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 II (claims 10-15) in the reply filed on 5/15/2026 is acknowledged.
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 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 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3,124,633A in view of “ASM Handbook Vol. 4E” pp. 148-178.
EP’633 teaches a process of heat treating and working an aluminum alloy consisting of (in wt%):
cl. 10 (dependent on cl. 4)
cl. 12 (dependent on cl. 5)
cl. 14 (dependent on cl. 6)
EP’633 broad ranges
Si
0.9-1.9
1.02-1.4
1.02-1.4
0.8-1.3
Mg
0.8-1.8
0.85-1.25
0.85-1.25
0.7-1.5
Cu
0.3-1.0
0.25-0.55
0.25-0.55
0.3-0.9
Mn
0.3-1.2
0.55-1.0
0.61-1.0
0.1-0.6*
Fe
0.2-0.65
0.32-0.65
0.32-0.65
0.1-0.4
Cr
0.05-0.3
0.05-0.3
0.05-0.3
0.10-0.45*
Ti
0.01-0.1
0.01-0.1
0.01-0.1
0.005-0.15
Zn
-0.25
-0.25
-0.25
B
0.001-0.03
0.001-0.03
0.001-0.03
≤500 ppm
(≤0.05)
Zr
0.001-0.05
0.001-0.05
0.001-0.05
0.05-0.30*
*=at least one of
Table 1: Claims 4, 5, 6 composition vs prior art of EP’633
see (see EP’633 at [0014], etc.) wherein the ranges taught by EP’633 overlap or touch the boundary of, the alloying ranges of Si, Mg, Cu, Mn, Fe, Cr, Ti, B, Zn, Zr, and Fe/Mn ratio listed in instant claim 4 (upon which claim 10 depends). Concerning the process steps taught by EP’633,
Claim 10
EP’633
Secondary reference
Form forged product w elongated and connecting parts
Form forged product w elongated and connecting parts (Fig. 3)
Obtain molten metal
Obtain molten metal [0083]
Cool/coagulate to form casting
Casting [0084-0085]
Homogenizing 370-560°C 2-10 hrs (cl. 11)
(after casting and before forging)
Homogenizing at 400-560°C time ≥3 hr [0086-0089]
Forging at 450-560°C
Forging ≥500°C [0090-0095]
SHT: 530-560°C, hold 0.3-3 hr
SHT to 500-580°C hold 20min-20 hrs [0098-0099]
*Quench entire surface in water w/in 5-60 s of SHT
*(hold) for 1-30 min
*quench entire surface in water [0102]
*holding time ≤30 min [0101-0102]
*ASM Handbook: minimize quench delay ≤15 seconds (p 447)
Aging 170-210°C 0.5-7 hr
Artificial aging 180-220°C for 2-24 hrs [0119]
Table 2: comparison of process parameters of claim 10 to EP’633 & secondary reference
EP’633 teaches processing said alloy into a forged article by a substantially identical process to that of the instant invention of: obtaining a molten metal [0083], casting [0084] (which necessarily includes coagulating), homogenizing at 400-560°C for ≥3 hr [0088], hot forging at ≥500°C [0091], solution heating 500-580°C [0098], quenching [0100-0102], and aging at 180-220°C for 2-24 hrs [0119] (see Table 2 above for comparison of said steps together with parameters), which meets the instant process steps and overlaps the claimed process parameters.
EP’633 does not specify quenching is performed within 5-60 seconds after solution treatment. However, ASM Handbook Vol 4E p 444 teaches that the extent of unintended precipitation after solution treatment is influenced by quench delay (that is, the time for the opening of the solution heating furnace until the part is fully submerged in the quenchant, p 444 3rd column). “ASM Handbook Vol. 4E” p 446 teaches there is a maximum allowable (preferable) quench delay (Table 6, p 447) in order to avoid unintended solute loss, of up to 15 seconds for a minimum thickness of 2.29 mm (Table 6, p 447). It would have been obvious to one of ordinary skill in the art to use a short interval between solution treatment and the quenching step (for instance, a maximum of 15 seconds, see Table 6 of “ASM Handbook Vol. 4E), as “ASM Handbook Vol. 4E” p 446 teaches minimizing the quench delay avoids unintended solute loss.
