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, 2, 5-13
Withdrawn:
8-13
Rejected:
1, 2, 5-7
Amended:
NONE
New:
NONE
Independent:
1
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 1, 5, 7 are rejected under 35 U.S.C. 103 as being unpatentable over CN 106119626 (CN’626) further in view of “ASM Handbook: Vol. 2” p 31, 68, 71 (previously cited) and “Modification of Aluminum-Silicon Alloys”, p 240-243 (previously cited).
CN’626 teaches an aluminum alloy comprising (in wt%):
cl. 1
cl. 2
CN’626
Si
8-11
9-10.8
8.0-11.0
Cu
2-3
2.5-2.8
2.0-4.0
Mg
0.7-1.1
0.7-1.1
≤0.65
(rounds to 0.7)
Mn
0.7-1.5
0.9-1.3
(outside)
≤0.75
Sr
0.01-0.015
0.01-0.015
Cr
0.01-0.015
0.01-0.015
≤0.20
Fe
0-0.4
0-0.4
≤1.4
Ti
0.02-0.1
0.03-0.1
≤0.30
Ga
0.01-0.02
0.01-0.015
B
0.004-0.02
0.004-0.01
Zn
0-2
0-2
≤1.3
other
<0.1% total
<0.1% total
Table 1: instant claims vs. CN’626
which overlaps the claimed ranges of Si, Cu, Mn, Cr, Fe, Ti, and Zn. Concerning the claimed Mg minimum of “0.7%”, the maximum Mg taught by CN’626 of 0.65%, when rounded to 1 significant digit (wherein instant claim 1 recites the amount of Mg in one significant digit) rounds to 0.7%, and therefore is considered to suggest the instantly claimed amount of Mg. Concerning the “consisting of” transitional phrase, CN’626 does not specify any elements excluded by said transitional phrase.
CN’626 does not teach a) the addition of B; b) Ga>Sr or the presence of Ga, c) mass ratio of Ti:B is (5-10): 1, d) the addition of Sr.
Concerning a) and c), “ASM Handbook: Vol 2A” teaches the addition of 0.005-0.1% B to aluminum alloys for grain refining purposes (p68), and wherein B is added together with Ti in a 5:1 ratio of Ti: B (“ASM Handbook: Vol 2A” p 68), which suggests both the instant limitation of “a mass ratio of Ti to B is (5-10): 1”, as well as the B range of claim 1. It would have been obvious to one of ordinary skill in the art to have added 0.005-0.1% B, such that Ti/B ratio is 5:1, because “ASM Handbook: Vol. 2A” teaches adding boron and titanium in said ratios and amounts to aluminum alloys result in the alloys exhibit beneficial grain refinement properties.
Concerning d), CN’626 does not specify the addition of Sr. However, “Modification of Aluminum-Silicon Alloys” teaches Sr is added to Al-Si alloys as a modifier, to produce a fine fibrous structure with improved ductility (p 240). “Modification of Aluminum-Silicon Alloys” teaches 80-120 ppm Sr (0.008-0.012% Sr) results in an optimum combination of refinement and higher elongation but low degree of porosity (p 243). It would have been obvious to one of ordinary skill in the art to have added 0.008-0.012% Sr to the Al-Si alloy of CN’626 in order to refine the Si phase and improve elongation/ductility, while minimizing porosity.
Concerning b), “ASM Handbook: Vol. 2A” p 71 teaches Ga is present as an impurity in aluminum at levels of 0.001-0.02%, which overlaps the claimed range of 0.01-0.02% Ga. Though the prior art does not specify Ga>Sr; ranges of Sr and Ga of: 0.01-0.02% Ga (taught by “ASM Handbook: Vol. 2A” and 0.008-0.012% Sr (taught by “Modification of Aluminum-Silicon Alloys”), encompasses ranges of Ga and Sr that broadly overlap the instant limitation (for example 0.02% Ga>0.010% Sr). One of skill in the art would have expected 0.001-0.02% Ga for the Al-Si alloy of CN’626, because “ASM Handbook: Vol 2A” teaches Ga is an expected impurity for aluminum in said ranges. Further, it would have been obvious to one of ordinary skill in the art to have added 0.008-0.012% Sr to the Al-Si alloy of CN’626 (which results in Ga and Sr amounts that meet the instant Ga>Sr) because “Modification of Aluminum-Silicon Alloys” teaches said addition improves ductility.
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 claim 5, as discussed above, Si and Cu content taught by CN’626 are 8-11% Si and 2-4% Cu. For these values, the instant expression: Si=(Cu-0.2)*(3 to 5), for Cu=3%, Si=(3-0.2)*(3 to 5), Si=8.4-14, which is met by the Si range of CN’626 of 8-11%.
