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 .
Response to Arguments
Applicant's arguments filed 8/25/2026 have been fully considered but they are not persuasive.
Regarding the affidavit, firstly, the failures of experimenters who have no interest in succeeding should not be accorded great weight. In re Michalek, 162 F.2d 229, 74 USPQ 107 (CCPA 1947); In re Reid, 179 F.2d 998, 84 USPQ 478 (CCPA 1950), MPEP 716.07. Also, the experiment does not disclose performing the second stage heat treatment as stated in Yamashita, page 7, second paragraph, which holds the ingot at 400-500C for 3 hours or more before extrusion.
Additionally, the experiment raises issues of whether the unexpected result is commensurate in scope, as the experiment appears to show that an alloy with a composition within the claimed ranges and produced by a process substantially similar to the claimed process does not meet the claimed physical property requirements, thus possibly showing that the claimed composition ranges do not provide an unexpected or novel result. If neither the composition nor the method of manufacture results in the claimed property requirements, there may be unclaimed subject matter that causes the claimed composition of the invention to meet the claimed requirements.
Regarding the argument that Yamashita does not disclose claim 1, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977), MPEP 2112.01 II. In claim 1, the only claimed property is that the material would perform in a certain way in the heat test. The composition of Yamashita reads on the claimed composition and therefore would be expected to perform in the same way.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3,8-13 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita (EP 2447662 A10), hereafter known as Yamashita
Regarding claim 1, Yamashita discloses an aluminum alloy extruded multi-hole tube for a heat exchanger (paragraph 0003, Yamashita), the tube being formed of an aluminum alloy comprising Mn of 0.60 to 1.80 mass % (abstract, 0.5%-1.7% Mn by weight, Yamashita. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)) and Si of more than 0.00 mass % and less than 0.20 mass % (abstract, less than 0.1% Si by weight, Yamashita. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)), with the balance being Al and inevitable impurities (abstract, Yamashita), the aluminum alloy having a ratio (Mn/Si) of Mn content to Si content being 15.0 or more (from the abstract, the ratio of Mn to Si can be 1.7% to <0.1%, which is a ratio of at least 17. Yamashita),
Yamashita does not disclose wherein strength change (tensile strength (A) of the aluminum alloy after heating test - tensile strength (B) of the aluminum alloy before heating test) in a heating test at 600°C+10°C for 3 minutes is -5 MPa or more. However, since Yamashita discloses an alloy of the same composition, and is produced by a very similar process, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Additionally, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the aluminum alloy of Yamashita should have the same physical properties as the claimed invention.
Regarding claim 2, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, further comprising one or two kinds selected from Ti of 0.10 mass % or less (including 0.00 mass %) (table 1, 0.0% Ti for alloy C, Yamashita) and Cu of 0.05 mass % or less (including 0.00 mass %) (table 1, 0% Cu for alloy C, Yamashita).
Regarding claim 3, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, but does not disclose wherein the strength change in the heating test is -5 to +10 MPa. However, since Yamashita discloses an alloy of the same composition, and is produced by a very similar process, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Additionally, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990), MPEP 2112.01 II. Therefore, the aluminum alloy of Yamashita should have the same physical properties as the claimed invention.
Regarding claim 8, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, wherein AlMnSi precipitates are redissolved into the matrix phase during the heating test at 600C±100C for 3 minutes (Yamashita discloses an alloy of the claimed composition, and is produced via a process that is the same as the claimed process, thus it should have the claimed property if subject to the heating test. MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding claim 9, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, wherein the tensile strength (B) of the aluminum alloy before the heating test is 121 MPa or more, and the tensile strength (A) of the aluminum alloy after the heating test is 119 MPa or more (Yamashita discloses an alloy of the claimed composition, and is produced via a process that is the same as the claimed process, thus it should disclose the claimed property if subject to the heating test. MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding claim 10, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, wherein the aluminum alloy comprises Mn of 1.00 to 1.80 mass% and Si of 0.05 to 0.15 mass% (abstract, 0.5%-1.7% Mn by weight, less than 0.1% Si by weight, Yamashita. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)).
