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
Claim 1 is amended in view of applicant’s response filed 6/11/2026. Claims 2-3 are canceled. Therefore, claims 1 and 4-5 are currently under examination.
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.
Claim(s) 1 and 4-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2007126717(JP717), and further in view of JP2019-14940, whose English equivalent is Suzuki US 2020/0216933 A1(Suzuki).
JP717 teaches an aluminum alloy foil that applies to the instant claims as follows:
Al alloy foil
Instant Claims, in mass%
JP717, in mass%
Si
0.5 or less≥
<0.3 (abstract)
Fe
0.2-2.0
0.4-0.7 (abstract)
Mg
0.1-1.5
0.8-1.3 (abstract)
Mn
0.001-0.04
0.05-0.3 (abstract)
Foil thickness
5-100µm
40-200µm [0014]
Tensile strength
110MPa -180MPa
≥155MPa
Elongation
10% or more
Average crystal grain diameter
25µm or less
≤25µm (abstract)
Average crystal grain diameter
3µm to 25 µm
≤25µm (abstract)
Regarding claim 1, the amounts of Si, Fe and Mg in the Al alloy foil of JP717 reads on the claimed amounts of Si, Fe and Mg.
However, the amount of Mn in the Al alloy foil of JP717 is higher than the claimed 0.001-0.04 mass%.
Suzuki teaches an Al alloy foil comprising 1.0-1.8 mass% of Fe[0020-0022], 0.10-0.20 mass% of Si[0023-0024], wherein the Al alloy foil further comprises Mn in an amount of ≤ 0.01 mass%, and preferably in an amount of 0.002-0.005 mass%[0028-0030].
Therefore, it would have been obvious to one of ordinary skill in the art to have incorporated the Mn in a preferred amount of 0.002-0.005 mass% as taught by Suzuki into the Al alloy foil of JP717 in order to promote the formation of homogenous fine crystal grains and suppress work softening as taught by Suzuki[0028-0030].
Additionally, the tensile strength as taught by JP717 overlaps the claimed tensile strength. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. Furthermore, the process of making the Al alloy foil as taught by JP717 in view of Suzuki comprises intermediate annealing, cold rolling and final annealing steps, wherein the intermediate annealing and final annealing temperatures [0030] are the same as the intermediate annealing, cold rolling and final annealing temperatures disclosed by the instant specification. Since the composition of the Al alloy foil and process conditions of JP717 in view of Suzuki are significantly similar to the claimed Al alloy foil, and the tensile strength of the Al alloy foil of JP717 in view of Suzuki significantly similar to the claimed Al alloy foil, the examiner concludes that the process of JP717 in view of Suzuki would have produced an Al alloy foil having significantly similar elongation as claimed, absent persuasive evidence to the contrary.
Regarding claims 4-5, the average crystal grain size as taught by JP717 in view of Suzuki reads on the claimed average crystal grain diameter of 25µm or less as recited in claim 4 and significantly encompasses the claimed average crystal grain diameter of 3-25µm as recited in claim 5. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05. The selection of claimed average crystal diameter from the average crystal diameter as taught by JP717 in view of Suzuki would have been obvious to one of ordinary skill in the art since JP717 in view of Suzuki teach the same utilities in their disclosed average crystal grain diameter.
Response to Arguments
Applicant's arguments filed 6/11/2026 have been fully considered but they are not persuasive.
In the remarks, applicant argues that Suzuki’s aluminum alloy does not contain Mg and has a lower tensile strength, therefore, cannot be combined with the teachings of JP717.
The examiner does not find applicant’s argument convincing. The primary reference JP717 teaches an aluminum alloy having a tensile strength that overlaps the claimed tensile strength. Suzuki’s disclosure teaches that Mn in a preferred amount of 0.002-0.005 mass% in an aluminum alloy containing similar amounts of Fe and Si as the aluminum alloy of JP717 would promote the formation of homogenous fine crystal grains and suppress work softening[0028-0030]. The benefits of homogenous fine crystal grain and suppressed work softening associated with the Mn amount as taught by Suzuki provide sufficient motivation to one of ordinary skill in the art looking for these benefits in an Al alloy containing similar amounts of Fe and Si, such as JP717, to incorporate the Mn amount as taught by Suzuki in order to realize these benefits.
It is well settled that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggests the combination to achieve the same advantage or result discovered by applicant. In re Linter, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972). See MPEP 2144.
Furthermore, Suzuki does not provide any teaching prohibiting the use of Mn in an Al alloy that contains Mg.
Therefore, the examiner maintains that the rejection based on combined teaching of JP717 in view of Suzuki is proper.
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 LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
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