Concerning claim 7, CN’626 does not mention the presence of Zr, Ni, Cr, Sc, and/or Er, and therefore said elements are held to be substantially absent/zero. The absence of said other elements meets one or more “other elements” less than 0.1% (wherein other elements include Zr, Ni, Cr, Ce, Sr, and Er).
Claims 1, 2, 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hayato (US 4,973,363) further in view of “ASM Handbook: Vol. 2” p 31, 68, 71 (previously cited).
Hayato (column 3 lines 45-50, column 4 lines 32-36, Table 1) teaches an aluminum alloy comprising (in wt%):
cl. 1
cl. 2
Hayato
Si
8-11
9-10.8
8-13
Cu
2-3
2.5-2.8
2.5-6
Mg
0.7-1.1
0.7-1.1
0.3-1.2
Mn
0.7-1.5
0.9-1.3
0.25-1.0% Mn+Fe
Sr
0.01-0.015
0.01-0.015
~0.01 (Table 1,
i.e. 100 ppm)
Cr
0.01-0.015
0.01-0.015
-0.5
Fe
0-0.4
0-0.4
0.25-1.0% Mn+Fe
Ti
0.02-0.1
0.03-0.1
0.005-0.25% Ti+B
Ga
0.01-0.02
0.01-0.015
*(not taught)
B
0.004-0.02
0.004-0.01
0.005-0.25% Ti+B
Zn
0-2
0-2
-0.5
other
<0.1%
<0.1%
Table 2: instant claims vs. Hayato
which overlaps the claimed ranges of Si, Cu, Mn, Cr, Fe, Ti, B, Mg, Sr, and Zn (instant claims 1 and 2). Concerning claim 1’s limitation of a Ti to B ratio of 5-10, Hayato teaches 0.005-0.25% total B+Ti which includes ratios of 5-10 Ti:1 B, and therefore meets the instant limitation. Concerning the “consisting of” transitional phrase, Hayto does not specify any elements excluded by said transitional phrase.
Hayto does not teach a) the content of Ga>Sr, or b) adding Ga to his Al-Si alloy.
Concerning b), Hayato does not teach the presence of Ga. However, “ASM Handbook: Vol. 2A” p 71 teaches Ga is present as an impurity in aluminum at levels of 0.001-0.02%, which overlaps the claimed range of 0.01-0.02% Ga. One of skill in the art would have expected 0.001-0.02% Ga for the Al-Si alloy of Hayato, because “ASM Handbook: Vol 2A” teaches Ga is an expected impurity for aluminum in said ranges.
Concerning a), though the prior art does not specify Ga>Sr; ranges of Sr and Ga taught by Hayato in view of “ASM Handbook: Vol 2A” result in Ga and Sr amounts that meet the instant Ga>Sr. More particularly, “ASM Handbook: Vol. 2A”s teaching of: 0.01-0.02% Ga and Hayato’s teaching of ~100 ppm Sr (i.e. 0.01% Sr), meet the instant Ga>Sr limitation (for example 0.02% Ga>0.01% Sr), and therefore Hayato in view of “ASM Handbook Vol. 2A” meets said limitation. Because “ASM Handbook: Vol 2A” teaches Ga is an expected impurity for aluminum in amounts that overlap the claimed range (as well as the claimed Ga>Sr limitation), and because Hayato teaches an overlap in alloying ranges of Si, Cu, Mg, Mn, Sr, Cr, Fe, Ti, B, and Zn, the instant claims are held to be prima facie obvious in view of Hayato and “ASM Handbook: Vol 2A”.
Overlapping ranges have been held to establish a prima facie case of obviousness; see MPEP § 2144.05 and Peterson, supra.
Concerning claim 2, as discussed in paragraphs above, Hayato together with “ASM Handbook: Vol. 2A” teach an overlapping Al-Si alloy.
Concerning claim 5, as discussed above, Si and Cu content taught by Hayato 8-13% Si and 2.5-6% Cu. For these values, the instant expression: Si=(Cu-0.2)*(3 to 5), for Cu=3%, Si=(3-0.2)*(3 to 5), Si=8.4-14, which is met by the Si range of Hayato of 8-13%.
Concerning claim 6, as discussed above, the Mn and Cu content taught by Hayato: Mn=0.25-1.0% and 2.5-6% Cu. For these values, the instant expression: Cu=(Mn-0.3)*(2.5 to 4), for Mn=1.0%, Cu=(1.0-0.3)*(2.5 to 4)=1.75-2.8 which overlaps/meets the claimed 2-4% Cu.
