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 .
Response to Election/Restrictions and Status of Claims
Applicant's election with traverse of Group III, Claims 12-20, drawn to an extruded product, in the reply filed on August 13, 2026 is acknowledged. The traversal is on the ground(s) that restrictions are optional and that there is not a serious burden. This is not found persuasive because the inventions have acquired a separate status in the art in view of their different classification, the inventions have acquired a separate status in the art due to their recognized divergent subject matter, and the inventions require a different field of search (e.g., searching different classes/subclasses or electronic resources, or employing different search strategies or search queries).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-8 and 9-11 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, Group I, drawn to an extrusion feedstock, and Group II, drawn to a method of making an extrusion feedstock, respectively, there being no allowable generic or linking claim.
Claims 1-20 are pending, and Claims 12-20 are currently considered in this office action.
Priority
Applicant’s claim to priority for Claims 1-19 in provisional application no. 63/452,315, filed March 15, 2023, and no. 63/526724, filed July 14, 2023, is acknowledged. Examiner notes the limitations regarding a grain size of 10um or less (see Claim 20), does not benefit from the priority of the provisional applications.
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.
Claim 12, and dependent Claims 13-19, and Claim 20 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.
Regarding Claim 12, the claim recites at least 1wt% of aluminum scrap, which is considered an intermediate product. The claim does not recite a limitation regarding the remainder of the product (i.e., 99wt% or less of the product is unknown). Therefore, the metes and bounds of the final product composition are unknown because only a portion of the compositional make-up is recited, and it is unclear what the final composition is.
Regarding Claim 12, the claim recites “wherein the extruded product has a refined microstructure relative to a corresponding non-extruded product having a substantially identical chemical composition”. The claim refers to the microstructure of an unknown product (a non-extruded product having a substantially identical chemical composition). Because it is unclear what the microstructure of the unknown product is, it is therefore unclear what the microstructure of the claimed product is and what microstructure is required in order to meet the claims.
Regarding Claim 13, the claim recites “wherein the refined microstructure comprises an average grain size that is smaller in at least one dimension relative to the corresponding non-extruded product”. The claim refers to the microstructure and grain size of an unknown product (the non-extruded product). Because it is unclear what the microstructure and grain size of the unknown product is, it is therefore unclear what the microstructure and grain size of the claimed product is and what grain size is required in order to meet the claims.
Regarding Claim 14, the claim recites “wherein the refined microstructure comprises an average grain length that is smaller than an average grain length of the corresponding non-extruded product”. The claim refers to the microstructure and grain length of an unknown product (the non-extruded product). Because it is unclear what the microstructure and grain length of the unknown product is, it is therefore unclear what the microstructure and grain length of the claimed product is and what grain length is required in order to meet the claims.
Regarding Claim 15, the claim recites “wherein the impurities are broken down to smaller pieces relative to the impurities in the corresponding”. Firstly, it is unclear what is meant by ‘the impurities are broken down into smaller pieces”. It is unclear if the limitation is referring to a particular phase which is considered an impurity phase, or something else. For example, some impurity elements exist substitutionally or interstitially, and it is unclear how these elements would be broken down further. Moreover, it is unclear what ‘pieces’ refers to. Secondly, the claim refers to such impurity pieces relative to an unknown product (the non-extruded product). Because it is unclear what impurity pieces mean, or what the size of an impurity piece in the unknown product is, it is further unclear what the microstructure and impurity pieces in the claimed product are required to be in order to meet the claims.
Regarding Claim 19, the claim recites 0.4-2wt% Zn, whereas Claim 12, from which Claim 19 depends from, recites 0.1-1wt% Zn. It is unclear what range is required to meet to the claims.
