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, 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.
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 Ichitani et al. (US 2008/0257462) in view of Doroshenko et al. (Effect of Calcium and Zinc on the Structure and Phase Composition of Casting Aluminum-Magnesium Alloys).
In regard to claim 1, Ichitani et al. (‘462) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (claim 10).
Element
Instant Claim
(weight percent)
Ichitani et al. (‘462)
(mass percent)
Overlap
Mg
1 – 2.3
2 – 8
2 – 2.3
Si
0.2 – 3
0.06 – 0.4
0.2 – 0.4
Fe
0.15 – 0.50
0.06 – 0.4
0.15 – 0.4
Cu
0.001 – 0.90
0.05 – 1
0.05 – 0.90
Mn
0.20 – 0.80
0.05 – 1
0.20 – 0.80
Element
Instant Claim
(weight percent)
Ichitani et al. (‘462)
(mass percent)
Overlap
Cr
0 – 0.15
0.05 – 0.5
0.05 – 0.15
Ti
0 – 0.10
0.001 – 0.1
0.001 – 0.1
V
0 – 0.08
0.01 – 0.1
0.01 – 0.08
Zn
0.001 – 0.50
-
-
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, and vanadium disclosed by Ichitani et al. (‘462) 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 and vanadium from the amounts disclosed by Ichitani et al. (‘462) because Ichitani et al. (‘462) discloses the same utility throughout the disclosed ranges.
With respect to the impurities up to 0.15 weight percent, Ichitani et al. (‘462) also disclosed the presence of impurities and since the lower limit of impurities in both the instant invention and Ichitani et al. (‘462) would be no impurities, Ichitani et al. (‘462) would read on the instant claim (claim 10).
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 Ichitani et al. (‘462) would range from 0.0075:1 to 0.2:1, which would overlap the range of the instant invention. Additionally, the Si+Mn-(Fe/2) would range from -0.09 to 1.37, 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, Ichitani et al. (‘462) discloses elongations at or above 124%.
With respect to the claimed content of zinc, Ichitani et al. (‘462) does not specify adding zinc.
Doroshenko et al. teaches adding amounts of zinc up to 1 atomic percent in order to strengthen alloy (page 817, left column and page 820).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 1 atomic percent zinc (about 2.5 weight percent), as disclosed by Doroshenko et al., to the aluminum-magnesium alloys, as disclosed by Ichitani et al. (‘462), in order to strengthen the alloy, as disclosed by Doroshanko et al. (page 817, left column and page 820).
In regard to claim 3, Ichitani et al. (‘462) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (claim 10).
Element
Instant Claim
(weight percent)
Ichitani et al. (‘462)
(mass percent)
Overlap
Mg
1.4 – 2.3
2 – 8
2 – 2.3
Si
0.3 – 2.5
0.06 – 0.4
0.3 – 0.4
Fe
0.20 – 0.40
0.06 – 0.4
0.20 – 0.4
Cu
0.05 – 0.75
0.05 – 1
0.05 – 0.75
Mn
0.40 – 0.70
0.05 – 1
0.40 – 0.70
Cr
0 – 0.1
0.05 – 0.5
0.05 – 0.1
Ti
0 – 0.05
0.001 – 0.1
0.001 – 0.05
V
0 – 0.05
0.01 – 0.1
0.01 – 0.05
Zn
0.005 – 0.40
-
-
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, and vanadium disclosed by Ichitani et al. (‘462) 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 and vanadium from the amounts disclosed by Ichitani et al. (‘462) because Ichitani et al. (‘462) discloses the same utility throughout the disclosed ranges.
With respect to the claimed content of zinc, Ichitani et al. (‘462) does not specify adding zinc.
Doroshenko et al. teaches adding amounts of zinc up to 1 atomic percent in order to strengthen alloy (page 817, left column and page 820).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 1 atomic percent zinc (about 2.5 weight percent), as disclosed by Doroshenko et al., to the aluminum-magnesium alloys, as disclosed by Ichitani et al. (‘462), in order to strengthen the alloy, as disclosed by Doroshanko et al. (page 817, left column and page 820).
In regard to claim 5, Ichitani et al. (‘462) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (claim 10).
