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 the Claims
Claims 1-20 are pending wherein claims 1-9 and 12-20 are currently under examination and claims 10-11 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of manufacturing hot worked aluminum-scandium alloys. Applicant’s election of claims 1-9 and 12-20 was made without traverse in the Response filed on May 7, 2026.
Claim Objections
Claim 20 is objected to because of the following informalities: “Sc: 0.01-04” should be changed to “Sc:0.01-0.4” Appropriate correction is required.
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.
Claim 9 is 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.
Claim 9 recites the limitation "the aluminum alloys" in claim 9. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1-4 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Okita et al. (JP 09-279280).
In regard to claim 1, Okita et al. (JP ‘280) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below (abstract and [0009]).
Element
Instant Claim
(mass percent)
Okita et al. (JP ‘280)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.03 – 3
0.03 – 0.40
Mg
0 – 2.5
0.2 – 2.0
0.20 – 2.0
Zr
0 – 0.4
0 – 0.3
0 – 0.3
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium and zirconium disclosed by Okita et al. (JP ‘280) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, and zirconium from the amounts disclosed by Okita et al. (JP ‘280) because Okita et al. (JP ‘280) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein compressive-deformation resistance, which is calculated based on the true stress when deformed by compressing at a temperature of 450°C and a strain of 1 s-1, is 62 MPa or less” in claim 1, Okita et al. (JP ‘280) discloses substantially similar compositions. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
In regard to claim 2, Okita et al. (JP ‘280) discloses 0.2 to 2.0 weight percent magnesium, which is within the range of the instant invention (abstract and [0009]).
In regard to claim 3, Okita et al. (JP ‘280) discloses 0 to 0.30 weight percent zirconium, which overlaps the range of the instant invention (abstract and [0009]). MPEP 2144.05 I.
In regard to claim 4, Okita et al. (JP ‘280) discloses 0 to 1 weight percent copper and 0 to 1.5 weight percent manganese [0008].
In regard to claim 14, Okita et al. (JP ‘280) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below (abstract and [0009]).
Element
Instant Claim
(mass percent)
Okita et al. (JP ‘280)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.03 – 3
0.01 – 0.40
Mg
0.4 – 2.5
0.2 – 2.0
0.40 – 2.0
Zr
0.01 – 0.4
0 – 0.3
0.01 – 0.3
Ti
0 – 0.1
0 – 0.2
0 – 0.1
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Okita et al. (JP ‘280) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Okita et al. (JP ‘280) because Okita et al. (JP ‘280) discloses the same utility throughout the disclosed ranges.
With respect to the recitations “an aluminum-alloy hot-worked material produced by a process”; “performing hot working on an aluminum alloy composition […] in a state in which the temperature is within the range of 350°C or higher and 550°C or lower”; and “before and/or after the hot-working step, holding the aluminum alloy composition for a total of 30 min or more at a hold temperature of 250°C or higher and 550°C or lower” in claim 14, Okita et al. (JP ‘280) discloses homogenized at 520 to 540°C for 8 to 12 hours, then heated to 400 to 470°C and extruded into rectangular pieces [0022]. Additionally, claim 14 is drawn to a product and not a process. Even 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). MPEP 2113.
With respect to the recitation “wherein, in the hot-working step, porthole extrusion is performed as the hot working on the aluminum alloy composition” in claim 15, Okita et al. (JP ‘280) discloses homogenized at 520 to 540°C for 8 to 12 hours, then heated to 400 to 470°C and extruded into rectangular pieces [0022]. Claim 15 is drawn to a product and not a process. Even 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). MPEP 2113.
In regard to claim 16, Okita et al. (JP ‘280) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below (abstract and [0009]).
Element
Instant Claim
(mass percent)
Okita et al. (JP ‘280)
(weight percent)
Overlap
Sc
0.05 – 0.15
0.03 – 3
0.05 – 0.15
Mg
0.8 – 2.2
0.2 – 2.0
0.8 – 2.0
Zr
0.09 – 0.3
0 – 0.3
0.09 – 0.3
Ti
0 – 0.1
0 – 0.2
0 – 0.1
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Okita et al. (JP ‘280) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Okita et al. (JP ‘280) because Okita et al. (JP ‘280) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “prior to performing hot working on the aluminum alloy composition, casting the aluminum alloy composition, holding the cast aluminum alloy composition at a temperature of 250°C or higher and 550°C or lower” in claim 17, Okita et al. (JP ‘280) discloses homogenized at 520 to 540°C for 8 to 12 hours, then heated to 400 to 470°C and extruded into rectangular pieces [0022]. Claim 15 is drawn to a product and not a process. Even 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). MPEP 2113.
With respect to the recitation “wherein: Al-Sc-series second-phase particles are dispersed in the Al parent phase; and the number density of the Al-Sc-series second-phase particles is 3,000 particles/µm3 or higher” in claims 18-19, Okita et al. (JP ‘280) discloses a substantially similar composition and substantially process of making. Therefore, Al-Sc-series second-phase particles are dispersed in the Al parent phase; and the number density of the Al-Sc-series second-phase particles is 3,000 particles/µm3 or higher would be expected. MPEP 2112.01 I.
Claims 1-8 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Pandey (US 2009/0263276).
