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 with traverse of group I claims 1-7, 10 in the reply filed on 6/16/26 is acknowledged.
The traversal is on the ground(s) that the ISA did not find unity lacking, and the present claims have not achieved a separate status in the art/different field of search. This is not found persuasive because the examiner maintains that the “technical feature” does not qualify as a “special technical feature” (see restriction mailed 3/18/26 for details), and the field of search for group II’s method of casting, heat treating, extruding, and SHT the claimed 6xxx alloy includes a divergent search from group I’s aluminum alloy product of a given composition, and there is a serious burden on the examiner if restriction is not required.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 1-7, 10 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2000-054049 (JP’049), translation cited herein.
JP’049 (abstract, [0007], etc) teaches an aluminum alloy comprising (in wt%):
cl. 1
JP’049
Si
0.6-0.9
0.6-1
Mg
0.55-0.76
0.5-0.9
Cu
0.65-0.9
>0.4-0.8
Mn
0.4-0.7
0.2-0.6
Cr
0.05-0.2
0.05-0.3
Zr
0.10-0.19
0.05-0.25
Fe
0.05-0.5
0.1-0.4
Zn
≤1.0
-
V
≤0.10
-
Ti
≤0.10
0.001-0.1
Bal.
Al and other elements
Al and impurities
Table 1: instant claims vs. prior art of JP’049
which overlaps the claimed alloying ranges of Si, Mg, Cu, Mn, Cr, Zr, Fe, Ti (instant claims 1, 2), and therefore meets the claimed limitation of alloying ranges. JP’049 teaches said alloy is formed into an extruded profile (abstract). Claim 1’s “containing” transitional phrase is synonymous with “comprising”/open type claim language (see MPEP 2111.03, Transitional Phrases) and does not limit the claimed alloy to only the recited elements. Because JP’049 teaches an Al-Mg-Si alloy extruded product with overlapping alloying ranges, it is held that JP’049 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to be a prima facie case of obviousness, see MPEP § 2144.05. It would have been obvious to one of ordinary skill in the art to select any portion of the range, including the claimed range, from the broader range disclosed in the prior art, because the prior art finds that said composition in the entire disclosed range has a suitable utility. Additionally, "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages," In re Peterson, 65 USPQ2d at 1379 (CAFC 2003).
Concerning claims 3 and 4, JP’049 teaches a recrystallized structure with large crystal grains is detrimental to crushing properties [0006]. JP’049 teaches the microstructure is fibrous (unrecrystallized) except for <100µm surface layer [0008], which meets the instant “peripheral coarse grain is at most 400 µm thick per wall side” (see definition at [0053] of the instant specification). The extruded profiles of JP’049 have a typical wall thickness of 2 mm/2000µm (see examples), thereby achieving >95% unrecrystallized structure; which meets the instant “essentially unrecrystallized” limitation (see definition at [0035] of instant specification).
Concerning instant claims 5-7, JP’049 does not specify the properties of: solidus temperature (cl. 5), flow stress under the claimed conditions (cl. 6), or UTS in a T6 temper (cl. 7). However, because JP’049 teaches an overlapping Al-Mg-Si alloy composition, processed by substantially identical steps as compared to the instant invention (including casting, homogenizing, extruding, quenching, and aging, see JP’049 at [0017]), then substantially the same properties are expected for the extruded and heat treated Al-Mg-Si alloy product of JP’049, as for the instant invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Concerning claim 10, JP’049 teaches said alloy is used for energy absorbing parts of automobiles, such as side members that require excellent crushing characteristics [0001, 0005], which meets the claimed limitation of an automotive component.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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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.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
7/11/26
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