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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/02/2026 has been entered.
Status of Claims
Claims 1, 10, and 13-17 are as previously presented, Claims 2-5, 7-9, 11, and 12 are as originally filed, Claim 6 is cancelled, and Claims 18-20 are new.
Claim Rejections - 35 USC § 112
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.
Claims 12, 19 and 20 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.
Claim 12 recites “strength (TYS)” in line 2. It is not clear which type of strength TYS refers.
Claim 19 recites “(L) or (LT)” in line 2. It is unclear what these terms represent in the claim. The examiner notes Table 1b in the specification (page 18) identifies L and LT as “Test Direction.” Correction is required.
Claim 20 recites “(L) or (LT)” in line 2. It is unclear what these terms represent in the claim. The examiner notes Table 1b in the specification (page 18) identifies L and LT as “Test Direction.” Correction is required.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-5, 7-12, 19, and 20 are rejected under 35 U.S.C. 1-3 as being unpatentable over EP 3683327 A1 in view of Tang et al in Applied Surface Science.
EP 3683327 (EP ‘327) teaches an aluminum alloy product that is rolled to at least 1.2 mm [0025], which reads on a sheet and overlaps the claimed range. The composition is described below in the table:
wt %
Claim 1
EP 3683327
Mg
3.5-4.6
3.5-4.5
Mn
0.5-1.3
0.3-0.8
Sc
0.08-0.15
0.05-0.3
Zr
0.05-0.15
0.07-0.15
(wt. % Sc) + (wt % Zr)
≤ 0.20
0.13-0.30
Zn
up to 0.8
up to 0.8
Cr
up to 0.20
up to 0.2
V
up to 0.20
n/a
Cu
up to 0.20
up to 0.1
Ti
up to 0.15
0.01 to 0.2
Fe
up to 0.10
up to 0.20
Si
up to 0.10
up to 0.10
balance Al
balance
balance
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05. The composition of the aluminum alloy is described above in the table [0025]. The aluminum alloy is formed by homogenizing, hot rolling, cold rolling to a thickness of at least 1.2 mm, and annealing. The annealing temperature is 250-400 °C [0025-0031]. However, EP ‘327 does not teach at least 0.5 vol. % of beta phase particles, an aspect ratio distribution not treater than 10, and the β phase particle size distribution is not greater than 3.0 μm.
Tang et al teaches the effect of annealing temperature in Al-Mg-Mn-Sc-Zr alloys. With the increase of the annealing temperature, the strength of the alloy decreased, and the elongation increased (abstract). The addition of Sc and Zr elements promoted the formation of a uniform discontinuous distribution of the β phase in the matrix (page 1). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to expect that the aluminum alloy in EP ‘327 would have a β phase particle size distribution, since EP ‘327 teaches an aluminum alloy with Mg, Mn, Sc, and Zr, and Tang et al teaches formation of the β is driven by temperature higher than 200 °C (page 6).
Regarding Claim 2, EP ‘327 teaches at least 0.15 wt. % Zn.
Regarding Claim 3, EP ‘327 teaches not greater than 0.75 wt. % Zn.
Regarding Claim 4, EP ‘327 teaches not greater than 0.14 wt. % Sc.
Regarding Claim 5, EP ‘327 teaches not greater than 0.14 wt. % Zr.
Regarding Claim 7, EP ‘327 teaches not greater than 0.15 wt. % Cu.
Regarding Claims 8-10, EP ‘327 in view of Tang et al does not teach the vol. % of the β phase particles as in Claim 8, the AR99 of the aspect ratio distribution as in Claim 9, or the D99 of the β phase particle size distribution as in Claim 10. Tang et al teaches that the β phase is driven by temperature, so it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the aluminum alloy of EP ‘327 would have the claimed properties, since EP ‘327 teaches overlapping formation conditions of composition, processing steps, and temperature.
Regarding Claim 11, EP ‘327 teaches the disclosed amount of Sc, which reads on the property of facilitating an unrecrystallized grain structure.
Regarding Claim 12, EP ‘327 in view of Tang et al does not teach the aluminum sheet realizes a strength not greater than 50 MPa from a final annealed condition to a creep annealed condition as claimed. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the strength (either yield or tensile) would teach the claimed range and property, since Tang et al teaches that yield and tensile strength are dependent on the annealing temperature (page 2).
Regarding Claim 19, the limitations of “(L)” and “(LT)” are interpreted as not having any impact on the claimed tensile yield strength range of at least 300 MPa. Tang et al teaches yield strengths of greater than 300 MPa on page 2 based on annealing temperature.
Regarding Claim 20, the limitations of “(L)” and “(LT)” are interpreted as not having any impact on the claimed elongation. Tang et al teaches elongation of greater than 5% on page 2 based on annealing temperature.
