DETAILED ACTION
Response to Amendment
In view of the amendments to claim 1, new rejections directed to the claims are set forth below and were necessitated by these amendments.
In view of the amendments to claim 1, the 35 U.S.C. 103 rejections under U.S. Patent Application Publication Number 2016/0201168 have been modified. These changes were necessitated by these amendments.
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 1-19 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 written description requirement.
The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In regards to independent claim 1, Applicant amended claim 1 to recite that “wherein, when present, tin is included in the aluminum alloy sheet product as one of the impurities” in the fifteenth and sixteenth lines of the claim. There does not appear to be support for this amendment.
The instant application as filed does not mention the tin either as a purposefully added component or as an impurity. These does not appear to be a sufficient basis to determine that the disclosure reasonably conveyed to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.
Therefore, it appears that this limitation lacks support in the application as originally filed.
Claims 2-19 depend from claim 1 and incorporate the limitations therein. Accordingly, these claims are rejected for the reasons set forth above in regards to independent claim 1.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2018/0340244 (Das).
In regards to independent claim 1 and dependent claims 2-19, Das is directed to 6xxx series aluminum alloys. (¶2) The product is useful in sch products such as automotive, transportation, electronics, industrial, aerospace, and other applications. (¶2) The rolled aluminum alloy product can be an aluminum alloy sheet, including one in any suitable temper ranging from T1 to T9 temper and any suitable gauge. (¶8) This includes a T6 temper. The sheet is an aluminum alloy product having a thickness of less than about 4 mm. (¶24) This range overlaps the claimed range.
The aluminum alloys exhibit high yield strength and bendability, coupled with unexpectedly high corrosion resistance at the grain boundaries. (¶30) In some examples, the aluminum alloy has the following elemental composition:
Claim 1
Das
(Table 1, ¶50)
Silicon
0.95-1.25
0.2-1.5
Magnesium
0.65-0.95
0.4-1.6
Copper
0.5-0.75
0.2-1.5
Manganese
0.02-0.40
0-0.25
Chromium
0.03-0.26
0.04-1.0
Iron
0.01-0.30
0-0.5
Zinc
Up to 0.25
0 to 0.20
Zirconium
Up to 0.20
0-0.05
Vanadium
Up to 0.20
0-0.05
Titanium
Up to 0.15
0-0.1
Aluminum
Balance
Balance
These ranges overlap the claimed ranges, including values that fall within the claimed ratios and the dependent claims. The ranges also include values that would meet the claimed ratios. Therefore, a prima facie case of obviousness exists.
Das sets forth providing minor alloying elements that results in high-strength aluminum alloys containing copper and/or excess silicon without suffering decreased corrosion resistance due to the precipitation of these elements at the grain boundaries. (¶18) This reference therefore set forth controlling the silicon such that it has an excess amount.
The aluminum alloy are cast by using a casting method as known to those skilled in the art. (¶57) The aluminum alloy product is homogenized and allowed to soak. (¶58) A hot rolling step is then performed. (¶60) The aluminum alloy product can undergo further processing steps such as an annealing procedure and a cold rolling step. (¶67) The product can be subjected to a solutionizing step.(¶74) The product can then be quenched. (¶77) The product is then aged for a period of time. (¶80) A coiling step may be performed to include releasing the work-hardening in the material to gain formability, recrystallizing or recovering the material without causing significant grain growth (corresponding to being fully recrystallized), engineering or converting the texture to be appropriate for forming and for reducing anisotropy during formability, and avoiding the coarsening of pre-existing precipitation particles. (¶83)
The process in the prior art appears to be identical or substantially identical to that set forth in the instant application. The instant application sets forth that the new aluminum alloys may be useful in a variety of product forms, including ingot or billet, wrought product forms, shape castings, additively manufactured products, and powder metallurgy products. (¶19 of Corresponding U.S. 2024/0254595) The aluminum alloys may be in rolled form. (¶19) The instant application sets forth a process in which a homogenized ingot was hot rolled and then cold rolled. (¶80) The final gauge was solution heat treated, water quenched, stretched for flatness, and then aged. (¶80) The properties as set forth in the instant application appear to be the result of the composition and the basic processing conditions. Therefore, it would be expected that the prior art product would likewise have the properties as set forth in the instant application.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2016/0201168 (Shishido).
