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
Pending:
1, 3-19
Withdrawn:
NONE
Rejected:
1, 3-19
Amended:
1, 5
New:
19
Independent:
1
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(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 5, 9-14 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 5 recites the limitation "further comprises Mg2Si and/or Fe and satisfies the following" in line 2, and refers to Fe in line 4, and Mg2Si in line 3. The presence of Mg2Si and Fe is in the alternative in line 2, but required in lines 3-4 (as Mg2Si inequality of line 3 and Si-Mg/1.73-(Fe+Mn)/3 inequality of line 4 are connected by the conjunction “and”), thereby rendering the claim indefinite.
Claim 9 recites the limitation “at least a solid extruded product or at least a hollow extruded product”, which renders the claim indefinite, as it is unclear what is intended and encompassed by said phrase. The instant specification at [0043] refers to a hollow extruded profile as a separate product; whereas [0038] of the instant specification refers to “one or several solid or hollow extruded products or extrudates”. Due to the presence of the phrase “at least”, it is unclear if said phrase in the claim refers to at least one solid product or at least one hollow product-as separate products; and/or if said phrase refers to/includes a product that is both solid and hollow in form (integrated/together). Applicant’s explanation of “a skilled artisan would have understood that an extruded product can be a solid extruded product or a hollow extruded product, but not simultaneously both” is inconsistent with the phrase “at least” in said claim referencing hollow and extruded products. Appropriate correction is needed.
Claims dependent on the above rejected claims are likewise rejected under this statute. Appropriate correction is required.
Claim 8 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 8 (which is dependent on independent claim 1) refers to a variety of 6xxx series alloys. However, these alloys have ranges of alloying elements outside those of independent claim 1 (see Table 1 below & reference to claim 8’s registered alloys AA6056, AA6156, and AA6082). In particular, the magnesium range of AA6056 is 0.6-1.2% Mg (dependent claim 8), which includes a range outside (and therefore does not further limit) the range of Mg stated by independent claim 1 of 0.1-0.89% Mg.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3-7, 9-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sano (US 2004/0084119A1), previously cited.
Sano (abstract, Table 1) teaches an extruded 6xxx alloy product (which qualifies as a wrought product) comprising (in wt%):
cl. 1
cl. 3
cl. 8
AA6056
cl. 8
AA6156
cl. 8 AA6082
Cl 19
Sano broad
Sano ex. G
Sano ex. J
Si
0.3-1.7
0.7-1.3
0.7-1.3
0.7-1.3
0.3-1.7
0.5-1.5
1.1
0.9
Mg
0.1-0.89
0.6-1.2
0.6-1.2
0.6-1.2
0.1-0.89
0.9-1.6
1.0
1.1
Mn
0.1-1.4
0.4-1.0
0.40-0.7
0.40-1.0
0.1-1.4
0.5-1.2
1.0
0.9
Cr
-0.25
-0.25
-0.25
0.02-0.4*
0.2
0.3
Zr
0.05-0.25
0.05-0.25
0.03-0.2*
-
Cu
0.01-1.5*
0.4-1.5
0.5-1.1
0.7-1.1
-0.10
0.01-1.5*
0.8-2.5
1.0
1.8
Zn
0.01-0.7*
0.10-0.7
0.10-0.7
-0.20
0.01-0.7*
0.03-2.0*
0.5
Fe
-0.5
-0.20
-0.50
0.18-0.21
*=at least one of Cu, Zn
*=at least one of Cu, Zn
*=at least one of Cr, Zr, Zn
Table 1: instant claims vs. Prior art of Sano
wherein the broad ranges taught by Sano are a close approximation (Mg) or overlap (Si, Mn, Cr, Zr, Cu, Zn, and Fe) the claimed alloying ranges. Sano at ex. G and ex. J teach close examples to the instant invention. More particularly concerning the claimed Mg range, the minimum amount of Mg taught by Sano of 0.9% Mg, is held to be a close approximation of the claimed 0.89% Mg. A negligible difference exists between 0.89% Mg (claimed) and 0.9%Mg (Sano), and one of skill in the art would expect them to be essentially equivalents/close approximations, and for an alloy containing the claimed amount of Mg to possess substantially similar properties to those of Sano; see Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). Therefore, because