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 without traverse of group I claims 1-17 in the reply filed on 6/8/26 is acknowledged. Claims 18-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
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 1-17 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.
Claim 1 recites Ti twice (see claim 1 line 7 in a Markush type group, claim 1 line 8 by itself), which renders the claim indefinite. It is unclear the amount of Ti claim 1 is limited to.
Claim 1 line 6 refers to “at least 0.05-0.4% of a dispersoid forming element”; it is unclear if “at least” refers to the minimum recited of “0.05” or refers to both “0.05-0.4”.
Claim 1 line 6 refers to “at least 0.05-0.4% of a dispersoid forming element”; it is unclear if this is the total amount of combined dispersoid element(s), or the amount allowed of each element.
Claim 14 recites the limitation "the over-aging treatment" in line 9. There is insufficient antecedent basis for this limitation in the claim.
Claims dependent on the above rejected claims are likewise rejected under this statute. Appropriate correction/explanation is required.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 9 and 17 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 9, which is dependent on independent claim 1, refers to a Mg content of “1.9% to 2.25%”. Claim 1 refers to a Mg content of “1.90% to 2.25%”. Claim 9 refers to a measurement of Mg with less precision/significant digits than claim 1, and is therefore broader; and does not further limit claim 1.
Claim 17, which is dependent on independent claim 1, refers to the elongation in LT-direction is “> 9%”. Claim 1 refers to an identical elongation in LT direction of “> 9%”, and does not further limit claim 1.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Benedictus (US 2005/0189044), cited on IDS filed 1/09/24.
Benedictus teaches an aluminum alloy product comprising (in wt%):
cl. 1
Benedictus #F (Table 14)
Zn
7.1-7.5
7.4
Mg
1.90-2.25
1.95
Cu
1.3-1.8
1.58
Zr, Sc, V, Hf, Ti, Cr, Mn
0.05-0.4
0.07 Mn,
0.09 Zr
Ti
0.01-0.06
0.03
Si
-0.15
0.03
Fe
-0.15
0.05
balance
unavoidable impurities and aluminum
aluminum and impurities
Table 1: instant claims vs. Benedictus
which falls within the instantly claimed alloying ranges of Zn, Mg, Cu, Mn, Zr, Ti, Si, Fe, balance aluminum and impurities (instant claims 1-3, 6-10, 15, 16). Benedictus teaches said alloy is formed into a plate with a thickness 63.5 mm (Ex. 8, [0120]), which falls within the claimed thickness and therefore meets said limitation. Concerning the property minimums recited in instant claim 1, Benedictus teaches applying an over-aged temper [0080] to achieve optimum properties, wherein alloy F exhibits YS (LT)=536 MPa, UTS(LT)=573 MPa, and elongation (LT)=9.5% (see Table 15 of Benedictus), which fall within and therefore meet the instant property minimums.
Benedictus does not specify said alloy product is a) “an armour component” or b) the armour piercing V50 ballistic limit (instant claim 1). Concerning a), the plate product taught by Benedictus meets the instant “armour component” as defined/described in the instant specification (see [0048, 0105-0106], etc.). Concerning b), because Benedictus teaches an example within the claimed alloying ranges, together with the claimed plate configuration and overaged temper, then the same armour piercing V50 ballistic limit is inherently expected for Al-Zn-Mg-Cu alloy product of Benedictus, as for the claimed invention. Therefore it is held that Benedictus anticipates the claimed invention.
Concerning dependent claims 2-3, 6-10, 15, 16, as set forth above, Benedictus teaches an example within the claimed alloying ranges.
Concerning claims 4 and 5, the Zn/Mg ratio taught by Benedictus is 7.4/1.95=3.79, which falls within and therefore meets the claimed Zn/Mg ratio.
Concerning claims 11-14, which mention product by process steps, Benedictus teaches the application of a 2 step aging: 1st step aging: 105-135°C 2-20 hours, 2nd step aging: 135-210°C for 4-20 hours (see Benedictus as [0069]), which encompasses and is held to overlap “with sufficient specificity” see MPEP 2131.03, the claimed aging times and temperatures. Further concerning claim 14’s product by process steps, Benedictus teaches said Al-Zn-Mg-Cu alloy product is produced by steps including: casting an ingot, homogenizing, hot working to obtain a desired workpiece form, solution heat treating, quenching, optional stretching (typically 1-3% [0048]), and aging as set forth above (see Benedictus at [0059-0067]), which meets the claimed product by process steps.
Further with respect to the claimed product by process limitations, product-by-process claims are not limited to the manipulations of the recited steps, only the structure implied by the steps. "[E]ven 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) (citations omitted). Furthermore, "[b]ecause validity is determined based on the requirements of patentability, a patent is invalid if a product made by the process recited in a product-by-process claim is anticipated by or obvious from prior art products, even if those prior art products are made by different processes." Amgen Inc. v. F. Hoffman-La Roche Ltd., 580 F.3d 1340, 1370 n 14, 92 USPQ2d 1289, 1312, n 14 (Fed. Cir. 2009). See also Purdue Pharma v. Epic Pharma, 811 F.3d 1345, 117 USPQ2d 1733 (Fed. Cir. 2016). Once a product appearing to be substantially identical is found and a 35 USC 102/103 rejection is made, the burden shifts to the applicant to show an unobvious difference. See MPEP 2113.
Concerning claim 17, as set forth above, Benedictus teaches example F exhibits an elongation (LT)=9.5% (see Table 15 of Benedictus), which meets the instant minimum.
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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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/J.C.M/Examiner, Art Unit 1733
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