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:
2, 4-6, 8-19
Withdrawn:
NONE
Rejected:
2, 4-6, 8-19
Amended:
2
New:
NONE
Independent:
2
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.
Claims 2, 4-6, 8-19 are 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.
Concerning the amendment to independent claim 2 of “the aluminum alloy forging does not contain Zr”: it is unclear if this limitation refers to a non-impurity amount of Zr (see 112(b) rejection below). If so, a non-impurity amount of Zr is not enabled by the instant specification. Claims dependent on the above rejected claim are likewise rejected under this statute. Appropriate correction/clarification is required.
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 2, 4-6, 8-19 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.
Concerning the amendment to independent claim 2 of “the aluminum alloy forging does not contain Zr”: it is unclear if impurity amounts of Zr (on the order of ppm) are excluded or included by said phrase. The amount of Zr implied by “does not contain Zr” is indefinite. Claims dependent on the above rejected claim are likewise rejected under this statute. Appropriate correction/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 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 2, 4-6, 8-19 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai et al. (US 2009/0000705) in view of Hashimoto (US 2017/0121801) or Muraoka (US 4,909,861), WO 2015/146654A (WO’654), and “ASM Handbook Vol. 2A pp. 438-461.
Nakai teaches a process of heat treating and working an aluminum alloy consisting of (in wt%):
cl. 2
Nakai at ex. B
Nakai broad ranges
Si
0.95-1.25
1.00
0.4-1.4
Mg
0.6-1.15
0.90
0.5-1.25
Cu
0.15-1
0.40
0.01-0.7
Mn
0.4-0.6
0.45
0.001-1.0
Fe
0.2-0.3
0.25
0.05-0.4
Cr
0.11-0.26
0.20
0.01-0.35
Ti
0.012-0.035
0.05
(outside claimed range)
0.005-0.1
B
0.0001-0.03
-
(outside claimed range)
<300 ppm
(≤0.03)
Zn
-0.25
-
<0.3% total Zn, V, Hf
Zr
-0.05
0.03
<0.15
Table 1: Claim 2 composition vs prior art of Nakai
see Nakai at [0026], [0060-61], wherein the broad ranges taught by Nakai overlap the alloying ranges or maximums of Si, Mg, Cu, Mn, Fe, Cr, Ti, B, Zn, and Zr listed in instant claim 2. Further, ex. B at Table 1 of Nakai is a close example to the claimed alloying ranges (see Table 1 above for comparison). Nakai does not teach the mandatory addition/presence of any elements excluded by the “consisting of” transitional phrase.
Concerning the amendment to independent claim 2 of “the aluminum alloy forging does not contain Zr”, it would have been obvious to one of ordinary skill in the art to have minimized Zr for the process of producing said aluminum alloy forging taught by Nakai, because Nakai teaches minimizing Zr <0.05% (which includes the absence of Zr) improves the refining effect of Ti or Ti-B and minimizes coarsening (see Nakai at [0053]).
Nakai teaches processing said alloy into a forged article by a substantially identical process to that of the instant invention of: obtaining a molten metal [0096], casting [0096-0098], homogenizing [0099], hot forging [0104-0105], heating to a solution treatment temperature at a rate ≥ 100°C/hr (≥ 1.67°C/min, in order to achieve dispersed particles [0084-0085]), quenching [0112-0113], and aging [0114] (see Table 2 below for comparison of said steps together with parameters, of independent claim 2 to the prior art).
