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 1-7, 14-17, 20 in the reply filed on 5/29/26 is acknowledged. Claims 8-13, 18, 19, are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Pending:
1-20
Withdrawn:
8-13, 18, 19
Rejected:
1-7, 14-17, 20
Independent:
1, 8, 13, 14, 19, 20
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.
Claims 5, 17 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 "the T5 temper condition" in line 3. Claim 17 similarly recites the limitation “the T7 temper condition” in line 3. There is insufficient antecedent basis for these limitations in the claims. Appropriate correction is required.
Claims 1-7, 14-17, 20 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. The term “improved” in independent claims 1 and 20 (as well as in dependent claims 2-4, 7, 14-16) is a relative term which renders the claim indefinite. The term “improved” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. It is unclear the degree of improvement implied by said term, and it is unclear what the improvement is in relation to. Appropriate correction is required. Claims dependent on the above rejected claim are likewise rejected under this statute.
Claim 14 recites the limitation "the improved aluminum alloy" in line 5. Claim 15 line 1 and claim 16 line 1 recites similar limitation of “the improved”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required. Claims dependent on the above rejected claim are likewise rejected under this statute.
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 1-7, 14-17, 20 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over DE 102011 112005 (DE’005).
Concerning independent claims 1, 14, and 20, DE’005 at abstract, translation p 2, etc. teaches an aluminum alloy comprising (in wt.%):
Claim 1
Claim 14
Claim 20
DE’005
Si
9.5-11.5
9.5-11.5
9.5-11.5
5-12
Zn
0.3-0.8
-1.5
present
0.01-3
Fe
0.3-0.6
0.2-0.6
-0.6
0.01-0.3
Mn
0.2-0.5
0.2-0.6
0.2-
0.2-0.8
Mg
0.1-0.6
0.1-0.6
0.1-0.6
0.1-0.7
Cu
0.2-0.9
0.1-0.6
present
<0.56%
(based on Cu/Mg ratio <0.8 & max Mg of 0.7%)
Sr
0.01-0.07
0.01-0.07
0.01-0.07
0.001-0.03
(10-300 ppm)
Ti
-0.15
-0.15
-0.15
-0.2
Al
≥80%
≥80%
≥80%
balance
Table 1: instant claims vs. prior art of DE’005
with the balance aluminum, which overlaps or touches the boundary of the claimed ranges of Al, Si, Zn, Fe, Mn, Mg, Cu, Sr in instant independent claims 1, 14, and 20 (see DE’005 at abstract, etc.). Though DE’005 teaches a broad overlap of Zn, DE’005 teaches a reason to optimize the range of Zn, namely, that the content of Zn further improves strength and ductility as added Zn dissolves in the alpha-mixed crystal and leads to hardening (translation, p 3). It would have been obvious to optimize the Zn range taught by DE’005, as DE’005 teaches the Zn content improves strength and ductility. Because DE’005 teaches an aluminum alloy that meets the broad scope of the claimed “improved” (see also 112(b) rejection above) and teaches overlapping alloying ranges, it is held that DE’005 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).
Concerning claims 2, 4, and 16, which mention “other elements each in an amount of less than 0.05 wt.% and in a total amount of less than 0.15 wt.%” DE’005 teaches impurities not exceeding 0.4 wt.% total and 0.05% each (page 2), which overlaps and therefore meets the instant limitations.
Concerning claims 3 and 15, DE’005 teaches casting said alloy by foundry casting (such as by sand, mold, or die casting, see DE’005 at page 1), which meets the instant limitation.
Concerning claim 6, DE’005 teaches said Al-Si alloy is used in the automotive industry for bodywork and chassis parts (translation p 1), which meets the instant limitation.
Concerning claim 7, DE’005 teaches Mg2Si is formed (translation p 2), which meets the instant limitation.
Concerning claims 5, 6, 17, DE’005 does not mention the properties in a “T5 temper” or “T7 temper”. However, because DE’005 teaches a substantially overlapping Al-Si alloy, processed by foundry casting (abstract- such as by sand, mold, or die casting), then substantially the same mechanical properties for a given temper (i.e. T5, as-cast) are expected for the overlapping alloy taught by the prior art, as for the instant invention, by virtue of the overlap in alloying ranges together with processing.
Because of the overlap in alloying ranges, and because the instantly claimed properties are expected for the product of DE’005 for a given temper, it is held that DE’005 has created a prima facie case of obviousness of the presently claimed invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733 6/11/26
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