In regards to independent claim 1 and dependent claims 2-19, Shishido is directed to a 6000-series aluminum alloy plate exhibiting bake hardening properties and molding properties after aging at room temperature for a long period. (Abstract) The product may be used as a steel sheet, including for an automobile panel. (¶2)
The aluminum alloy sheet contains:
Claim 1
Shishido
(¶23, ¶152)
Silicon
0.95-1.25
0.3-2.0
Magnesium
0.65-0.95
0.2-2.0
Copper
0.5-0.75
1.0 or less
Manganese
0.02-0.40
1.0 or less
Chromium
0.03-0.26
0.3 or less
Iron
0.01-0.30
1.0 or less
Zinc
Up to 0.25
1.0 or less
Zirconium
Up to 0.20
0.3 or less
Vanadium
Up to 0.20
0.3 or less
Titanium
Up to 0.15
0.1 or less
Tin
Impurity
0.005-0.3
Aluminum
Balance
Balance
These ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness exists. As to the amount of tin, the instant specification teaches that in one embodiment, the aluminum alloy includes not greater than 0.15 wt. %, in total, or the impurities, and wherein the aluminum alloy includes not greater than 0.05 wt. % of each of the impurities. (¶18 of Specification) The amount of tin taught by the prior art overlaps the range for impurities as set forth in the instant specification.
Further, magnesium and Silicon are important in forming clusters. (¶153) In order to exert excellent age-hardenability in the bake treatment at a lower temperature for a shorter period of time after forming into a panel, preferred is a 6000 series aluminum alloy composition in which the Si/Mg in mass ratio is 1.0 or greater and which contains Si more excessively high relative to Mg than the generally referred to as an excessive-Si type. (¶153) This demonstrates it is known that the ratio of Mg and Si will have an effect on the properties of the aluminum alloy product. The values also includes values that overlap the claimed ranges for the ratios.
The product is produced by an ordinary method or widely known method. (¶158) The aluminum alloy molten metal is cast. (¶160) The casted aluminum alloy slab is subjected to homogenizing heat treatment prior to hot rolling. (¶162) Hot rolling is performed with a rough rolling process and a finish rolling process. (¶166) Annealing is performed. (¶168) The sheet is then cold rolled. (¶169) After the cold rolling, the solution heat treatment and the quenching treatment are performed. (¶170) Re-heating treatment may be performed. (¶181) Aging occurs. (¶178)
The process in the prior art appears to be identical or substantially identical to that set forth in the instant application. The instant application sets forth that the new aluminum alloys may be usefully in a variety of product forms, including ingot or billet, wrought product forms, shape castings, additively manufactured products, and powder metallurgy products. (¶19 of Corresponding U.S. 2024/0254595) The aluminum alloys may be in rolled form. (¶19) The instant application sets forth a process in which a homogenized ingot was hot rolled and then cold rolled. (¶80) The final gauge was solution heat treated, water quenched, stretched for flatness, and then aged. (¶80) The properties as set forth in the instant application appear to be the result of the composition and the basic processing conditions. Therefore, it would be expected that the prior art product would likewise have the properties as set forth in the instant application.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2019/0119799 (US ‘799).
In regards to independent claim 1 and dependent claims 2-19, US ‘799 is directed to high-strength and highly formable aluminum alloys. (¶2) High strength 6xxx series aluminum alloys can be prepared by including high concentrations of certain elements, such as magnesium, silicon, and/or copper. (¶3)
Claim 1
US ‘799
Silicon
0.95-1.25
0.8-1.5
Magnesium
0.65-0.95
0.5-0.9
Copper
0.5-0.75
0.5-1.0
Manganese
0.02-0.40
Up to 0.5
Chromium
0.03-0.26
Up to 0.5
Iron
0.01-0.30
0.1-0.5
Zinc
Up to 0.25
Not required
Zirconium
Up to 0.20
Up to 0.5
Vanadium
Up to 0.20
Up to 0.5
Titanium
Up to 0.15
Up to 0.1
Aluminum
Balance
Balance
These ranges overlap the claimed ranges, including values that fall within the claimed ratios and the dependent claims. The ranges also include values that would meet the claimed ratios. Therefore, a prima facie case of obviousness exists.
Solute elements, including Cu, Mg, and Si, are combined with transition elements for a synergistic effect of increasing both the strength and formability of the alloys. (¶20) Si and Mg are controlled such that excess Si is present in the alloy. (¶47) Mg and Si combine as Mg2Si, imparting a considerable strength improvement after age-hardening. (¶47) This further shows the relationship between silicon and magnesium and that it is known to change the ratios of such elements in order to achieve a desired effect, including a particular strength and formability necessary for the desired use of the product.
