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 with traverse of claims 8 and 11-14 in the reply filed on 4/17/2026 is acknowledged. The traversal is on the ground(s) that there is insufficient search burden. This is not found persuasive because
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention;
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-7, 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 4/17/2026.
Claim Objections
Claims 8 and 11-14 are objected to because of the following informalities:
Instant claim 8 is dependent on withdrawn claim 1. Instant claims 11-14 are dependent on instant claim 8 and are objected to for at least the same reason. Appropriate correction is required.
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.
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 8 and 11-14 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.
Instant claim 8 recites the limitation “aluminum alloy comprising… the rest aluminum and unavoidable impurities, with a content of less than 0.05% by weight each and 0.15% in total.” This limitation is indefinite because the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03 [R-9]) and it is unclear if the limitation “the rest aluminum and unavoidable impurities, with a content of less than 0.05% by weight each and 0.15% in total” is intended to limit unrecited elements to less than 0.05% by weight each and 0.15% in total or if the limitation is solely intended to limit the weight percent of unavoidable impurity elements while still allowing for deliberately added unrecited elements in amounts greater than or equal to 0.05% by weight each and 0.15% in total. If applicant is intending to limit the weight percent of all unrecited elements, the phrase “consisting of” should be used in place of “comprising.”
Instant claims 11-14 are dependent on instant claim 8 and are indefinite for at least the same reason.
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.
Claim(s) 8 and 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 102021457 A to Lu et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes) in view of US 6,077,363 to Heymes et al (cited by applicant in IDS).
Regarding claim 8, Lu discloses a manufacturing process for a plate according to claim 1 comprising: a) the casting of a slab, made of aluminum alloy comprising the following composition which overlaps the instantly claimed composition with a specific example lying close to the instantly claimed composition as follows:
Element
Claimed wt%
Lu wt%
Lu 136 wt%
Overlaps/Lies within?
Cu
2.2-3.9
3.2-4.2
3.9
Yes/Yes
Li
0.7-1.8
0.7-1.8
1.0
Yes/Yes
Mg
0.1-0.8
Optionally 0.20-0.80
0.5
Yes/Yes
Mn
0.1-0.6
Optionally 0.20-0.60
0.6
Yes/Yes
Ti
0.01-0.15
≤0.12
<0.12
Yes/Yes
Zn and/or Ag
Zn: 0.2-0.8
Ag: 0.1-0.5
Zn: Optionally 0.20-0.60
Ag: Optionally 0.2-0.7
Zn: ≤impurity
Ag: 0.7
Yes/No
Zr
Optionally 0.04-0.18
Optionally 0.06-0.20
0.08
Yes/Yes
Cr
Optionally 0.05-0.3
≤impurity
≤impurity
Yes/Yes
Sc
Optionally 0.05-0.3
≤impurity
≤impurity
Yes/Yes
Hf
Optionally 0.05-0.5
≤impurity
≤impurity
Yes/Yes
V
Optionally 0.05-0.5
≤impurity
≤impurity
Yes/Yes
Zr+Cr+Sc+Hf+V
0-<0.08
Zr: optionally 0.06-0.20
Cr+Sc+Hf+V: ≤impurity
Zr: 0.08
Cr+Sc+Hf+V: ≤impurity
Yes/No
Fe
<0.1
≤0.10
<0.10
Yes/Yes
Si
<0.1
≤0.10
<0.10
Yes/Yes
Impurities
Each: <0.05
Total: <0.15
Each: <0.05
Total: <0.15
Each: <0.05
Total: <0.15
Yes/Yes
Al
Balance
Balance
Balance
Yes/Yes
b) homogenizing said slab at a temperature of 450-490 °C (overlapping the instantly claimed range of at least 490°C),
c) hot rolling said plate to obtain a plate of 10-80 mm (overlapping the instantly claimed range of at least 50 mm thick),
d) solution heat treatment at 465~560 °C (overlapping the instantly claimed range of between 490°C and 540°C),
e) quenching with cold water,
f) controlled stretching of the said plate with a permanent set of 1 to 5% (within the instantly claimed range of 1 to 7%),
g) artificial aging of said plate by heating at 120~205 °C for 1~72 hours (overlapping the instantly claimed ranges of between 130°C and 170 °C for 5 to 60 hours).
(Lu, para [0013-0031, 0041-0049], Table 1, alloy 136)
Lu is silent as to the grain structure being predominantly recrystallized between ¼ and ½ thickness.
Heymes teaches that adjusting the outlet temperature of the hot rolling of an aluminum alloy can result in a recrystallization rate which is always higher than 50% and that for sheets >20 mm thick, a largely recrystallized structure would lead to greater toughness in all directions (Heymes, column 3 lines 58-67, column 4 lines 10-15).
Regarding claim 1, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the outlet temperature of the hot rolling of the aluminum alloy of Lu in order to result in a recrystallization rate which is always higher than 50% as suggested by Heymes. The motivation for doing so would be to lead to greater toughness in all directions for sheets >20 mm thick (Heymes, column 3 lines 58-67, column 4 lines 10-15).
Regarding the overlapping ranges of Lu in view of Heymes, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Lu in view of Heymes including the instantly claimed because Lu in view of Heymes discloses the same utility throughout the disclosed ranges.
Regarding claim 11, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 [R-5]. In the instant case, it would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of the homogenization time of Lu in order to obtain a fully homogenized ingot.
Regarding claim 12, the composition of Lu overlaps the instantly claimed ranges (Lu, para [0013-0031, 0041-0049], and Lu discloses hot rolling at 350-470 °C (Lu, para [0048]), overlapping the instantly claimed range of at least 400 °C.
Regarding claim 13, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). See MPEP 2144.05 [R-5]. In the instant case, it would require little more than routine experimentation by one of ordinary skill in the art to determine the optimal or workable ranges of the solution heat treatment time of Lu in order to obtain a fully solution heat treated alloy.
Regarding claim 14, Lu discloses artificial aging of said plate by heating at 120~205 °C for 1~72 hours (overlapping the instantly claimed ranges of between 140°C and 160 °C for 12 to 50 hours) (Lu, para [0031]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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