The prior art teaches further motivation to select high heating rates to the solution heating temperature. Secondary reference of Hashimoto (also drawn to a 6xxx wrought aluminum alloy) teaches heating rates of ≥100°C/min to the solution heating temperature [0108] achieves good combination of mechanical properties (strength, elongation, corrosion, see Table2). Alternatively, secondary reference of Muroka (also drawn to a 6xxx wrought aluminum alloy) teaches heating rates ≥200°C/min to the solution heating temperature (column 5 lines 23-30) minimizes crystal grains, and therefore ensures good formability and elongation and avoids microcracks (column 5 lines 37-38). Therefore, given the disclosure of
Claim 2
Nakai
Secondary reference
Secondary reference
Obtain molten metal
Obtain molten metal [0096]
Casting
Casting [0096-0098]
Homogenizing at 370-560°C for 4-10 hr
Homogenizing at 460-570°C time ≥2 hr [0099]
Forging at 450-560°C
Forging ≥350°C [0105]
SHT: raising rate ≥5°C/min from 20-500°C to 530-560°C, hold 0.3-3 hr
SHT raising rate≥100°C/hr (≥1.67°C/min) [0111] to 530-570°C 20min-8 hrs [0111]
*Hashimoto ≥100°C/min to SHT ([0108]
*Muroka ≥200°C/min to SHT (col. 5 l.23-30)
Quench entire surface in water 5-60 s of SHT, (hold) for >5-40 min
Quenching [0112-0113]
ASM Handbook: minimize quench delay ≤15 seconds (p 447)
WO’654: quench by immersing in water 20-70°C, followed by holding time≤30 min (p 8)
Aging 180-220°C 0.5-8 hr
Artificial aging [0110]
WO’654 aging 180-220°C for 2-24 hrs (p 9)
Table 2: comparison of process parameters of claim 2 to Nakai & secondary references
Nakai, combined with secondary reference of Muroka or Hashimoto, one of skill in the art would be motivated to heat to the solution treatment temperature at high rates, in order to minimize crystal grains and improve formability (Muroka at column 5, line 32) or to achieve a good combination of mechanical properties (Hashimoto, [0108], Table 2).
Nakai teaches forming said alloy into a forged product with overlapping processing steps (as set forth above and in Table 2), but does not specify a) quenching the entire surface (such as immersion quenching) within 5-60 seconds of SHT, b) quenching occurs for a (hold) time of >5-40 minutes, c) aging at 180-220°C for 0.5-8hr (claim 2) or d) the number/unit area of Mg2Si compounds with a minor axis of ≥0.5µm (independent claim 2, dependent claims 4, 5, 16-19).
Concerning d), the instant specification emphasizes a heating rate of ≥5.0°C/min to the solution treatment temperature is important for formation of the claimed microstructure (Tables 1 & 2, low temperature raising rates have higher amounts of Mg2Si w minor axis ≥0.5 µm and lower strength). Nakai teaches high heating rates (>100°C/hr or more, >1.67°C/min) are important toward achieving fine Mg2Si precipitates (and avoiding coarse precipitates) [0070]. Because the prior art teaches an overlapping Al-Mg-Si alloy, together with substantially identical working and heat treating as in the instant invention (as well as motivation to heat to the solution treatment temperature at a high rate, taught by the instant specification to be critical), then substantially the same microstructure (such as the number/unit area of Mg2Si compounds with a minor axis of ≥0.5µm) is reasonably expected to be present in the product of the prior art, as for the product of the instant invention.
Concerning b), as set forth in Table 2 above, WO’654 (also drawn to 6xxx series aluminum alloys process by forging and heat treating) teaches SHT followed by quenching by immersion (which qualifies as the entire surface of the article) in warm water directly after solution treatment, wherein said immersion quenching lasts ≤30 min (see WO’654 at p 8) which overlaps the claimed more than 5 to 40 minutes. WO’654 teaches said quenching is effective to minimize premature precipitation and improve toughness and fatigue (WO’654 p 8).
Concerning a), quenching within 5-60 seconds of the solution treatment, “ASM Handbook Vol. 2A” p. 444 teaches that the extent of unintended precipitation after solution treatment is influenced by quench delay (that is, the time for the opening of the solution heating furnace until the part is fully submerged in the quenchant, p. 444 3rd column). “ASM Handbook Vol. 2A” p. 446 teaches there is a maximum allowable (preferable) quench delay (Table 6, p. 447) in order to avoid unintended solute loss of up to 15 seconds for a minimum thickness of 2.29 mm (Table 6, p. 447). It would have been obvious to one of ordinary skill in the art to use a short interval between solution treatment and the quenching step (for instance, a maximum of 15 seconds, see Table 6 of “ASM Handbook Vol. 2A”), as “ASM Handbook Vol. 2A” p 446 teaches minimizing the quench delay avoids unintended solute loss.
Concerning c), WO’654 teaches aging at 180-220C for 2-24 hrs is effective to improve strength, toughness, and corrosion resistance (WO’654 p 9).