The mechanical properties of the aluminum alloy can be controlled by various aging conditions depending on the desired use. (¶60) The alloy can be produced in a T4 temper or a T6 temper. (¶60) The aluminum alloy in a T6 temper may have a yield strength of at least about 200 MPa. (¶63) In some cases, the yield strength from about 200 MPa to about 400 MPa. (¶63) This would overlap the claimed range.
A sheet has a thickness of less than about 4 mm. (¶27) The product is cold rolled to form an aluminum alloy sheet having a thickness of 4 mm or less. (¶74) This range overlaps the claimed range.
The process for producing the aluminum alloy providing includes casting an aluminum alloy to provide a cast article; homogenizing the cast article in a two-stage homogenization process, wherein the two-stage homogenization process comprises heating the cast article to a first stage homogenization temperature and holding the cast article at the first stage homogenization temperature for a period of time and further heating the cast article to a second stage homogenization temperature and holding the cast article at the second stage homogenization temperature for a period of time; hot rolling and cold rolling to provide a final gauge aluminum alloy product; solution heat treating the final gauge aluminum alloy product; and pre-aging the final gauge aluminum alloy product. (¶100) The aluminum alloy can then be naturally aged and/or artificially aged. (¶77) The aluminum alloy sheet can be naturally aged for a period of time to result in a T4 temper. (¶77) The aluminum alloy sheet in the T4 temper can be artificially aged at a temperature of from 180 to 225 C for a period of time to result in a T6 temper. (¶78) The time period can be from 15 minutes to about 3 hours. (¶78)
The process in the prior art appears to be identical or substantially identical to that set forth in the instant application. The instant application sets forth that the new aluminum alloys may be usefully in a variety of product forms, including ingot or billet, wrought product forms, shape castings, additively manufactured products, and powder metallurgy products. (¶19 of Corresponding U.S. 2024/0254595) The aluminum alloys may be in rolled form. (¶19) The instant application sets forth a process in which a homogenized ingot was hot rolled and then cold rolled. (¶80) The final gauge was solution heat treated, water quenched, stretched for flatness, and then aged. (¶80) The properties as set forth in the instant application appear to be the result of the composition and the basic processing conditions. Therefore, it would be expected that the prior art product would likewise have the properties as set forth in the instant application.
Response to Arguments
Applicant's arguments filed 27 July 2026 have been fully considered but they are not persuasive.
In regards to Das, Applicant points notes the overlapping ranges and then points to Table 5. Applicant asserts that Das does not set forth the relationship between magnesium and silicon and that the highest amounts of silicon set forth in Table 5 are below the claimed range. Applicant notes that the properties of the explicitly disclosed examples of Das are below the claimed ranges. Applicant then points to a 6111 alloy as discussed in the instant application.
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
In the instant case, Das explicitly sets forth overlapping ranges for the claimed composition, including ranges that would yield the claimed ratio. Therefore, a prima facie case of obviousness has been established. Applicant has failed to rebut this showing of prima facie obviousness.
The presence of the examples in Table 5 of Das do not constitute a teaching away from that broader disclosure. The prior art’s mere disclosure of these claimed values do not criticize, discredit, or otherwise discourage utilizing compositions within the entirety of the range. Clearly, Das sets forth silicon values that overlap the claimed ranges, even as acknowledged by Applicant in their arguments. The presence of examples does not constitute a teaching away from that broader disclosure. The broader disclosure also sets forth compositions that are within the claimed ranges, unlike the 6111 alloy discussed by Applicant.
Das explicitly teaches that the tensile yield strength is at least 265 MPa where the sheet is in the T6 temper. (¶85) Das teaches, “the yield strength may be at least about 275 MPa, or at least about 280 MPa. In some other examples, the yield strength ranges from about 265 MPa to about 400 MPa, or from about 270 MPa to about 375 MPa, or from about 275 MPa to about 350 MPa.” (¶85) This clearly demonstrates that Das expects the tensile yield strength to fall within this range, which would overlap the claimed range. Therefore, while some examples may fall at the lower end of this scale, the reference clearly anticipates that others would fall higher, including within the overlapping range.
Therefore, Applicant’s arguments are not found to be persuasive.
Applicant asserts that the disclosures do not identify the claimed T6 ageing condition.
This argument is not found to be persuasive.
First, the claimed aluminum alloy product of claim 1 is not required to be in the T6 temper, rather the claim sets forth “wherein the aluminum alloy sheet product has a tensile yield strength (LT) of at least 315 MPa in the T6 temper…” The claim does not state that the aluminum alloy sheet product is in the T6 temper, but rather when it is in the T6 temper it meets this limitation. Applicant’s claim then defines what the T6 temper is with very specific parameters and as to exact temperature and time. Therefore, a product that is not in a the T6 temper can still meet the limitations of this claim since when that product is actually put into the T6 temper according to this exact temperature and time it meets that tensile yield strength.
