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 Claims
Claims 1-2 are amended. Claims 3-4 and 13-18 are withdrawn. Claims 1-2, 5-12 and 19-20 are examined herein.
Status of Previous Rejections
The rejection of claim 2 under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, has been withdrawn in view of the amendment.
The rejections of claims 1-2, 5-12 and 19-20 under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over JP’503 (JP6672503B1) are maintained.
Claim Rejections - 35 USC § 102
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 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.
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.
Claims 1-2, 5-12 and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by, or in the alternative, under 35 U.S.C. 103 as being unpatentable over JP’503 (JP6672503B1).
Regarding claims 1-2, 5-12 and 19-20, JP’503 teaches an aluminum alloy extruded material comprising: Zn: 8% to 9.0% by mass; Mg: 1.3% to 2.0% by mass; Cu: 0.1% to 0.7% by mass; at least one element selected from the group consisting of Mn: 0.30% by mass or less, Cr: 0.25% by mass or less, and Zr: 0.25% by mass or less: totaling 0.1% to 0.5% by mass; Ti: 0.005% to 0.20% by mass and the balance being Al (Abstract), which are within the recited composition ranges in claim 1.
JP’503 discloses examples that meet the recited composition in claims 1, 5-11 and 19-20 (See Table 1, Sample No. 2-4).
JP’503 discloses that the proof stress of the aluminum alloy is 460 MPa (i.e. 460 N/mm2) or more (Page 7, 4th paragraph), which meets the recited proof stress in claim 1.
JP’503 is silent on the average spacing of grain boundary precipitates and the average particle length of the grain boundary precipitates as recited in claims 1-2 and 12. However, this structure limitation is determined by the alloy composition and a method of making the aluminum alloy.
JP’503 teaches a method of making the extruded aluminum alloy, comprising: performing homogenization on the aluminum alloy at 490-550 ºC for 6 hours, hot-extruding the aluminum alloy at 500 ºC after the homogenization; cooling the extruded aluminum alloy from extrusion temperature to room temperature at an average cooling rate of 290°C/minute; and performing artificial aging treatment after the cooling at 90 ºC for 3 hours and then at 140 ºC for 8 hours (Page 5-6; Table 1, Sample No. 2-4), which meets the processing conditions recited in claims 3-4 and 13-18.
In view of the fact that JP’503 teaches an extruded aluminum alloy that meets the recited composition in claim 1 and a method of making the extruded aluminum alloy that meets the recited method in claims 3-4 and 13-18, one of ordinary skill in the art would expect that the extruded aluminum alloy disclosed by JP’503 to meet the recited average spacing of grain boundary precipitates and the average particle length of the grain boundary precipitates in claims 1-2 and 12. “Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 I.
Response to Arguments
The Affidavit under 37 CFR 1.132 filed 08/04/2026 is insufficient to overcome the rejection of claim 1 based upon JP’503 as set forth in the last Office action because:
The Affidavit only discloses the dimensions of the specimens but failed to disclose the material composition of the specimens. It’s unclear whether the specimens have the same cooling curve as the aluminum alloy disclosed in JP’503. JP’503 discloses that air cooling is performed immediately after extrusion. According to Page 2 of the Affidavit, the cooling rate from 500 ºC to 400 ºC should be greater than the cooling rate from 400 ºC to 300 ºC. However, according to the figure on Page 4 of the Affidavit, the cooling rate from 505 ºC to 455 ºC for both specimens is 354 ºC/min, which is less than the cooling rate from 400 ºC to 300 ºC. Therefore, the data shown in the Affidavit are not consistent with the cooling condition disclosed in JP’503 and are not sufficient to prove that the cooling rate of JP’503 from 400 ºC to 300 ºC is greater than 600 ºC/minute.
The applicants argued that as described in paragraph [0035] of the present specification, when the cooling rate exceeds 600°C/min, numerous fine grain-boundary precipitates are formed, resulting in an extremely small average spacing between the grain-boundary precipitates. As demonstrated by Sample No. 6 in Tables 1 and 2, the average spacing of 0.8 µm to 1.4 µm recited in Claim 1 cannot be achieved under such cooling conditions.
In response, there is only one comparative example containing 1.6 wt.% Mg and 8.59 wt.% Zn cooled at a cooling rate of greater than 600 ºC/min. The claimed composition is much broader than the examples and comparative examples shown in Table 1. The applicants have not provided enough data to show that cooling rate of 100-600 C/min is critical to obtain the claimed average spacing and size of the precipitates for aluminum alloys having composition different from Samples 1-6. Since the alloy composition plays an important role in average spacing and size of the precipitates, the data in Table 1 and Table 2 are not sufficient to prove that cooling rate of 100-600 C/min is critical to obtain the claimed average spacing and size of the precipitates over the entire claimed composition.
Conclusion
THIS ACTION IS MADE FINAL. 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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/ Primary Examiner, Art Unit 1733
