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
New claim 5 is added in view of applicant’s response filed 7/15/2026. Therefore, claims 1-5 are currently under examination.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014/129385 A1(WO385).
WO385 teaches an aluminum alloy sheet for a can body(abstract), wherein the Al alloy of WO385 has a composition that applies to the claimed Al alloy as follows:
Al alloy
Instant Claims (mass%)
WO385 (mass%)
Si
0.10-0.70
0.20-0.40
Fe
0.10-0.80
0.25-0.60
Cu
0.10-0.30
0.20-0.30
Mn
0.50-1.50
0.8-1.2
Mg
1.20-1.50
1.0-1.50
Balance Al & inevitable impurities
Balance Al & inevitable impurities
Balance Al & inevitable impurities
Regarding claim 1, Alloys 2-3 on Table 1 of WO385 have compositions that read on the claimed Al alloy compositions.
Additionally, WO385 teaches a process of making its Al alloy sheet comprising steps that applies to the process steps as disclosed in the instant specification as follows:
Instant Specification
WO385
Casting an Al alloy with claimed composition [0034-0035]
Casting to produce a slab[0061]
Homogenizing treatment at 550°C to 620°C[0036] for 1 hour or longer[0037]
Homogenizing treatment at 600°C to 620°C for 1-24 hours[0063-0064]
Hot rolling[0038-0040]:
Hot rough rolling at 550°C to 600°C
Hot finish rolling, wherein the temperature of the Al alloy sheet is kept at ≥300°C for ≤10 hrs
Hot rolling [0065-0066,0068]:
Hot rough rolling at 500-550°C
Hot finish rolling, wherein the exist temperature was 330°C - 360°C and the hot rolled sheet is kept at ≥300°C for ≥1 hr
Cold rolling[0041-0044]:
A rolling ending temperature of the pass before the final pass is 110°C to 180°C
Keeping the Al alloy sheet before the final pass at ≥100°C for ≤15hrs
Final cold rolling ending temperature is 140°C to 180°C
Cold rolling[0069-0077]:
An intermediate cold rolling ending temperature before the final pass is 140°C to 170°C[0071]
Holding the intermediate cold rolled Al alloy sheet at ≥120°C for 2-10 hrs [0072]
Final cold rolling at 150°C to 190°C [0073]
The above comparison shows that WO385 teaches a process of manufacturing the aluminum alloy sheet comprising process steps and conditions that are significantly similar to the manufacturing process disclosed by the instant specification.
Additionally, the claimed n-values are work hardening exponents of the Al alloy sheet (see par[0006-0007] of instant specification) when subjecting to claimed plastic strain. The examiner concludes that the claimed n-values are inherent properties of an Al alloy sheet. Since WO385 teaches an Al alloy sheet manufacturing process that is significantly similar to the manufacturing process disclosed by the instant specification using an Al alloy having the same composition as claimed Al alloy composition, one of ordinary skill in the art would have expected that the n-values of the Al alloy sheet made by the process of WO385 to be significant similar to the claimed n-values when under plastic strain of claimed range, which renders the claimed Al alloy sheet prima facie obvious.
Regarding claim 2, Table 3 of WO385 further shows that Alloys 2-3 have tensile strength of 329MPa and 327MPa respectively, which reads on the claimed tensile strength.
Regarding claims 3-5, the claimed Mg solid solution contents, calculated according to the specific resistance differences as described in the instant claims, are merely inherent properties of the Al alloy sheet. Since WO385 teaches an Al alloy sheet manufacturing process that is significantly similar to the manufacturing process disclosed by the instant specification using an Al alloy having the same composition as claimed Al alloy composition, one of ordinary skill in the art would have expected that the Mg solid contents of the Al alloy sheet made by the process of WO385 to be significant similar to the claimed Mg solid contents, when calculated using the specific resistance difference as described in the instant claims, which renders the claimed Al alloy sheet prima facie obvious.
Response to Arguments
Applicant's arguments filed 7/15/2026 have been fully considered but they are not persuasive.
In the remarks, applicant argues that “The present application does not merely describe a conventional homogenizing and hot rolling process. Rather, the present application identifies a specific processing sequence in which a homogenizing treatment is directly followed by hot rolling under tightly controlled temperature conditions to produce the claimed microstructural and mechanical characteristics”.
The examiner does not find applicant’s argument convincing because the instant claims are product-by-process claims, while applicant’s arguments are directed to process limitations that are not recited in the instant claims. It is well settled that a product-by-process claim defines a product, and that when the prior art discloses a product substantially the same as that being claimed, the burden falls upon the applicant to show that any process steps associated therewith results in a product materially different from that disclosed in the prior art. See In re Thorpe, (227 USPQ 964), In re Brown, (173 USPQ 685), In re Fessman, (180 USPQ 524) and MPEP 2113. In this case, WO385 teaches an Al alloy having a chemical composition that has the same amounts of Si, Fe, Cu and Mn as claimed Al alloy and an amount of Mg that significantly overlaps the claimed amount of Mn. Additionally, the process of WO385 comprises the same casting, homogenization, hot rolling, cold rolling steps under the same or significantly similar process conditions such as temperature and duration. One of ordinary skill in the art would have expected that the Al alloy produced by the process of WO385 to have significantly similar, if not the same, properties such as the claimed n-values. Although applicant argues the significance of the sequence of the processing steps under tightly controlled process conditions such as temperature and duration, applicant has not provided any factual evidence data that has demonstrated the significance of the claimed process conditions. As set forth above, the sequence of the processing steps as taught by WO385 is the same as the process steps described in the instant specification.
Applicant further argues that WO385 teaches that the slab is cooled prior to hot rolling, which is different from the homogenization and hot rolling directly afterwards, which affects the formation of Mg-Si intermetallic compounds, and ultimately affecting the n-values of the produced Al alloy.
The examiner does not find applicant’s argument convincing because applicant’s argument is directed process limitations are not recited in product-by-process claims. Therefore, applicant’s argument is not commensurate with the scope of instant claims. Additionally, as discussed above, since the aluminum alloy of WO385 has significantly similar chemical composition and the same strength properties such as tensile strength, the burden falls on the applicant to show any process steps associated therewith, such as the lack of cooling step after the homogenization step and hot rolling step, results in an Al alloy that is materially different(i.e. having a different n-value) from the Al alloy disclosed in WO385, especially considering WO385 has similar hot rolling temperature/duration and the same finish rolling temperature/duration. Since applicant’s argument has not be supported by factual evidence demonstrating the significance of the absence of the cooling step between homogenization and hot rolling, the examiner maintains that the rejection is proper.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kobayashi et al. US 2020/0010942 teaches an Al alloy sheet having similar composition as claimed, and is manufactured by a process comprising homogenization, hot rolling and cold rolling steps wherein the hot rolling and cold rolling conditions are different from the process conditions described by the instant specification.
Kudo et al. US 2021/0324501 teaches an Al alloy sheet having similar composition as claimed, and is manufactured by a process comprising homogenization, hot and cold rolling steps, but produces an Al alloy sheet with lower tensile strength.
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 LOIS L ZHENG whose telephone number is (571)272-1248. The examiner can normally be reached Mon-Fri 8:15-4:45.
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 571-272-1401. 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.
LOIS ZHENG
Primary Examiner
Art Unit 1733
/LOIS L ZHENG/Primary Examiner, Art Unit 1733
