should equal 5.7. However, in Table 3, this value is shown as being 6.1.
Thus, it is not clear which formula is used to calculate necking elongation and Table 3 as well as the rest of the specification should match one another.
Appropriate correction is required.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3176275 A1 (cited in IDS dated 6/20/22) and its English machine translation of Hummel.
As to claims 1-4, Hummel discloses an aluminum-silicon die casting alloy for producing a die casting component (Hummel, paragraph [0007]) with a composition in comparison to the claims as shown in Table A below.
Table A
Element
Claim 1 limitation unless otherwise noted
(wt%)
Hummel Composition (claim 1) (wt%)
Si
5.0 to 9.0 %
6.5 to 9.0% (Claims 3 & 19)
6.5 to 8% (Claims 4 & 20)
6.5 to 12 %
Mg
0.25 to 0.5 %
0.3 to 0.5% (Claims 3 & 19)
0.25 to 0.5 %
Al
Residual
Rest
Impurities
At most 0.05% each and 0.15% collectively
individually maximum 0.3% by weight, in total maximum 0.5% by weight % impurities
And Optionally
Mn
Up to 0.8%
From 0.3 to 0.6% (Claims 3 & 19)
0.30 to 0.80 %
Zn
From 0.08 to 0.35%
From 0.15 to 0.3% (Claims 3 & 19)
From 0.15 to 0.25% (Claims 4 & 20)
0.08 to 0.35%
Cr
0.08 to 0.35% (required element in claim 17)
Zr
Up to 0.30%
0.05 to 0.30%
Fe
Up to 0.25%
0.10 to 0.25% (Claims 3 & 19)
0.15 to 0.25% (Claims 4 & 20)
Maximum 0.30% (claim 4)
Ti
Up to 0.15%
0.05 to 0.15% (Claims 3 & 19)
Maximum 0.2% (claim 3)
Cu
Up to 0.20%
0.10 to 0.20% (Claims 3 & 19)
Maximum 0.05% (claim 4)
Sr
Up to 0.025%
0.015 to 0.025% (Claims 3 & 19)
0.006 to 0.025%
V
Up to 0.2%
Maximum 0.2% (claim 3)
Mo
Up to 0.2%
Maximum 0.2% (claim 3)
Thus Hummel discloses overlapping ranges for all of the required elements as well as all of the optional elements except for chromium. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches this produces good flowability for producing die cast components (Hummel, paragraph [0006]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
While Hummel does not explicitly disclose where the yield strength (Rp0.2) of greater than 190 MPa and an elongation at break (A5) of greater than or equal to 7% and an uniform elongation (Ag) and necking elongation (Az) satisfy the condition Az≥Ag/2 nor the claim 2 requirement of die-cast component has a uniform elongation (Ag) of at least 6% and a necking elongation (Az) of at least 4%, Hummel discloses a substantially identical method comprising a first annealing performed at a temperature in the range of 320°C to 450°C for a period of 20 minutes to 75 minutes, a second annealing is performed at a temperature in the range of 460°C to 520°C for a period of 5 minutes to 35 minutes, the quenching is performed in the range of 3 K/s to 200 K/s and a multistage artificial aging process the first artificial aging is performed at a temperature of 100°C to 180°C for a period of 40 minutes to 150 minutes and the second artificial ageing is performed at a temperature of 195°C to 300°C for a period of 30 minutes to 100 minutes (Hummel, paragraph [0024]) and Hummel discloses where the aging includes a third stage where the last stage may be artificial aging at a temperature in the range of 240°C to 300°C for a short period of time in the range of about 5 minutes to about 45 minutes (Hummel, paragraph [0027]) which is substantially identical to the method of manufacture as claimed in original claim 9 and also on pg. 6, lines 1-16 of the specification. Thus, as Hummel discloses a patentably indistinct composition and discloses a substantially identical method applied thereto, a person of ordinary skill would expect the same method applied to the same materials to produce the same properties of a yield strength (Rp0.2) of greater than 190 MPa and an elongation at break (A5) of greater than or equal to 7% and an uniform elongation (Ag) and necking elongation (Az) satisfy the condition Az≥Ag/2 and the claim 2 requirement of die-cast component has a uniform elongation (Ag) of at least 6% and a necking elongation (Az) of at least 4%. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 5, this claim requires either up to 0.05% Mn, up to 0.05% Cu or both. Hummel meets this limitation choice by disclosing Cu in a maximum 0.05 wt% (Hummel, claim 4).
