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:
1-9
Withdrawn:
NONE
Rejected:
1-9
Amended:
1, 3
New:
5-9
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 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2007/080689 (WO’689, cited herein) in view of “Aluminum and Aluminum Alloys” p 64 (previously cited).
WO’689 (at abstract, etc.) teaches an aluminum alloy rolled product comprising (in wt%):
cl. 1
cl. 2
cl. 9
WO’689 broad
Mg
1.5-2.5
2.5-5.0
Fe
0.2-2.0
0.1-0.3
Si
≤0.5
≥0.16
(outside)
0.06-0.12
Mn
-0.1
-0.1
bal.
Al + impurities
Al+ impurities
Table 1: instant alloying ranges vs. WO’689
which overlaps or touches the boundary of the claimed ranges of Mg, Fe, Si, and Mn (cl. 1, 2), and therefore meets the instant limitations. Concerning the limitation of “an aluminum alloy foil” together with “a thickness… 5 to 100 µm”, WO’689 teaches rolling said alloy to form a sheet product (abstract), but does not teach forming a rolled product of foil thickness.
It would have been within the level of one of ordinary skill in the art, before the effective filing date of the claimed invention, to have reduced the thin rolled product of WO’689 to foil thickness (i.e. 5-100µm), based on the desired application, because changes in size, shape, or sequence of adding ingredients is prima facie obvious in the absence of new or unexpected results (see MPEP 2144.04). Further, “Aluminum and Aluminum Alloys” teaches aluminum rolled products can be in plate, sheet, or foil form (p 64). Therefore it is held that WO’689 together with “Aluminum and Aluminum Alloys” have created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 2, as set forth above, WO’689 teaches an overlapping amount of Mn, and therefore meets the instant limitation.
Concerning claim 3, 6, 7, WO’689 does not specify the tensile strength (UTS), or elongation. However, WO’689 together with “Aluminum and Aluminum Alloys” teaches an overlapping Al-Mg alloy rolled to foil thickness, together with processing by substantially similar steps of rolling and heat treating as in the instant invention, then substantially the same properties (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’689 teaches an average recrystallized grain size of 20 µm or less [0008], which overlaps the claimed grain size, and therefore meets the instant limitation.
Concerning claim 5, see above discussion of thickness.
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
1.5-2.5
≤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), 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.
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 claim 5, see above discussion of thickness.
Response to Amendment
In the response filed 10/7/25 applicant amended claims 1 and 3, submitted new claims 5-9, and submitted various arguments traversing the rejections of record. No new matter has been added.
Applicant’s arguments with respect to claim(s) 1-4 in view of JP’357 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 1/26/26