It would have been obvious to one of ordinary skill in the art to have quenched by immersing in water the entire forged workpiece of Nakai (subsequent to solution heating with parameters set forth by Muroka or Hashimoto), followed by aging at 180-220C for 2-24 hrs (as taught by WO’654), because WO’654 teaches quenching by immersing in water maximizes strength properties and aging within said parameters improves toughness, strength, and corrosion resistance (as taught by WO’654). Additionally, it would have been obvious to one of ordinary skill in the art to have performed the transition from solution treatment to quenching of Nakai, with a quench delay of ≤15 seconds in order to avoid unintended solute loss (as taught by “ASM Handbook Vol. 2A” p 444).
Because the combination of Nakai, WO’654, (Muroka or Hashimoto), and “ASM Handbook Vol. 2A” teaches an overlapping Al-Mg-Si alloy, together with substantially identical working and heat treating as in the instant invention, substantially the same microstructure (such as the number/unit area of Mg2Si compounds with a minor axis of ≥0.5µm) is reasonably expected to be present in the product of the prior art, as for the product of the instant invention. It is therefore held that the combined disclosures of Nakai, WO’654, (Muroka or Hashimoto), and “ASM Handbook Vol. 2A” have 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 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 claims 4, 5 and 16-19, see above discussion of Mg2Si compounds.
Concerning claims 6 and 7, Nakai does not teach the mandatory presence of Zn or Zr (but teaches ≤0.3% Zn or ≤0.05% Zr (see [0060, 0053])), which meets the instant claim limitations.
Concerning claims 8-11, Nakai teaches Example 8 in Table 4 has a UTS=395 MPa, which meets the tensile strength minimums (cl. 8-9), and falls within the claimed tensile strength ranges (cl. 10-11).
Concerning claims 12-15, as set forth above, Nakai teaches heating to a solution treatment temperature at a rate ≥ 100°C/hr (≥ 1.67°C/min, in order to achieve dispersed particles [0084-0085]). Nakai teaches high heating rates (>100°C/hr or more, >1.67°C/min) are important toward achieving fine Mg2Si precipitates (and avoiding coarse precipitates) [0070]. Further, and as set forth supra, secondary reference of Hashimoto (also drawn to a 6xxx wrought aluminum alloy) teaches heating rates of ≥100°C/min to the solution heating temperature [0108] achieves good combination of mechanical properties (strength, elongation, corrosion, see Table2). Additionally, secondary reference of Muroka (also drawn to a 6xxx wrought aluminum alloy) teaches heating rates ≥200°C/min to the solution heating temperature (column 5 lines 23-30) minimizes crystal grains, and therefore ensures good formability and elongation and avoids microcracks (column 5 lines 37-38). Therefore, given the disclosure of Nakai, combined with secondary reference of Muroka or Hashimoto, one of skill in the art would be motivated to heat to the solution treatment temperature at high rates, in order to minimize crystal grains and improve formability (Muroka at column 5, line 32) or to achieve a good combination of mechanical properties (Hashimoto, [0108], Table 2). Because Nakai together with WO’654 and (Muroka or Hashimoto) teaches an overlapping Al-Mg-Si alloy, together with substantially identical processing as in the instant invention, it is held that Nakai, WO’654, and (Muroka or Hashimoto) have created a prima facie case of obviousness of the presently claimed invention.
Amendments/Arguments
In the response filed on 1/26/26 applicant submitted various arguments traversing the rejections of record, and amended independent claim 2.
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest the amended feature of “the aluminum alloy forging does not contain Zr”, has not been found persuasive. As set forth above, it would have been obvious to one of ordinary skill in the art to have minimized Zr for the process of producing said aluminum alloy forging taught by Nakai, because Nakai teaches minimizing Zr <0.05% (which includes the absence of Zr) improves the refining effect of Ti or Ti-B and minimizes coarsening (see Nakai at [0053]). See also 112(a) and 112(b) rejections above concerning said amendment.
Applicant’s argument that absent applicant’s disclosure, the prior art does not teach or suggest the presently claimed invention, “particularly Nakai as it concerns the allegations regarding the alloy composition, in view of the guidance provided by their examples and preferences, which indeed do not guide toward the claims herein” (arguments page 9) has not been found persuasive. Ex. B at Table 1 of Nakai is a close example to the claimed alloying ranges (see Table 1 above for comparison), and the broad range of Nakai overlaps the claimed alloying ranges. With respect to the overlap taught by the prior art, applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d). See discussion above for motivation to minimize the presence of Zr in the alloy of Nakai.
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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