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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/6/26 has been entered.
Status of Claims
Pending:
1-6, 8-15, 17-21, 25-26, 30-32
Withdrawn:
9-15, 17-21
Rejected:
1-6, 8, 25-27, 30
Amended:
1-6, 8, 9, 17, 18, 21, 25-26, 30-31
Objected to/ allowable:
31
New:
32
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 1-6, 8, 25-26, 30, 32 are rejected under 35 U.S.C. 103 as being unpatentable over Platek et al. (US 2009/0159160), cited herein, in view of Vernam et al (US 4,412,870), previously cited.
Platek teaches an Al-Mg-Mn alloy composition comprising (in wt%):
Claim 1
Dependent claims
Platek (abstract)
Mg
1.0-2.0
1.2-1.9 (cl. 3)
1.3-2.8
Mn
0.2-0.95
0.4-0.9 (cl. 4)
0.5-1.2
0.2-0.7 (cl. 25)
Cr
0.05-0.35
0.05-0.3 (cl. 5)
-0.2
Ti
0.00-0.1
0.00-0.05 (cl. 2)
-
Sr
0.005-0.08
-0.3
Cu
0.00-0.05
-0.3
Si
0.01-0.2 (cl. 6)
-0.7
Fe
<0.07% (cl. 30)
<0.03% (cl. 31)
-0.8
balance
Aluminum+ impurities
Impurities ≤0.05% each
<0.1% total (cl. 8)
balance Al and impurities ≤0.05% each
≤0.15% total (cl. 1)
Table 1: instant claims vs. prior art of Platek
which overlaps the claimed alloying ranges of Mg, Mn, Cr, Ti, Cu, and Si in instant claims 1-6, 8. Concerning the Ti range of claim 1, Platek does not mention the presence of Ti and therefore negligible/substantially no Ti is held to be present for the Al-Mg alloy of Platek, which meets the Ti amount of 0.00-0.1% as claimed. Concerning the Cu content of claim 1, a maximum of 0.3% Cu taught by Platek overlaps the claimed amount of 0.00-0.05% Cu, and therefore meets said limitation. Further, the presence (or absence) of an alloying element stated in the instant claims to be “inevitable” in a given amount (by itself) does not patentably distinguish from the presence of the same alloying element (in said given amount) as “intentional”.
Concerning the amendment to claim 1 of “an armored electrical cable comprising an aluminum alloy…” Platek teaches said Al-Mg alloy is suitable to be formed into wire and cables, including metal clad cable (see Fig. 12-14)- which meets the instant electrical cable limitation of instant claim 1, as well as cable wrap limitation of new claim 32.
Platek teaches Sr is present in the amount of -0.3% maximum, which broadly overlaps the claimed range. Further, Vernam teaches addition of 0.01-0.25 Sr to similar Al-Mg-Mn-Cr alloys for the predictable purpose of refining the Fe containing intermetallic phases (column 6, lines 6-7, 40-41). More particularly, Fe is in solid solution in aluminum up to Fe amounts of about 0.04-0.05% (column 5 line 6), and forms insoluble Al-Fe-Mn and Al-Fe-Mn-Si intermetallic phases above said solid solution amount (column 5 lines 7-9). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to have included 0.01-0.25% Sr, as taught by Vernam, to the Al-Mg alloy of Platek in order to provide the predictable purpose of refining the intermetallic phases (taught by Vernam col. 6, lines 6-7, 40-41).
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 ranges disclosed in the prior art, because the prior art finds that said composition in the entire disclosed ranges 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 8, Platek teaches the balance of the alloy is aluminum and unavoidable impurities ≤0.05% each and ≤0.15% total (see Platek at claim 1), which overlaps the claimed impurity limits and meets said limitation.
Concerning claim 26, as discussed above, Platek teaches a broadly overlapping Sr range, and Vernam teaches motivation to add/include 0.01-0.25% Sr to the Al-Mn alloy of Platek. Further, the presence (or absence) of an alloying element stated in the instant claims to be “inevitable” in a given amount (by itself) does not patentably distinguish from the presence of the same alloying element (in said given amount) as “intentional”.
Concerning claim 30, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to have added 0.01-0.25% Sr, as taught by Vernam, to the Al-Mg alloy of Platek with Fe amounts such that intermetallic phases form (i.e. Fe > 0.04-0.05%, Vernam at column 5 line 6, which overlaps and therefore meets the claimed <0.07% Fe) in order to provide the predictable purpose of refining the intermetallic phases (taught by Vernam col. 6, lines 6-7, 40-41).
Concerning new claim 32, as set forth above, Platek teaches said Al-Mg alloy is suitable to be formed into wire and cables, including metal clad cable (see Fig. 12-14)- which meets the instant cable wrap limitation of new claim 32.
Allowable Subject Matter
Claim 31 is 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 of (JP’458 or Legresy) and Vernam do not teach or suggest adding 0.005-0.08% Sr to the claimed alloy, complete with a Fe content of <0.03% (as set forth in dependent claim 31). Fe is expected to be in solid solution when present in small amounts <0.03% (rather than present in intermetallic/insoluble form), and Vernam does not teach or suggest adding Sr to alloys with soluble Fe.
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.”
Response to Amendment
In the response filed on 5/6/26 applicant amended claims 1-6, 8, 9, 17, 18, 21, 25, 26, 30, 31 and added new claim 32. No new matter has been added.
Applicant’s arguments with respect to the rejection of the instant claims in view of JP’458 in view of Vernam (or Legresy combined with Vernam) have been considered but are moot because the new grounds of rejection herein does not rely on JP’458 or Legresy. See below with respect to applicant’s arguments in view of Vernam as a secondary reference. The closest prior art to the instantly amended claims is held to be Platek in view of Vernam, as set forth supra.
Applicant’s argument that the prior art of Vernam does not teach or suggest adding Sr to the Al-Mg alloy of the prior art, or that Vernam teaches away from the alloy recited in amended claim 1, has not been found persuasive. As set forth above, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the present invention, to have added 0.01-0.25% Sr, as taught by Vernam, to the Al-Mg alloy of Platek with Fe amounts such that intermetallic phases form (i.e. Fe > 0.04-0.05%, Vernam at column 5 line 6) in order to provide the predictable purpose of refining the intermetallic phases (taught by Vernam col. 6, lines 6-7, 40-41).
Conclusion
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
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