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 .
Status of Claims
Claims 1-20 are currently under examination.
Claim Interpretation
The term “primary aluminum” is interpreted, based on [0031] of the instant specification, to mean previously unused aluminum (a.k.a. virgin aluminum) refined from Al-containing ores.
The term “low carbon primary aluminum” is interpreted, based on [0013] of the instant specification, to mean aluminum produced by a process that uses electricity from low carbon sources, including but not limited to wind, solar, hydro, tidal or nuclear.
The term “pre-consumer recycled aluminum” is interpreted to mean aluminum scrap recovered during a manufacturing process prior to reaching the consumer.
The term “post-consumer recycled aluminum” is interpreted to mean aluminum recovered from consumer products.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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.
Claim 20 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Claim 20 recites “The method of claim 19, further comprising conversion and fabrication of the recycled aluminum”. However, there is no disclosure in the instant specification on what the claimed conversion entails. One of ordinary skill in the art would not have been able to understand what and how the conversion of the recycled aluminum should occur, and therefore, not able to performed the claimed conversion of the recycled aluminum.
Claim 20 is 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 20 recites “The method of claim 19, further comprising conversion and fabrication of the recycled aluminum”. However, there is no disclosure in the instant specification on what the claimed conversion entails. Therefore, the scope of “conversion” is not clear. The instant claim is vague and indefinite.
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 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/213400 in view of Felberbaum et al. US 2019/0010592(Felberbaum).
Claims 1-20 of copending Application No. 18/213400 a recycled aluminum composition that comprises primary aluminum and pre-consumer recycled aluminum 6063, a computer chassis comprising the recycled Al composition and a method of making the recycled aluminum or a method of making a computer chassis comprising the recycled Al composition.
However, the claims 1-20 of copending Application No. 18/213400 does not teach that the recycled aluminum is a 5252 Al alloy as claimed.
Felberbaum teaches an Al alloy made from at least 30% recycled aluminum (abstract, [0005]) and using the Al alloy to produce Chasis for electronics such as phones, computers and tablets[0081]. Felberbaum further teaches that suitable Al alloys includes 5052, 5252 and 6063[0072-0073]. In light of the teachings of Felberbaum, one of ordinary skill in the art would have found it obvious to have substituted the 6063 Al alloy as taught by claims of copending Application No. 18/213400 with 5252 Al alloy of Felberbaum with expected success since Felberbaum teaches Al alloy made of recycled 5252 Al alloy as just as suitable for computer chassis as 6063 Al alloy of copending Application No. 18/213400.
This is a provisional nonstatutory double patenting rejection.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/213419 in view of Felberbaum et al. US 2019/0010592(Felberbaum).
Claims 1-20 of copending Application No. 18/213419 a recycled aluminum composition that comprises primary aluminum and pre-consumer recycled aluminum 5052, a computer chassis comprising the recycled Al composition and a method of making the recycled aluminum or a method of making a computer chassis comprising the recycled Al composition.
However, the claims 1-20 of copending Application No. 18/213430 does not teach that the recycled aluminum is a 5252 Al alloy as claimed.
Felberbaum teaches an Al alloy made from at least 30% recycled aluminum (abstract, [0005]) and using the Al alloy to produce Chasis for electronics such as phones, computers and tablets[0081]. Felberbaum further teaches that suitable Al alloys includes 5052, 5252 and 6063[0072-0073]. In light of the teachings of Felberbaum, one of ordinary skill in the art would have found it obvious to have substituted the 5052 Al alloy as taught by claims of copending Application No. 18/213430 with 5252 Al alloy of Felberbaum with expected success since Felberbaum teaches Al alloy made of recycled 5252 Al alloy as just as suitable for computer chassis as 5052 Al alloy of copending Application No. 18/213430.
This is a provisional nonstatutory double patenting rejection.
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.
Claim(s) 1and 3-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Felberbaum et al. US 2019/0010592(Felberbaum).