Second, Das does in fact teach a T6 temper. (¶8) Das explicitly sets forth that “[t]he aluminum alloy product can be naturally aged for a period of time to result in the T4 temper. In certain aspects, the aluminum alloy product in the T4 temper can be artificially aged (AA) at about 180° C. to 225° C. (e.g., 185° C., 190° C., 195° C., 200° C., 205° C., 210° C., 215° C., 220° C., or 225° C.) for a period of time to results a T6 temper.” (¶80) Das further teaches:
In some examples, an aluminum alloy sheet prepared from the alloys disclosed herein has a tensile yield strength of at least about 265 MPa, where the sheet is in the T6 temper and the tensile yield strength is measured according to ASTM Test No. B557 (2015) with 2″ GL. For example, the yield strength may be at least about 275 MPa, or at least about 280 MPa. In some other examples, the yield strength ranges from about 265 MPa to about 400 MPa, or from about 270 MPa to about 375 MPa, or from about 275 MPa to about 350 MPa. (¶85)
Therefore, Das clearly shows that the T6 temperature includes the temperature range and a sufficient time to achieve the tensile yield strengths in values that overlap the claimed range. This supports the Office’s position.
Therefore, Applicant’s argument are not found to be persuasive.
Applicant argues that in response to the rejections under Shishido that the claims have been amended to recite that when tin is present that it is included as one of the impurities. Applicant argues that Shishido requires tin be present.
This argument is not found to be persuasive. .
As set forth above, in view of this amendment, the rejection under Shishido has been modified. Shishido sets forth tin within a compositional range that overlaps with the range taught by the instant specification as being allowable for impurities being present. Therefore, a prima facie case of obviousness exists.
Therefore, this argument is not found to be persuasive.
Applicant argues that US ‘799 the generic disclosures of this reference cannot satisfy all of the instant claims’ requirements and do not report that such a composition meets the LT tensile yield strength of the instant claim. Applicant points to a specific aging process within US ‘799 instead of the broader disclosure of the temperature ranges and times. (Citing Paragraph 104 of U.S. ‘799)
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
First, the claimed aluminum alloy product of claim 1 is not required to be in the T6 temper, rather the claim sets forth “wherein the aluminum alloy sheet product has a tensile yield strength (LT) of at least 315 MPa in the T6 temper…” The claim does not state that the aluminum alloy sheet product is in the T6 temper, but rather when it is in the T6 temper it meets this limitation. Applicant’s claim then defines what the T6 temper is with very specific parameters and as to exact temperature and time. Therefore, a product that is not in a the T6 temper can still meet the limitations of this claim since when that product is actually put into the T6 temper according to this exact temperature and time it meets that tensile yield strength.
Further, U.S. ‘799 clearly sets forth compositional ranges that overlap the claimed ranges and include values that satisfy the claimed relationships. This reference further sets forth a teaching for the T6 temper which overlaps the claimed process for the T6 temper.
The express, implicit, and inherent disclosures of a prior art reference may be relied upon in the rejection of claims under 35 U.S.C. 102 or 103. MPEP 2112. The inherent teaching of a prior art reference, a question of fact, arises both in the context of anticipation and obviousness. MPEP 2112.
In relying upon the theory of inherency, the examiner must provide a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. MPEP 2112, IV. The 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. MPEP 2112, V. Whether based on inherency under 35 U.S.C 102, on prima facie obviousness under 35 U.S.C. 103, jointly or alternatively, the burden is the same. Id.
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. MPEP 2112.01. A prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. Id.
In the present situation, the examiner has provided a basis in fact and/or technical reasoning to reasonably support the determination that the allegedly inherent characteristic necessarily flows from the teachings of the applied prior art. Therefore, the burden is on the applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of the claimed product. Applicant has failed to meet this burden. In particular, Applicant has failed to present evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
The rejection is based on the overlapping compositions and conditions. The basis of this rejection is obviousness under 35 U.S.C. 103. The properties set forth in the instant application appear to be the result of the composition and the basic processing conditions. The prior art teaches compositions and process parameters that overlap the claimed limitations. Therefore, it would be expected that the prior art product within this overlap would likewise have the properties as set forth in the instant claims. Applicant has failed to rebut the prima facie obviousness. Applicant has failed to provide evidence showing that the prior art product within the overlapping ranges would not necessarily possess the characteristics of the claimed product.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784