In regard to claim 1, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.1 – 4
0.1 – 0.40
Mg
0 – 2.5
1 – 8
1 – 2.5
Zr
0 – 0.4
0.05 – 3
0.05 – 0.3
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium and zirconium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, and zirconium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein compressive-deformation resistance, which is calculated based on the true stress when deformed by compressing at a temperature of 450°C and a strain of 1 s-1, is 62 MPa or less” in claim 1, Pandey (‘276) discloses substantially similar compositions. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
In regard to claim 2, Pandey (‘276) discloses 1 to 8 weight percent magnesium, which overlaps the range of the instant invention [0033].
In regard to claim 3, Pandey (‘276) discloses 0.05 to 3 weight percent zirconium, which overlaps the range of the instant invention [0033].
In regard to claim 4, Pandey (‘276) discloses 0 to 0.1 weight percent chromium, which overlaps the range of the instant invention [0078].
In regard to claim 5, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.1 – 4
0.1 – 0.40
Mg
0 – 2.5
1 – 8
1 – 2.5
Zr
0 – 0.4
0.05 – 3
0.05 – 0.3
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium and zirconium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, and zirconium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “hot-worked material” in claim 5, Pandey (‘276) discloses wherein the aluminum alloy would be hot worked [0079].
With respect to the recitation “Al-Sc-series second-phase particles are dispersed in the Al parent phase” in claim 5, Pandey (‘276) discloses wherein Al3Sc dispersoids would be present in the matrix [0054].
With respect to the recitation “the number density of the Al-Sc-series second-phase particles is 3,000 particles/µm3 or higher” in claim 5, Pandey (‘276) discloses substantially similar compositions made by substantially similar processes. Therefore, the claimed content of Al3Sc dispersoids would be expected. MPEP 2112.01 I.
In regard to claim 6, Pandey (‘276) discloses 1 to 8 weight percent magnesium, which overlaps the range of the instant invention [0033].
In regard to claim 7, Pandey (‘276) discloses 0.05 to 3 weight percent zirconium, which overlaps the range of the instant invention [0033].
In regard to claim 8, Pandey (‘276) discloses 0 to 0.1 weight percent chromium, which overlaps the range of the instant invention [0078].
In regard to claim 12, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.1 – 4
0.1 – 0.40
Mg
0.4 – 2.5
1 – 8
1 – 2.5
Zr
0.01 – 0.4
0.05 – 3
0.05 – 0.3
Ti
0 – 0.1
-
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
In regard to claim 13, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.05 – 0.15
0.1 – 4
0.1 – 0.15
Mg
0.8 – 2.2
1 – 8
1 – 2.2
Zr
0.09 – 0.3
0.05 – 3
0.09 – 0.3
Ti
0 – 0.1
-
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
In regard to claim 14, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.1 – 4
0.1 – 0.4
Mg
0.4 – 2.5
1 – 8
1 – 2.5
Zr
0.01 – 0.4
0.05 – 3
0.05 – 0.4
Ti
0 – 0.1
-
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
With respect to the recitations “an aluminum-alloy hot-worked material produced by a process”; “performing hot working on an aluminum alloy composition […] in a state in which the temperature is within the range of 350°C or higher and 550°C or lower”; and “before and/or after the hot-working step, holding the aluminum alloy composition for a total of 30 min or more at a hold temperature of 250°C or higher and 550°C or lower” in claim 14, Pandey (‘276) discloses hot working substantially similar compositions ([0033] and [0079]). Additionally, claim 14 is drawn to a product and not a process. Even 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). MPEP 2113.
With respect to the recitation “wherein, in the hot-working step, porthole extrusion is performed as the hot working on the aluminum alloy composition” in claim 15, Pandey (‘276) discloses hot working substantially similar compositions ([0033] and [0079]). Additionally, claim 14 is drawn to a product and not a process. Even 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). MPEP 2113.
In regard to claim 16, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.05 – 0.15
0.1 – 4
0.1 – 0.15
Mg
0.8 – 2.2
1 – 8
1 – 2.2
Zr
0.09 – 0.3
0.05 – 3
0.09 – 0.3
Ti
0 – 0.1
-
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “prior to performing hot working on the aluminum alloy composition, casting the aluminum alloy composition, holding the cast aluminum alloy composition at a hold temperature of 250°C or higher and 550°C or lower” in claim 17, claim 17 is drawn to a product and not a process. Even 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). MPEP 2113.
With respect to the recitation “Al-Sc-series second-phase particles are dispersed in the Al parent phase” in claims 18-19, Pandey (‘276) discloses wherein Al3Sc dispersoids would be present in the matrix [0054].
With respect to the recitation “the number density of the Al-Sc-series second-phase particles is 3,000 particles/µm3 or higher” in claims 18-19, Pandey (‘276) discloses substantially similar compositions made by substantially similar processes. Therefore, the claimed content of Al3Sc dispersoids would be expected. MPEP 2112.01 I.
In regard to claim 20, Pandey (‘276) discloses aluminum base alloys having compositions relative to that of the instant claim as set forth below [0033].
Element
Instant Claim
(mass percent)
Pandey (‘276)
(weight percent)
Overlap
Sc
0.01 – 0.4
0.1 – 4
0.1 – 0.4
Mg
0.4 – 2.5
1 – 8
1 – 2.5
Zr
0.01 – 0.4
0.05 – 3
0.1 – 0.4
Ti
0 – 0.1
-
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium, zirconium and titanium disclosed by Pandey (‘276) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of scandium, magnesium, zirconium and titanium from the amounts disclosed by Pandey (‘276) because Pandey (‘276) discloses the same utility throughout the disclosed ranges.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. All pertinent prior art at this point in time to the knowledge of the Examiner has either been cited by Applicant or applied in this Office Action by the Examiner.
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759
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