Felberbaum teaches an aluminum alloy comprising at least 30% recycled Al content[0005, 0034], wherein the recycled content may be materials recycled from Al manufacturing facility(i.e. pre-consumer recycled Al) and/or post-consumer sources(i.e. post-consumer recycled Al)[0035]. Felberbaum further teaches that the Al alloy may be 5xxx series Al alloy such as AA5252[0070, 0072].
Regarding claims 1 and 3-5, the Al alloy of Felberbaum contains at least 30% recycled Al content, which implies less than 70% of the Al alloy comes from primary Al sources. Additionally, since the recycled Al as taught by Felberbaum may be from Al manufacturing facility(pre-consumer recycled Al) or post-consumer sources, the examiner concludes that at least some to all of the recycled Al may come from pre-consumer and/or post-consumer recycled Al sources, which implies that the amount of pre-consumer recycled Al as taught by Felberbaum encompasses the claimed amount of pre-consumer recycled Al. Furthermore, the amount of primary Al in the Al alloy of Felberbaum overlaps the claimed amount of primary Al. Therefore, a prima facie case of obviousness exists. See MPEP 2144.05.
Regard claim 6, Felberbaum further teaches, in Figs. 8-9, that the recycled aluminum composition has a tensile strength that’s greater than 205 MPa as claimed, a yield strength(in the T6 range in Fig. 8) that is greater than 170MPa as claimed, and an elongation of greater than 8% as claimed(see total elongation(TE)).
Regarding claims 7-8, the 5252 aluminum alloy(i.e. 2.2-2.8wt% Mg) of Felberbaum is an Al alloy that reads on claimed 5252 Al alloy composition. The alloy composition for 5052 Al alloy is widely available online and in literature.
Regarding claims 9-10, the minor alloying elements in the 5252 aluminum alloy, such as claimed Fe, Si, Mn, Cu, Zn, are present in amounts that read on the claimed amounts of minor alloying elements.
Regarding claim 11, Felberbaum further teaches that the recycled aluminum alloy is cast product as claimed(abstract, [0021]).
Regarding claims 12-13, Felberbaum further teaches that the recycled Al alloy can be used in electronics application such as computer or tablet chassis[0081].
Regarding claim 14, since Felberbaum teaches that its recycled Al alloy is suitable for making computer or tablet chassis, which would have read on the claimed chassis having at least 10% comprising recycled Al composition.
Regarding claim 15, since Felberbaum’s recycled Al alloy is suitable for making computer chassis, one of ordinary skill in the art would have found it obvious to use the recycled Al alloy in a process to make computer chassis with expected success.
Regarding claim 16, the recycled Al alloy of Felberbaum comprises at least 30% recycled Al, which encompasses the claimed at least 70% recycled Al as claimed. Therefore, a prima facie case of obviousness sists. Wee MPEP 2144.05.
Regarding claims 17-18, the instant claims are rejected for the same reason set forth in the rejection of claims 1 and 3 above.
Claim(s) 2 and 19-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Felberbaum, and further in view of WO 2009/081091(WO091).
The teachings of Felberbaum are discussed in section 12 above. However, Felberbaum does not explicitly teach that the primary aluminum is a low carbon primary aluminum.
WO091 teaches a method to make low-carbon primary aluminum(abstract). WO091 further teaches that its method is technically viable, economical and environmentally friendly(page 5, 3rd paragraph).
Regarding claims 2 and 19, it would have been obvious to one of ordinary skill in the art to have incorporated the low carbon primary aluminum as taught by WO091 into the recycled Al alloy of Felberbaum in order to provide primary aluminum that is technically viable, economical and environmentally friendly as taught by WO091. Additionally, since the recycled Al alloy of Felberbaum in view of WO091 comprises low carbon primary Al and pre-consumer recycled Al alloy 5252, the claimed steps of combining the low carbon primary Al and pre-consumer recycled Al alloy 5252 and the claimed step of alloy would have taken place in the process of manufacturing the recycled Al alloy of Felberbaum in view of WO091.
Regarding claim 20, Felberbaum teaches that the resulting Al alloy can be used in making computer or tablet chassis, which implies the presence of claimed conversion and fabrication of the recycled Al as claimed.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 571-272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733