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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 September 16, 2026 has been entered.
Status of the Claims
Claims 1, 3, 5-6, 8-13, 16-17, 20, 22, 25 and 27 are pending wherein claims 1, 3 and 5-6 are amended and claims 2, 4, 7, 14-15, 18-19, 21, 23-24, 26 and 28-30 are canceled.
Status of Previous Rejections
The previous rejection of claims 1, 3, 5-6, 8-13, 16-17, 20, 22, 25 and 27 under 35 U.S.C. 103 as being unpatentable over Ichitani et al. (US 2008/0257452) in view of Doroshenko et al. (Effect of Calcium and Zinc on the Structure and Phase Composition of Casting Aluminum-Magnesium Alloys) is withdrawn in view of the Applicant’s amendment to claim 1.The previous rejection of claims 1, 3, 5-6, 8-13, 16-17, 20, 22, 25 and 27 on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,932,924 is withdrawn in view of the terminal disclaimer filed on September 16, 2026.
Terminal Disclaimer
The terminal disclaimer filed on September 16, 2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of has been reviewed and is accepted. The terminal disclaimer has been recorded.
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, 3, 5-6, 8-13, 16-17, 20, 22, 25 and 27 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuoka et al. (EP 1 413 636 A1).
In regard to claim 1, 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 [0015].
Element
Instant Claim
(weight percent)
Matsuoka et al. (EP ‘636)
(mass percent)
Overlap
Mg
1 – 1.95
0.3 – 6
1 – 1.95
Si
0.2 – 3
0.3 – 10
0.30 – 3
Fe
0.15 – 0.50
0.01 – 1
0.15 – 0.5
Cu
0.001 – 0.90
0.01 – less than 1
0.01 – 0.90
Mn
0.20 – 0.80
0.01 – 1
0.20 – 0.80
Cr
0 – 0.15
0.01 – 1
0.01 – 0.15
Ti
0 – 0.10
0.01 – 1
0.01 – 0.1
V
0 – 0.08
0
0
Zn
0.001 – 0.50
0.05 – 1
0.05 – 0.50
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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 impurities up to 0.15 weight percent, Matsuoka et al. (EP ‘636) also disclosed the presence of impurities and since the lower limit of impurities in both the instant invention and Matsuoka et al. (EP ‘636) would be no impurities, Matsuoka et al. (EP ‘636) would read on the instant claim [0015].
With respect to the recitation “for automotive part” in claim 1, the Examiner considers this an intended use of the aluminum alloy that would not further limit the structure of the alloy. MPEP 2111.02 II.
With respect to the recitation “wherein the aluminum alloy has a ratio of the wt.% of Si:Mg being from 0.05:1 to 0.60:1, and Si+Mn-(Fe/2) being from 0.60 to 1.20” in claim 1, the Si:Mg in Matsuoka et al. (EP ‘636) would range from 0.05:1 to 33.3:1, which would encompass the range of the instant invention. Additionally, the Si+Mn-(Fe/2) would range from 0.595 to 15.5, which would encompass the range of the instant invention.
With respect to the recitation “wherein the aluminum alloy has a total elongation of at least 15%” in claim 1, Matsuoka et al. (EP ‘636) discloses elongations from 7.9 to 16%, which overlaps the range of the instant invention (Table 1).
In regard to claim 3, Matsuoka et al. (EP ‘636) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below [0015].
Element
Instant Claim
(weight percent)
Matsuoka et al. (EP ‘636)
(mass percent)
Overlap
Mg
1.4 – 1.95
0.3 – 6
1.4 – 1.95
Si
0.3 – 2.5
0.3 – 10
0.3 – 2.5
Fe
0.20 – 0.40
0.01 – 1
0.20 – 0.4
Cu
0.05 – 0.75
0.01 – less than 1
0.05 – 0.75
Mn
0.40 – 0.70
0.01 – 1
0.40 – 0.70
Cr
0 – 0.1
0.01 – 1
0.01 – 0.1
Ti
0 – 0.05
0.01 – 1
0.001 – 0.05
V
0 – 0.05
0
0
Zn
0.005 – 0.40
0.05 – 1
0.05 – 0.40
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc from the amounts disclosed by Matsuoka et al. (EP ‘636) because Matsuoka et al. (EP ‘636) discloses the same utility throughout the disclosed ranges.
In regard to claim 5, Matsuoka et al. (EP ‘636) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below [0015].
Element
Instant Claim
(weight percent)
Matsuoka et al. (EP ‘636)
(mass percent)
Overlap
Mg
1.25 – 1.9
0.3 – 6
1.25 – 1.9
Si
0.2 – 0.8
0.3 – 10
0.3 – 0.8
Fe
0.15 – 0.50
0.01 – 1
0.15 – 0.5
Cu
0.01 – 0.30
0.01 – less than 1
0.01 – 0.30
Mn
0.20 – 0.80
0.01 – 1
0.20 – 0.80
Cr
0 – 0.15
0.01 – 1
0.01 – 0.15
Ti
0 – 0.10
0.01 – 1
0.01 – 0.10
V
0 – 0.05
0
0
Zn
up to 0.50
0.05 – 1
0.05 – 0.5
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc from the amounts disclosed by Matsuoka et al. (EP ‘636) because Matsuoka et al. (EP ‘636) discloses the same utility throughout the disclosed ranges.
regard to claim 6, Matsuoka et al. (EP ‘636) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below [0015].
