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 & Status of Claims
Applicant’s election without traverse of claims 5-8 in the reply filed on 09/08/2025 is acknowledged.
Claims 1-4 and 9-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 09/08/2025.
Specification
The disclosure is objected to because it contains an embedded hyperlink and/or other form of browser-executable code. Applicant is required to delete the embedded hyperlink and/or other form of browser-executable code; references to websites should be limited to the top-level domain name without any prefix such as http:// or other browser-executable code. See MPEP § 608.01.
Drawings
Figures 1 to 5 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 5 is objected to because of the following informalities: Claim 5 refers to the electrode of claim 1 which has been withdrawn as Applicant elected the method claims 5-8 for examination. Appropriate correction is required.
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 5-8 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.
Regarding claims 5-8, claim 5 recites “Rapid cooling in water, Intermediate air cooling, and Slow cooling by leaving the electrode inside the turned-off furnace until it reaches room temperature”. The terms “Rapid cooling” “Intermediate air cooling” and “Slow cooling” in claim 5 (claim 8 also recites “intermediate air cooling”) are relative terms which renders the claim indefinite. The terms are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As neither the claims nor the specification explicitly define these terms, it is unclear what speeds of cooling would meet the three terms thereby making the instant claims indefinite.
Regarding claims 5-8, claim 5 recites “Cooling the electrode piece by means of at least one of the following cooling modes: Rapid cooling in water, Intermediate air cooling, and Slow cooling by leaving the electrode inside the turned-off furnace until it reaches room temperature”. The term “the electrode” the slow cooling step has insufficient antecedent basis for this limitation in the claim as the cooling using one of three means is of the electrode piece.
In addition, claim 5 requires “A method for obtaining the electrode” whereas the body of the claim recites processes or steps of “an electrode piece”. It is unclear how the “electrode piece” becomes “the electrode” of the preamble.
Regarding claims 5-8, claim 5 recites “Heating the electrode piece for a period of time between 1 and 5 hours, at a temperature between 400° C and 900° C”. It is unclear if the heating period is referring to a) time to heat to the temperature range, b) time of heating in the temperature range or c) time being held in the temperature range or in other words soaking time.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0007295 A1 of Lorentzen (US’295).
Regarding claim 5, US 2004/0007295 A1 of Lorentzen (US’295) teaches {abstract, Fig 1-5, claims 1-28} “A method for manufacturing aluminum sheet stock that includes hot rolling an aluminum alloy feedstock to a final thickness and then back-annealing (or stress relieving or stabilizing) the hot rolled feedstock to provide an intermediate temper” [0002] “The present invention relates generally to casting of aluminum alloys and specifically to a continuous casting process for producing intermediate tempered aluminum alloy sheet. [0010] “The method includes the steps of: [0011] (a) casting an aluminum alloy feedstock from an aluminum alloy melt; [0012] (b) hot rolling the aluminum alloy feedstock to a finished (or final) gauge to form a hot rolled feedstock; and [0013] (c) back-annealing at least one of the aluminum alloy feedstock and hot rolled feedstock to provide a desired intermediate temper. As used herein, "finished gauge" refers to the gauge selected for the aluminum alloy sheet product of the process, "hot rolling" refers to reducing the gauge of feedstock at a temperature of 400.degree. F. or greater, "cold rolling" to reducing the gauge of feedstock at a temperature of less than 400.degree. F., "back annealing" to thermally induced softening of an aluminum alloy to produce at least substantially uniform, desired mechanical properties, typically meeting Aluminum Association limits. An "intermediate temper" provides a metal with mechanical properties elevated from those typical at a dead soft temper, and includes all tempers in between O and Hx9. Other terms used in the industry to refer to back annealing include "stress-relieving" and "stabilizing". In one process configuration, the back-annealed feedstock is immediately coiled and allowed cool to a temperature suitable for finishing operations such as leveling, slitting or painting.” [0017] “To accomplish this result, back annealing is typically performed at a temperature within the range of about 700 to about 1000° F.”