Element
Instant Claim
(weight percent)
Ichitani et al. (‘462)
(mass percent)
Overlap
Mg
1.25 – 2.3
2 – 8
2 – 2.3
Si
0.2 – 0.8
0.06 – 0.4
0.2 – 0.4
Fe
0.15 – 0.50
0.06 – 0.4
0.15 – 0.4
Cu
0.01 – 0.30
0.05 – 1
0.05 – 0.30
Mn
0.20 – 0.80
0.05 – 1
0.20 – 0.80
Cr
0 – 0.15
0.05 – 0.5
0.05 – 0.15
Ti
0 – 0.10
0.001 – 0.1
0.001 – 0.10
V
0 – 0.05
0.01 – 0.1
0.01 – 0.05
Zn
up to 0.50
-
-
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, and vanadium disclosed by Ichitani et al. (‘462) 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 and vanadium from the amounts disclosed by Ichitani et al. (‘462) because Ichitani et al. (‘462) discloses the same utility throughout the disclosed ranges.
With respect to the claimed content of zinc, Ichitani et al. (‘462) does not specify adding zinc.
Doroshenko et al. teaches adding amounts of zinc up to 1 atomic percent in order to strengthen alloy (page 817, left column and page 820).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 1 atomic percent zinc (about 2.5 weight percent), as disclosed by Doroshenko et al., to the aluminum-magnesium alloys, as disclosed by Ichitani et al. (‘462), in order to strengthen the alloy, as disclosed by Doroshanko et al. (page 817, left column and page 820).
regard to claim 6, Ichitani et al. (‘462) discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below (claim 10).
Element
Instant Claim
(weight percent)
Ichitani et al. (‘462)
(mass percent)
Overlap
Mg
1.6 – 2.3
2 – 8
2 – 2.3
Si
0.3 – 0.6
0.06 – 0.4
0.3 – 0.4
Fe
0.20 – 0.40
0.06 – 0.4
0.20 – 0.4
Cu
0.05 – 0.20
0.05 – 1
0.05 – 0.20
Mn
0.40 – 0.70
0.05 – 1
0.40 – 0.70
Cr
0 – 0.1
0.05 – 0.5
0.05 – 0.1
Ti
0 – 0.05
0.001 – 0.1
0.001 – 0.05
V
0 – 0.03
0.01 – 0.1
0.01 – 0.03
Zn
up to 0.50
-
-
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, and vanadium disclosed by Ichitani et al. (‘462) 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 and vanadium from the amounts disclosed by Ichitani et al. (‘462) because Ichitani et al. (‘462) discloses the same utility throughout the disclosed ranges.
With respect to the claimed content of zinc, Ichitani et al. (‘462) does not specify adding zinc.
Doroshenko et al. teaches adding amounts of zinc up to 1 atomic percent in order to strengthen alloy (page 817, left column and page 820).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add up to 1 atomic percent zinc (about 2.5 weight percent), as disclosed by Doroshenko et al., to the aluminum-magnesium alloys, as disclosed by Ichitani et al. (‘462), in order to strengthen the alloy, as disclosed by Doroshanko et al. (page 817, left column and page 820).
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 Ichitani et al. (‘462) is -7.6227 to -1.2827, which overlaps the range of the instant invention. MPEP 2144.05 I.
In regard to claim 9, Ichitani et al. (‘462) discloses 0.05 to 1 mass percent copper, which overlpas the range of the instant invention. Additionally, Ichitani et al. (‘462) discloses the Si:Mg would range from 0.0075:1 to 0.2:1, which would overlap the range of the instant invention. Additionally, the range of excess silicon in Ichitani et al. (‘462) is -7.6227 to -1.2827, which overlaps 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 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 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 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 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, Ichitani et al. (‘462) in view of Doroshenko et al. discloses a substantially similar composition. Therefore, the laimed 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 Ichitani et al. (‘462) in view of Doroshenko et al. discloses a substantially similar composition. 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, Ichitani et al. (‘462) discloses homogenization, hot rolling, cold rolling, recrystallization (annealing) which is substantially similar to the instant invention (Example 1-1). 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.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 3, 5-6, 8-13, 16-17, 20, 22, 25 and 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,932,924. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 1, claim 1 of U.S. Patent No. 11,932,924 discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,932,924
(weight percent)
Overlap
Mg
1 – 2.5
1.1 – 1.6
1.1 – 1.6
Si
0.2 – 3
0.2 – 0.5
0.2 – 0.5
Fe
0.15 – 0.50
0.01 – 1
0.15 – 0.5
Cu
0.001 – 0.9
0.01 – 0.50
0.01 – 0.50
Mn
0.20 – 0.80
0.01 – 0.50
0.20 – 0.50
Cr
0 – 0.15
0.005 – 0.3
0.005 – 0.15
Ti
0 – 0.10
0.01 – 0.30
0.01 – 0.10
V
0 – 0.08
0
0
Zn
0.001 – 0.5
0 – 0.5
0.001 – 0.5
Imp
0 – 0.15
0 – 0.25
0 – 0.15
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities in the aluminum base alloys disclosed by U.S. Patent No. 11,932,924 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 have selected the claimed amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities from the amounts disclosed by U.S. Patent No. 11,932,924 because U.S. Patent No. 11,932,924 discloses the same utility throughout the disclosed ranges.