Concerning claim 7, Hayato does not mention the presence of Zr, Ni, Cr, Sc, and/or Er, and therefore meets one or more “other elements” less than 0.1% (wherein other elements include Zr, Ni, Cr, Ce, Sr, and Er).
Response to Amendment/Arguments
In the response filed 1/15/26 applicant 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 specify an aluminum alloy consisting of the claimed alloying elements, complete with 0.01-0.02% Ga, has not been found persuasive. CN’626 in view of “ASM Handbook: Vol. 2” and “Modification of Aluminum-Silicon Alloys”, and/or Hayato in view of “ASM Handbook: Vol. 2” are held to suggest an alloy as claimed, as set forth above. The presence of an alloying element as “deliberate” in a given amount (by itself) does not patentably distinguish from the presence of the same alloying element (in an overlapping amount) as “inevitable” or as an impurity. More particularly, “ASM Handbook: Vol. 2A” p 71 teaches Ga is present as an impurity in aluminum at levels of 0.001-0.02%, which overlaps the claimed range of 0.01-0.02% Ga. One of skill in the art would have expected 0.001-0.02% Ga for the Al-Si alloy taught by the prior art of CN’626 or Hayato, because “ASM Handbook: Vol 2A” teaches Ga is an expected impurity for aluminum in said ranges.
Applicant’s argument that the instant invention is allowable over CN’626 because the prior art of CN’626 expressly includes the addition of Ni, Sn, and Pb which are excluded by the “consisting of” transitional phrase has not been found persuasive. Similarly, applicant’s argument that “CN’626 does not specify any elements excluded is factually incorrect in view of CN’626’s inclusion of Ni, Sn, and Pb” is untenable. CN’626 includes embodiments with Ni, Sn, and Pb (see claims 3, 4 of CN’626), but also includes a broad range that does not require a minimum of Ni, Sn, or Pb to be present (see CN’626 at claim 1, which recites maximum amounts of Ni, Sn, and Pb, but a minimum is not recited/required). The disclosure of CN’626 is not limited to preferred embodiments. It is maintained that CN’626 is drawn to an Al-Si alloy consisting of Si, Cu, Mn, Mn, Cr, Fe, Ti, Zn, balance aluminum; which overlaps the claimed alloying ranges and does not require a non-zero/minimum amount of Ni, Sn, or Pb (or any other element excluded by the instant “consisting of” transitional phrase). CN’626 together with “ASM Handbook Vol 2A” (who teaches 0.005-0.1% B and 0.01-0.02% Ga) and “Modification of Aluminum-Silicon Alloys” (who teaches Sr is added 0.008-0.012% as a modifier) meets the alloying ranges of instant claims 1, 5, and 7.
Applicant’s argument that Ga as an impurity in aluminum does not relate to aluminum alloys but only aluminum metal, is untenable. Handbook reference “ASM Handbook Vol. 2A” provided is drawn to aluminum and aluminum alloys (see in particular, p 31). Clearly, aluminum metal is the major component of aluminum alloys, and they are inextricably connected. The teaching of handbook reference “ASM Handbook Vol. 2A” is drawn to Ga as an impurity in aluminum, wherein aluminum is the base metal of the alloy taught by CN’626 or Hayato. One of skill in the art would have expected 0.001-0.02% Ga to be present in the Al-Si alloy taught by the prior art of CN’626 or Hayato, because “ASM Handbook: Vol 2A” teaches Ga is an expected impurity for aluminum in said ranges.
Applicant’s argument that the instant invention is allowable because the prior art does not teach the claimed Ga>Sr, and there is no suggestion to adjust Ga to exceed Sr or to coordinate Ga with Sr, has not been found persuasive. The prior art teaches a broad overlap of the claimed alloying ranges, complete with overlapping ranges of Ga and Sr (and complete with ranges that meet the condition Ga>Sr), and therefore meets the claimed alloying ranges and conditions (by virtue of said overlap). With respect to the overlap taught by the prior art, applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
When the Examiner has established a prima facie obviousness, the burden then shifts to the applicant to rebut. In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (en banc). Rebuttal may take the form of “a comparison of test data showing that the claimed compositions possess unexpectedly improved properties… that the prior art does not have, that the prior art is so deficient that there is no motivation to make what might otherwise appear to be obvious changes, or any other argument.. that is pertinent.” Id. at 692-93; USPQ2d 1901. Applicant has not directed the examiner to evidence of unexpected results.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
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