Sano teaches a wrought alloy product with alloying ranges that overlap or are a close approximation of the claimed alloying ranges, it is held that Sano has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed thickness range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claim 4, The UTS of close example G of Sano is 465 MPa in a T6 temper (which falls within the claimed minimum UTS, claim 4). However, the thickness of sample G is 12 mm, which is outside the claimed <6mm thickness limitation of claim 4 (see Sano at [0050]). Sano broadly teaches forming said alloy to a thickness of ≥0.1 mm (calculated from: L≤5T, L≥ 0.5mm, wherein L= bearing length and T=extrusion thickness, see Sano at [0012]), which overlaps the claimed thickness maximum of “lower than 6 mm” (claim 4), and “lower than 3 mm” (claim 6). Therefore, because Sano teaches an alloy with alloying ranges that overlap or are a close approximation of the claimed ranges, together with a teaching to form into a thickness within/overlapping the claimed thickness (Sano teaches forming thicknesses ≥0.1mm, see discussion above), then substantially the same UTS would be expected for the alloy of Sano at said thickness, as for the instant invention. It is held that Sano has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 5, Sano generally teaches Si and Mg combine to strengthen the alloy by forming Mg2Si (see Sano at [0025-0026]), but does not teach the specific amount formed in the above examples. However, because Sano teaches an alloy with overlapping/close approximation of the claimed alloying ranges, processed by substantially identical heat treatment as in the instant specification (homogenizing, heating, extrusion, quenching, artificially aging, see Sano at examples & instant invention at examples), then the same microstructure/phases would be inherently expected for Sano (such as presence and amount of Mg2Si), as for the instant invention.
Concerning claim 6, see discussion of thickness above.
Concerning claim 7, Sano teaches the 6xxx alloy extrusion can be a hollow product (abstract).
Concerning claims 9-14, which mentions various product-by-process steps, Sano teaches a product (such as a solid extrusion [0050]) with a substantially identical composition/product configuration (formed by a substantially similar method of heat treating, extruding, quenching, and aging, see Sano at examples). Therefore, because Sano teaches a product with a substantially identical composition/product configuration, it is held that Sano anticipates the presently claimed invention.
Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven 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.” See MPEP 2113.
Concerning claims 15 and 16, see above discussion expected ultimate tensile strength at a given thickness above.
Concerning claim 17, the minimum amount of Mg taught by Sano of 0.9% Mg, is held to be a close approximation of the claimed 0.87% Mg. A negligible difference exists between 0.87% Mg (claimed) and 0.9%Mg (Sano), and one of skill in the art would expect them to be essentially equivalents/close approximation. Therefore, because Sano teaches a wrought alloy product with alloying ranges that overlap or are a close approximation of the claimed alloying ranges, it is held that Sano has created a prima facie case of obviousness of the presently claimed invention. See also Titanium Metals, supra and Peterson, supra.
Concerning claim 18, which recites “Cr 0.05-0.4 wt%”, Sano teaches 0.02-0.4% Cr; wherein Cr is selected from a Markush group of at least 1 of Zr, Cr, V, and Zn (see Table 1 above, Sano at [0030]). It would have been obvious to one of ordinary skill in the art to have selected 0.02-0.4% Cr as taught by Sano, because Sano teaches Zr, Cr, V, and Zn are all effective to reduce the crystal grain size and improve properties [0030].
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Sano as applied to claim 1 above, and further in view of “Aluminum and Aluminum Alloys”, p 22, 23, 43.
