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 1-8) in the reply filed on 5/18/26 is acknowledged.
Claims 9-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
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 2 and 8 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. Claims 2 and 8 mention “the aluminum alloy material contains no chromium or manganese”. It is unclear if “no chromium or manganese” excludes impurity amounts of Cr and Mn (i.e. ppm maximum Cr &/or Mn). It is unclear the amount of chromium and manganese implied by “no chromium or manganese”. Appropriate correction/explanation is required.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsumoto et al (US 2015/0376742).
Matsumoto (see Table 1 column 9) teaches an aluminum alloy material comprising (in wt%):
Claim 1, 3
Matsumoto at ex. 16
Zn
4.5-5.5%
5
Mg
1.0-1.5%
1.5
Cu
0.1-0.4%
0.17
Si
≤0.1%
0.08
Fe
≤0.1%
0.10
Zr
≤0.2%
-
Ti
≤0.04%
0.02
Mn
no Mn or Cr
cl. 2, 8
-
Cr
-
Table 1: instant claims vs prior art of Matsumoto
which falls within the alloying ranges of Zn, Mg, Cu, Si, Fe, Zr, Ti of instant claim 1, and therefore anticipates the instant alloy composition. Concerning instant claim 2, example 16 of Masumoto does not contain Cr or Mn, and therefore meets the instant limitation (see also 112(b) rejection above).
Because Matsumoto teaches an example within the claimed alloying ranges, it is held that Matsumoto anticipates the instant invention. See MPEP 2131.02.
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.
Claims 3-8 are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Matsumoto (US 2015/0376742).
Matsumoto is discussed in paragraphs above. Concerning independent claim 3, Matsumoto teaches forming his Al-Zn-Mg alloy into a wrought product intended to be used for automotive structural components [0021]. Matsumoto does not specify the product by process step of extruding, but rather teaches rolling (see examples). However, because Matsumoto teaches an aluminum alloy product with an identical structure and composition as the claimed aluminum alloy product, it is held that Matsumoto anticipates, or in the alternative, has created a prima facie case of obviousness of the presently claimed invention.
Product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven 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) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
Concerning claim 4, Matsumoto teaches a process of aging: by a first step holding at 70-100C for time≥2 hrs, followed by a second step of holding 100-170C for a time ≥5 hrs [0080], which overlaps with “sufficient specificity” the claimed product by process aging time and temperatures, and therefore meets the instant product by process step of primary heating and secondarily heating. See MPEP 2131.03.
Concerning claims 5-7, Matsumoto teaches said Al-Zn-Mg alloy product exhibits a yield strength 400 MPa or more [0042] and contains examples with a YS up to 439 MPa and elongations of up to 26%, which meet the instant strength and elongation minimums. Concerning the claimed tensile strength limitation, yield strength by definition is lower than tensile strength (also known as UTS, TS, and ultimate tensile strength). Because Matsumoto teaches a yield strength of 439 MPa, the tensile strength would necessarily be >439 MPa, which meets the claimed limitation of “tensile strength of 436 MPa or more”.
Concerning instant claim 8, example 16 of Masumoto does not contain Cr or Mn, and therefore meets the instant limitation (see also 112(b) rejection above).
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 6/26/26
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