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
Pending:
1, 3-9, 13, 15, 16
Withdrawn:
NONE
Rejected:
1, 3-9, 13, 15, 16
Amended:
1, 3-9
New:
NONE
Independent:
1
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 1-16 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.
Concerning claims 1-16, the terms “impact-resistant” and “energy-absorbing” are relative terms that render claim 1 indefinite (said terms are also present in dependent claims 2-16). The terms “impact-resistant”, and “energy-absorbing” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
Claims 8, 15, and 16 recite the limitation "the other unavoidable elements" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim. It is unclear which other elements applicant is referring to.
Claims dependent on the above rejected claims are likewise rejected under this statute. Appropriate correction is required.
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, 3-9, 13, 15, 16 are rejected under 35 U.S.C. 103 as being unpatentable over Skubich (US 2017/0306465, previously cited).
Skubich teaches an Al-Mg-Si with “high energy absorption” [0003], said alloy consisting of (in wt.%):
cl. 1
Skubich ex. A
Skubich (abstract)
Mg
0.40-1.00
0.53
0.3-1.5
Si
0.50-0.90
0.60
0.3-1.5
Mn
-0.60
0.08
<1.0
Cr
-0.30
0.10-0.20
(cl. 3, 11)
0.009
<0.4
Fe
-0.25
0.24
0.1-0.3
V
-0.20 (cl. 4, 12)
0.071
<0.2
0.05-0.15 (cl. 5)
Cu
-0.25 (cl. 6, 13)
0.14
<1.5
Ti
-0.10 (cl. 7)
0.024
<0.2
impurities
≤0.05%ea, ≤0.15% total (cl. 8, 14-16)
Al
96.8-99.1
balance aluminum and impurities
Mn+2Cr
0.40-1.0
Sifree = Si-0.3*(Mn+Fe+Cr)
Sifree =0.60-0.3*(0.08 + 0.24 + 0.009)=0.50
Mg/Sifree
0.72-1.40
Mg/Sifree=0.53/0.50=1.06
Mg+2*Sifree
1.40-2.4
Mg+2*Sifree=0.53+2*0.50 =1.53
Table 1: instant claims vs prior art of Skubich
which falls within the claimed alloying ranges of Mg, Si, Mn, Cr, Fe, V, Cu, Ti, Al and impurities of instant independent claim 1; and meets the claimed Mg/Sifree range as well as Mg+2*Sifree range (see Table 1 above for comparison, see Skubich at Table 1 and abstract), and therefore meets the instant alloying ranges and Mg/Sifree and Mg+2*Sifree (claim 1).
Concerning the amendment to instant claim 1 of 0.40-1.0 (Mn+2*Cr), the ranges of Mn and Cr taught by Skubich of <1.0% Mn and <0.4% Cr broadly overlap the claimed limitation of Mn +2*Cr = 0.40-1.0%. For instance, for Mn=0.40 and Cr=0.15 (which are within the ranges of Skubich), Mn+2*Cr=0.40+2*0.15=0.70, which falls within the range of instant claim 2. Further, Skubich teaches Mn and Cr are selected as dispersoid forming elements, added in order to improve strength/crash performance due to the fibrous structure they form [0029]. Given the disclosure of Skubich, it would have been obvious to one of ordinary skill in the art, to have selected Mn and Cr ranges within the claimed Mn +2*Cr is 0.40-1.0%, because Mn and Cr are considered result effective variables, added for the predictable purpose of increasing strength/crash performance.
Changes in temperature, concentrations, or other process conditions of an old process does not impart patentability unless the recited ranges are critical, i.e. they produce a new and unexpected result. However, said parameter must first be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, before the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation. In re Antonie, 559 F.2d 618, 195 USPQ 6 (CCPA 1977), See also In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), see MPEP 2144.05.
Skubich does not specify said alloy is “impact-resistant”. However, because Skubich teaches an identical alloy, then the same properties (such as “impact-resistant”), are inherently expected for the alloy of Skubich, as for the instant invention (see also 112(b) rejection above) by virtue of the overlap in alloying ranges taught by Skubich.
The examiner asserts that “products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP 2112.01.
