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 .
Election Acknowledged
Applicant’s election without traverse of Group I and Species (A), encompassing claims 1-5, in the reply filed on 12/30/2025 is acknowledged.
Claims 6 and 7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. In particular, this application is claimed by Applicant as a continuation of PCT/US2021/057580, filed on 11/01/2021, that claims the benefit of provisional application 63/108,077, filed on 10/30/2020.
Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed provisional application, Application No. 63/108,077, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. The subject matter of claims 2-5 are not disclosed in the provisional application, but are disclosed in the PCT application. Accordingly, claims 2-5 will be accorded an earliest effective filing date of 11/01/2021. Claim 1 is disclosed in the provisional application and will be accorded an earliest effective filing date of 10/30/2020.
Third-Party Submission
Applicant is notified of a Third-Party Submission (PTO/SB/429) filed on 02/06/2024. The submission has been considered by the Examiner.
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 1-5 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.
Regarding claim 1, the claim is indefinite because it includes an undefined parameter. The claim recites that an unrecrystallized microstructure is measured from T/10 to 9T/10. However, the letter ‘T’ is not defined in the claim, specification, or drawings/figures. Thus, the scope of the measurement cannot be determined.
Regarding claims 2 and 4, the terms “conventional,” “conventionally,” and “comparable” are indefinite because their scope cannot be ascertained. The specification does not provide a standard for determining what compositions are and are not comparable product forms, sizes, and tempers, and therefore one of ordinary skill in the art would not understand which extruded 6XXX products would be considered conventionally and unconventionally press-quenched.
Regarding claims 3 and 5, the claims are likewise rejected, as they depend on claims 2 and/or 4.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over EP 1785499 (A2) to Becker et al. (“Becker”) (abstract and computer-generated translation are attached).
Regarding claim 1, Becker discloses aluminum structures made from aluminum alloys of the type Al-Mg-Si, which belong to the 6000 series (6xxx product). Para. [0001], [0003]. The structure is extruded (extruded product). Para. [0009], [0019], [0032].
The aluminum alloy contains the following elements in percent by weight (para. [0016]-[0018], [0024]):
Element
Claim 1
EP 1785499 A2
Si
0.2 to 2.0
0.30 - 1.3
Mg
0.2 to 1.5
0.35 - 1.0
Mn
0.07 to 1.0
0.02 - 0.8
Bi
up to 1.5
------------
Sn
up to 1.5
------------
Cu
up to 1.0
max. 0.5
Zn
up to 1.0
max. 0.2
Pb
up to 0.7
------------
Fe
up to 0.7
0.08 - 0.35
Cr
up to 0.35
max. 0.15
V
up to 0.35
max. 1.0
Zr
up to 0.25
max. 1.0
Ti
up to 0.20
max. 0.1
Al
balance
remainder & unavoidable impurities
Recrystallization is prevented such that the microstructure is largely not recrystallized. Para. [0008], [0022], [0025].
The grains have an elongation ratio (L:ST) of more than 4:1 in the L-ST directions (fibrous grains have an aspect ratio (grain length/diameter) of at least 5:1). Abstract; para. [0008], [0037]; Figs. 4a, 4b, and 4c. Fig. 4c visually depicts all or nearly all grains are being elongated (fibrous) (at least 60% of the unrecrystallized grains are fibrous grains), with elongated grains being desirable for favorable compression properties. Para. [0037].
The effective grain size extending perpendicular to the surface of the component is less than 100 µm (average grain size of the unrecrystallized microstructure is not greater than 200 microns). Abstract; para. [0008], [0009].
The effective grain size assumes that the invention requirements apply to the entire cross-section of the product, except for the possibly recrystallized surface zone and recrystallized residual fractions, 20 vol% in the remaining area. Para. [0009]. Given that recrystallization is prevented and the microstructure is largely not recrystallized (para. [0008], [0022], [0025]), one would conclude that the unrecrystallized fraction is at least 80% of the alloy (unrecrystallized structure as measured from T/10 to 9T/10 comprises at least 50 vol.% unrecrystallized grains).
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Regarding claims 2-5, Becker is silent regarding the cube ED texture and ODF [001] texture as compared to a conventionally quench-pressed 6xxx extruded product of comparable composition, product form, size, and temper. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Becker discloses an aluminum alloy possessing a chemical composition and grain structure that meets the parameters claimed. Therefore, any claimed properties relative to other aluminum alloys, such as textures, would also be expected to occur in Becker’s alloys.
Claims 1-5 are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0017631 (A1) (also WO 2019/122076 (A1)) to Da Fonseca Barbatti et al. (“Da Fonseca Barbatti”) in view of Becker.
