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 1-8, 10-17 and 20 are pending wherein claims 1-5, 12-17 and 20 are amended, claims 9 and 18-19 are canceled, and claims 1-4 and 10-11 are withdrawn from consideration. In the Remarks filed on May 7, 2026, Applicant elected the Group I invention drawn to aluminum-scandium alloys and the Group II invention, drawn to a method of manufacturing hot worked aluminum-scandium alloys was withdrawn from consideration without traverse. The statutory subject matter of claims 17 and 20 has been amended from the alloy to a method and therefore claims 17 and 20 are now withdrawn from consideration based on Applicant’s election of the aluminum alloy in the Remarks filed on May 7, 2026. Claims 5-8 and 12-16 are under examination.
Status of Previous Rejections
The previous rejection of claims 14-16 under 35 U.S.C. 103 as being unpatentable over Okita et al. (JP 09-279280) is withdrawn in view of the Applicant’s amendment to the claims. The previous rejection of claims 1-8, 12-17 and 20 under 35 U.S.C. 103 as being unpatentable over Pandey (US 2009/063276) is withdrawn in view of the Applicant’s amendment to claim 1.
Specification
The amendment filed August 13, 2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: Applicant has amended paragraph [0042] to indicate that the hollow part at at least one location surrounded by one or more wall parts composed of the aluminum alloy. Thus, only one wall part of the aluminum alloy is required by this amendment. Originally, claim [0042] indicated that “a hollow part at at least one location surrounded by wall parts composed of the aluminum alloy”. Thus, the requirement previously was more than one wall part. Applicant has broadened the scope of the specification therefore introducing new matter.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 5-8 and 12-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to the recitation “the aluminum-alloy hot-worked material has a hollow part at at least one location surrounded by at least one wall part composed of the aluminum alloy” in claim 5, this subject matter was introduced in the amendment to the specification filed on August 13, 2026. Applicant has amended paragraph [0042] to indicate that the hollow part at at least one location surrounded by one or more wall parts composed of the aluminum alloy. Thus, only one wall part of the aluminum alloy is required by this amendment. Originally, claim [0042] indicated that “a hollow part at at least one location surrounded by wall parts composed of the aluminum alloy”. Thus, the requirement previously was more than one wall part. Applicant has broadened the scope of the specification therefore introducing new matter in the specification as well as in claim 5.
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 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Heymes (FR 2938553 A1).
In regard to claim 5, Heymes (FR ‘553) discloses aluminum alloys having compositions relative to the instant invention as set forth below (abstract and claim 1).
Element
Instant Claim
(mass percent)
Heymes (FR ‘553)
(weight percent)
Overlap
Sc
0.01 – 0.40
0.05 – 0.5
0.05 – 0.4
Mg
0 – 2.5
0.1 – 1
0.1 – 1
Zr
0 – 0.4
0.05 – 0.18
0.05 – 0.18
Al
Balance
Balance
Balance
The Examiner notes that the amounts of scandium, magnesium and zirconium for the aluminum based alloys disclosed by Heymes (FR ‘553) 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 Heymes (FR ‘553) because Heymes (FR ‘553) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “having” in claim 5, the Examiner has interpreted this recitation to be synonymous with “comprising” because in the specification in Table 1, for instance, the alloys may have an additional element such as titanium, which is not recited in claim 5. MPEP 2111.03.
With respect to the alloy being “hot worked” in claim 5, Heymes (FR ‘553) discloses hot rolling (page 11 of translation).
With respect to the recitation “Al-Sc series second phase particles are dispersed in the Al parent phase, the number density of the Al-Sc series second phase particles is 3,000 particles/µm3 or higher” in claim 5, the instant specification indicates that with a heat treatment at 250 to 550°C for 30 minutes or more, fine and numerous Al-Sc-series second-phase particles precipitate [0048] such that the particle population would be 3,000/ µm3 or higher [0035]. Heymes (FR ‘553) discloses homogenizing at 500°C for 8 hours and then 520°C for 24 hours (page 10 of Translation). Therefore, Al-Sc series second phase particles are dispersed in the Al parent phase, 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.
With respect to the recitation “the aluminum-alloy hot worked material has a hollow part at at least one location surrounded by at least one wall part composed of the aluminum alloy” in claim 5, Heymes (FR ‘553) discloses making tubes, which would inherently have a hollow part surrounded by a wall (page 10 of Translation).
With respect to the recitation “the aluminum-alloy hot worked material includes a welded surface composed of portions of the aluminum alloy that are welded together along the at least one wall part” in claim 5, Heymes (FR ‘553) discloses laser welding or friction stir welding, which would be used to weld tubes or pipes such as the tubes for the testing (pages 8 and 10 of translation).
In regard to claim 6, Heymes (FR ‘553) discloses wherein the magnesium content would 0.1 to 1 weight percent, which would be within the claimed range (claim 1).
In regard to claim 7, Heymes (FR ‘553) discloses 0.05 to 0.18 weight percent zirconium, which would be within the claimed range (claim 1).
In regard to claim 8, Heymes (FR ‘553) discloses 0.2 to 0.6 weight percent manganese, which would be within the claimed range (claim 1).
Response to Arguments
Applicant’s arguments with respect to claims 5 -8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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