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 40-41 are pending wherein claims 1, 3, 6-10, 12 and 40 are amended, claim 41 is new, claims 4-5, 11, 20-21, 23-25 and 29-39 are canceled and claims 15-19 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claim 6 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and disclaim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendment to claim 6. The previous rejection of claims 1, 6, 12-14, 26-28 and 40 under 35 U.S.C. 103 as being unpatentable over Verma (US 2004/0129353) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 2 and 7-9 under 35 U.S.C. 103 as being unpatentable over Verma (US 2004/0129353), 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of tin addition on the microstructure and mechanical properties of Al-Si-Cu-Mg and Al-Si-Mg casting alloys) is withdrawn in view of the Applicant’s amendment to claim 1.
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) 1-2, 6, 12, 26-28 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka et al. (EP 1413636 A1).
In regard to claim 1, Matsuoka et al. (EP ‘636) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below [0025].
Element
Instant Claim
(weight percent)
Matsuoka et al. (EP ‘636)
(mass percent)
Overlap
Mg
about 2.5 – 6.2
0.1 – 6
about 2.5 – 6
Mn
about 0.01 – 0.25
0.01 – 1
0.01 – about 0.25
Fe
about 0.01 – 0.6
0.01 – 1
about 0.01 – 0.6
Si
about 0.01 – 0.5
0.3 – 12.5
0.3 – 0.5
Cu
about 0.01 – 1
0.01 – less than 1
0.01 – less than 1
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, manganese, iron, silicon and copper for the aluminum base alloy disclosed by Matsuoka et al. (EP ‘636) 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 instant invention to select the claimed amounts of magnesium, manganese, iron, silicon and copper from the amounts disclosed by Matsuoka et al. (EP ‘636) because Matsuoka et al. (EP ‘636) discloses the same utility throughout the disclosed ranges.
With respect to the transitional phrase “comprising” in claim 1, the claim would be open to additional, unrecited elements such as titanium as in [0025] of Matsuoka et la. (EP ‘636). MPEP 2111.03.
With respect to the recitation “comprises Cu-containing phases” in claim 1, Matsuoka et al. (EP ‘636) discloses wherein the CuAl2 would be present [0044].
In regard to claim 2, Matsuoka et al. (EP ‘636) discloses 0.01 to 1 mass percent zirconium and 0.01 to 1 mass percent tin, which encompasses the claimed ranges of zirconium and tin [0025].
In regard to claim 6, Matsuoka et al. (EP ‘636) discloses 0.0001 to 0.5 mass percent scandium, which is within the range of the instant invention [0025].
With respect to the recitation “wherein the Cu-containing phases enhance thermal stability during moderate aging treatment, after cold rolling, forming or stretching” in claim 12, Matsuoka et al. (EP ‘636) discloses wherein the CuAl2 would be present [0044]. The claims are drawn to a product and not a process and since Cu-containing phases are present, the alloy of Matsuoka et al. (EP ‘636) would have the enhanced thermal stability one subjected to such processing. MPEP 2113 and MPEP 2112.01 I.
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, Matsuoka et al. (EP ‘636) discloses substantially similar composition. Therefore, these 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, since Matsuoka e tal. (EP ‘636) discloses a substantially similar composition, these properties would be expected after cold rolling and stabilization treatment. MPEP 2112.01 I. The claims under examination are drawn to a product and not a process. MPEP 2113.
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, since Matsuoka et al. (EP ‘636) discloses a substantially similar composition, these properties would be expected after cold rolling and coat cure treatment. MPEP 2112.01 I. The claims under examination are drawn to a product and not a process. MPEP 2113.
In regard to claim 40, Matsuoka et al. (EP ‘636) discloses 0.01 to 3 mass percent zinc, which overlaps the range of the instant invention [0025]. Whether the presence is intentional or not intentional, such a determination would rely upon processing whereas the claims are drawn to a product. MPEP 2113.
Allowable Subject Matter
Claims 3, 7-10 and 41 are allowed.
Claims 3, 7-10 and 41 are allowable for the reasons as stated in the Office Action of December 1, 2025.
Claims 13-14 and 22 are 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 13, Matsuoka et al. (EP ‘636) does not specify the presence of Al2CuMg precipitates and/or S’ phase and therefore claims 13-14 distinguish from Matsuoka et al. (EP ‘636).
In regard to claim 22, the minimum content of silicon in Matsuoka et al. (EP ‘636) is 0.3 mass percent [0025] whereas claim 22 requires about 0.1 weight percent silicon which is much lower than what is present in Matsuoka et al. (EP ‘636).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-3, 6, 12, 22, 26-28 and 40 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
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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