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:
1-6, 8-15, 17-21, 25-27, 30, 31
Withdrawn:
9-15, 17-21
Rejected:
1-6, 8, 25-27, 30
Amended:
2, 7
Objected to/ allowable:
31
New:
30, 31
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, 26, 27, 30 are rejected under 35 U.S.C. 103 as being unpatentable over JP 4205458 B2 (JP’458), previously cited, in view of Vernam et al (US 4,412,870), previously cited.
JP’458 teaches an Al-Mg-Mn alloy composition comprising (in wt%):
Claim 1
Dependent claims
JP’458
Mg
1.0-2.0
1.2-1.9 (cl. 3)
0.5-1.5 [0027]
Mn
0.2-0.95
0.4-0.9 (cl. 4)
0.8-1.5 [0026]
0.2-0.7 (cl. 25)
*not taught
Cr
0.05-0.35
0.05-0.3 (cl. 5)
0.001-0.3 [0034]
Ti
0.00-0.1
0.00-0.05 (cl. 2)
0.005-0.2 [0037]
Sr
0.005-0.08
-
Cu
0.00-0.05
opt. 0.05-0.5 [0033]
Si
0.01-0.2 (cl. 6)
0.05-0.5 [0030]
balance
Aluminum+ impurities
Impurities ≤0.05% each
<0.1% total (cl. 8)
balance Al and impurities [0031]
Table 1: instant claims vs. prior art of JP’458
which overlaps the claimed alloying ranges of Mg, Mn, Cr, Ti, Cu, and Si in instant claims 1-6, 8. More particularly concerning the claimed Cu amount of “inevitable impurities comprise 0.00-0.05 wt% Cu”, JP’458 does not require the presence of Cu and therefore meets the instant 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 amended claim 1 (as well as dependent claim 26), JP’458 does not teach the addition of Sr to the instant Al-Mg-Mn-Cr alloy. However, 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 added 0.01-0.25% Sr, as taught by Vernam, to the Al-Mg-Mn-Cr alloy of JP’458 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, JP’458 teaches the balance of the alloy is aluminum and unavoidable impurities [0033]. Though JP’458 does not specify the amount of each impurity allowed or the total impurities allowed, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have minimized impurities for the Al-Mg-Mn alloy of JP’458 (such as within the claimed <0.1% total and ≤0.05% each), wherein minimizing impurities is known to provide the predictable result of improving the consistency of properties (see JP’458 at [0092]).
Concerning claim 27, JP’458 teaches forming said alloy into a sheet [0001] which meets the instant product configuration of “rolled product” together with “strip”. Concerning the product-by-process steps of “an extruded and rolled aluminum product”, JP’458 teaches rolling said alloy into a sheet, but does not teach a product-by-process step of extrusion.
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). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). 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.
For the instant case, JP’458 teaches forming said alloy into a sheet (abstract) which includes/meets the instant product configuration of “strip”. Applicant has not shown the product by process limitations of instant claim 27 result in a product materially different than the Al alloy sheet product of JP’458.
Concerning new 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-Mn-Cr alloy of JP’458 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).
Claim 25 is rejected under 35 U.S.C. 103 as being unpatentable over Legresy et al (US 5,616,190) in view of Vernam.
Legresy teaches an Al-Mg-Mn alloy comprising (in wt%):
Claim 1
Dependent claims
Legresy
Mg
1.0-2.0
1.0-2.0
(column 3 line 59, column 4 line 8)
Mn
0.2-0.95
0.4-1.6
(see Legresy at claims 1 & 5)
0.2-0.7 (cl. 25)
Cr
0.05-0.35
opt. <0.2
(see Legresy cl. 7)
Ti
0.00-0.1
-
Sr
0.0005-0.08
-
Cu
0.00-0.05
opt. <0.4
(see Legresy cl. 6)
Si
-
Fe
<0.3
(column 4 line 24-25)
balance
Aluminum+ impurities
balance Al and impurities
(see Legresy cl. 1)
Table 2: instant claims vs. prior art of Legresy
which overlaps the claimed alloying ranges of Mg, Mn, Cr, Ti, Cu, and Si in instant claim 25. More particularly concerning the claimed Cu amount of “inevitable impurities comprise 0.00-0.05 wt% Cu”, Legresy does not require the presence of Cu and therefore meets the instant limitation.
Further concerning claim 1, upon which claim 25 is dependent (wherein claim 1 includes the amended limitation of 0.005-0.08% Sr): Legresy does not teach the presence of Sr. However, Vernam teaches 0.01-0.25% Sr is useful to be added to similar Al-Mg-Mn-Cr alloys with Fe present in order to provide the predictable purpose of refining the intermetallic Fe phases. 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-Mn-Cr alloy of Legresy (with <0.3% Fe, column 4 lines 24-25), in order to provide the predictable purpose of refining the intermetallic Fe phases (taught by Vernam at column 6 lines 6-7, 40-41).
Because of the overlap in alloying ranges of Mg, Mn, Cr, Ti, Sr, and Cu, it is held that Legresy in view of Vernam has created a prima facie case of obviousness of the presently claimed invention.
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).
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 12/1/25 applicant amended claim 1, and added new claims 30 and 31. No new matter has been added.
Applicant’s argument that the prior art of Vernam does not teach or suggest adding Sr to the Al-Mg-Mn-Cr alloy of JP’458, 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-Mn-Cr alloy of JP’458 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).
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest an Al-Mg-Mn-Cr alloy suitable for armored cable wraps, has not been found persuasive. Similarly, applicant’s argument that the instant invention is allowable because Vernam is drawn to alloys that include higher Mg ranges, and applicant argues said alloys would not be suitable for armored wrap cables, is untenable. The instant claims are not drawn to armored cable products, but aluminum alloys. As set forth above, the prior art teaches an aluminum alloy with overlapping alloying ranges, and therefore has created a prima facie case of obviousness of the presently claimed invention.
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 12/23/25