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 1.2” in claim 1, U.S. Patent No. 11,932,924 discloses aluminum alloy compositions such as one comprising 0.3 weight percent silicon, 1.1 weight percent magnesium and 0.50 weight percent iron, which would give a ratio of 0.3:1.1 for Si:Mg and a Si + Mn – (Fe/2) value of 1.15.
With respect to the recitation “wherein the aluminum alloy has a total elongation of at least 15%, since the alloy in U.S. Patent No. 11,932,924 discloses a substantially similar composition, the claimed elongation would be expected. MPEP 2112.01 I.
In regard to instant claim 3, claim 1 of U.S. Patent No. 11,932,924 discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,932,924
(weight percent)
Overlap
Mg
1.4 – 2.4
1.1 – 1.6
1.4 – 1.6
Si
0.30 – 2.5
0.2 – 0.5
0.3 – 0.5
Fe
0.2 – 0.4
0.01 – 1
0.2 – 0.4
Cu
0.05 – 0.75
0.01 – 0.50
0.05 – 0.50
Mn
0.40 – 0.70
0.01 – 0.50
0.40 – 0.50
Cr
0 – 0.1
0.005 – 0.3
0.005– 0.1
Ti
0 – 0.05
0.01 – 0.30
0.01 – 0.05
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,932,924
(weight percent)
Overlap
V
0 – 0.05
0
0
Zn
0.005 – 0.40
0 – 0.5
0.005 – 0.40
Imp
0 – 0.15
0 – 0.25
0 – 0.15
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities in the aluminum base alloys disclosed by U.S. Patent No. 11,932,924 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 have selected the claimed amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities from the amounts disclosed by U.S. Patent No. 11,932,924 because U.S. Patent No. 11,932,924 discloses the same utility throughout the disclosed ranges.
In regard to claim 5, U.S. Patent No. 11,932,924 discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,932,924
(weight percent)
Overlap
Mg
1.25 – 2.5
1.1 – 1.6
1.25 – 1.6
Si
0.2 – 0.8
0.2 – 0.5
0.2 – 0.5
Fe
0.15 – 0.50
0.01 – 1
0.15 – 0.50
Cu
0.01 – 0.30
0.01 – 0.50
0.01 – 0.30
Mn
0.20 – 0.80
0.01 – 0.50
0.20 – 0.50
Cr
0 – 0.15
0.005 – 0.3
0.005 – 0.15
Ti
0 – 0.1
0.01 – 0.30
0.01 – 0.1
V
0 – 0.05
0
0
Zn
0 – 0.50
0 – 0.5
0 – 0.50
Imp
0 – 0.15
0 – 0.25
0 – 0.15
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities in the aluminum base alloys disclosed by U.S. Patent No. 11,932,924 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 have selected the claimed amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities from the amounts disclosed U.S. Patent No. 11,932,924 because U.S. Patent No. 11,932,924 discloses the same utility throughout the disclosed ranges.
