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Claims 1-15 are pending wherein claims 10-15 are currently under examination and claims 1-9 are withdrawn from further consideration pursuant 37 CFR 1.142(b) as being drawn to a non-elected method of making an aluminum alloy sheet. Applicant’s election of claims 10-15 was made with traverse in the Response filed on June 12, 2026.
First, Applicant traverses on the ground that continuous casting is incompatible with a homogenization step and reversible hot rolling and Lorentzen et al. (‘295) does not disclose a homogenization step before hot rolling and a cold rolling step after hot rolling.
In response, the Examiner cannot comment about Applicant’s position with regard to incompatibility other than if something is disclosed in the prior art, the Examiner has to assume that it is capable of being done especially since the Examiner does not have access to equipment to verify whether something can be done or not. Additionally, the Examiner disagrees with Applicant’s position that a homogenization does not occur before hot rolling in Lorentzen et al. (‘295) teaches homogenization before hot rolling and then cold rolling after hot rolling [0053].
Second, the Applicant primarily argues that the temperature range of 371 to 626°C is a reheating step and not a homogenization step.
In response, the Examiner notes that according to the claim, if the temperature is achieved, then homogenization takes place and since 610 to 626°C is disclosed by Lorentzen et al. (‘295), homogenization would occur.
Third, the Applicant primarily argues that a reversible mill is not incorporated into the invention disclosed. The Applicant further argues that cold rolling is not disclosed in the process and that the invention is more advantageous excluding the cold rolling step.
In response, the Examiner notes that regardless of whether reversible mill processing shows up in a preferred embodiment, the reference to Lorentzen et al. (‘295) still discloses it. The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). MPEP 2123 I. The Examiner opines that cold rolling is disclosed after hot rolling regardless whether one having ordinary skill in the art is looking in the background or even in [0053] where it is disclosed after the homogenization step and the hot rolling step. With regard to the process being more advantageous excluding the cold rolling step, one having ordinary skill in the art would be aware that whether or not something is cold rolled is going to depend on the structure desired; the utility of the product; and whether annealing is going to performed again. Additionally, Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994). MPEP 2123 II.
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.
Claims 12-13 are 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.
With respect to the recitation “wherein the sheet is in a H14 temper and has, in longitudinal direction, a TYS of at least 125 MPa, an elongation A% of at least 6% and a UTS from 140 to 185 MPa and an earing percentage lower than 7% and optionally lower than 5%” in claim 12, it is unclear if the sheet would have the claimed properties during the H14 temper or after the H14 temper.
With respect to the recitation “wherein the sheet is in a H24 temper and has, in the longitudinal direction, a TYS of at least 125 MPa, an elongation A% of at least 11% and a UTS from 140 to 185 and an earing percentage lower than 12%” in claim 13, it is unclear if the sheet would have the claimed properties during the H24 temper or after the H14 temper.
Claim Rejections - 35 USC § 102/103
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.
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 10 and 14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Lorentzen et al. (US 2004/0007295).
In regard to claims 10 and 14, Lorentzen et al. (‘295) discloses an aluminum alloy sheet product [0010].
With respect to the recitation “made according to the method of claim 1” in claim 10, 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. Therefore, a rejection under 102(a)(1) or alternatively under 35 U.S.C. 103 is proper.
With respect to the recitation “for a parallelpiped batter housing with a height of at least 70 mm, a length of at least 100 mm and a width of at least 15 mm” in claim 14, the Examiner considers this a recitation of intended use that would not further limit the aluminum alloy sheet product. MPEP 2111.02 II.
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 11 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Lorentzen et al. (US 2004/0007295).
In regard to claim 15, Lorentzen et al. (‘295) discloses aluminum sheet stock having compositions relative to that of the instant invention as set forth below [0010-0011], [0029] and 8XXX Alloy in Table 1).
Element
Instant Claim
(weight percent)
Lorentzen et al. (‘295)
(weight percent)
Overlap
Mn
0.96 – 1.07
about 0 – 1.2
0.96 – 1.2
Fe
0.62 – 0.68
about 0 – 2
0.62 – 0.68
Si
0.12 – 0.18
about 0 – 2
0.12 – 0.18
Cu
0.13 – 0.17
about 0 – 2.5
0.13 – 0.17
Ti
0 – 0.1
0
0
Mg
less than 100 ppm
about 0 – 1.7
less than 100 ppm
Zn
less than 100 ppm
0
0
B
less than 200 ppm
0
0
Sn
less than 100 ppm
0
0
Bi
less than 100 ppm
0
0
Cr
less than 100 ppm
0
0
Al
Balance
Balance
Balance
The Examiner notes that the amounts of manganese, iron, silicon, copper, titanium, magnesium, zinc, boron, tin, bismuth and chromium disclosed in Lorentzen et al. (‘295) 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 manganese, iron, silicon, copper, titanium, magnesium, zinc, boron, tin, bismuth and chromium from the amounts disclosed by Lorentzen et al. (‘295) because Lorentzen et al. (‘295) discloses the same utility throughout the disclosed ranges.
In regard to claim 11, since Lorentzen et al. (‘295) discloses substantially similar compositions, the properties “in a longitudinal direction, a TYS of at least 115 MPa and optionally at least 125 MPa, an elongation A% of at least 5% and a UTS from 135 to 185 MPa and optionally from 140 to 180 MPa” would be expected. MPEP 2112.01 I.
Claims 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Lorentzen et al. (US 2004/0007295) as applied to claim 10 and further in view of Dorward (Work hardening and annealing of aluminum alloys).
In regard to claim 12, Lorentzen et al. (‘295) discloses aluminum alloys as set forth above, but Lorentzen et al. (‘295) does not specify wherein the aluminum alloys would undergo an H14 temper.
Dorward teaches H14 tempering in order to obtain aluminum alloys with lesser amounts of cold working that are half-hard (page 279, left column).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to conduct an H14 temper, as disclosed by Dorward, on the aluminum base alloys, as disclosed by Lorentzen et al. (‘295), in order to perform lesser amounts of cold working that are half-hard, as disclosed by Dorward (page 279, left column).
With respect to the recitation “has, in longitudinal direction, a TYS of at least 125 MPa, an elongation A% of at least 6% and a UTS from 140 to 185 and an earing percentage lower than 7% and optionally lower than 5%” in claim 12, Lorentzen et al. (‘295) and further in view of Dorward discloses substantially similar composition processed by H14 tempering and therefore these properties would be expected. MPEP 2112.01 I.
In regard to claim 13, Lorentzen et al. (‘295) discloses aluminum alloys as set forth above, but Lorentzen et al. (‘295) does not specify wherein the aluminum alloys would undergo an H24 temper.
Dorward teaches H24 tempering in order to obtain aluminum alloys that are strain hardened more than is required to achieve the desired properties and then reduced in strength by partial annealing (page 279, left column and page 279, center column).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to conduct an H24 temper, as disclosed by Dorward, on the aluminum base alloys, as disclosed by Lorentzen et al. (‘295), in order to provide products that are strain hardened more than is required to achieve the desired properties and then reduced in strength by partial annealing Dorward (page 279, left column and page 279, center column).
With respect to the recitation “has, in longitudinal direction, a TYS of at least 125 MPa, an elongation A% of at least 11% and a UTS from 140 to 185 and an earing percentage lower than 12%” in claim 13, Lorentzen et al. (‘295) and further in view of Dorward discloses substantially similar composition processed by H24 tempering and therefore these properties would be expected. MPEP 2112.01 I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Inoue (WO ‘215).
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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