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 the Claims
Claims 1-3, 6-10, 12-19, 22, 26-28 and 40 are pending wherein claims 1, 10 and 12-13 are amended, claims 4-5, 11, 20-21, 23-25 and 29-39 are canceled, claim 40 is new and claims 15-19 are withdrawn from consideration. The previously indicated allowability is withdrawn in view of Verma (‘353).
Status of Previous Rejections
The previous rejection of claims 1, 6 and 26-28 under 35 U.S.C. 103 as being unpatentable over Haszler et al. (US 2001/0025675) is withdrawn in view of the Applicant’s amendment to claim 1.
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.
Claim 6 is 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.
With respect to the recitation “essentially free of scandium” in claim 6, it is unclear what amount of scandium Applicant considers to be “essentially free” of scandium relative to not essentially free of scandium.
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, 6, 12-14, 26-28 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Verma (US 2004/0129353).
In regard to claim 1, Verma (‘353) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below ([0008] and [0015]).
Element
Instant Claim
(weight percent)
Verma (‘353)
(weight percent)
Overlap
Mg
about 2.5 – 6.2
3.5 – 5.5
3.5 – 5.5
Mn
about 0.01 – 1.8
0.4 – 1.6
0.4 – 1.6
Fe
about 0.01 – 0.6
0.21 or 0.12
0.21 or 0.12
Si
about 0.01 – 0.5
0.10
0.10
Cu
about 0.01 - 1
0.5 – 1
0.5 – 1
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, manganese, iron, silicon and copper disclosed by Verma (‘353) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of magnesium, manganese, iron, silicon and copper from the amounts disclosed by Verma (‘353) because Verma (‘353) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the alloy comprises Cu-containing phases” in claim 1, Verma (‘353) discloses wherein copper would be present in small dispersed intermetallic particles (copper phases) [0010].
In regard to claim 6, Verma (‘353) does not require the presence of scandium and thus the alloy would be essentially free of scandium ([0008] and [0015]).
With respect to the recitation “wherein the Cu-containing phases enhance thermal stability during moderate aging treatment, after cold rolling, forming or stretching (e.g. stabilization treatment and/or paint-bake cycle)” in claim 12 and in regard to claims 13-14, Verma (‘353) discloses the presence of intermetallics with copper [0010]. Since Verma (‘353) discloses a substantially similar composition and the presence of copper containing intermetallics (phases), such as Al2CuMg, to enhance thermal stability and increased tensile strength compared to a reference AA5182 alloy without intentionally added copper would be expected. MPEP 2112.01 I. Additionally, Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
With respect to the recitation “wherein the alloy possesses a yield strength of at least 370 MPa, a tensile strength of at least 430 MPa, and an elongation of at least 5% in a hard-temper condition” in claim 26, Verma (‘353) discloses a substantially similar composition with copper intermetallic (phases). Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein after cold rolling, the alloy resists strength softening during stabilization treatment, and shows improved ductility” in claim 27, Verma (‘353) discloses a substantially similar composition with copper intermetallic (phases). Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein after cold rolling, the alloy resists strength softening during coat cure treatment, and shows improved ductility” in claim 28, Verma (‘353) discloses a substantially similar composition with copper intermetallic (phases). Therefore, the claimed properties would be expected. MPEP 2112.01 I.
In regard to claim 40, Verma (‘353) does not require the presence of zinc and therefore reads on the claim ([0008] and [0015]).
Claims 2 and 7-9 are rejected under 35 U.S.C. 103 as being unpatentable over Verma (US 2004/0129353) as applied to claim 1, and further in view of Mohamed et al. (Influence of tin addition on the microstructure and mechanical properties of Al-Si-Cu-Mg and Al-Si-Mg casting alloy).
In regard to claim 2, Verma (‘353) discloses aluminum alloys as set forth above that additionally contain 0 to 0.2 weight percent zirconium [0008], which overlaps the range of the instant invention, MPEP 2144.05 I. However, Verma (‘353) does not specify a content of tin.
Mohamed et al. teaches that the ultimate tensile strength may be lowered with increasing amounts of tin up to 0.15 weight percent (page 497, right column – page 498, left column).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the claimed invention to add up to 0.15 weight percent tin, as disclosed by Mohamed et al., to alloys having aluminum, copper, silicon and magnesium, as disclosed by Verma (‘353), in order to lower the ultimate tensile strength, as disclosed by Mohamed et al. (page 497, right column – page 498, left column).
With respect to the recitation “wherein the alloy possesses a yield strength of at least 400 MPa, a tensile strength of at least 450 MPa, and an elongation of at least 5% in the hard-temper condition” in claim 7, Verma (‘353) in view of Mohamed et al. disclose a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein after forming or stretching, the alloy resists strength during paint-bake cycle” in claim 8, Verma (‘353) in view of Mohamed et al. disclose a substantially similar composition. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the alloy possesses a yield strength of at least 170 MPa after forming and stretching, following by a paint-bake cycle” in claim 9, Verma (‘353) in view of Mohamed et al. disclose a substantially similar composition. Therefore, the claimed property would be expected. MPEP 2112.01 I.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 10, neither Verma (‘353) nor Mohamed et al. disclose or adequately suggest that the alloy would have an Al3Zr nanoscale precipitate, wherein the nanoscale precipitate has an average diameter of about 20 nm or less and has an L12 structure in an α-Al face centered cubic matrix, and wherein the average number density of the nanoscale precipitate is about 1021 m-3 or more.
Response to Arguments
Applicant’s arguments 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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Boukir et al. (Influence of hydrogen on the growth kinetics of Al3Zr precipitates in an Al-Zr alloy) discloses a 7050 Al alloy with Al3Zr particles a cross section from 7 to 12 nm, but the composition comprises 23.6 to 24.8 atomic percent zirconium, 6.9 to 9.1 atomic percent zinc, 0.4 to 0.7 atomic percent copper and 0.5 to 1.2 atomic percent magnesium (abstract and pages 158-159).
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/JESSEE R ROE/Primary Examiner, Art Unit 1759