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 Claims
Claim 3-10 are amended in view of the preliminary amendments filed 9/4/2023. New claims 11-12, 14-19 are added. Claims 1-12 and 14-19 are currently under examination.
Claim Objections
Claims 1-12 and 14-19 are objected to because of the following informalities:
There is no claim 13. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 4 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 4 recites, in step A, “weighing the raw materials according to a formulation ratio”. However, the instant specification does not disclose what this formulation ratio is. One of ordinary skill in the art would not have been able to conduct the claimed weighing of the raw materials without undue experimentation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
In this case, with respect to (A), since the instant specification does not disclose any formulation ratio for the raw materials, the breadth of the claim 4 cannot be determined and the claimed formulation ratio is lacking. With respect to (E), without any disclosure of the formulation ratio of the raw material, one skilled in the art cannot readily anticipate the effect of a change in the formation ratio to which the claimed invention pertains. With respect to (F), without the disclosure of the formulation ratio, one skilled artisan would not have any direction enabling he/she to properly weigh the raw material. Lastly, with respect to (G-H) there are no working examples provided in the specification showing any formulation ratio when weighing the raw materials, which means there is no guidance provided for experimentations.
Since several of the Wand factors are not satisfactory, the examiner considers that the instant claim 4 fails to comply with the enablement requirement.
Claims 1-12 and 14-19(i.e. claims 1-18) are 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.
The term “high-strength” as recited in claims 1-12 and 14-19(i.e. claims 1-18) is a relative term which renders the claim indefinite. The term “high-strength” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Instant specification does not provide any definition to the claimed “high-strength” Al alloy. It is unclear if some or all strength properties, such as tensile strength and/or yield strength, have to be at certain levels to be considered high-strength, and what these strength levels are. Therefore, the scope of claimed “high-strength” is not vague and indefinite.
The term “high-purity” in claim 4 is a relative term which renders the claim indefinite. The term “high-purity” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Instant specification does not provide any definition to the claimed “high-strength” Al alloy. It is unclear at what purity level, the Al alloy is considered high purity. Therefore, the scope of claimed “high-strength” is not vague and indefinite.
Claim 4 recites, in step A, “weighing the raw materials according to a formulation ratio”. However, the instant specification does not disclose what this formulation ratio is. Therefore, the scope of the claimed formulation is not clear, which renders instant claim 4 vague and indefinite.
Claim 4 recites the limitations "the purity of the high-purity aluminum" in line 6, “the purity of the high-purity magnesium” in line 7, “the content of copper” in lines 7-8, “the content of scandium” in line 8, “the content of zirconium” in line 9, ”the content of manganese” in line 10, “the content of yttrium” in line 11, “the temperature and flow of the cooling water” in lines 18 and 21, the metal melt” in line 23, “the alloy melt” in lines 25 and 27, “the aluminum alloy melt” in lines 28 and 30, “the melt” in line 31. There are insufficient antecedent bases for these limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation “wherein a punching speed of a hydraulic press during forging is 0.05-0.1mm/s”, and the claim also recites “preferably 0.05mm/s” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim 5 recites the limitation "the temperature of the melt after heating" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 9 recites the limitation "the product" in line 4. There is insufficient antecedent basis for this limitation in the claim.
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) 1-3, 11-12 and 14(i.e.13) is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 108342628 (CN628).
CN628 teaches an Al alloy having a composition that applies to the claimed Al alloy as follows;
Al composition: wt%
Instant Application
CN628 (abstract, claim 1)
Cu
4.5-6.3
3.5-7.5
Mg
0.6-1.2
0.5-1.5
Mn
0.6-1.5
0.2-1.0
Si
≤ 0.5
-
Fe
≤ 0.5
-
Sc
0.15-0.35
0.05-0.85 (claim 3)
Zr
0.1-0.2
0.1-0.8
Y
0.1-0.3
0.05-0.85 (claim 3)
Sc:Zr ratio
(1-3):1
(0.0625-8.5):1(calculated)
Tensile Strength
520-530MPa
420-524MPa (Table 1)
Elongation
12-16%
7.0-12% (Table 1)
Regarding claims 1-3, the Al-Cu-Mg-Mn alloy as taught by CN628 has a composition that overlaps the claimed alloy composition. The Sc:Zr ratio calculated from the Al-Cu-Mg-Mn alloy of CN608 encompasses the claimed Sc:Zr ratio. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed Al-Cu-Mg-Mn alloy composition from the Al-Cu-Mg-Mn alloy composition of CN628 would have been obvious to one of ordinary skill in the art since CN628 teach the same utilities in its Al-Cu-Mg-Mn alloy composition, which is to product a high-strength Al alloy.
Regarding claims 11-12 and 14(i.e. 13), the tensile strength and elongation as taught by CN628 overlap the claimed tensile strength and elongation. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05(I). The selection of claimed tensile strength and elongation would have been obvious to one of ordinary skill in the art since CN628 teach the same utility in its tensile strength and elongation properties.
Claims Without Prior Art Rejection
Regarding claims 4-10 and 15-19(i.e. 14-18), the instant claims are not rejected over the prior art. The closest prior art is CN628 as discussed in section 10 above. However, CN628 teaches a method for preparing a high-strength Al-Cu-Mg-Mn alloy comprising different processing steps and processing conditions. The smelting step as taught by CN628 does not include claimed amounts compositional ingredients. CN628 does not disclose the claimed type of mold being used during the casting step. CN628 also does not disclose the claimed refining, impurity removal and degasification, homogenizing heat treatment, forging, isothermal deformation and heat treatment steps.
Additionally, further search did not yield any prior art that teach the claimed process steps (A)-(H) under the claimed process conditions.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733