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 the Claims
Claims 1-19 are pending wherein claims 1-5 and 8-13 are under examination and claims 6-7 and 14-19 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of welding aluminum alloy welding materials. Applicant’s election of claims 1-5 and 8=13 was made without traverse in the Response filed on March 2, 2026.
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 4 and 9-10 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 4 and 9-10 contain the trademark/trade name “5000 series aluminum alloys”. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe many aluminum alloy compositions and, accordingly, the identification/description is indefinite. For instance, 5557 aluminum alloy may contain 0.6 weight percent magnesium, 0.2 weight percent manganese and 0.1 weight percent copper. However, 5026 aluminum alloy may have 4.5 weight percent magnesium, 1 weight percent manganese, and 0.3 weight percent copper. It is unclear how much of each element may or may not be contained in such alloys.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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 and 8-10 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Ozdemir et al. (Effect of Low Levels of Strontium on the Oxidation Behavior of Selected Molten Aluminum-Magnesium Alloys).
In regard to claims 1-3 and 8, Ozdemir et al. discloses adding 1000 ppm (0.1 weight percent) strontium to Al-1% Mg alloys and Al-0.5%Mg alloys (page 244).
With respect to the recitation “expanded” in claim 1, the Examiner notes that this is a processing limitation whereas the claims are drawn to a product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. However, if this recitation is determined to make a structural impact on the alloy, merely changing the size/shape of a prior art product would be insufficient to patently distinguish from that prior art product. MPEP 2144.04 (IV)(A) and MPEP 2144.04 (IV)(B). Therefore, a rejection based on 102 or alternatively under 103 is proper.
With respect to the recitation “for welding” in claim 1, the Examiner considers this an intended use that would not further limit the structure of the alloy. MPEP 2111.02 II.
With respect to the recitation “capable of reducing the surface tension of molten aluminum is contained” in claim 1, Ozdemir et al. discloses substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
In regard to claims 4 and 9-10, Ozdemir et al. only discloses the presence of aluminum, magnesium and strontium and aluminum alloys such as 5457 alloy would have 1 weight percent magnesium and therefore would be within the scope of 5000 series alloys.
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.
Claims 1, 3-5, 10, and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Haszler (US 2003/0145912).
In regard to claim 1, Haszler (‘912) discloses aluminum base alloys in a rolled or extrusion that would be used for welding having greater than 3 to 4.5 weight percent magnesium and 0 to 0.5 weight percent lithium [0019-0020]. The Examiner notes the ranges of magnesium and lithium disclosed by Haszler et al. (‘912) overlaps the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “expanded” in claim 1, the Examiner notes that this is a processing limitation whereas the claims are drawn to a product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
With respect to the recitation “for welding” in claim 1, the Examiner considers this an intended use that would not further limit the structure of the alloy. MPEP 2111.02 II.
With respect to the recitation “capable of reducing the surface tension of molten aluminum is contained” in claim 1, Haszler (‘912) discloses substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
In regard to claim 3, Haszler (‘912) discloses 0 to 0.5 weight percent lithium, which encompasses the range of the instant invention [0019-0020].
In regard to claims 4 and 10, Haszler (‘912) discloses wherein magnesium must be in the range of greater than 3 to 4.5 weight percent, manganese must be in the range of 0.4 to 1.2 weight percent, zinc must be in the range of 0.4 to 1.7 weight percent and zirconium must be in the range of 0.05 to 0.25 weight percent [0020]. 5059 aluminum alloys typically would have 0.6 weight percent zinc, 0.12 weight percent zirconium and 0.8 weight percent manganese. As discussed in the 112(b) rejection set forth above, 5026 aluminum alloy may have 4.5 weight percent magnesium. Therefore, the alloys of Haszler (‘912) would be within the scope of 5000 series alloys.
In regard to claims 5 and 12-13, Haszler (‘912) discloses forming a weld filler wire for welding marine structures, storage containers, pressures vessels, etc. [0001]. This would appear to encompass two or more members.
Allowable Subject Matter
Claim 11 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 11, neither Haszler (‘912) nor Ozdemir et al. specify a welding-joined body formed by welding two or more members wherein at least one of the members to be welded is an aluminum alloy with 0.2 to 6 mass percent magnesium and 0.08 to 0.50 mass percent strontium.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Sankaran et al. (‘365) discloses aluminum alloys that would be used in stir welding comprising magnesium, scandium and an enhancing system with the enhancing system includes about 0.05 to about 1.5 of titanium, vanadium, chromium, manganese, molybdenum, technetium, ruthenium, rhodium, palladium, silver, cadmium, hafnium, tantalum, tungsten, rhenium, osmium, iridium, platinum, gold, silver, lanthanum, cerium, praseodymium, neodymium, promethium, samarium, europium, gadolinium, terbium, dysprosium, holmium, erbium, thulium, ytterbium, lutetium, beryllium, calcium, strontium, barium, boron, germanium, indium, tin, lead, bismuth and thorium (claims). This presents a genus-species relationship relative to the pending claims as there no motivation to select strontium from the list of enhancing elements.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759