Claims 13-17 are rejected under 35 U.S.C. 103 as being unpatentable over EP ‘327.
EP ‘327 teaches forming an aluminum alloy sheet by homogenizing, hot rolling, cold rolling to a thickness of at least 1.2 mm, and annealing. The annealing temperature is typically 250-400 °C [0033]. The composition of the aluminum alloy is described in the table [0025].
wt %
Claim 13
EP 3683327
Mg
3.5-4.6
3.5-4.5
Mn
0.5-1.3
0.3-0.8
Sc
0.08-0.15
0.05-0.3
Zr
0.05-0.15
0.07-0.15
(wt. % Sc) + (wt % Zr)
≤ 0.20
0.13-0.30
Zn
up to 0.8
up to 0.8
Cr
up to 0.20
up to 0.2
V
up to 0.20
n/a
Cu
up to 0.20
up to 0.1
Ti
up to 0.15
0.01 to 0.2
Fe
up to 0.10
up to 0.20
Si
up to 0.10
up to 0.10
balance Al
balance
balance
Regarding overlapping ranges of the composition, annealing temperature, and thickness, in the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists because the prior art discloses the utility of the composition over the entire disclosed range. See MPEP § 2144.05.
Regarding Claim 14, the final anneal temperature is greater than 270 °C [0037].
Regarding Claim 15, the final anneal temperature is at least 150 °C [0037].
Regarding Claim 16, the final anneal hold time is 0.5 hours to 10 hours [0037], which is within five minutes to 100 hours.
Regarding Claim 17, the table below shows that EP ‘327 teaches the claimed range.
EP 3683327
wt%
Low Range
High Range
Mg
3.5
4.5
Si
0
0.1
Mn
0.3
0.8
Zn
0
0.8
Temp (C)
250
400
Temp (F)
482
752
Claim 17 eq
399.99
512.422
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over EP ‘372 in view of as applied to Claim 13 above, and further in view of Tang et al.
EP ‘372 discloses the invention substantially as claimed. EP ‘372 teaches the temperature for final annealing and is typically [emphasis added] performed at a set annealing temperature in the range of 250 °C to 400 °C [0031]. However, EP ‘372 does not teach an annealing temperature of not greater than 245 °C as claimed.
Tang et al teaches the effect of annealing temperature in Al-Mg-Mn-Sc-Zr alloys. With the increase of the annealing temperature, the strength of the alloy decreased, and the elongation increased (abstract). The addition of Sc and Zr elements promoted the formation of a uniform discontinuous distribution of the β phase in the matrix (page 1). The annealing temperatures were 100 °C, 175 °C, 200 °C, 225 °C, 250 °C, 300 °C, 350 °C, and 400 °C (page 2). When the temperature is higher than 200 °C, the β phases preferentially precipitate at the junction of the sub-grain boundaries and grain boundaries (page 6). Table 1 shows the relationship between annealing temperature, ultimate tensile strength, and elongation (page 2). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention that the annealing temperature in EP ‘372 could be within the range taught by Tang et al, including not greater than 245 °C, since Tang et al teaches annealing at 100 °C showed good corrosion resistance (page 3) and desired mechanical properties may be obtained based on annealing temperature (page 2).
Response to Arguments
Applicant's arguments filed 01/02/2026 have been fully considered but they are not persuasive with respect to EP ‘327. Regarding the rejections under 35 U.S.C. 103 over EP ‘327, applicant argues EP ‘327, even if modified by McMahon’s teachings (which do not apply in this office action), does not teach at least the β phase requirement of Claim 1. The basis for applicant’s argument is the single example in EP ‘327, which has the same final annealing temperature as the second 5xxx aluminum alloy in the present application. However, this is a single embodiment in EP ‘327; the final annealing temperature ranges from 250 °C to 400 °C [0033]. Nonpreferred and alternative embodiments constitute prior art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. See MPEP § 2123 II. Applicant also argues that the teaching of the sum of the weight % of Sc and weight % of Zr in EP ‘327 is greater than the claimed range of ≤ 0.20%. Again, applicant relies on the single embodiment in EP ‘327 rather than the broader teaching of up to 0.3% Zr and 0.02% to 0.5% Sc [0038]. See above regarding MPEP § 2123 II regarding disclosed examples and preferred embodiments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Tima M. McGuthry-Banks whose telephone number is (571)272-2744. The examiner can normally be reached Monday through Friday, 7:30 am to 4:00 pm.
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Tima M. McGuthry-Banks
Primary Examiner
Art Unit 1733
/TIMA M. MCGUTHRY-BANKS/Primary Examiner, Art Unit 1733