Element
Instant Claim
(weight percent)
Matsuoka et al. (EP ‘636)
(mass percent)
Overlap
Mg
1.6 – 2.3
0.3 – 6
1.6 – 2.3
Si
0.3 – 0.6
0.3 – 10
0.3 – 0.6
Fe
0.20 – 0.40
0.01 – 1
0.20 – 0.4
Cu
0.05 – 0.20
0.01 – less than 1
0.05 – 0.20
Mn
0.40 – 0.70
0.01 – 1
0.40 – 0.70
Cr
0 – 0.1
0.01 – 1
0.01 – 0.1
Ti
0 – 0.05
0.01 – 1
0.01 – 0.05
V
0 – 0.03
0
0
Zn
up to 0.50
0.05 – 1
0.05 – 0.5
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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, silicon, iron, copper, manganese, chromium, titanium, vanadium and zinc 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 recitation “wherein the aluminum alloy has an excess Si content from -1.70 to 0.10” in claim 8, the range of excess silicon in Matsuoka et al. (EP ‘636) would range from about -5.2 to 9.69 and would encompass the range of the instant invention.
In regard to claim 9, Matsuoka et al. (EP ‘636) discloses 0.01 to less than 1 mass percent copper, which overlaps the range of the instant invention. Additionally, the Si:Mg in Matsuoka et al. (EP ‘636) would range from 0.05:1 to 33.3:1, which would encompass the range of the instant invention. Additionally, the range of excess silicon in Matsuoka et al. (EP ‘636) is from about -5.2 to 9.69, which encompasses the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “wherein the aluminum alloy comprises up to 100% recycled scrap, and wherein the recycled scrap comprises at least 50% of used beverage can scrap, based on the total weight of the recycled scrap” in claim 10, due to the “up to” language, no recycled scrap would be required. Additionally, as long as the composition of the prior art overlaps the composition of the claim, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that would not further limit the composition of the final product specified in the claim. MPEP 2113.
With respect to the recitation “wherein the recycled scrap comprises at least 25% of mixed alloy scrap” in claim 11, as long as the composition of the prior art overlaps the composition of the claim, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that would not further limit the composition of the final product specified in the claim. MPEP 2113.
With respect to the recitation “wherein the mixed alloy scrap comprises one or more of a 5xxx series aluminum alloy, a 6xxx series aluminum alloy, and a 7xxx series aluminum alloy” in claim 12, as long as the composition of the prior art overlaps the composition of the claim, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that would not further limit the composition of the final product specified in the claim. MPEP 2113.
With respect to the recitation “wherein the mixed alloy scrap comprises a ratio of the 5xxx series aluminum alloy to the 6xxx series aluminum alloy from 1:3 to 3:1” in claim 13, as long as the composition of the prior art overlaps the composition of the claim, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that would not further limit the composition of the final product specified in the claim. MPEP 2113.
With respect to the recitation “wherein the aluminum alloy, when in a T4 temper, has a yield strength (Rp0.2) of from 160 MPa to 250 MPa when tested according to ISO 6892-1 (2016) after paint baking at a temperature of 185°C for 20 minutes and 2% pre-straining” in claim 16, Matsuoka et al. (EP ‘636) discloses substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy has a total elongation of at least 15%, wherein the aluminum alloy has a r(10) value of at least 0.40 in all directions (longitudinal (L), diagonal (D), and/or transverse (T) to a rolling direction), wherein the aluminum alloy has a β bend angle from 40° to 100° for bendability testing according to Specification VDA 238-100” in claim 17, the Examiner notes that Matsuoka et al. (EP ‘636) discloses substantially similar compositions. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy excludes any primary aluminum alloy” in claim 20, [0006] of the instant specification indicates “primary aluminum alloy” to be an alloy made of new materials and thus exclusion of primary aluminum alloy would mean that the alloy is 100% recycled materials. However, this is a processing limitation that would not further limit the composition of the aluminum alloy. MPEP 2113.
With respect to the recitation “wherein the aluminum alloy is produced from a process comprising homogenization, hot rolling, cold rolling, solution heat treatment, pre-aging, and artificial aging” in claim 22, Matsuoka et al. (EP ‘636) discloses homogenization, extrusion, drawing, solution treatment and aging which is similar to the instant invention [0185]. 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 aluminum alloy comprises recycled scrap from one or more of end-of life aluminum articles, mixed automotive scrap, UBC scrap, twitch, and heat exchanger scrap” in claim 25, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that not further limit the composition of the final product specified in the claim. MPEP 2113.
With respect to the recitation “wherein the recycled scrap comprises 100% of scrap derived from the end-of life aluminum articles” in claim 27, the prior art would read on the claim at least in terms of obviousness and using recycled scrap would be a processing limitation that not further limit the composition of the final product specified in the claim. MPEP 2113.
Response to Arguments
Applicant’s arguments have been considered, but are moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