Because the combination of EP’633 and “ASM Handbook Vol. 4E” teaches an overlapping Al-Mg-Si alloy, together with substantially identical working and heat treating as in the instant invention, substantially the same microstructure, including “in the cross section of a boundary part between the elongated part and the connecting part” is reasonably expected to be present in the product of the prior art (such as the average crystal particle size, AlFeSi(Mn) compound average size, and fatigue limit), as for the product of the instant invention. It is therefore held that the combined disclosures of EP’633 and “ASM Handbook Vol. 4E” have created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 11, 13, 15, see above discussion of homogenization. EP’633 teaches overlapping homogenization parameters and therefore meets the instant limitations.
Concerning claim 12, as set forth above, EP’633 teaches a process of casting, forging, solution heating, quenching, and aging an Al-Si-Mg alloy with overlapping alloying ranges (see Tables 1 and 2 above). Concerning claim 14, as shown in Table 1 above, EP’633 teaches an Mn content of up to 0.60%, which is a close approximation of the presently claimed minimum of 0.61% (within 1.7%). Because the combination of EP’633 and “ASM Handbook Vol. 4E” teaches an overlapping Al-Mg-Si alloy (or, with respect to claim 14’s Mn content, a close approximation), together with substantially identical working and heat treating as in the instant invention, substantially the same microstructure, including “in the cross section of a boundary part between the elongated part and the connecting part” is reasonably expected to be present in the product of the prior art (such as the average crystal particle size, AlFeSi(Mn) compound average size, and fatigue limit), as for the product of the instant invention. It is therefore held that the combined disclosures of EP’633 and “ASM Handbook Vol. 4E” have created a prima facie case of obviousness of the presently claimed invention.
Claims 10-15 are rejected under 35 U.S.C. 103 as being unpatentable over Nakai (US 2009/0000705) in view of EP 3,124,633A and “ASM Handbook Vol. 4E” pp. 148-178.
Nakai teaches a process of heat treating and working an aluminum alloy consisting of (in wt%):
cl. 10 (dependent on cl. 4)
cl. 12 (dependent on cl. 5)
cl. 14 (dependent on cl. 6)
Nakai broad ranges
Si
0.9-1.9
1.02-1.4
1.02-1.4
0.4-1.4
Mg
0.8-1.8
0.85-1.25
0.85-1.25
0.5-1.25
Cu
0.3-1.0
0.25-0.55
0.25-0.55
0.01-0.7
Mn
0.3-1.2
0.55-1.0
0.61-1.0
0.001-1.0
Fe
0.2-0.65
0.32-0.65
0.32-0.65
0.05-0.4
Cr
0.05-0.3
0.05-0.3
0.05-0.3
0.01-0.35
Ti
0.01-0.1
0.01-0.1
0.01-0.1
0.005-0.1
Zn
-0.25
-0.25
-0.25
<0.3T total Zn, V, Hf
B
0.001-0.03
0.001-0.03
0.001-0.03
≤300 ppm
(≤0.03)
Zr
0.001-0.05
0.001-0.05
0.001-0.05
<0.15
*=at least one of
Table 3: Claims 4, 5, 6 composition vs prior art of Nakai
see Nakai at [0026], [0060-0061], wherein the ranges taught by Nakai overlap the alloying ranges of Si, Mg, Cu, Mn, Fe, Cr, Ti, B, Zn, Zr, and Fe/Mn ratio listed in instant claim 4 (upon which claim 10 depends). Concerning the process steps taught by Nakai, Nakai teaches
Claim 10
Nakai
Secondary reference
Form forged product w elongated and connecting parts
Form forged product w elongated and connecting parts (Fig. 1)
Obtain molten metal
Obtain molten metal [0096]
Cool/coagulate to form casting
Casting [0096-0098]
Homogenizing 370-560°C 2-10 hrs (cl. 11)
(after casting and before forging)
Homogenizing at 460-570°C time ≥2 hr [0099]
Forging at 450-560°C
Forging ≥350°C [0105]
SHT: 530-560°C, hold 0.3-3 hr
SHT to 530-570°C hold 20min-8 hrs [0111]
*Quench entire surface in water w/in 5-60 s of SHT
*(hold) for 1-30 min
*quenching [0112-0113]
*ASM Handbook: minimize quench delay ≤15 seconds (p 447)
*EP’633- quench entire workpiece in water, holding time ≤30 min [0101-0102]
Aging 170-210°C 0.5-7 hr
Artificial aging [0110]
*EP’633 aging 180-220°C for 2-24 hrs [0097]
Table 4: comparison of process parameters of claim 10 to Nakai & secondary references
processing said alloy into a forged article by a substantially identical process to that of the instant invention of: obtaining a molten metal, casting (which necessarily includes coagulating), homogenizing at 460-570°C time ≥2 hr [0099], hot forging ≥350°C [0105], solution heating at 530-570°C for 20min-8 hrs [0111], quenching [0112-0113], and artificial aging [0110] (see Table 4 above for comparison of said steps together with parameters), which meets the instant process steps and overlaps the claimed process parameters.