As to claim 6, Hummel discloses a body component for a motor vehicle that consists at least partially of a die cast component with the composition shown in Table A above (Hummel, claim 7).
As to claim 7, Hummel discloses where the alloy component is suitable for punch riveting to other components (Hummel, paragraph [0068]). As Hummel discloses this suitability, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to connect the disclosed body component to another component using a punch rivel, thereby fastening the two together and forming a part of a motor vehicle.
As to claim 8, Hummel discloses where the die cast component is used in a motor vehicle (Hummel, paragraph [0029]), thus resulting in a motor vehicle having a body component having a die cast component.
Claims 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3176275 A1 (cited in IDS dated 6/20/22) and its English machine translation of Hummel in view of US 2014/0140886 A1 of Speckert.
As to claims 17-20, Hummel discloses an aluminum-silicon die casting alloy for producing a die casting component (Hummel, paragraph [0007]) with a composition in comparison to the claims as shown in Table A above. Thus Hummel discloses overlapping ranges for all of the required elements as well as all of the optional elements except for chromium. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches this produces good flowability for producing die cast components (Hummel, paragraph [0006]) throughout the disclosed ranges. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) . See MPEP § 2144.05 I.
However, Hummel does not disclose where Cr is included in an amount of 0.08 to 0.35 wt%.
Speckert relates to the same field of endeavor of aluminum alloy for structural parts and chassis parts of a motor vehicle (Speckert, paragraph [0001]). Speckert teaches an aluminum alloy composition comprising from 9 to 11.5% by weight of silicon, from 0.45 to 0.8% by weight of manganese, from 0.2 to 1.0% by weight of magnesium, from 0.1 to 1.0% by weight of copper, not more than 0.2% by weight of zinc, not more than 0.4% by weight of zirconium, not more than 0.4% by weight of chromium, not more than 0.3% by weight of molybdenum, not more than 0.2% by weight of iron, not more than 0.15% by weight of titanium, from 0.01 to 0.02% by weight of strontium and as balance aluminum where the aluminum alloy component in the T6 heat treatment exhibits a yield point Rp0.2>200 MPa and at the same time a high elongation at break A>9% (Speckert, claim 1). Speckert teaches adding not more than 0.4% by weight of chromium (Speckert, paragraph [0017]). Speckert teaches that this addition of chromium brings about a further increase in the mechanical properties (Speckert, paragraph [0017]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add not more than 0.4% by weight of chromium as taught by Speckert into the aluminum alloy disclosed by Hummel, thereby increasing in the mechanical properties of the aluminum alloy(Speckert, paragraph [0017]).
While Hummel does not explicitly disclose where the yield strength (Rp0.2) of greater than 190 MPa and an elongation at break (A5) of greater than or equal to 7% and an uniform elongation (Ag) and necking elongation (Az) satisfy the condition Az≥Ag/2 nor the claim 2 requirement of die-cast component has a uniform elongation (Ag) of at least 6% and a necking elongation (Az) of at least 4%, Hummel discloses a substantially identical method comprising a first annealing performed at a temperature in the range of 320°C to 450°C for a period of 20 minutes to 75 minutes, a second annealing is performed at a temperature in the range of 460°C to 520°C for a period of 5 minutes to 35 minutes, the quenching is performed in the range of 3 K/s to 200 K/s and a multistage artificial aging process the first artificial aging is performed at a temperature of 100°C to 180°C for a period of 40 minutes to 150 minutes and the second artificial ageing is performed at a temperature of 195°C to 300°C for a period of 30 minutes to 100 minutes (Hummel, paragraph [0024]) and Hummel discloses where the aging includes a third stage where the last stage may be artificial aging at a temperature in the range of 240°C to 300°C for a short period of time in the range of about 5 minutes to about 45 minutes (Hummel, paragraph [0027]) which is substantially identical to the method of manufacture as claimed in original claim 9 and also on pg. 6, lines 1-16 of the specification. Thus, as Hummel in combination with Speckert discloses a patentably indistinct composition and Hummel discloses a substantially identical method applied thereto, a person of ordinary skill would expect the same method applied to the same materials to produce the same properties of a yield strength (Rp0.2) of greater than 190 MPa and an elongation at break (A5) of greater than or equal to 7% and an uniform elongation (Ag) and necking elongation (Az) satisfy the condition Az≥Ag/2 and the claim 2 requirement of die-cast component has a uniform elongation (Ag) of at least 6% and a necking elongation (Az) of at least 4%. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 21, this claim requires either up to 0.05% Mn, up to 0.05% Cu or both. Hummel meets this limitation choice by disclosing Cu in a maximum 0.05 wt% (Hummel, claim 4).
