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 .
The Amendment filed July 25, 2025 has been entered. Claims 1-7, 9, 13-23 and 25 are pending in this application and examined herein.
Rejections -- 35 U.S.C. 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 1-7, 9, 13, 15, 16 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Parson et al. (US 2017/0002448).
Parson discloses products comprising a 6xxx series aluminum alloy (i.e. with Mg and Si being the predominant alloying elements). With reference to Table 4 of Parson, at least alloys B and F contain a total amount of Cu, Mn and Cr > 0.2 wt% and less than 2 wt%, in accord with the first option recited in instant claim 1 and further in accord with instant claims 4 and 5. The prior art alloy includes both α and β phase intermetallic particles, and based on Table 6 of Parson the weight ratio of α to β phase particles is greater than 2.0. With respect to claim 3, Parson does not mention titanium carbide; thus the prior art material comprises approximately 0% titanium carbide in accord with this claim.
With respect to claim 2, the bond durability of a product would be a property dependent upon the composition and internal structure of that product. Because these features are identical in both Parson and the present claim, it is a reasonable assumption that the bond durability of the Parson products would likewise be the same or nearly so as that of the claimed products. With respect to claim 6, Parson para [0037] indicates that the relative amounts of α-phase stabilizing elements and silicon can be varied in the prior art, including variation to the extent that the ratio of the α-phase stabilizing elements to that of excess silicon present (i.e. Si in excess of that required to form Mg2Si) is <3.
With respect to claim 7, the alloys in Table 4 of Parson meet the compositional limitations recited in this claim. With respect to claim 9, Parson does not mention boron at all in the prior art disclosure; thus Parson meets the option in claim 9 that the alloy is “substantially free of boron”. With respect to claim 13, the ratio of the total of the Cu, Mn and Cr in alloys B and F to Fe in those alloys is > 0.5. With respect to claim 15, Parson para [0041] indicates that both the α and β phase particles comprise Al, Fe and Si.
With respect to claim 16, Parson para [0059] indicates that energy dispersive X-ray spectroscopy was used to determine the phases in the prior art alloy. Further, the examiner’s position is that a product possessing the feature measured (i.e. Parson possesses a certain ratio of α to β particles) meets the limitations of this claim, regardless of the manner by which one could measure that feature.
With respect to claim 25, Parson discloses preparing an aluminum alloy product possessing the features required by this claim (those features being substantially identical to those required by claim 1), and since Parson processes that product to have a ratio of α to β particles of greater than 2, Parson is held to subject that product to “processing conditions” that control that ratio to within the recited range.
Parson does not disclose any specific examples of products (or methods of preparing same) in which the amount of excess silicon is 0.4 to 1.4, as required by independent claims 1 and 25 as amended. However, Parson discloses alloy products comprising ranges of the various alloying elements present in those products. With reference to the Abstract of Parson, an alloy comprising 0.85 Si, 0.75 Mn, 0.14 Fe, 0.02 Mn and 0.04 Cr would fall within the purview of Parson (and would also meet the compositional limitations of the instant claims). If one were to accept the narrowest definition of excess silicon set forth in para [0045] of the present specification and define excess silicon as Si - Mg/1.78 - (Fe+Mn+Cr)/6, the amount of excess silicon in such an alloy would be 0.85 - 0.75/1.78 - (0.14+0.02+0.04)/6, or 0.85 - 0.42 - 0.03 or 0.4, which is within the claimed range. If one were to use a broader definition of excess silicon as set forth in para [0045] and define excess silicon as “an amount of silicon in excess of that needed to stoichiometrically bond with magnesium as the compound Mg2Si”, then other compositions of Parson would also meet this limitation of the instant claims. The overlap in composition between the prior art and the claimed invention creates a prima facie case of obviousness of a composition as claimed, because the prior art indicates substantial utility over the entirety of the ranges set forth therein, including that portion of the ranges which also meets the instant claims.
Therefore, the disclosure of Parson et al. is held to create a prima facie case of obviousness of the presently claimed invention.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Parson et al. in view of JP 2010-116594 (and its English translation of record).
Parson, discussed above, does not specify the aspect ratios of the α and β phase particles in the prior art, as recited in the instant claim. JP ‘594 is similarly directed to 6000 series aluminum alloy products containing α and β phase precipitates, i.e. JP ‘594 is in a similar filed of endeavor. JP ‘594 indicates it was known in the art, at the time of filing of the present invention, that the α-phase particles in such alloys are more spheroidized, i.e. the first paragraph on p. 8 of the translation of JP ‘594 indicates an aspect ratio of the α-phase of 1.3-1.7, which overlaps the claimed ratio. On the other hand, the presence of β-phase particles increases the overall aspect ratio, indicating that the aspect ratio of those particles is higher, suggesting a value > 2. Given this disclosure of JP 2010-116594, one of ordinary skill in the art would have believed that the α and β phase particles in the Parson et al. products would have aspect ratios as presently claimed.
Claims 17, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Parson et al. in view of the Yan et al. Scientific Reports.
Parson, discussed above, does not discuss the relative corrosion potential of β phase particles or that of a product containing a greater degree of such particles as presently claimed. Yan is directed to Al alloys containing Mg, and discusses precipitates within such alloys. Yan indicates it was known in the art, at the time of filing of the present invention, that β-phase precipitates in such alloys corrode preferentially compared with the Al matrix of the alloy; see p. 1 of Yan. Given this disclosure of Yan, one of skill in the art would have believed that i) the corrosion potential of the β phase particles in the Parson product is greater than that of the matrix therein, ii) the corrosion potential of those β-phase particles is greater than that of the α-phase particles, and iii) the corrosion potential of the Parson products, which have a smaller proportion of β-phase particles, would have reduced corrosion potential compared to a similar product with more β-phase particles.
Therefore the disclosure of Parson et al., combined with the teachings of Yan et al., would have suggested a product having features as presently claimed.
Claims 20-23 are rejected under 35 U.S.C. 103 as being unpatentable over Parson et al. in view of Nichols et al. (US 2014/0212581).
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 promoter (see Nichols example 5) in accord with instant claim 22. Additionally or alternately, the aluminum alloy may be treated with a conversion coating such as zinc phosphate (see Nichols para [0035]), in accord with instant claim 23. With respect to claim 21, the bond durability of a product made using the Parson alloy would be a material property of that alloy, dependent upon the composition and internal structure of that alloy, as indicated with respect to the rejection of claim 2 supra. Because these features are identical in both Parson and the present claim, it is a reasonable assumption that the bond durability of the Parson products (combined with the second product of Nichols) would likewise be the same as that of the claimed products.
Therefore, the combined disclosures of Parson et al. and Yan et al. would have suggested a joined product as claimed to one of ordinary skill in the art.
Response to Arguments
In a response filed July 25, 2025, Applicant points out that certain specific examples of Parson (Alloys B and F) that were previously held to anticipate several of the claims do not possess an excess silicon content within the range recited in independent claims 1 and 25 as amended. In response, the examiner notes that the broader disclosure of Parson includes compositions which overlap this newly claimed feature and thus render the present claims obvious, as set forth in the new grounds of rejection supra.
With respect to the remainder of the prior art references applied in the above rejections, Applicant asserts that those references do not remedy the deficiencies of Parson. The examiner’s position is that no such deficiencies exist, for reasons as explained in the new grounds of rejection supra.
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 GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks, can be reached on 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733
September 22, 2025
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