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 .
Claim Status
An amendment, filed 3/27/2026, is acknowledged. Claims 1-4, 6, and 12 are amended; claims 5, 7, 9, and 16-20 are canceled. Claims 1-4, 6, 8, and 10-15 are currently pending.
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 1-4, 6, 8, and 10-15 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 “a maximum intergranular corrosion depth” in claims 1 and 12 is a relative term which renders the claim indefinite. The term “a maximum intergranular corrosion depth” 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.
Further, it is unclear if the limitation is drawn to a material having a very high intergranular corrosion depth (maximum possible) or whether the claim is missing a value associated with a maximum allowable intergranular corrosion depth (e.g. allows for an intergranular corrosion depth up to a maximum value). As these interpretations are divergent in the required property, and recites no specific limit/value high or low, the limitation will be interpreted for the purposes of examination as having an alloy capable of being subjected to an intergranular corrosion depth measurement.
Finally, Claims 1 and 12 each also recite “measured according to ISO 11846 method B.” However, the instant specification clearly states that “Measuring and inspecting IG corrosion depth (which are not explicitly described in ISO 11846 method B) was performed as follows.” (para. 40 of PG. Pub.). Thus, the specification discloses that no method of measuring an intergranular corrosion depth is described in ISO 11846 method B. As a result, the scope and requirement of the limitation is indefinite. Applicant should, if seeking to recite the method of measurement in the claims, amend the claim(s) to recite the method of measurement as disclosed in the instant specification.
Claims 2-4, 6, 8, 10-11, and 13-15 are indefinite based on their dependency to claims 1 or 12, respectively.
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, 6, 8, and 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Zheng (US 2023/0203633).
With respect to Claims 1 and 12, Zheng teaches a method of heat treating an aluminum alloy, for example, a 6xxx 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).
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). It would have been obvious to one of ordinary skill in the art to select from the portion 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.
Finally, with respect to the limitation reciting “wherein the resulting alloy has a maximum intergranular corrosion depth and is measured according to ISO 11846 method B,” as the limitation includes no specific measurement value and Zheng teaches a method comprising the same steps and composition aluminum alloy, one of ordinary skill in the art would expect that the resulting alloy of Zheng necessarily exhibit or necessarily be capable of achieving the same measurement and/or property.
"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, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 2, Zheng teaches subjecting the 6xxx 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. (para. 42-52, 64).
With respect to Claim 3, Zheng teaches wherein the second temperature is a second aging temperature (i.e. an aging hardening temperature) of 150-180° C, overlapping the instantly claimed range. (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, Zheng teaches wherein the 6xxx aluminum alloy may comprise a solution heat treated and quenched alloy. (para. 11-15).
With respect to Claim 6, Zheng teaches wherein the alloy may be a 6xxx alloy. (para. 64; rejection of claim 1 above). 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).
With respect to Claims 8, 10, and 13-14, Zheng teaches a first aging step at a temperature of 180-270° C and a second aging step at a second temperature of 150-180° C. (see rejection of claims 1 and 12; para. 11-19, 64). 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 Claims 11 and 15, Zheng teaches wherein the second aging step second time duration is 1 to 6 hours, overlapping the claimed range. (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, 6, 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, 6, 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. 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 3/27/2026, with respect to the rejection(s) of claim(s) 1-4, 7-10, 12-14, and 16-18 under 35 U.S.C. 102 over Yan (US 97249487), Claims 1-4 and 7-18 under 35 U.S.C. 102 over Yan (US 9765419), claims 5-6 and 19-20 under 35 U.S.C. 103 over Yan (US 97249487) in view of Despois (US 2019/0352759), claims 11 and 15 under 35 U.S.C. 103 over Yan (US 97249487), claims 5-6 and 19-20 under 35 U.S.C. 103 over Yan (US 9765419) in view of Despois (US 2019/0352759), and claims 1-8, 10-11, and 16-20 under 35 U.S.C. 103 over Despois (US 2019/0352759) have been fully considered and are persuasive in view of Applicant’s amendments to the claims which combine multiple dependent claims and introduce a new limitation drawn to intergranular corrosion depth. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zheng, as detailed above.
Applicant’s arguments are moot in view of the new grounds of rejection.
Additionally, in view of Applicant’s amendments to the claims, the nonstatutory double patenting rejection over U.S. Patent Nos. 9249487 and 9765419 are withdrawn. However, in view of the amendments and further search and consideration, a new nonstatutory double patenting rejection is made as detailed above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/ Primary Examiner, Art Unit 1735
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