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The prior art teaches various composition of Aluminum alloys in Table 1 which reads on the Aluminum alloy of the instant claims. The prior art further teaches [0017] “To accomplish this result, back annealing is typically performed at a temperature within the range of about 700 to about 1000° F.” [0041] “Table II provides a listing of specific alloys within the alloy families of Table I and provides, for each alloy and temper, the approximate feedstock thickness, the approximate ultimate tensile strength, the approximate yield strength, the approximate elongation percent (minimum in 2 inch or 4 inches in diameter), the approximate back anneal temperature range, and the approximate maximum percent recrystallization realized during back annealing. As will be appreciated, in a continuous back anneal the feedstock preferably has a residence time of no more than about 120 seconds, more preferably no more than about 30 seconds, and even more preferably from about 1 to about 10 seconds and in a batch back anneal the feedstock has a residence time of more than about 8 hours, more preferably no more than about 5 hours, and even more preferably from about 1 to about 3 hours. Generally, the back anneal temperature range is from about 600 to about 1,000° F., more generally from about 700 to about 950° F., and even more generally from about 700 to about 900° F.” thereby meeting the aluminum alloy and heat treatment temperature and time of the instant claim.
Regarding the cooling step, the prior art teaches [0013] “In one process configuration, the back-annealed feedstock is immediately coiled and allowed cool to a temperature suitable for finishing operations such as leveling, slitting or painting.” [0056] “Referring again to FIG. 4, the back-annealed feedstock can be subjected to further processing 412, depending on the desired end product. For example, the feedstock can be subjected to leveling 416, slitting 420, painting 428, or shearing to desired lengths. Alternatively, the feedstock can be coiled and cooled to form coil sheet stock 424. As shown by step 432, other processing can be performed depending on the product.” [0053] “In the megamill process of the present invention, there is a period for melting, followed by a rapid cool during strip casting. The cast strip is then hot rolled to final thickness. The in-line back-anneal step raises the temperature, and the hot rolled feedstock is immediately allowed to cool to room temperature. As can be seen from FIG. 2, the present invention differs substantially from the prior art in duration, frequency and rate of heating and cooling.” (see also Fig 2. 3) thereby meeting the instant recited limitation.
It is noted that the prior art does not teach the Aluminum alloy being an electrode as recited in the instant claims. However, one skilled in the art recognizes that Aluminum alloys are used as electrodes. Therefore, it 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 to take the alloy of the prior art and use it as an electrode as usage of aluminum alloys as electrodes is known and routine in the art.
Regarding the recitation of “for electrocoagulation, intended to be used in wastewater electrocoagulation plants” (recited in instant claim 1), it is interpreted as an intended use of the alloy. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction. If a prior art structure is capable of performing the intended use as recited in the preamble, then it meets the claim. See MPEP § 2111.02 II. As the prior art teaches a substantially identical product, the prior art structure is capable of performing the intended use as recited in the preamble thereby meeting the claimed recitation.
Regarding the grain size limitation (recited in claim 1), although the prior art teaches [0037] “In addition, the heating provided by heater 552 without intermediate cooling provides much improved metallurgical properties (grain size and formality) over conventional batch annealing and equal or better metallurgical properties compared to off-line flash annealing.” [0049] “In contrast, the process of the present invention achieves final mechanical properties of the final product. The use of the heater 552 allows the hot rolling temperature to be controlled independently from the back-annealing temperature. That in turn allows the use of hot rolling conditions that can maximize surface finish and texture (grain orientation)”, it is silent regarding the grain size range as recited in the instant claim. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes {see process steps analysis above}. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claims 6-7, the prior art teaches 5XXX Alloy in Table 1 as well as the 5086 H32 in Table 2. With respect to the temperature, the prior art teaches [0017] “To accomplish this result, back annealing is typically performed at a temperature within the range of about 700 to about 1000° F.” [0041] “Generally, the back anneal temperature range is from about 600 to about 1,000° F., more generally from about 700 to about 950° F., and even more generally from about 700 to about 900° F.” thereby meeting the instant claimed recitations. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 8, the prior art teaches {Fig 2, 3} [0013] “In one process configuration, the back-annealed feedstock is immediately coiled and allowed cool to a temperature suitable for finishing operations such as leveling, slitting or painting.” [0053] “In the megamill process of the present invention, there is a period for melting, followed by a rapid cool during strip casting. The cast strip is then hot rolled to final thickness. The in-line back-anneal step raises the temperature, and the hot rolled feedstock is immediately allowed to cool to room temperature. As can be seen from FIG. 2, the present invention differs substantially from the prior art in duration, frequency and rate of heating and cooling.” [0056] “Referring again to FIG. 4, the back-annealed feedstock can be subjected to further processing 412, depending on the desired end product. For example, the feedstock can be subjected to leveling 416, slitting 420, painting 428, or shearing to desired lengths. Alternatively, the feedstock can be coiled and cooled to form coil sheet stock 424. As shown by step 432, other processing can be performed depending on the product.” As the instant claims do not define what rates would meet the “intermediate” cooling, the cooling of the prior art reads on the recited limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733