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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/11/26 has been entered.
Status of Claims
Pending:
1-9
Withdrawn:
NONE
Rejected:
1-9
Amended:
1, 5, 9
New:
NONE
Independent:
1
Claim Rejections - 35 USC § 103
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 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/019960A (WO’960, cited herein).
WO’960 (at abstract, translation p 4, etc.) teaches an aluminum alloy rolled foil product comprising (in wt%):
cl. 1
cl. 2
cl. 9
WO’960 broad
Mg
1.5-2.4
≤3.0
Fe
0.2-2.0
0.001-0.5
Si
≤0.5
≥0.16
0.001-0.3
Mn
-0.1
-0.5
bal.
Al + impurities
Al+ impurities
Table 2: instant alloying ranges vs. WO’960
which overlaps or touches the boundary of the claimed ranges of Mg, Fe, Si, Mn, aluminum and impurities (cl. 1, 2, 9), including the amended maximum of Mg of 2.4% (amended claim 1), and therefore meets the instant limitations. Concerning the limitation of “an aluminum alloy foil” together with “a thickness… 5 to 100 µm”, WO’960 teaches rolling said alloy to form a foil product with a thickness of 4-200µm, which overlaps the claimed foil thickness, and therefore meets the instant limitation. Because WO’960 teaches an aluminum alloy foil product with overlapping alloying ranges and product thickness, it is held that WO’960 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be 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 2, as set forth above, WO’960 teaches an overlapping amount of Mn, and therefore meets the instant limitation.
Concerning claim 3, 6, 7, WO’960 does not specify the tensile strength or elongation. However, because WO’960 teaches processing by substantially similar steps of rolling and heat treating as in the instant invention, then substantially the same properties (including mechanical properties of elongation, strength, etc.) are expected to the Al-Mg foil product of the prior art, as for the instant invention.
Concerning claims 4 and 8, WO’960 does not specify the average grain size. However, because WO’960 teaches processing by substantially similar steps of casting, cold rolling, and heat treating (see WO’960 at translation, p 3) as in the instant invention (see instant specification at examples, etc.), then substantially the same properties (average grain size, etc.) are expected to the Al-Mg foil product of the prior art, as for the instant invention.
Concerning amended claim 5, see above discussion of thickness.
Response to Amendment
In the response filed 5/11/26 applicant amended claims 1, 5, and 9, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s arguments that WO’689 does not teach or suggest an aluminum alloy foil product with the amended maximum of 2.4% Mg has been found persuasive.
Applicant’s arguments that the instant invention is allowable because WO’960 does not teach examples within the claimed ranges has not been found persuasive.
Patents are relevant as prior art for all they contain, and nonpreferred embodiments constitute prior art, MPEP 2123. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994) (The invention was directed to an epoxy impregnated fiber-reinforced printed circuit material. The applied prior art reference taught a printed circuit material similar to that of the claims but impregnated with polyester-imide resin instead of epoxy. The reference, however, disclosed that epoxy was known for this use, but that epoxy impregnated circuit boards have "relatively acceptable dimensional stability" and "some degree of flexibility," but are inferior to circuit boards impregnated with polyester-imide resins. The court upheld the rejection concluding that applicant’s argument that the reference teaches away from using epoxy was insufficient to overcome the rejection since "Gurley asserted no discovery beyond what was known in the art." 27 F.3d at 554, 31 USPQ2d at 1132.). See MPEP 2123.
In the instant case, the prior art of WO’960 teaches an aluminum alloy foil product with alloying ranges that broadly overlap the claimed ranges, and therefore WO’960 has created a prima facie case of obviousness of the claimed invention. With respect to the overlapping ranges taught by the prior art, applicant has not clearly shown specific unexpected results (i.e. unexpected piercing strength, etc.) 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. See MPEP 716.02.
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 8/22/26
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