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
Claims 1-17 are pending and presented for examination on the merits.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 16/603,604, filed on 04/09/2018.
Information Disclosure Statement
Two (2) information disclosure statement(s) (IDS) were submitted on 04/29/2024 and 11/27/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the verb tense of step (c) does not match the verb tense of the other steps. “Homogenization” (“homogenization said unwrought product”) should be in present participle form, i.e., “homogenizing.” Appropriate correction is required.
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.
Regarding claim 1, the claim is indefinite for lack of clarity with respect to antecedent basis. Step (d) recites that the unwrought product is worked into an extruded, rolled, and/or forged product. Step (g) subsequently recites the term “said extruded product,” meaning that the product is required to be in extruded form. However, step (d) recites that the types of working may be selected in the alternative (extruded or rolled or forged), and there is no requirement to select extruding from the series. Therefore, referring to the wrought product as an “extruded product” in step (g) raises questions as to whether rolling and forging cannot be selected in step (d).
Regarding claims 2-17, the claims are likewise rejected, as they incorporate all limitations of rejected claim 1.
Further regarding claim 2, the claim is indefinite because it is ambiguous. The term “the treatment time” could be interpreted as referring to the treatment time of the homogenization step or the time of the solution heat treatment in step (e) of claim 1. Thus, the scope of the claim cannot be determined.
Further regarding claim 15, the claim is indefinite because the quantity of Zn is partially broader than the quantity of Zn in parent claim 1. Claim 1 recites that Zn is less than 0.4 (“Zn: < 0.4”). But claim 15, which depends directly on claim 1, recites that Zn ranges from 0.05 to 0.4 (“Zn: 0.05-0.4”). The Zn quantity cannot simultaneously be less than 0.4 (i.e., exclusive of upper limit 0.4 in claim 1) while also being as high as 0.4 (i.e., inclusive of upper limit 0.4 in claim 15). Thus, the boundaries of the Zn content in claim 15 cannot be readily ascertained.
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.
Claim 15 is 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.
Regarding claim 15, the claim fails to include all the limitations of claim 1, the claim upon which it depends. Claim 15 permits Zn to be as high as 0.4% by weight; however, claim 1 expressly forbids Zn to meet or exceed 0.4% by weight. Because claim 15 permits Zn to be 0.4% by weight, claim 15 does not include all limitations of claim 1, which explicitly excludes Zn from being 0.4% by weight.
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 § 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 4, 6-17 are rejected under 35 U.S.C. 103 as being unpatentable over US 5,455,003 (A) to Pickens et al. (“Pickens”).
Regarding claims 1, 4, 6-15, and 17, Pickens discloses a method for the production of aluminum-copper-lithium alloys exhibiting improved strength and fracture toughness (method for manufacturing a product containing aluminum alloy). Abstract; col. 1, lines 18-25.
The aluminum alloy contains the following elements in percent by weight (col. 5, lines 35-52; col. 17; col. 18):
Element
Claim 1
Dependent Claims
US 5,455,003 A
Cu
2.5 - 3.4
2.9 - 3.1 (claim 6)
2.0 - 6.5
Li
1.6 - 2.2
1.65 - 1.75 (claim 7)
0.2 - 2.7
Mg
0.4 - 0.9
0.5 - 0.8 (claim 10)
0 - 4.0
Mn
0.2 - 0.6
0.4 - 0.6 (claim 8)
about 0.01 to about 1.0, preferably
Zr
0.08 - 0.18
0.14 - 0.15 (claim 9)
about 0.01 to about 1.0, preferably
Zn
< 0.4
0.05 - 0.35 (claim 11)
0 - 3.0
Ag
< 0.15
< 0.10 (claim 12)
0 - 4.0
Fe
(Fe+Si) ≤ 0.20
at most 0.08 (claim 13)
up to about 10
Si
