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 .
Election/Restrictions
Applicant’s election without traverse of group I claims 1-8, 11, 13, 16-24 in the reply filed on 10/17/25 is acknowledged. Claims 25-31, 33-35, 39 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 22-23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 22 is dependent on independent claim 16, wherein claim 16 recites an open type transitional phrase (i.e. “comprising”). Claim 22 recites “further comprising other elements in an amount of less than 0.05 wt% based on the total weight of the 6xxx aluminum alloy”. The combination of claim 16’s “comprising” together with claim 22’s “other elements in an amount of less than 0.05 wt% based on the total weight of the 6xxx aluminum alloy” renders the claim indefinite, as it is unclear what the instant claim is limited to. Said combination does not clearly limit said alloy to only the recited elements, with all other elements limited to <0.05wt% (each), due to the open type “comprising” transitional phrase of instant claim 16. Claim 23 contains a similar limitation, of “a total of the other elements is less than 0.15 wt%. For the purposes of this action, the instant claims 22 and 23 are interpreted as open type claim language consistent with “comprising” type transitional phrase. Appropriate correction/explanation is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2, 11, 13, 16-24 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 107,385,290A (CN’290, cited herein).
CN’290 teaches an aluminum alloy of the 6xxx/6000 type (see CN’290 at translation p 2) consisting of (in wt%):
Cl. 1,
6XXX alloy consisting of:
Cl. 13
6XXX alloy consisting ess of:
Cl. 16
6XXX alloy comprising:
Dependent claims
CN’290
Ex. 2 (translation p 5, [0067] Table 1)
Si
0.70-1.1
0.70-1.1
0.70-1.1
0.78
Mg
0.75-1.15
0.75-1.15
0.75-1.15
1.02
Cu
0.30-0.8
0.30-0.8
0.30-0.8
0.72
Fe
0.12-0.3
0.12-0.3
0.12-0.3 (cl. 18)
0.15
Mn
0.25-0.65
0.25-0.65
0.25-0.65 (cl. 19)
0.36
Zr
≤0.2
optionally ≤0.2
≤0.2 (cl. 20)
-
Cr
≤0.2
optionally ≤0.2
≤0.2 (cl. 21)
-
balance
Aluminum + ≤0.05% each, ≤0.15% total other elements
optionally other elements
0.016% Ti
0.0006% B
Bal. Al
Mg/Si
0.68-1.65
0.68-1.65
0.68-1.65
1.31
Mg+Si
1.5-2.2
1.5-2.2
1.8
YS
350-400 MPa (cl. 11)
388 MPa
(Table 2, [0160])
Table 1: comparison of instant claims vs. CN’290
which falls within the claimed alloying ranges of Si, Mg, Cu, Fe, Mn, Zr, Cr (instant independent claims 1, 13, 16; dependent claims 18-21). Concerning claim 1’s limitation of “other elements”, CN’290 teaches 0.016% Ti and 0.0006% B, which fall within the range of said claim’s “other elements” limitation, and wherein Ti and B qualify as “other elements” recited in claim 2 (see Markush type group of instant claim 2). CN’290 does not teach the presence of any elements excluded from the instant “consisting of” transitional phrase (cl. 1) or excluded from the instant “consisting essentially of” transitional phrase (cl. 13). Further, CN’290 teaches Ex. 2 exhibits a Mg/Si=1.31 (see Table 1 of CN’290), which meets the claimed Mg/Si limitation; as well as a Mg+Si=1.831 (see Table 1 of CN’290), which meets the claimed Mg+Si limitation (cl. 1, 17). Because CN’290 teaches an example of an aluminum alloy within the claimed ranges, it is held that CN’290 anticipates the claimed invention.
Concerning claim 11, CN’290 teaches example 2 exhibits YS=388 MPa (Table 2, [0160]), which falls within the claimed YS of 350-400 MPa, and therefore anticipates the instant limitation.
Concerning claims 22-24, CN’290 teaches 0.016% Ti and 0.0006% B, which fall within the range of instant claim 22’s “other elements” limitation, and the combination of such falls within the maximum of ≤0.15% (claim 23). Concerning claim 24, Ti and B qualify as “other elements” (see Markush type group of instant claim 24), and therefore CN’290 meets the instantly claimed limitation.
Claim Rejections - 35 USC § 102/103
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) 3-8 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN’290.
CN’290 is discussed in paragraphs above. CN’290 does not specify the a) amount of Mg or Si in a Mg2Si phase (cl. 3, 4), b) amount of Mg in a Al5Cu2Mg8Si5 Q-phase (cl. 5-7), or c) amount of Cu in an Al2Cu phase (cl. 8).
However, concerning said phases, CN’290 teaches an identical Aluminum alloy (see discussion above), also processed by steps of: casting, homogenizing, hot working, quenching, and artificially aging (instant specification at Ex. 1, [0188-0190]; CN’290 translation p 3). One of skill in the art would have expected the same microstructural phases (such as amounts of Mg and Si in Mg2Si phase, amount of Mg in Q-phase, amount of Cu in an Al2Cu phase) to result for the prior art of CN’290’s identical alloy processed in substantially identical process steps, as compared to the instant invention. Because CN’290 teaches an example within the claimed ranges, together with substantially identical processing steps of casting, homogenizing, hot working, quenching, and artificially aging; then substantially the same microstructural properties are inherently expected for the prior art (i.e. Mg and Si in Mg2Si phase, Mg in Q-phase, Cu in an Al2Cu phase), as for the instant invention. Therefore, it is held that CN’290 anticipates, or in the alternative, has created a prima facie case of obviousness of the presently claimed invention.
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, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Conclusion
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 11/9/25