Because Skubich teaches an overlapping Al-Mg-Si alloy product, it is held that Skubich 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 11, Skubich does not teach an example within the claimed 0.10-0.20% Cr (cl. 3, 11). However, the broad range of Cr taught by Skubich of <0.4% Cr overlaps the Cr range of instant claims 3 and 11 and therefore meets said limitation. Because Skubich teaches overlapping alloying ranges, it is held that Skubich has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 4-7, as set forth above, Skubich teaches overlapping alloying ranges (see Table 1 for comparison).
Concerning claims 8 and 14-16, though Skubich does not teach the amount of individual impurities allowed, or the total allowed of impurities, it would have been within the level of one of ordinary skill in the art to have minimized impurities (such as within the claimed ≤0.05% each and ≤0.15% total) in order to ensure consistent properties of said Al-Mg-Si alloy.
Concerning claim 9, Skubich does not specify a multilayer structure as claimed, as related to the wall thickness. However, Skubich teaches an identical method of processing said Al-Mg-Si alloy by steps of casting an ingot, homogenizing, extruding, and subjecting to an T6 or T7 aging treatment (see instant specification at examples, see Skubich at Table 2 & claim 1). Because Skubich teaches an example within the claimed alloying ranges, together with an identical method of processing said alloy, then the same properties (such as multilayer structure of “macrocrystalline layer/fibrous tissue/macrocrystalline layer”) would have been reasonably expected for the alloy product of Skubich, as for the instant invention, for the wall thickness of extruded structure taught by Skubich (wherein Skubich teaches a hollow extrusion with a rectangular cross section 40x55mm with a wall thickness approx. 2.5 mm, [0040]; and the instant specification teaches a wall thickness of ≤10 mm is important to achieving the claimed properties [0020]. Therefore, it is held that Skubich has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 10, Skubich teaches subjecting said Al-Mg-Si alloy to an T6 or T7 aging treatment (see Skubich at Table 2), which meets said limitation.
Concerning claims 12 and 13, as set forth above, Skubich teaches overlapping alloying ranges (see Table 1 for comparison), which meets said limitations.
Response to Amendment
In the response filed 6/11/26 applicant amended claims 1, 3-9, 13, 15, 16, and submitted various arguments traversing the rejections of record. No new matter has been added.
The 112(b) rejections in view of relative terms “high-strength” and “high toughness” have been overcome. However, 112(b) rejections in view of relative terms “impact resistant” and “energy absorbing” remain (as set forth above).
Applicant’s argument that the instant invention is allowable because the prior art does not teach or suggest an Al-Mg-Si alloy complete with the Mn+2*Cr range has not been found persuasive. Similarly, applicant’s argument that Skubich teaches away from the claimed range has not been found persuasive. Skubich teaches Mn and Cr are selected as dispersoid forming elements, added in order to improve strength/crash performance due to the fibrous structure they form [0029]. Given the disclosure of Skubich, it would have been obvious to one of ordinary skill in the art, to have selected Mn and Cr ranges within the claimed Mn +2*Cr is 0.40-1.0%, because Mn and Cr are considered result effective variables, added for the predictable purpose of increasing strength/crash performance.
Applicant’s argument that the instant invention is allowable because the claimed range of Mn+2*Cr is critical has not been found persuasive. As set forth above, the prior art teaches broadly overlapping ranges of Mn and Cr that meet said Mn+2*Cr limitation, as well as motivation to optimize (in order to balance strength and crushability). With respect to the overlap taught by the prior art, applicant has not clearly shown specific unexpected results with respect to the prior art of record or criticality of the instant claimed range (wherein said results must be fully commensurate in scope with the instantly claimed ranges, etc. see MPEP 716.02 d).
With respect to criticality of the instant claimed range, applicant refers to example 8 as showing unexpected results compared to similar example 10 (instant specification at Tables 2, 3). Example 8 does exhibit improved crushing performance, but with decreased strength. Additionally, similar example 11 also has a Mn+2*Cr value within the claimed range, while exhibiting identical crushing performance and better strength, compared to example 10. Increased strength is an expected benefit taught by Skubich, see above. Applicant has not clearly shown the instantly claimed alloy product (commensurate in scope with the instant claims) exhibits an unexpected combination of crushing performance and strength, due to a critical Mn+2*Cr value.
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 JANELL COMBS MORILLO whose telephone number is (571)272-1240. The examiner can normally be reached Mon-Thurs 7am-3pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