US 2021/0017631 (A1) is a pre-grant publication of U.S. appl. ser. no. 16/955,317, which is a 371 national stage application of PCT/EP2018/086091, published by WIPO as WO 2019/122076 (A1). For brevity, all citations to Da Fonseca Barbatti will refer to the pre-grant publication unless otherwise noted.
Regarding claim 1, Da Fonseca Barbatti discloses a 6XXX aluminum extruded product (6xxx extruded product). Title; abstract; para. [0001], [0023].
The aluminum alloy contains the following elements in percent by weight (para. [0027]-[0036], [0041]-[0061]; Table 1): (Table is on the next page.)
Element
Claim 1
US 2021/0017631 A1
Si
0.2 to 2.0
0.6 to 1.4
Mg
0.2 to 1.5
0.4 to 1.2
Mn
0.07 to 1.0
0.4 to 1
Bi
up to 1.5
------------
Sn
up to 1.5
------------
Cu
up to 1.0
0.05 to 0.60
Zn
up to 1.0
≤ 0.2
Pb
up to 0.7
------------
Fe
up to 0.7
0.01 to 0.15
Cr
up to 0.35
0.05 to 0.25
V
up to 0.35
≤ 0.05
Zr
up to 0.25
≤ 0.05
Ti
up to 0.20
≤ 0.1
Al
balance
rest & unavaoidable impurities
The aim is to control the recrystallization or the appearance of peripheral coarse grain in the surface layer during forging or subsequent thermal treatments in extruded feedstock. Para. [0025]. The fraction recrystallized is less than 50% (unrecrystallized microstructure is at least 50% unrecrystallized grains, the extruded product comprising an unrecrystallized microstructure measured from T/10 to 9T/10). Para. [0101], [0149]; claim 14.
Controlling recrystallization permits the alloy to maintain a fibrous structure in the extruded feedstock. Para. [0025]. Figs. 1-3 visually show a fibrous structure in all or nearly all of the alloy (at least 60% of the unrecrystallized grains are fibrous grains).
Da Fonseca Barbatti shows fibrous grains appearing to have an aspect greater than 5 (Figs. 1-3), but does not provide a numerical aspect ratio. Da Fonseca Barbatti is silent regarding an average grain size.
Becker is directed to an extruded Al-Mg-Si aluminum alloy. Para. [0001], [0003], [0009], [0019], [0032]. The grains have an elongation ratio (L:ST) of more than 4:1 in the L-ST directions (fibrous grains have an aspect ratio (grain length/diameter) of at least 5:1). Abstract; para. [0008], [0037]; Figs. 4a, 4b, and 4c. Elongated grains being desirable for favorable compression properties. Para. [0037]. The effective grain size extending perpendicular to the surface of the component is less than 100 µm (average grain size of the unrecrystallized microstructure is not greater than 200 microns). Abstract; para. [0008], [0009].
It would have been obvious to one of ordinary skill in the art to have ensured that the unrecrystallized grains of Da Fonseca Barbatti are less than 100 µm and at least 4:1 in aspect ratio because these grain dimensions would improve the absorption of kinetic energy of the alloy, making it appealing for use in automobile parts of other parts where crash properties are important.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Regarding claims 2-5, Da Fonseca Barbatti discloses that the alloy may contain <001> fiber up to 20% and a cube texture (para. [0039], [0151]), but is silent regarding the cube ED texture and ODF [001] texture as compared to a conventionally quench-pressed 6xxx extruded product of comparable composition, product form, size, and temper. However, it is well established that when a material is produced by a process that is identical or substantially identical to that of the claims and/or possesses a structure or composition that is identical or substantially identical to that of the claims, any claimed properties or functions are presumed to be inherent. Such a finding establishes a prima facie case of anticipation or obviousness. See MPEP § 2112.01. In the present instance, Da Fonseca Barbatti discloses an aluminum alloy possessing a chemical composition and grain structure that meets the parameters claimed. Therefore, any claimed properties relative to other aluminum alloys, such as textures, would also be expected to occur in Da Fonseca Barbatti’s alloys.
Pertinent Prior Art
The following prior art made of record and not relied upon are considered pertinent to applicant's disclosure:
US 2014/0096878 (A1) to Hatta et al. discloses an extruded aluminum alloy having a fibrous cross-section of at least 95% and crystallized product of 1% or less. Para. [0035], [0036].
US 2017/0306465 (A1) to Skubich et al. discloses an extruded aluminum alloy displaying better crash performance due to large non-recrystallized areas displaying a fibrous structure. Para. [0029].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
January 24, 2026