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 the Claims
Claims 1-4 and 6-15 are pending wherein claims 1 and 9-10 are amended, claim 15 is new and claim 5 is canceled.
Status of Previous Rejections
The previous rejection of claims 1-4, 6-8 and 11-12 under 35 U.S.C. 103 as being unpatentable over Goto et al. (US 4,060,411) is withdrawn in view of the Applicant’s amendment to claim 1.
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 1-4 and 6-15 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “wherein an amount of wt% of Mn exceeds 0.1 wt%”, and the claim also recites “wherein the Mn is present in an amount of 0.1 wt% to 0.3 wt%” which is a different and narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims, or (c) the minimum content of manganese is 0.1 weight percent or an amount above 0.1 weight percent.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
In regard to claim 1, claim 1 requires that “[Cu] ≥ 0.14[Zn] – 0.782” and that “Zn is present in an amount of 5.85 wt% to 8.0 wt%”. As such, copper must be greater than or equal to 0.037 weight percent. Since claim 10 recites a minimum content of 0.03 weight percent and claim 10 depends from claim 1, claim 10 fails to further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 1-4 and 6-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gable et al. (US 10,597,762).
In regard to claim 1, Gable et al. (‘762) discloses aluminum alloys that would be hot worked such as by extrusion (columns 1 and 8).
Element
Instant Claim
(weight percent)
Gable et al. (‘762)
(weight percent)
Overlap
Zn
5.85 – 8.0
4 – 10
5.85 – 8
Zr
0.005 – 0.03
0 – 0.1
0.005 – 0.03
Mn
0.1 – 0.3
0 – 0.1
0.1
Cr
0.0001 – 0.03
0 – 0.1
0.0001 – 0.03
Mg
2 – 2.9
0.5 – 2
2
Cu
≥ 0.037
0 – 0.5
0.037 – 0.5
Al
Balance
Balance
Balance
The Examiner notes that the amounts of zinc, zirconium, manganese, chromium, magnesium and copper for the aluminum base alloys disclosed by Gable et al. (‘762) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of zinc, zirconium, manganese, chromium, magnesium and copper from the amounts disclosed by Gable et al. (‘762) because Gable et al. (‘762) discloses the same utility throughout the disclosed ranges.
Still regarding claim 1, the Examiner notes that since the lower limit of zinc is now specified as 5.85 weight percent, the minimum content of copper at 0.037 weight percent can be derived.
In regard to claim 2, Gable et al. (‘762) suggests ratios of Zn to Mg from 4:1 to 7:1, which would overlap the range of the instant invention. MPEP 2144.05 I.
In regard to claim 3, Gable et al. (‘762) teaches the presence of MgZn2 intermetallics (column 3).
With respect to the recitation “wherein the intermetallic compound has a diameter of 10 micrometers (µm) or less” in claim 3, Gable et al. (‘762) discloses a substantially similar composition and method of making (extrusion). Therefore, the claimed intermetallic compound and diameter would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy extruded material comprises crystal grains having an average particle diameter of 100 micrometers (µm) to 300 µm, and wherein a potential difference at an interface between at least two adjacent crystal grains is in a range of 30 millivolts (mV) to 100 mV” in claim 4, Gable et al. (‘762) discloses a substantially similar composition and method of making (extrusion). Therefore, the claimed average particle diameter and the potential difference at the interface between at least two adjacent crystal grains would be expected. MPEP 2112.01 I.
In regard to claim 6, Gable et al. (‘762) discloses 0 to 0.5 weight percent copper, which encompasses the range of the instant invention (column 1).
In regard to claim 7, Gable et al. (‘762) discloses amounts of copper and zinc that would have a ration from 0 to 0.05, which would overlap the range of the instant invention (column 1). MPEP 2144.05 I.
In regard to claim 8, [Cu]/[Zn] in Gable et al. (‘762) would range from 0 to 0.05 and 0.14-0.782/[Zn] would range from -0.0555 to 0.618, which would read on the instant invention. For instance, an alloy with 0.1 weight percent copper and 6 weight percent zinc would have a left side value of 0.0167 and a right side value of 0.0096 and since 0.0167 is greater than 0.0096, the relationship would be met.
In regard to claim 9, Gable et al. (‘762) discloses aluminum alloys that would be hot worked such as by extrusion (columns 1 and 6-8).