As to claim 22, Hummel discloses a body component for a motor vehicle that consists at least partially of a die cast component with the composition shown in Table A above (Hummel, claim 7).
As to claim 23, Hummel discloses where the alloy component is suitable for punch riveting to other components (Hummel, paragraph [0068]). As Hummel discloses this suitability, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to connect the disclosed body component to another component using a punch rivel, thereby fastening the two together and forming a part of a motor vehicle.
As to claim 24, Hummel discloses where the die cast component is used in a motor vehicle (Hummel, paragraph [0029]), thus resulting in a motor vehicle having a body component having a die cast component.
Response to Declaration under Rule 1.132
The declaration under 37 CFR 1.132 filed 1/21/26 is insufficient to overcome the rejection of claims 1-8 based upon 35 U.S.C. 103 over EP 3176275 A1 of Hummel as set forth in the last Office action because:
The declarant argues that the third alloy in Table 1 of the declaration falls within the parameters of the claimed invention and Hummel and components 3 and 4 made of this alloy in Tables 2 and 3 of the declaration only differ in terms of the absence or presence of an intermediate aging stage during the heat treatment (Declaration dated 1/21/26, pg. 5, points 2-3). Declarant argues that as component 4 which undergoes the three stage aging satisfies Az ≥ Ag/2 and component 3 which only undergoes a two stage aging does not satisfy this property, this shows that only the three stage aging achieves Az ≥ Ag/2 (Declaration dated 1/21/26, pg. 5, last paragraph and point 4).
It is noted that while the instant application discloses two different formulas for calculating the property Az (see specification objection above), declarant has selected A5-Ag method of calculating this property and it is not clear why this has been selected rather than the other formulation for calculating Az.
Further, while Hummel teaches a two stage aging which overlaps the parameters in the instant disclosure, Hummel also discloses a multistage artificial aging process the first artificial aging is performed at a temperature of 100°C to 180°C for a period of 40 minutes to 150 minutes and the second artificial ageing is performed at a temperature of 195°C to 300°C for a period of 30 minutes to 100 minutes (Hummel, paragraph [0024]) and Hummel discloses where the aging includes a third stage where the last stage may be artificial aging at a temperature in the range of 240°C to 300°C for a short period of time in the range of about 5 minutes to about 45 minutes (Hummel, paragraph [0027]). Therefore the aluminum in Hummel, having a patentably indistinct composition and having a substantially identical method applied thereto would exhibit the same Az values. As Hummel discloses a three stage aging process that is substantially identical to the instant disclosed method this distinction between two and three stage aging is not pertinent and does not show a distinction between the instant application and Hummel. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Response to Arguments
With respect to the 103 rejection over Hummel, applicant argues that the declaration under rule 1.132 shows a distinction between the three-stage artificial aging in the instant application which differs from Hummel which lacks an intermediate stage between the first and third stage and this is a conventional T7 heat treatment that lacks this extra stage of aging (Applicant’s remarks, pg. 10, first four paragraphs). Applicant argues that the examples show a tailored precipitation behavior and control over the balance between strength and ductility and such control of mechanical properties is not disclosed or suggested in existing literature or industrial practice (Applicant’s remarks, pg. 10, last paragraph – pg. 11, 2nd full paragraph).
However, as noted above, the rejection has been modified to note that Hummel does disclose where the aging includes a third stage where the last stage may be artificial aging at a temperature in the range of 240°C to 300°C for a short period of time in the range of about 5 minutes to about 45 minutes (Hummel, paragraph [0027]). Thus, the same method applied to the same starting material would necessarily produce the same properties, see MPEP § 2112.01(I). Further, in response to applicant's argument that the invention achieves a previously undocumented balance between strength and ductility, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). Thus applicant’s arguments are not persuasive and the rejection is maintained.
Applicant also argues that new claims 17-24 require the presence of chromium which Hummel does not teach the inclusion of (Applicant’s remarks, pg. 11, 3rd full paragraph).
It is agreed that Hummel does not teach the inclusion of chromium, however this deficiency is cured by Speckert which teaches reasons for the inclusion of chromium in this type of aluminum alloy to improve mechanical properties. Thus applicant’s arguments are not persuasive and the rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733