(Fe+Si) ≤ 0.20
at most 0.08 (claim 13)
---------------------
At least one of
Ti
0.01 - 0.15
about 0.01 to about 1.0, preferably
Sc
0.01 - 0.15
---------------------
Cr
0.01 - 0.3
about 0.01 to about 1.0, preferably
Hf
0.01 - 0.5
about 0.01 to about 1.0, preferably
V
0.01 - 0.3
about 0.01 to about 1.0, preferably
Aluminum (Al)
rest
balance
other elements
≤ 0.05 each
---------------------
other elements
≤ 0.15 in total
---------------------
Element
Claim 15
US 5,455,003 A
Cu
2.8 - 3.2
2.0 - 6.5
Li
1.65 - 1.8
0.2 - 2.7
Mg
0.5 - 0.8
0 - 4.0
Mn
0.3 - 0.6
about 0.01 to about 1.0, preferably
Zr
0.12 - 0.16
about 0.01 to about 1.0, preferably
Zn
0.05 - 0.4
0 - 3.0
Ag
< 0.1
0 - 4.0
Fe
(Fe+Si) ≤ 0.20
up to about 10
Si
(Fe+Si) ≤ 0.20
---------------------
At least one of
Ti
0.01 - 0.05
about 0.01 to about 1.0, preferably
Sc
0.02 - 0.1
---------------------
Cr
0.02 - 0.1
about 0.01 to about 1.0, preferably
Hf
0.02 - 0.1
about 0.01 to about 1.0, preferably
V
0.01 - 0.05
about 0.01 to about 1.0, preferably
Al
rest
balance
other elements
≤ 0.05 each
---------------------
other elements
≤ 0.15
---------------------
All other elements are not required, i.e., other elements are optional in Pickens. Table 1, Table 2, and lines 51-67 of column 18 disclose preferred ranges and exemplary quantities of Cu, Li, Ag, Mg, Zn, Zr, and Ti.
The method includes the following steps:
(i) casting ingots using an induction melting furnace (producing a bath of liquid metal and casting an unwrought product from said bath of liquid metal) (col. 6, lines 31-33);
(ii) homogenizing the ingot (homogenization said unwrought product) (col. 6, lines 33-34);
(iii) extruding the ingot at a preheat temperature (hot and, optionally, cold working of the unwrought product into an extruded, rolled and/or forged product) (col. 6, lines 33-36);
(iv) solution heating and quenching the extruded ingot (solution heat treatment and quenching of said product) (col. 6, lines 37-39);
(v) stretching from 0% to 9.5%, preferably from about 3 to about 9 percent, in varying amounts (stretching in a controlled manner of said product with a permanent set from 1 to 15%) (col. 6, lines 39-53; col. 19, lines 8-28; FIGS. 4, 5, and 7; claim 6); and
(vi) artificial aging at temperatures of less than about 120°C to greater than about 180°C, with preferred temperatures being from about 125°C to about 150°C, for about 0.25 to about 500 hours, with about 4 to about 24 hours being most preferred (aging of said extruded product by heating to 140 to 170°C for 5 to 70 hours) (col. 6, lines 54-65).
The yield strength is measured in the longitudinal direction and is greater than 85 ksi (greater than about 586 MPa) at room temperature (corresponds to conventional elastic limit measured at 0.2% of elongation in the L direction, Rp0.2(L), of at least 510 MPa) (col. 7, lines 25-27; claim 17; FIG. 1), which falls within the claimed range.
The fracture toughness is measured in the L-T orientation and is at least 18.7 ksi√in (at least about 20.6 MPa√m) at room temperature (corresponds to toughness KQ(L-T) in the direction L-T of at least 21 MPa√m) (col. 7, lines 25-38; claim 1; FIGS. 1-6), which is approximately the same as the claimed range.
The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness. MPEP § 2144.05(I). It would have been obvious for one of ordinary skill in the art to select from among the prior art ranges because there is utility over an entire range disclosed in the prior art.
Pickens does not expressly disclose the claimed relationship between toughness and elastic limit. However, the various data points and curves in the graphs disclose fracture toughness and elastic limit values that satisfy the claimed equation. For example, the data point at about 86 ksi (592 MPa) and 38 ksi√in (about 41.8 MPa√m) in FIG. 1 meets the claimed relationship. Similar calculations can be made with other data points in FIG. 1 and FIG. 2.