Element
Instant Claim
(weight percent)
Gable et al. (‘762)
(weight percent)
Overlap
Zn
5.85 – 8.0
4 – 10
5.85 – 8
Zr
0.005 – 0.03
0 – 0.1
0.005 – 0.03
Mn
0.1 – 0.3
0 – 0.1
0.1
Cr
0.0001 – 0.03
0 – 0.1
0.0001 – 0.03
Mg
2 – 2.9
0.5 – 2
2
Cu
≥ 0.037
0 – 0.5
0.037 – 0.5
Si
0.01 – 0.1
0 – 0.2
0.01 – 0.1
Fe
0.01 – 0.15
0 – 0.3
0.01 – 0.15
Ti
0.005 – 0.03
0 – 0.1
0.005 – 0.03
Al
Balance
Balance
Balance
The Examiner notes that the amounts of zinc, zirconium, manganese, chromium, magnesium, copper, silicon, iron and titanium for the aluminum base alloys disclosed by Gable et al. (‘762) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of zinc, zirconium, manganese, chromium, magnesium, copper, silicon, iron and titanium from the amounts disclosed by Gable et al. (‘762) because Gable et al. (‘762) discloses the same utility throughout the disclosed ranges.
In regard to claim 10, Gable et al. (‘762) discloses aluminum alloys that would be hot worked such as by extrusion (columns 1 and 6-8).
Element
Instant Claim
(weight percent)
Gable et al. (‘762)
(weight percent)
Overlap
Zn
5.85 – 8.0
4 – 10
5.85 – 8
Zr
0.005 – 0.03
0 – 0.1
0.005 – 0.03
Mn
0.1 – 0.3
0 – 0.1
0.1
Cr
0.0001 – 0.03
0 – 0.1
0.0001 – 0.03
Mg
2 – 2.9
0.5 – 2
2
Cu
0.03 – 0.50
0 – 0.5
0.03 – 0.5
Si
0.01 – 0.1
0 – 0.2
0.01 – 0.1
Fe
0.01 – 0.15
0 – 0.3
0.01 – 0.15
Ti
0.005 – 0.03
0 – 0.1
0.005 – 0.03
Al
Balance
Balance
Balance
The Examiner notes that the amounts of zinc, zirconium, manganese, chromium, magnesium, copper, silicon, iron and titanium for the aluminum base alloys disclosed by Gable et al. (‘762) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of zinc, zirconium, manganese, chromium, magnesium, copper, silicon, iron and titanium from the amounts disclosed by Gable et al. (‘762) because Gable et al. (‘762) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the aluminum alloy extruded material has a yield strength of 450 megapascals (MPa) or greater” in claim 11, Gable et al. (‘762) discloses substantially similar compositions made by extruding (columns 1 and 6-8). Therefore, the claimed property would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the aluminum alloy extruded material has a surface hardness of 150 Vickers hardness (Hv) or greater” in claim 12, Gable et al. (‘762) discloses substantially similar compositions made by extruding (columns 1 and 6-8). Therefore, the claimed property would be expected. MPEP 2112.01 I.
In regard to claim 13, Gable et al. (‘762) discloses anodizing by electrolytic passivation the extruded aluminum alloys (column 15). Therefore, a surface gloss of 300 gloss units (GU) or greater measured according to International Organization for Standardization (ISO) 2813 would be expected. MPEP 2112.01 I.
In regard to claim 14, Gable et al. (‘762) discloses using the aluminum alloys to form enclosures for cell phones and tablets (column 1).
With respect to the recitation “wherein the aluminum alloy extruded material is prepared by including a first operation of forming an aluminum alloy by heating pure Al as a specific temperature or higher and a second operation of adding metal elements including zinc and magnesium to the aluminum alloy” in claim 15, the Examiner notes that the claims are drawn to product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. Additionally, while Gable et al. (‘762) fails to specify using pure aluminum, the Examiner notes that purifying a prior art composition would not be sufficient to distinguish from that prior art composition. MPEP 2144.04 (VII).
Response to Arguments
Applicant's arguments filed May 28, 2026 have been fully considered but they are not persuasive.
The Applicant primarily argues that with regard to the ratio of Zn to Mg, when the zinc and magnesium of independent 1 are amended as substituted, the ratio falls outside the range as it pertains to Gable et al. (‘762).
In response, the Examiner notes that the compositions of Gable et al. (762) overlap the ranges of the instant invention and the compositions set forth in claim 1 are indefinite for reasons as set forth above.
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 JESSEE RANDALL ROE whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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