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 .
Drawings
Figures 1-3 and 5-10 are objected to because they do not comply with 37 CFR 1.84(l) because the lines, numbers, and characters do not have satisfactory reproduction characteristics and/or do not permit adequate reproduction, and are not durable, clean, black, sufficiently dense and dark, and uniformly thick and well-defined.
Claim Objections
Claims 1, 3, and 16 are objected to because of the following informalities:
Claim 1: amend “Casting” to “casting”, “Heat” to “heat”, “Extruding” to “extruding”, and “Natural” to “natural”
Claim 1, line 10: amend “than100” to “than 100”
Claim 3, line 1: amend “an homogenizing” to “a homogenizing”
Claim 16, line 4: amend “(in hours)” to “in hours”
Appropriate correction is required.
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 1-16 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.
Claims 1, 2, 3, and 5, use the term “optionally” when referring to various temperature ranges and time intervals. It is unclear whether the limitation following the word “optionally” are required in order to satisfy claims 1, 2, 3, and 5. For the sake of compact prosecution, the Examiner is assuming that the various ranges are not required in order to meet the limitations of claims 1, 2, 3, and 5. Clarification is required.
Regarding dependent claims 4 and 6-16, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
The term “substantially” in claims 4 and 5 is a relative term which render the claims indefinite. The term “substantially” 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. The word “substantially” is used to describe a temperature of 400°C and it is unclear how “close” to 400°C, the temperature must be in order to satisfy the limitation of “substantially,” i.e., ±5%, a few tenths of a degree, etc. Clarification is required.
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 1-16 are rejected under 35 U.S.C. 103 as being unpatentable over Jarrett et al. (EP 2883973 A1, hereinafter “Jarrett”). Applicant provided a copy of Jarrett with the IDS filed 1/18/2023.
Regrading claim 1, Jarrett teaches a manufacturing process for obtaining extruded products made from a 6xxx aluminum alloy comprising a) homogenizing a billet cast from the aluminum alloy, b) heating the homogenized cast billet, c) extruding the billet through a die to form at least a solid or hollow extruded product, d) quenching the extruded product down to room temperature, e) optionally stretching the extruded product to obtain a plastic deformation between 0.5-5%, and f) ageing the extruded product (Jarrett, Abstract). Jarrett further teaches the following composition of the alloy (Jarrett, [0014-0015]):
Element
Present Invention, wt.%
Jarrett, wt.%
Overlap
Jarrett
Steel D
Si
Claim 1: 0.1-1.2
Claim 8: 0.6-1.1
Claim 9: 0.6-1.0
0.3-1.7
0.3-1.2
1.13
Cu
Claim 1: ≤1.2
Claim 8: 0.2-1.0
Claim 9: 0.2-1.0
0.01-1.5
0.01-1.2
0.53
Mn
Claim 1: 0.05-1.2
Claim 8: 0.3-0.9
Claim 9: 0.05-1.2
0.1-1.4
0.1-1.2
0.55
Mg
Claim 1: 0.1-1.2
Claim 8: 0.4-0.9
Claim 9: 0.1-1.2
0.1-1.4
0.1-1.2
0.89
One or more of
Cr ≤ 0.3; 0.01-0.3
Zn ≤ 0.5; 0
Ti ≤ 0.21; ≤0.1
Zr ≤ 0.2; 0.01-0.2
V < 0.1
Cr: 0.05-0.4
Zn: 0.01-0.7
Ti: 0
Zr: 0.05-0.25
V: 0
Cr: 0.05-0.3
Zn: 0.01-0.5
Ti: 0
Zr: 0.05-0.2
V: 0
Zr: 0.14
Fe
Claim 10: ≤0.5
0-0.21
0-0.21
0.19
Other impurities
Claim 10: each ≤0.05
Total ≤0.15
-
-
-
Balance
Al and impurities
Al and impurities
Al and impurities
Al
Jarrett also teaches the profiles are aged without any prior post-extrusion solution heat treatment, by a one- or multiple-step heat treatment at temperatures ranging from 150-200°C for a prescribed period of time, between 1-100 hours depending on the targeted properties and can increase the ultimate tensile strength by 10-15% (Jarrett, [0024] and [0034]).