Additionally, Pickens discloses overlapping values of yield strength (elastic limit) and fracture toughness as well as how to modify the relationship between those values. See, for example, FIG. 1 for the relationship between fracture toughness and yield strength for a given stretch percentage; FIG. 2 for the relationship between fracture toughness and lithium content; FIG. 3 for the relationship between fracture toughness and magnesium content; FIG. 4 for the relationship between fracture toughness and stretch for a given yield strength; FIG. 5 for the relationship between fracture toughness and stretch percentage; and FIG. 6 for the relationship between fracture toughness and aging temperature. Therefore, one of ordinary skill in the art would have been able to select a fracture toughness and yield strength in accordance with the needs and specifications of a given article.
Regarding claim 16, Pickens discloses that solution heat treatment occurs for one hour at temperatures just below the solidus. Col. 6, lines 37-39. An example solution heat treatment temperature is 504°C for 1 hour (col. 7, lines 55-58), which falls within the claimed ranges.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Pickens, as applied to claim 1 above, and further in view of US 2010/0126637 (A1) to Heymes et al. (“Heymes”).
Regarding claim 2, Pickens discloses an example homogenization step that comprises heating at a temperature of 504°C for 8 hours. Col. 6, lines 33-35. The time falls within the claimed range, but the temperature does not.
Heymes is drawn to a method of making an extruded, rolled, and/or forged aluminum alloy product. Abstract; para. [0003]. The homogenization step takes place at a temperature between 515°C and 525°C for a period of time between 5 hours and 20 hours. Para. [0055]-[0057]. These conditions improve the product by allowing for a compromise between toughness and mechanical strength compared to when the temperature and time are lower or higher. Para. [0058]. These conditions also avoid the need to minimize the homogenization time by relying on the highest available temperature to enable diffusion of elements and dispersoid precipitation without incipient melting. Para. [0058].
It would have been obvious to one of ordinary skill in the art to have adopted the homogenization times and temperatures of Heymes in the process of Pickens because they further promote producing an alloy product possessing a balance between toughness and strength in aluminum alloy products.
Claims 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Pickens, as applied to claim 1 above, and further in view of US 2011/0030856 (A1) to Warner et al. (“Warner”).
Regarding claims 3 and 5, Pickens teaches aging at temperatures of less than about 120°C to greater than about 180°C, with preferred temperatures being from about 125°C to about 150°C, for about 0.25 to about 500 hours, with about 4 to about 24 hours being most preferred (aging carried out at a temperature between 150 to 165°C) (col. 6, lines 54-65), but is silent regarding aging with an equivalent time at 160°C for the claimed times and reference temperature.
Warner is directed to a method for making a wrought product produced from an extruded, rolled, and/or forged aluminum alloy-based product. Abstract. In the age hardening of Al-Cu-Li alloys, it is known that the yield strength increases with artificial aging time at a given temperature to reach a peak maximum value, which then decreases with aging time. Para. [0085]. An aging curve can be mapped, and an equivalent time can be calculated. Para. [0086]-[0095]; FIG. 1.
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103
236
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Greyscale
It would have been obvious to one of ordinary skill in the art to have optimized the aging temperature and time of Pickens using the curve of Warner as a model in order to determine an optimum or desired yield strength suitable for the aluminum alloy product.
Pertinent Prior Art
The following prior art is made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2016/0355916 (A1) (equivalent WO 2015/086922 (A2)) to Danielou et al. discloses a method of producing an aluminum alloy product containing Cu, Li, Mg, Mn, Zr, and Ti. Para. [0009], [0032]. The product has a yield stress of at least 450 MPa in the L direction and a fracture toughness K1C(L-T) of at least 25 MPa√m. Para. [0055].
US 2016/0368588 (A1) (equivalent WO 2015/086917 (A2)) to Pignatel et al. discloses a method of producing an extruded product containing Cu, Li, Mg, Mn, Zr, and Ti. Abstract; para. [0035]. The method includes steps of homogenizing, hot working by extrusion, solution heat treating and quenching, stretching in a controlled manner, and artificial aging. Para. [0036], [0037], [0041]-[0043].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VANESSA T. LUK whose telephone number is (571)270-3587. The examiner can normally be reached Monday-Friday 9:30 AM - 4:30 PM ET.
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/VANESSA T. LUK/Primary Examiner, Art Unit 1733
August 18, 2026
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