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:
1-8, 10-12
Withdrawn:
NONE
Rejected:
1-8, 10-12
Amended:
1-4, 8
New:
11, 12
Independent:
1
Claim Rejections - 35 USC § 102
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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-6, 8, 10-12 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Reding et al. (US 3,974,055), cited herein.
Reding teaches an aluminum based alloy composition for cathodic protection of galvanic anodes (see Reding at column 1), which meets the instant “for use in sacrificial anodes” limitation. Reding teaches said aluminum alloy comprises (in wt%):
Claim 1
Claim 2
Claim 3
Claim 4
Reding (see cl. 1)
Reding Ex. A-1, column 2
Si
0.01-
0.01-
0.01-0.12
0.01-
0.02-0.08
0.047
Cu
≤0.003
0.0005-0.003
0.0005-0.003
0.0005-0.003
-0.015
<0.0011
In
≤0.04
0.01-0.04
0.01-0.04
0.01-0.04
0.01-0.06
0.011
Fe
≤0.08
0.01-0.08
0.01-0.08
0.01-0.08
0.02-0.1
0.063
Zn
≤0.8
0.01-0.8
0.01-0.8
0.01-0.5
0.5-1.5
0.45
other
-0.01 Sn
balance
≤0.1% impurities + aluminum
≤0.1% impurities and aluminum
≤0.1% impurities and aluminum
≤0.1% impurities and aluminum
essentially aluminum and impurities
essentially aluminum and impurities
Purity aluminum
≥99.0 (cl. 5)
≥99.5 (cl. 6)
99.90-99.99 (cl. 7)
typically 99.9%,
99.8-99.9%
Table 1: instant claims vs. prior art of Reding
wherein Ex. A-1 (see column 2 of Reding) falls within the claimed maximums as well as minimums of Si, Cu, In, Fe, and Zn in instant independent claim 1. Because Reding teaches an example within the claimed alloying ranges, together with the claimed product configuration of “an aluminum alloy for use in a sacrificial anode”, it is held that Reding anticipates the presently claimed invention.
Concerning claims 2-4, as set forth in Table 1 above, Ex A-1 of Reding falls within the claimed alloying ranges, and therefore meets the instant limitations.
Concerning claims 5-6, which mention a minimum of range of purity for the aluminum, Reding teaches examples with high purity aluminum about 99.8-99.9% (Example 1) which meets the purity minimums of instant claims 5-6.
Concerning claim 8 as well as new claims 11 and 12, Reding does not specify the electrochemical efficiency when tested according to the claimed conditions. However, “products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
For the instant case, because Reding teaches an example that meets the claimed alloying ranges, then substantially the same properties, such as electrochemical efficiency, is inherently expected for the prior art’s alloy product, as for the instant invention.
Concerning claim 10, Reding teaches said alloy is a sacrificial anode (column 1), which meets the instant product configuration of claim 10.
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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Reding as applied to claim 1 above.
Reding is discussed in claims above. Concerning claim 7, Reding teaches using a purity of 99.8-99.9% aluminum (see column 2, example A-1), which overlaps the claimed alloying minimum of 99.90%, and therefore meets the instant limitation. Because of the overlap in alloying ranges taught by Reding, it is held that Reding has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be 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).
Response to Amendment
In the response filed on 6/25/26, applicant amended claims 1-4, 8, and added new claims 11 and 12. No new matter has been added.
Applicant’s arguments with respect to the rejection of claims 1-8, 10-12 in view of Pryor have been considered but are moot because the new grounds of rejection herein do not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument. The closest prior art to the instantly amended claims is held to be Reding, as set forth supra.
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 9/13/2026
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