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 1-2, 5-12 and 19-20) in the reply filed on 12/22/2025 is acknowledged. Claims 3-4 and 13-18 are withdrawn. Claims 1-2, 5-12 and 19-20 are examined herein.
Claim Rejections - 35 USC § 112
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 2 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. Claim 1 recites that the average spacing of the precipitates is 0.8-1.4 µm. Claim 2 depends from claim 1 and recites that that the average spacing of the precipitates is 1.2 µm or less, which covers a range of 0-1.2 µm and thus does not 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 § 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.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at 5712721401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/XIAOWEI SU/Primary Examiner, Art Unit 1733