DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 14 January 2026 has been entered.
Response to Amendment
In view of the amendments to the claims, the previous 35 U.S.C. 112 rejections have been withdrawn.
In view of the amendments to the claims in copending Application Number 18/224,945, the double patenting rejections have been withdrawn.
In view of the addition of claim 19, new rejections directed to this claim are set forth below and were necessitated by this amendment.
Claim Interpretation
Claim 1 includes the transitional phrase "consisting essentially of." The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristic(s) of the claimed invention. MPEP 2111.03. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” MPEP 2111.03.
A review of the specification and claims fails to turn up an indication of what the basic and novel characteristics actually are. Therefore, for the purposes of examination, the phrase “consisting essentially of" will be construed to be equivalent to “comprising.”
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 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 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
Aluminum
Balance
Balance
These ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness exists. 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 14 January 2026 have been fully considered but they are not persuasive.
Applicant argues that Das is silent regarding a relationship between magnesium and silicon. Applicant points to the explicit examples that do not teach the ratios Applicant asserts that Das does not set forth this claimed feature.
This argument is not found to be persuasive.
Das set forth compositional ranges that for silicon and magnesium. These ranges include values that when selected for each of these elements that would meet the claimed ratio. Additionally, Das set forth providing for a composition that would include an excess amount of silicon. This would imply selecting an appropriate ratio of silicon with the other elements to provide for this excess silicon amount.
As to the explicit examples of Das, 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.
Accordingly, the broader disclosure includes values that overlap the claimed ranges. The claimed ratio provide for ranges for the respective elements. These ranges overlap the claimed ranges. Therefore, a prima facie case of obviousness is established. Applicant has failed to rebut this prima facie case of obviousness.
Applicant asserts that the highest yield strengths of Das are less than 300 MPa. Applicant likewise points to 6111 alloy.
This argument is not found to be persuasive.
Applicant points to examples that are outside of the overlapping portion. It is known in the art that silicon’s effect on yield strength of aluminum alloys is significant. It enhances the strength and hardness of the alloys. Each of the alloys cited by applicant include silicon in the range that fall less than the overlapping portions. There is no indication in the prior art that within the overlapping portion that the resulting products would have the claimed properties.
Das provides a teaching of a broader range of the alloy compositions. Those limited examples are not within the overlapping portions of the ranges. Therefore, these arguments are directed to a portion of the overlap that is not the basis of the obviousness rejection.
Applicant argues that Shishido requires the presence of tin and should be excluded by the presently pending claims via the transitional phrase “consisting essentially of.” Applicant asserts Shishido discusses that tin affects the bake hardenability of the aluminum alloy. Applicant concludes that this would affect the basic and novel properties of Shishido’s alloy and should therefore be excluded by the claimed “consisting essentially of” language. Applicant asserted that it is not the Applicant’s burden to establish every component that would materially affect the basic and novel characteristics of the claim in the specification.
This argument is not found to be persuasive.
The transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps and those that do not materially affect the basic and novel characteristics of the claimed invention. (MPEP 2111.03, III, emphasis added)
The standard is not whether the specified materials or steps would materially affect the basic and novel characteristics of the prior art invention, but the basic and novel characteristics of the claimed invention.
Bake hardenability cannot be considered to be a basic and novel characteristic of the claimed invention since it is not discussed or even mentioned within the instant application. It is unclear how a property that is not discussed or even mentioned in the instant application can be considered to be a basic and novel characteristic of the product of the instant application.
Additionally, the Office is not asserting that Applicant must establish every component that would materially affect the basic and novel characteristics of the claim in the Specification. The Specification and disclosure of the instant application set forth what Applicant considers to be the basic and novel characteristics of the claimed invention. Elements that would affect what Applicant, per the disclosure of the instant application, would consider to be the basic and novel characteristics of the claimed invention would be excluded. Applicant is not being required to established every component that would affect these basic and novel characteristic of the instant application.
There is no indication that the elements set forth in the applied prior art would affect the basic and novel characteristics as set forth in the instant application. Rather, Applicant is pointing to a property that is not discussed or even mentioned in the instant application. A property that is not discussed or even mentioned cannot be considered to be a basic and novel characteristic of the claimed invention.
Conclusion
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.
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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