Regarding Claim 20, the claim recites ranges for silicon, copper, iron, magnesium, manganese and zinc present in “the floated fragmentizer aluminum scrap composition, fragmentizer aluminum scrap composition, or mixture thereof, fragmentizer aluminum scrap composition, or mixture thereof”. These ranges are directed towards an intermediate product, whereas the claim is directed to the final product. It is unclear what content of silicon, copper, iron, magnesium, manganese and zinc should be present to satisfy the composition of the final product because the final composition is not recited in the claim, and the amount of aluminum scrap is not recited in the claim.
Regarding Claim 20, the claim recites “the floated fragmentizer aluminum scrap composition, fragmentizer aluminum scrap composition, or mixture thereof, fragmentizer aluminum scrap composition, or mixture thereof” and further “or a mixture of at least two thereof”(line 21). It is unclear what mixtures these limitations refer to, and how many mixtures are required.
Regarding Claim 20, the claim recites “the floated fragmentizer aluminum scrap composition, fragmentizer aluminum scrap composition, or mixture thereof”. There is insufficient antecedent basis for these limitations.
Regarding Claim 20, the claim recites “the floated fragmentizer aluminum scrap composition, fragmentizer aluminum scrap composition, or mixture thereof, fragmentizer aluminum scrap composition, or mixture thereof”. It appears “fragmentizer aluminum scrap composition, or mixture thereof” is repeated twice, but it is unclear if the limitation is directed to different components or not.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 12-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bekki (US 6607615 B1).
Regarding Claim 12, Bekki discloses an extruded product (Abstract), comprising a composition which reads on the claimed ranges, for example, of a product comprised of 100wt% aluminum scrap (see table below; see 112b rejection above).
Element
Claim 12, Al scrap (wt%)
Bekki, Claim 1
Table 1, ex.1A
Table 1, ex.1C
Balance
Al
Al
Al
Al
At least one of:
Si
2-15
2.6-4
2.90
3.89
Fe
0.2-2
0.1-1.5
0.35
0.85
Mn
0.1-2
0.3-1.2
0.50
0.88
Cu
0.3-3
0.2-1.2
0.45
0.98
Mg
0.3-3
0.3-1.5
0.43
0.75
Zn
0.1-1
0.3-1.2
0.51
0.34
The product of Bekki is extruded and comprises the claimed composition. One of ordinary skill in the art would therefore appreciate that the invention of Bekki comprises the same microstructure as the instant invention, and one which is refined relative to a non-extruded product as claimed, because the composition and processing of Bekki are the same as claimed. Therefore, all limitations have been met.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding the limitation “extruded”, this limitation is a product-by-process limitation. Regarding the limitation directed to a composition of the aluminum scrap comprising an impurity (floated fragmentizer aluminum scrap, fragmentizer aluminum scrap, or mixture thereof), these limitations are also product-by-process limitations and directed to an intermediate product (see also 112b rejection above).
[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. See MPEP 2113.
Regarding Claims 13-15, the product of Bekki is extruded and comprises the claimed composition. One of ordinary skill in the art would therefore appreciate that the invention of Bekki comprises the same microstructure as the instant invention, and one with (Claim 13) smaller grain sizes, (Claim 14) smaller grain lengths, and (Claim 15) smaller impurity pieces (see 112b rejections above) relative to a non-extruded product as claimed, because the composition and processing of Bekki are the same as claimed. Therefore, all limitations have been met.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding Claim 16, the claims are directed to a product, and the limitation recited is directed to the processing of an intermediate product, a feedstock, and is a product-by-process limitation. [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. See MPEP 2113.
Regarding Claim 17 and Claim 18, Bekki discloses the claimed yield strength and tensile strength (see Table below).
Bekki, Claims 3-4
Table 4, ex.1A
Table 4, ex.1C
Claim 17, yield strength (MPa)
200 MPa or more
230-278 MPa
245 MPa
252 MPa
Claim 18, tensile strength (MPa)
300 MPa or more
309-365 MPa
320 MPa
330 MPa
Regarding Claim 19, Bekki discloses wherein the extruded product comprises a composition which further reads on the claimed impurity ranges of the aluminum scrap composition when using 100wt% aluminum scrap (see Table below).