Concerning claim 19, Sano teaches overlapping alloying ranges of Si, Mg, Mn, Zr, and Cu. Sano does not teach the addition of any elements excluded by the instant “consists of” transitional phrase, and therefore meets the instant limitations. Sano does not teach the presence of Fe 0.18-0.21%.
However, concerning the Fe range of claim 19, “Aluminum and Aluminum Alloys”, p 43 teaches that Fe is the most common impurity in aluminum, and is present as an intermetallic phase that reduces the grain size in wrought products (p 43). Further, “Aluminum and Aluminum Alloys” p 22-23 teaches that Fe is typically present in 6xxx series alloys in a maximum limit of ≤0.50% (p 22-23, Table 2). It would have been obvious to one of ordinary skill in the art to have controlled Fe to a maximum of ≤0.50% (which overlaps the claimed range) for the 6xxx series alloy taught by Sano, because Fe is a common impurity for 6xxx series aluminum alloys, and because Fe is known to be a result effective variable, effective to reduce grain size (“Aluminum and Aluminum Alloys” p 43). It is held that Sano together with “Aluminum and Aluminum Alloys” has created a prima facie case of obviousness of the presently claimed invention.
Response to Amendment
In the response filed 2/23/26 applicant amended claims 1 and 5, added new claim 19, and submitted various arguments traversing the rejections of record. No new matter has been added.
Claim 8 recites Cu-doped AA6056, Cu-doped AA6156, Cu-doped AA6082 and Cu-doped AA6182. In the response filed 2/23/26, p 5, applicant’s representative clarified said Cu doped alloys means said aluminum alloy composition has a “relatively higher” Cu limit as compared to the original alloy composition (see Table 1 above for the Cu range of said alloys). Also in the response filed 2/23/26, p 6, applicant’s representative further refers to [0015] and {0028] of the instant specification, to state- “Cu-doped” alloys have a Cu content of no more than 1.5%.
Applicant’s argument that the instant invention is allowable because Sano does not teach or suggest the amended Mg amount of 0.89% (claim 1) or 0.87% (claim 17) has not been found persuasive. As set forth above, a negligible difference exists between 0.89% Mg or 0.87% Mg (claimed) and 0.9%Mg (Sano), and one of skill in the art would expect them to be essentially equivalents/close approximation. Therefore, because Sano teaches a wrought alloy product with alloying ranges that overlap or are a close approximation of the claimed alloying ranges, it is held that Sano has created a prima facie case of obviousness of the presently claimed invention.
Sano in fact provides evidence the difference in properties are expected to be minimal for small difference in composition (i.e. 0.89% Mg or 0.87% Mg vs. 0.9% Mg). This is seen in the examples of Table 1 of Sano, where example A and examples D have close compositions, as well as identical (YS, corrosion) or very close properties (UTS, negligible difference of 1.7%); see Table 2 below.
Ex. A
Ex. D
Si
0.9
1.2
Mg
1.1
1.0
Cu
1.8
1.8
Mn
0.9
0.9
Cr
0.2
0.2
YS
423
423
ΔYS = 0%
UTS
468
476
ΔUTS = 1.7%
corrosion
0.2
0.2
Δ corrosion=0%
Table 2
Applicant’s representative argued that Ex parte Yanze supports the fact that 0.9% Mg (Sano) does not render obvious the claimed 0.89% Mg (claimed). This argument has not been found persuasive, as 0.89% and 0.9% are proportionately much closer in composition (as well as within rounding/estimated to the same significant digits), as compared to the comparison in Yanze of 0.17% Zr vs. 0.15% Zr. The difference between (claimed Mg)-(Mg of Sano)=0.01% Mg is a much smaller percentage of the full amount of Magnesium of 0.89% (0.01/0.89=1.1%) vs. the example given for Yanze 0.02/0.15=13.3%. The 1.1% difference in Mg between 0.89% Mg claimed and 0.9% Mg taught by Sano closely approximate each other, and it is maintained that alloys with such similar amounts would be expected by one of skill in the art to behave in a manner consistent with each other.
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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
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