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/Restrictions
Applicant’s election without traverse of Group I, claims 1-5 and 8-13 in the reply filed on 12/17/2025 is acknowledged. As Applicant did not present any arguments against the restriction requirement, the Examiner, is assuming that the election is made without traverse.
Claims 6-7 and 14-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12/17/2025.
Claim Rejections - 35 USC § 102(a)(1)
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.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4-5, 10, and 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP2009299138A (hereinafter “JP138”). The Examiner is providing a machine translation of JP138.
Regarding claims 1, 4, 5, 10, 12, and 13, JP138 teaches a joined body of dissimilar materials in which a steel material and an aluminum material are joined by welding (JP138, [0001] and [0017]). JP138 further teaches the aluminum alloy material to be joined is a 6000 series aluminum alloy containing the following composition (JP138, [0017] and [0096-0097]):
Element
Present Invention, mass%
JP138, mass%
Overlap
Si
0.3-2.0
0.1-2.5
Preferred: 0.3-0.95
Preferred range within
Mg
0.3-2.0
0.1-3.0
Preferred: 0.3-1.0
Preferred range within
Sr, Ca, Sb, Li, Ba
0.04-0.5
Claim 3: 0.1-0.2
Li: 0.01-0.5
Preferred: 0.01-0.5
Preferred range within
Other elements
Cu: 0.001-1.0
Fe: 0.01-0.40
Balance
Al
Al and impurities
Al
Given that JP138 teaches the aluminum alloy can contain 0.01-0.5 mass% Li which is substantially identical to the surface-active element of claim 1, Li would be capable of reducing a surface tension of molten aluminum as required in claim 1.
Moreover, as Claim 1 uses the transitional phrase “characterized by,” the Examiner is interpreting this to be open language and additional elements can be included in the aluminum alloy, including Cu and Fe. See MPEP 2111.03(I).
The preferred elemental ranges of JP138 falls within the elemental ranges of claim 1. The aluminum alloy being a 6000 series aluminum alloy of JP138 corresponds to wherein the composition other than the surface-active elements is within the range of the 6000 series aluminum-magnesium-silicon alloys specified in JIS of claims 4 and 10. Moreover, the welding of the aluminum alloy material and steel material of JP138 corresponds to an aluminum alloy expanded material for welding of claim 1 and a welding-joined body, which comprises: a welding-joined body formed by welding two or more members, wherein at least one of the members to be welded is the aluminum alloy expanded material for welding according to previous claims (claims 5, 12, and 13).
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.
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.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over JP2009299138A (hereinafter “JP138”).
Regarding claim 3, JP138 teaches the amount of Li within the aluminum alloy is 0.01-0.5 mass% (JP138, [0096-0097]). The amount of Li encompasses the amount of surface-active element of claim 3. 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).
Claims 1-4 and 8-10 are rejected under 35 U.S.C. 103 as being unpatentable over JP H1161312A (hereinafter “JP312”). The Examiner previously provided a machine translation of JPH1161312A and all citations refer to this translation.
Regarding claims 1, 2, 3, and 8, JP312 teaches an aluminum alloy for extrusion comprising the following composition (JP312, [0007] and [0009]):
Element
Present Invention, mass%
JP312, wt.%
Overlap
Si
0.3-2.0
0.2-1.5
0.3-1.5
Mg
0.3-2.0
0.2-1.5
0.3-1.5
Sr, Ca, Sb, Li, Ba
0.04-0.5
Claim 3: 0.1-0.2
0.005-0.3
0.04-0.3
Other elements
Fe: 0-1.5
Cu: 0-0.5
Mn: 0-1.5
Cr: 0-0.35
Zn: 0-0.5
Ti: 0-0.2
Can all be 0%
Balance
Al
Al and impurities
Al
JP312 further teaches the aluminum alloy for extrusion is used in vehicles, ships, automobiles, aircraft, buildings, and other structures (JP312, [0001]). The extrusion of JP312 corresponds to an expanded material of claim 1.
Given that JP312 teaches the aluminum alloy can contain 0.005-0.3 wt.% Sr, Ca, Sb, Li, and Ba, which are substantially identical to the surface-active elements of claim 1, these elements would be capable of reducing a surface tension of molten aluminum as required in claim 1.
The elemental ranges of JP312 overlap with the elemental ranges of claims 1, 3, and 8 and the possible inclusion of Sr of JP312 corresponds to wherein the surface-active element is Sr of claim 2. 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).
Moreover, as Claim 1 uses the transitional phrase “characterized by,” the Examiner is interpreting this to be open language and additional elements can be included in the aluminum alloy. See MPEP 2111.03(I).
However, the recitation in the claims that the aluminum alloy expanded material is “for welding” is merely an intended use. Applicants’ attention is drawn to MPEP 2111.02 which states that intended use statements must be evaluated to determine whether the intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the intended use recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure is capable of performing the intended use. Given that JP312 discloses the aluminum alloy as presently claimed, it is clear that the aluminum alloy of JP312 would be capable of performing the intended use, i.e. welding, presently claimed as required in the above cited portion of the MPEP, and thus, one of ordinary skill in the art would have arrived at the claimed invention.
Regarding claims 4, 9, and 10, JP312 teaches the aluminum alloy of the second invention (and noted in the above table) is a 6000 series alloy specified by JIS and is required to have excellent extrudability and to be able to obtain a moderate level of strength by age strengthening (JP312, [0015]). The 6000 series aluminum alloy of JP312 corresponds to wherein the composition other than the surface-active elements is within the range of the 6000 series aluminum-magnesium-silicon alloys specified in JIS of claims 4, 9, and 10.
Claims 5 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over JP H1161312A (hereinafter “JP312”) as applied to claim 1 above, and further in view of JP2009299138A (hereinafter “JP138”).
Regarding claims 5 and 11-13, while JP312 teaches the aluminum alloy for extrusion is used in vehicles, ships, automobiles, aircraft, buildings, and other structures (JP312, [0001]), JP312 does not explicitly disclose a welding-joined body, which comprises: a welding-joined body formed by welding two or more members, wherein at least one of the members to be welded is the aluminum alloy expanded material for welding of the invention.
With respect to the difference, JP138 teaches a joined body of dissimilar materials in which a steel material and an aluminum material are joined by welding (JP138, [0001] and [0017]). JP138 further teaches the aluminum alloy material to be joined is a 6000 series aluminum alloy (JP138, [0017]).
As JP138 expressly teaches it is desirable to reduce the weight of transport vehicles while maintaining the energy absorption properties by joining dissimilar materials including steel and aluminum alloys together (JP138, [0002]).
JP312 and JP138 are analogous as they are both drawn to the use of 6000 series aluminum alloys in vehicles (JP312, [0001]; JP138, [0002]).
In light of the motivation to use a 6000 serious aluminum alloy as a joined body of dissimilar materials as taught in JP138 above, it therefore would have been obvious to one of ordinary skill in the art to use the 6000 series aluminum alloy of JP312 to produce a joined body in order to reduce the weight of transport vehicles while maintaining the energy absorption properties (JP138, [0002]), and thereby arrive at the present invention.
Moreover, given that the 6000 series aluminum alloy of JP312 can include Sr, this alloy can be used as the 6000 series alloy to be joined with a steel material JP138 and corresponds to the present invention.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: JP 2015-010259A teaches an Al-Si-Mg aluminum alloy sheet that has a composition that is substantially identical to the claimed ranges.
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738