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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/22/2026has been entered.
Claim Status
An amendment, filed 7/22/2026, is acknowledged. Claims 1-2, 4, and 12 are amended; Claim 6 is canceled. Claims 1-4, 8, and 10-15 are pending.
The rejection of claims 1-4, 6, 8, and 10-15 under 35 U.S.C. 112(b) is withdrawn in view of Applicant’s amendments to the claims.
Claim Objections
Applicant is advised that should claim 3 be found allowable, claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
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.
Claim(s) 1-4, 8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wen et al. (US 2017/0175240) alone or in the alternative, in view of Zheng (US 2023/0203633)(previously cited).
With respect to Claims 1, 3, 8, and 10-11, Wen teaches a method of making a 6xxx-type aluminum alloy exhibiting an intergranular corrosion depth of 200 microns or less, wherein the 6xxx-type aluminum alloy comprises Cu, Si and Mg, and thus, constitutes a “6xxx Al-Si-Mg-Cu aluminum alloy.” (para. 6-12, 136). Wen teaches wherein the method may comprise steps of hot rolling, solution treatment, quenching, followed by natural or artificial aging treatment. (see, e.g., para. 138-154, 169-173). In particular, Wen teaches examples of artificial aging at a temperature of 180-225°C for a period of about 15 minutes to about 8 hours (para. 154, 173) wherein such examples resulted in an intergranular corrosion depth of 150 microns or less. (Table 17). Thus, Wen teaches a method of subjecting a 6xxx Al-Si-Mg-Cu aluminum alloy to an aging temperature below a solution heat treatment temperature, for a period of time overlapping the first time duration and also overlapping the subsequently claimed ranges of second temperature and second time duration (individually or combined), and resulting in an alloy comprising the claimed maximum intergranular corrosion depth.
As the instantly claimed first temperature and the second temperature may both comprise a temperature of 200°C, as taught by Wen, and comprise individual and combined time durations encompassed by time period of Wen, a single aging heat treatment of Wen falling overlapping the claimed ranges is deemed to meet the instantly claimed limitations of Claims 1, 3, 8, and 10-11. Additionally, it would have been obvious to one of ordinary skill in the art to select from the portions of the respective overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
In the alternative with respect to claims 1, 3, 8, and 10-11 and also with respect to Claims 12-15, Wen teaches an aging heat treatment overlapping the respective first and second temperatures and first and second time durations and resulting in an aluminum alloy having an intergranular corrosion depth falling within the claimed ranges; however, the reference is silent as to breaking up to the aging heat treatment into first and second heating steps as instantly claimed and wherein the first temperature is higher than the second temperature as required by claim 12 and claims 13-15 dependent thereon.
Zheng teaches a method of heat treating an aluminum alloy, such as a 6xxx-type aluminum alloy, the method comprising subjecting an aluminum alloy to a first aging step at a temperature of 180-270° C for 0-30 minutes, followed by a second aging step at a second temperature of 150-180° C for 1-6 hours. (para. 11-19, 64). The reference teaches examples, such as a first aging step at 220° C for 5 minutes followed by a second aging step at 175° C for 4 hours. (para. 77). Zheng teaches that a solution treatment temperature for a 6xxx alloy should occur at a temperature of 500-580° C. (para. 64). One of ordinary skill in the art would recognize that 6xxx series aluminum alloy is a standardized alloy composition and thus comprising a 6xxx Al-Si-Mg-Cu aluminum alloy. (as evidenced by the instant specification para. 5, teaching the compositional ranges allowed for a 6xxx aluminum alloy and including Si, Mg, and Cu and also evidenced by Wen, see above).
Accordingly, Zheng teaches a method comprising steps of subjecting an aluminum alloy to a first temperature for a first time duration of 0-30 minutes overlapping the claimed range, wherein the first temperature is below a solution heat treatment temperature, subjecting the alloy to a second temperature for a second time duration of 1-6 hours, and thus, wherein the first temperature is higher than the second temperature, thereby obtaining a resulting alloy and wherein the aluminum alloy may be a variety of alloys such as 2xxx, 6xxx, or 7xxx series aluminum alloys. (para. 64).
Zheng also teaches “In the two-step aging temperature range, the stress relaxation occurs while strengthening phases are rapidly precipitated, thereby improving the strength and dimensional accuracy of the formed part. In accordance with the hot forming method for the large-size aircraft thin-walled part of high-strength aluminum alloy, when the die-clamping pressure is maintained in the forming die, the dimensional accuracy of the formed part is improved while the stress relaxation occurs. On the premise of guaranteeing the quality of the formed part, a mode of the stepped aging treatment shortens the aging cycle and reduces energy consumption in the production and manufacturing process of the part.” (para. 28).
Thus, Wen and Zheng are both drawn to heat treatment of 6xxx-type aluminum alloys with overlapping temperatures and times. It would have been obvious to one of ordinary skill in the art to split the aging heat treatment of Wen to first and second aging heat treatment steps and first and second time durations, wherein the first temperature is higher than the second temperature, as taught by Zheng, in order to reduce energy consumption and improve the accuracy of part forming. (see, Zheng, para. 10, 28). In addition, it would have been obvious to one of ordinary skill in the art to select from the respective portions of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 2, Wen teaches subjecting the 6xxx Al-Si-Mg-Cu aluminum alloy to a solution heat treatment at the solution heat treatment temperature, prior to subjecting the alloy to the first aging step at the first temperature. (see rejection of claim 1 above; para. 138-154, 169-173).
With respect to Claims 3, 8, and 10-11, Wen and in the alternative, Wen in view of Zheng teach a second temperature that is an aging hardening temperature, a first temperature, and a second time duration overlapping the instantly claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 4, Wen teaches wherein the 6xxx aluminum alloy may comprise a solution heat treated and quenched alloy. (see rejection of claim 1 above; para. 138-154, 169-173).
With respect to Claims 13-15, Wen in view of Zheng teach a first temperature, a second temperature, and a second time duration overlapping the instantly claimed ranges. (see rejection of claims 1 and 12 above). Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
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 1-4, 8, and 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-20 of copending Application No. 18/924675 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because: the related claims are a continuation of the instant application. The related claims 1-20 are identical or nearly identical to the originally filed claims of the instant application. The claims differ in that Claims 1-4, and 12 are amended to incorporate subject matter of canceled claims 5, 7, 9, and 16-20 and to include a new limitation drawn to intergranular corrosion depth. As the related claims include limitations drawn to a method comprising the same material (6xxx aluminum alloy) and the same steps, the related method would necessarily be expected to result in the same properties, including the instantly claimed intergranular corrosion depth of less than 250 microns. MPEP 2112.01.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments, filed 7/22/2026, with respect to the rejection(s) of claim(s) 1-4, 6, 8, and 10-15 under 35 U.S.C. 103 over Zheng have been fully considered and are persuasive in view of Applicant’s amendments to the claims. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wen or in the alternative, Wen in view of Zheng.
Applicant’s arguments with respect to the rejection under 35 U.S.C. 103 are moot in view of the new grounds of rejection.
Applicant’s arguments with respect to the nonstatutory double patenting rejection have been considered but are not found persuasive. Applicant merely concludes that the amendment obviates the rejections. This argument is not found persuasive as the claims remain drawn to substantially the same subject matter and therefore, would be expected to result in the same properties. See MPEP 2112.01 and the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