In regard to claim 6, U.S. Patent No. 11,932,924 discloses aluminum base alloys having compositions relative to that of the instant invention as set forth below
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,932,924
(weight percent)
Overlap
Mg
1.6 – 2.4
1.1 – 1.6
1.6
Si
0.3 – 0.6
0.2 – 0.5
0.3 – 0.5
Fe
0.20 – 0.40
0.01 – 1
0.20 – 0.40
Cu
0.05 – 0.20
0.01 – 0.50
0.05 – 0.20
Mn
0.40 – 0.70
0.01 – 0.50
0.40 – 0.50
Cr
0 – 0.1
0.005 – 0.3
0.005 – 0.1
Ti
0 – 0.05
0.01 – 0.30
0.01 – 0.05
V
0 – 0.03
0
0
Zn
0 – 0.20
0 – 0.5
0 – 0.20
Imp
0 – 0.15
0 – 0.25
0 – 0.15
Al
Balance
Balance
Balance
The Examiner notes that the amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities in the aluminum base alloys disclosed by U.S. Patent No. 11,932,924 overlap the amounts of the instant invention or would be close enough to the instant invention to establish 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 have selected the claimed amounts of magnesium, silicon, iron, copper, manganese, chromium, titanium, vanadium, zinc and impurities from the amounts disclosed U.S. Patent No. 11,932,924 because U.S. Patent No. 11,932,924 discloses the same utility throughout the disclosed ranges.
In regard to claim 8, based on the formula for excess silicon at [0093] of the specification, the range of excess silicon within U.S. Patent No. 11,932,924 would be from -1.395 to -0.2994 which would be within the range of the instant invention. MPEP 2144.05 I.
In regard to claim 9, U.S. Patent No. 11,932,924 discloses 0.01 to 0.50 mass percent copper, which overlaps the claimed range; U.S. Patent No. 11,932,924 discloses 1.1 to 1.6 mass percent magnesium and 0.2 to 0.5 mass percent silicon and thus the ratio would be from 0.2:1.6 to 0.5:1.1, which would overlap the range of the instant invention; and U.S. Patent No. 11,932,924 would be from -1.395 to -0.2994, which would overlap the range of the instant invention.
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 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 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 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 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 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, the Examiner notes that U.S. Patent No. 11,932,924 discloses a substantially similar composition. Therefore, the claimed properties 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 U.S. Patent No. 11,932,924 discloses a substantially similar composition. 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, U.S. Patent No. 11,932,924 would read on this limitation because 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, U.S. Patent No. 11,932,924 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, U.S. Patent No. 11,932,924 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 filed May 12, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that Ichitani et al. (‘462) discloses that magnesium is a critical element for imparting high temperature/high-speed moldability to aluminum alloys and for improving strength of the molded article via solid solution strengthening and that the magnesium content for such alloys should preferably be in the range from 2.4 to 7.6 weight percent. The Applicant further argues that Ichitani et al. (‘462) expressly teaches away from magnesium contents below 2.4 weight percent stating that such low magnesium content results in insufficient elongation and decreased strength during high-temperature/high-speed molding and Ichitani et al. (‘462) neither discloses or suggests the use of aluminum alloys having a magnesium content of 2.30 weight percent or lower for the purposes of achieving the required properties of high moldability and strength.
In response, the Examiner notes that while Ichitani et al. (‘462) teaches a preferred range of magnesium being 2.4 to 7.6 weight percent [0067], Ichitani et al. (‘462) teaches that the content of magnesium in the invention is from 2.0 to 8.0 mass percent [0066]. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). MPEP 2123 II.
Second, the Applicant primarily argues that the Office fails to consider the teachings of Doroshenko et al. as a whole and the impact of including zinc in the alloy of Ichitani et al. (‘462) on imparting high-temperature/high-speed moldability to aluminum alloys. The Applicant further argues that Doroshenko et al. specifically investigates alloys in the Al-Mg-Ca-(Zn) system focusing on effects of joint doping with both calcium and zinc and the computational modeling are all predicated on the combined presence of calcium and zinc and Ichitani et al. (‘462) is formulated without calcium or zinc and the intended microstructure properties are based on the careful control of magnesium, manganese, zirconium, iron and silicon and not calcium or zinc. Finally, there is no suggestion or technical rationale for zinc addition without the addition of calcium.
In response, the Examiner notes that both the reference to Ichitani et al. (‘462) [0089] and Doroshenko et al. (page 817, left column) can be said to seek to strengthen aluminum alloys. Thus, the Examiner considers these references to be in the same field of endeavor. Neither Ichitani et al. (‘462) nor the instant claims preclude the presence of calcium and even though Applicant argues that zinc cannot be present without calcium, there’s no teaching in Ichitani et al. (‘462) to suggest that calcium necessarily be excluded and the claims do not exclude the presence of calcium due to the “comprising” transitional language. MPEP 2111.03. Therefore, Applicant’s arguments are not persuasive.
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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