Regarding claim 11, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, wherein the aluminum alloy has a ratio (Mn/Si) of the Mn content to the Si content of 16.0 to 40.0 (from the abstract, the ratio of Mn to Si can be 1.7% to <0.1%, which is a ratio of at least 17, Yamashita),
Regarding claim 12, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1, wherein the strength change in the heating test is -5 to +5 MPa (Yamashita discloses an alloy of the claimed composition, and is produced via a process that is the same as the claimed process, thus it should disclose the claimed property if subject to the heating test. MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Regarding claim 13, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1,
wherein the aluminum alloy extruded multi-hole tube is manufactured by two-step homogenization treatment of executing first homogenization treatment of heating an ingot (page 7, paragraph 2, first stage heat treatment holds ingot at 570 to 650°C for 2 hours or more, Yamashita)
and second homogenization treatment of heating the ingot (page 7, paragraph 2, second stage heat treatment holds the ingot at 400 to 550°C for 3 hours or more, Yamashita),
and a hot extrusion step of executing hot extrusion of the treated material of the two-step homogenization treatment (page 7, paragraph 2, material is hot extruded, Yamashita)
wherein the electrical conductivity change of the ingot before and after the two-step homogenization treatment is set 20% IACS or more (Yamashita discloses the claimed heat treatment processes performed on an alloy of the claimed composition, thus the ingot post treatment should have the claimed properties, MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)).
Claims 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Yamashita in view of Comprehensive Materials Processing, Volume 5, 2014, Pages 321-350, hereafter known as CMP, which has been provided in the previous office action.
Regarding claim 14, Yamashita discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 1,
wherein the aluminum alloy extruded multi-hole tube is manufactured by two-step homogenization treatment of executing first homogenization treatment of heating an ingot at a heating temperature of 550 to 650C for 2 hours or more (page 7, paragraph 2, first stage heat treatment holds ingot at 570 to 650°C for 2 hours or more, Yamashita. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)),
followed by second homogenization treatment of heating the ingot at a heating temperature of 450 to 540C for 3 hours or more (page 7, paragraph 2, second stage heat treatment holds the ingot at 400 to 550°C for 3 hours or more, Yamashita. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976))
to set electrical conductivity change before and after the two-step homogenization treatment to 20% IACS or more (Yamashita discloses the claimed heat treatment processes preformed on an alloy of the claimed composition, thus the ingot post treatment should have the claimed properties, MPEP 2112.01 II, "Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990))
and a hot extrusion step of executing hot extrusion of the treated material of the two-step homogenization treatment at a heating temperature at which absolute value of a difference between the heating temperature during hot extrusion and the heating temperature of the second homogenization treatment is 50C or less (page 7, paragraph 2, material is hot extruded, but the temperature is not disclosed, Yamashita).
Yamashita does not disclose an extrusion temperature. However, CMP teaches extruding aluminum alloy tubes at 400-500 C (page 325, section 5.16.2.2, the temperature of hot extrusion for aluminum alloy tubes is about 400–500 °C, which is within 50 C of the second stage heat treatment of 400-550 C, CMP). CMP is a reference document about aluminum extrusion and manufacturing, a field closely related to Yamashita and the claimed invention. Therefore it would have been obvious to one of ordinary skill in the art to have incorporated the teachings of CMP into Yamashita and extrude the heat exchanger of Yamashita at about 400-500 C according to CMP. Extruding aluminum at that temperature is well known in the art, and using well known extrusion temperatures allows the manufacturer to use existing extrusion machines and associated support systems, increasing reliability and efficiency.
Regarding claim 15, Yamashita in view of CMP discloses the aluminum alloy extruded multi-hole tube for a heat exchanger according to claim 14, wherein the absolute value of the difference between the heating temperature during hot extrusion and the heating temperature of the second homogenization treatment is 30°C or less (page 7, paragraph 2, second stage heat treatment holds the ingot at 400 to 550°C for 3 hours or more, Yamashita; page 325, section 5.16.2.2, CMP, the temperature of hot extrusion for aluminum alloy tubes is about 400–500 °C. The two ranges largely overlap and have regions where one temperature is within 30 degrees C of the other temperature. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
AZO Material’s article “Heat Treatment of Aluminum and Aluminum Alloys” discloses cooling aluminum after heat treating at a rate of 20 degrees C per hour.
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/H.L./ Examiner, Art Unit 3753
/KENNETH RINEHART/Supervisory Patent Examiner, Art Unit 3753
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