Nakai does not specify a) aging parameters, b) quench delay of 5-60 s, c) quenching the entire surface (such as immersion quenching) and holding the workpiece in quench water 1-30 min, or d) the claimed microstructure.
Concerning a) EP’633 teaches artificial aging at temperatures 180-220°C for 2-24 hrs [0119], thereby achieving a balance of strength, toughness, and corrosion resistance [0119]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have used the aging parameters taught by EP’633 for the process of producing a forged heat treated Al-Mg-Si alloy product of Nakai, in order to achieve a balance of strength, toughness, and corrosion resistance.
Concerning c), EP’633 (also drawn to 6xxx series aluminum alloys processed by forging and heat treating) teaches SHT followed by quenching by immersion (which qualifies as the entire surface of the article) in water directly after solution treatment, wherein said immersion quenching lasts ≤30 minutes (see Table 4) is effective to minimize premature precipitation and improve toughness and fatigue [0102]. It would have been obvious to one of ordinary skill in the art to have quenched in water directly after solution heat treatment by immersing the whole workpiece and holding ≤30 minutes, because EP’633 teaches said quenching parameters are effective to minimize premature precipitation and improve toughness and fatigue [0102].
Concerning b), Nakai does not specify quenching is performed within 5-60 seconds after solution treatment. However, ASM Handbook Vol 4E p 444 teaches that the extent of unintended precipitation after solution treatment is influenced by quench delay (that is, the time for the opening of the solution heating furnace until the part is fully submerged in the quenchant, p 444 3rd column). “ASM Handbook Vol. 4E” p 446 teaches there is a maximum allowable (preferable) quench delay (Table 6, p 447) in order to avoid unintended solute loss, of up to 15 seconds for a minimum thickness of 2.29 mm (Table 6, p 447). It would have been obvious to one of ordinary skill in the art to use a short interval between solution treatment and the quenching step (for instance, a maximum of 15 seconds, see Table 6 of “ASM Handbook Vol. 4E), as “ASM Handbook Vol. 4E” p 446 teaches minimizing the quench delay avoids unintended solute loss.
Concerning d), because the combination of Nakai, EP’633, and “ASM Handbook Vol. 4E” teaches an overlapping Al-Mg-Si alloy , together with substantially identical working and heat treating as in the instant invention and at overlapping parameters, substantially the same microstructure, including “in the cross section of a boundary part between the elongated part and the connecting part” is reasonably expected to be present in the product of the prior art (such as the average crystal particle size, AlFeSi(Mn) compound average size, and fatigue limit), as for the product of the instant invention. It is therefore held that the combined disclosures of Nakai, EP’633, and “ASM Handbook Vol. 4E” have created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 11, 13, 15, see above discussion of homogenization. Nakai teaches overlapping homogenization parameters and therefore meets the instant limitations.
Concerning claim 12 and 14, as set forth above, Nakai, EP’633, and “ASM Handbook Vol. 4E” teaches a process of casting, forging, solution heating, quenching, and aging an Al-Si-Mg alloy with overlapping alloying ranges (see Tables above). Because the prior art teaches an overlapping Al-Mg-Si alloy, together with substantially identical working and heat treating as in the instant invention, substantially the same microstructure, including “in the cross section of a boundary part between the elongated part and the connecting part” is reasonably expected to be present in the product of the prior art (such as the average crystal particle size, AlFeSi(Mn) compound average size, and fatigue limit), as for the product of the instant invention. It is therefore held that the combined disclosures of Nakai, EP’633, and “ASM Handbook Vol. 4E” have created a prima facie case of obviousness of the presently claimed invention.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 10-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 13-18 of copending Application No. 18/536573 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application are drawn to a process of producing a forged product with an overlapping Al-Mg-Si alloy composition, said process including steps of casting, homogenizing 370-560C for 2-10 hrs, forging 450-560C, solution heating 530-560 for 0.3-3 hr, quenching the entire surface by immersing in water tank within 5-60 seconds, holding in tank 1-30 minutes, and artificial aging 170-210C for 0.5-7 hrs (see reference application at claims 13, 14). Because the reference application teaches a substantially identical process applied to an overlapping alloy, then substantially the same microstructural features are expected, as for the instant invention.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 7/25/26
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