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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/23/26 has been entered.
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.
Claims 1-7, 9, 13-19, 25 are rejected under 35 U.S.C. 103 as being unpatentable over Das et al (US 2019/0119799), cited herein.
Das teaches an aluminum alloy product comprising (in wt%):
Claim 1
Claim 7
Claim 25
Das (ex. D1, Table 4)
Si
-1.8
1.20
Mg
0.2-3.0
0.70
Fe
-1.8
0.18
Cu
-1.5
0.80
Mn
-0.5
0.13
Ti
-0.25
0.02
Zn
-1.5
-
Ni
-1
-
V
-0.25
-
Zr
-0.25
-
Cr
-0.5
0.07
B
-
α stabilizing elements (Cr+Cr+Mn+Zr+V)
0.2-2% (cl. 5)
(Cr+Cr+Mn+Zr+V)= 1.0
Excess Si
=
%
S
i
-
%
M
g
1.78
-
(
F
e
+
M
n
+
C
r
)
6
0.4-1.4
0.4-1.4
0.74
α
s
t
a
b
i
l
i
z
i
n
g
e
l
e
m
e
n
t
s
e
x
c
e
s
s
S
i
≥1.0
≤ 3 (cl. 6)
≥1.0
=1.0/0.74=1.3
α
s
t
a
b
i
l
i
z
i
n
g
e
l
e
m
e
n
t
s
F
e
>0.5 (cl. 13)
=1.0/0.18=
5.5
w
t
%
α
w
t
%
β
>2.0
>2.0
>1 (implied by ≥50% Al(Fe,X)Si or α phase [0053]
Presence of α
yes
yes
YES [0053]
Al(Fe, X) Si constituents (X=Mn, Cr, Zr, V)
Presence of β
yes
yes
YES [0053]
met by AlFeSi constituents
Table 1: instant claims vs. prior art of Das
which meets the instant 6xxx series alloy limitation (see Das at [0003]), meets the instant excess Si among, presence of β particles, presence of α particles, ratio (in wt%) of α/β, and α-stabilizing elements/excess silicon ratio of instant independent claims 1 and 25 (as well as the composition, morphology, and microstructure characteristics of dependent claims 5-7 and 13). Though Das does not identify the Al(Fe,X) Si phase as “α phase” the Al(Fe,X) Si constituents of Das qualify as “α phase”, based on the descriptions of α phase in the instant specification [0024], [0051], etc. and that of Das (see Das at [0053]). Similarly, though Das does not identify the AlFeSi phase as “β phase” the AlFeSi constituents of Das qualify as “β phase”, based on the descriptions of β phase in the instant specification [0024], [0051], etc. and that of Das (see Das at [0053]). Because Das teaches an aluminum alloy product of the 6xxx series type, complete with overlapping features of excess Si, phase ratios, α, β, and α stabilizing elements, it is held that Das has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 2 and 17, 18, 19 Das does not teach a) the bond durability property or b) the corrosion potential of the β phase compared to the aluminum matrix, or the β phase compared to the α phase, c) the corrosion potential as compared to a comparable alloy with the claimed features, of the resulting aluminum alloy product. However, the bond durability (as well as corrosion potential of a phase, corrosion potential of the alloy) of a product would be a property dependent upon the composition and internal structure of that product. Because these features are identical in both Das and the present claim, it is reasonable assumption that the bond durability and corrosion potential of different phases/the alloy for the product of Das would likewise be the same as that of the claimed products, and therefore Das meets the instant limitations.
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.
Concerning claims 3 and 9, Das does not teach the present of a carbide or B, and thus the prior art comprises approximately 0% titanium carbide and 0% B, in accordance with these claims.
Concerning claim 4, as set forth in Table 1 above, Das teaches the presence of Cu, Mn, and Cr and therefore meets the instant limitation.
Concerning dependent claims 5-7 and 13, see above discussion of composition, morphology, and microstructure characteristics.
Concerning dependent claim 14, Das teaches AlFeSi particles (analogous to β phase) exhibit a flake or needle type particle size [0053], wherein needle particle morphology meets an aspect ratio >1. Further, Das teaches Al(Fe, X) Si phase (analogous to α phase) exhibits a spherical shape [0053], wherein said spherical shape would reasonably include α phase particles that fall within the instant aspect ratio of 1-1.5.
Concerning dependent claim 15, as discussed above, Das teaches AlFeSi particles (analogous to β phase), and Al(Fe, X) Si phase (analogous to α phase), which meets the instant limitations.
Concerning dependent claim 16, Das teaches using Energy dispersive X-ray spectroscopy (EDXS) in order to examine phases (see[0111]). It would have been within the level of one of ordinary skill in the art, given the disclosure of Das, to have used EDXS to determine wt% α particles to wt% β particles because Das teaches EDXS is useful to determine phase composition and amount.
Claim(s) 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Das et al (US 2019/0119799) cited herein & as applied to claims above, and further in view of Nichols et al (US 2014/0212581), previously cited.
Parson, discussed above, does not disclose the above-described products in combination with a second product and adhesive as required by the instant claims. Nichols indicates it was known in the art, at the time of filing of the present invention, to join an aluminum alloy part to another material via an adhesive. The aluminum alloy may be treated with an adhesion promotor (see Nichols example 5) in accord with instant claim 22. Additionally or alternatively, the aluminum alloy may be treated with a conversion coating such as zinc phosphate (see Nichols at [0035]), in accord with instant claim 23. With respect to claim 21 (and as discussed above with regards to claim 2), the bond durability of a product made using the Das alloy product, would be expected to exhibit substantially identical bond durability, by virtue of the teachings of an overlapping product configuration and internal structure taught by Das. Because these features are identical in both Das and the present claim, it is a reasonable assumption that the bond durability of the Das products (combined with the second product of Nichols) would likewise be the same as that of the claimed products.
Therefore, the combined disclosures of Das et al and Nichols et al would have suggested a joined product as claimed to one of ordinary skill in the art.
Response to Amendment
In the response filed 1/23/26 applicant amended claims 1, 5, and 25 and submitted various arguments traversing the rejections of record.
Applicant’s arguments with respect to claim(s) 1-7, 9, 13-23, 25 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
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 9/9/26