Element
Claim 19, Al scrap (wt%)
Bekki, Claim 1 (wt%)
Balance
Al
Al
At least one of:
Si
4-15
2.6-4
Fe
0.3-2
0.1-1.5
Mn
0.2-2
0.3-1.2
Cu
0.6-3
0.2-1.2
Mg
0.7-3
0.3-1.5
Zn
0.4-2
0.3-1.2
Moreover, the composition of the aluminum scrap comprising the claimed impurity ranges (floated fragmentizer aluminum scrap, fragmentizer aluminum scrap, or mixture thereof), are limitations directed to an intermediate product and is a product-by-process limitation (see also 112b rejection above regarding the final composition of the product).
[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. See MPEP 2113.
Further, the instant invention recites wherein the product may be a mixture of AA 6061 and the aluminum scrap, such as 25% AA 6061 and 75% aluminum scrap and 50% AA 6061 and 75% aluminum scrap, of which the product of Bekki further reads on (see table below and instant specification para. [0069]-[0070]).
Element
6061 (wt%)
Claim 19, Al scrap (wt%)
25% 6061,
75% Al scrap (wt%)
50% 6061,
50% Al scrap (wt%)
Bekki, Claim 1 (wt%)
At least one of:
Si
0.6
4-15
3.1-11.3
2.2-7.7
2.6-4
Fe
0.4
0.3-2
0.32-1.6
0.35-1.2
0.1-1.5
Mn
0.1
0.2-2
0.17-1.52
0.15-1.05
0.3-1.2
Cu
0.3
0.6-3
0.52-2.3
0.45-1.65
0.2-1.2
Mg
1
0.7-3
0.77-2.5
0.85-2
0.3-1.5
Zn
0
0.4-2
0.3-1.56
0.2-1.12
0.3-1.2
Al
Balance
Balance
Balance
Balance
Balance
Regarding Claim 20, Bekki discloses an extruded product (Abstract), comprising the mechanical properties and a composition which read on the claimed ranges of a product, for example, comprised of at least 1wt% aluminum and further 100wt% aluminum scrap (see table below; see 112b rejection above).
Element
Claim 20, Al scrap (wt%)
Bekki, Claim 1
Table 1, ex.1A
Table 1, ex.1C
Al
1wt% or more
balance
balance
balance
At least one of:
Si
2-15
2.6-4
2.90
3.89
Fe
0.2-2
0.1-1.5
0.35
0.85
Mn
0.1-2
0.3-1.2
0.50
0.88
Cu
0.3-3
0.2-1.2
0.45
0.98
Mg
0.3-3
0.3-1.5
0.43
0.75
Zn
0.1-1
0.3-1.2
0.51
0.34
Mechanical property
Bekki, Claims 3-4, Claim 6
Table 4, ex.1A
Table 4, ex.1C
YS
200 MPa or more
230-278 MPa
245 MPa
252 MPa
UTS
300 MPa or more
309-365 MPa
320 MPa
330 MPa
elongation
5% or more
13.8-15.6%
14.5%
14.0%
While Bekki is silent towards the grain structure, the product of Bekki is extruded and comprises the claimed composition. One of ordinary skill in the art would therefore appreciate that the invention of Bekki comprises the same microstructure as the instant invention, and one which comprises the claimed grain size of 10um or less, because the composition and extrusion of Bekki are the same as claimed. Therefore, all limitations have been met.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding the limitation “extruded”, this limitation is a product-by-process limitation. Regarding the limitation directed to a composition of the aluminum scrap (extrudable floated fragmentizer aluminum scrap, extrudable fragmentizer aluminum scrap, or extrudable mixture thereof), these limitations are also product-by-process limitations and directed to an intermediate product.
[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. See MPEP 2113.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at (571)-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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