The process of Jarrett corresponds to a manufacturing process for obtaining extrusions made of 6xxx aluminum alloy of claim 1. The cast billet comprising the above composition of Jarrett corresponds to and overlaps with a) Casting a billet of claim 1 and the composition of claims 8, 9, and 10. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
The homogenizing step of Jarrett corresponds to b) Heat treating said cast billet of claim 1. The extruding step of Jarrett corresponds to c) Extruding said heat treated billet through a die to form a solid or hollow extrusion of claim 1. The quenching step of Jarrett corresponds to d) quenching said extrusion down to room temperature of claim 1.
Given that the natural aging step can be zero days, Jarrett does not need to perform this step and can still satisfy e) Natural ageing said extrusion during less than 100 days of claim 1. The aging step of Jarrett corresponds to f) ageing said naturally aged extrusion of claim 1. The parameters of the aging step of Jarrett overlaps with wherein said ageing treatment comprises at least three steps, which are successively i) an artificial preageing treatment with a duration tl at a temperature T1 selected to increase the yield strength of said extrusion between 5% and 20%, optionally between 6% and 19%, and optionally between 8% and 18% compared to the yield strength obtained after step e), said temperature T1 being optionally between 120°C and 180°C and said duration tl being optionally between 1 and 100 hours, to obtain an artificially preaged extrusion, ii) a plastic deformation of said artificially preaged extrusion between 1% and 80% to obtain a deformed extrusion, iii) a final artificial ageing treatment of said deformed extrusion with a duration t2 at a temperature T2, said temperature T2 being optionally between 140°C and 200°C and said duration t2 being optionally between 1 and 100 hours of claim 1.
It is noted that the present claims require artificial aging, plastic deformation, artificial aging, while Jarrett discloses plastic deformation and multiple-step artificial aging, however, it is noted that switching the order of performing process steps would be obvious absent any clear and convincing evidence and/or arguments to the contrary (see MPEP 2144.04 IVC). Therefore, it would have been obvious to one of ordinary skill in the art to perform the process steps in any order, including artificial aging, plastic deformation, artificial aging, given that it is clear that the same product would result. Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious).
Regarding claims 2, 3, 4, and 5, Jarrett teaches the homogenization process includes homogenizing for 3-10 hours at a temperature of 0-75°C below the solidus temperature, typically 450-500°C (Jarrett, [0016]). Jarrett then teaches the billet is subjected to a soaking treatment at Ts-15°C and Ts for 80-120 seconds and then cooled until its temperature reaches 400-480°C while ensuring that the billet surface never goes below a temperature substantially close to 400°C (Jarrett, [0017-0018]). Given that Jarrett heats the cast billet to the homogenizing temperature of 450-500°C, a preheating step would necessarily occur as required in claim 2. The homogenizing process of Jarrett overlaps with the homogenizing treatment of claims 3 and 5. The soaking treatment of Jarrett falls within the solution heat treatment of claims 4 and 5. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Regarding claim 6, Jarrett teaches the extruded profiles are aged without any prior post-extrusion solution heat treatment (Jarrett, Abstract and [0024]). The lack of heat treatment after extrusion of Jarrett corresponds to wherein no additional solution heat treatment is performed on the extrusion of claim 6.
Regarding claims 7 and 13, Jarrett teaches the extrudates are stretched to obtain a plastic deformation typically between 0.5-5.0% in order to have stress-relieved straight profiles (Jarrett, [0023]). The stretching of Jarrett corresponds to wherein said plastic deformation of step ii) is obtained by stretching of claim 7. The amount of plastic deformation of Jarrett overlaps with claim 13. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Regarding claims 11 and 12, the extrusion speed is controlled to have an extrudate surface exit temperature higher than 460°C but lower than the solidus temperature, where the tarted extrudate surface temperature is commonly 530-560°C (Jarrett, [0022]). Controlling the extrusion speed of Jarrett overlaps with and encompasses the limitations of claims 11 and 12. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Regarding claims 14, 15, and 16, Jarrett also teaches the profiles are aged without any prior post-extrusion solution heat treatment, by a one- or multiple-step heat treatment at temperatures ranging from 150-200°C for a prescribed period of time, between 1-100 hours depending on the targeted properties (Jarrett, [0024]). The multiple-step aging process of Jarrett corresponds to wherein the final artificial ageing treatment of step iii) is performed in multiple steps of claim 14, wherein an equivalent time t(eq) at 170°C of the final artificial ageing treatment is between 1 and 80 hours of claim 15, and the equivalent time of claim 16.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738