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 .
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 18 is 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.
The term “substantially free” in claim 18 line 2 is a relative term which renders the claim indefinite. The term “substantially free” is 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. The instant specification at [0034] describes “substantially free” as being present, if at all in “minor” amounts as an impurity. The limit implied by either “substantially free” or “minor” is unclear and indefinite. Appropriate correction is required.
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)(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 1, 4, 5, 8, 9, 17, 18, 24-26, 44-52 are rejected under 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Cambier et al (US 2022/0106672), cited on IDS filed 5/22/24.
Cambier teaches an Al-Zn-Cu-Mg alloy comprising (in wt%):
Claim 1
Dependent cl.
Cambier Alloy#2
Cambier broad range
Zn
5.90-6.50
-6.30 (cl. 8)
5.98
5.5-6.5
6.00- (cl. 15)
6.00-6.30 (cl. 16)
Mg
1.50-1.90
-1.90 (cl. 8)
1.5
1.3-1.7
-1.80 (cl. 9)
1.55- (cl. 10)
1.60- (cl. 11)
1.55-1.90 (cl. 12)
1.60-1.80 (cl. 13)
Cu
1.60-2.30
-2.00 (cl. 2)
2.12
1.7-2.3
-1.9 (cl. 3)
1.70- (cl. 4)
1.80- (cl. 5)
1.70-2.00 (cl. 6)
1.80-1.90 (cl. 7)
Zr
0.08-0.12
0.10
0.05-0.15
Ti
0.01-0.05
0.02
-0.15
Mn
-0.05 (cl. 17)
-
-0.12
substantially free (18)
balance
Al+ unavoidable impurities
Al and impurities
Balance Al and impurities
Table 1: instant claims vs. prior art of Cambier
(see Cambier at claim 1, abstract, Table 1) wherein said example of Cambier falls within the claimed ranges of Zn, Mg, Cu, Zr, Ti, Mn, and balance Al and impurities (cl. 1, 4, 5, 8, 9, 17, 18).
Cambier does not teach a product by process step of extrusion for said example (Alloy 2 example is hot rolled), to provide the instant “extruded aluminum alloy product”.
However, with respect to said product by process step, 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.
The presently stated claims do not clearly define the instant alloy product over the rolled alloy of Cambier (i.e. the instant claims do not state a property, microstructure, etc. to clearly define/distinguish the product by process from that of the prior art). The structure implied by the instant “extruded” alloy product is held to be met by Cambier’s wrought alloy product (formed by rolling) with a composition that falls within the claimed ranges.
Because Cambier teaches an alloy product with alloying ranges that falls within the claimed ranges, and applicant has not shown the instant product-by-process limitation of “extruded” implies structure not met by the rolled Al-Zn alloy product of Cambier, it is held that Cambier anticipates, or in the alternative, has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 4, 5, 8, 9, 17, 18 the example of Cambier falls within the instant claimed ranges, and therefore meets the instant limitations.
Concerning claims 24 and 26, Cambier teaches an elongation (L) of ≥16% [0027] which meets the instant minimum.
Concerning claims 25, 51, Cambier teaches a TYS(L) ≥73 ksi [0023], which meets the instant minimum.
Concerning claims 44-45, Cambier teaches a TYS(ST) ≥66 ksi [0024], which meets the instant minimum.
Concerning claims 46-49, Cambier teaches a K1C(SL) ≥40 ksi√in [0026], which paired with TYS(ST) ≥66 ksi [0024], meets the instant minimums.
Concerning claim 50, 52, Cambier teaches a K1C(LT) ≥45 ksi√in [0025], as well as TYS(L) ≥73 ksi [0023], which meets the instant minimums.
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 2, 3, 6, 7, 10-16, 20-23, 27-43, 53-55 are rejected under 35 U.S.C. 103 as being unpatentable over Cambier.
Cambier is discussed in paragraphs above. Concerning claims 2, 3, 6, 7, 10-16, Cambier teaches overlapping alloying ranges (see comparison of instant claims and Cambier in Table 1 above). Because of the overlap in alloying ranges, it is held that Cambier has created a prima facie case of obviousness of the presently claimed invention.
Concerning claims 20 and 21, the ranges of Zn and Mg, or Zn, Cu, and Mg; taught by Cambier meet the instant inequalities.
Concerning claims 22, 53-54, which mention density or conductivity of the instant extruded alloy product, Cambier does not specify the density or conductivity. However, because Cambier teaches an overlapping alloy, processed by extrusion, then substantially the same properties are expected for the extruded alloy product of Cambier (such as density and conductivity), as for the instant invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Concerning claims 23, 27-43, Cambier does not teach EAC resistance under the claimed conditions, Kq(TL), Kq(LT), However, because Cambier teaches an overlapping alloy, together with processing by homogenization, hot working by extrusion [0036], solution heat treating typically 895F [0053], quenching, stretching [0053], and aging including 320F for 5.6 hrs [0054], then substantially the same properties are reasonably expected for the extruded alloy product of Cambier, as for the instant invention, due to the overlap in composition together with substantially identical processing. Therefore, it is held that Cambier has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 55 Cambier teaches an overlapping alloy, together with processing by homogenization, hot working by extrusion [0036], solution heat treating 895F [0053], quenching, stretching [0053], and aging 320F for 5.6 hrs [0054], which meets the instant process steps and falls within the claimed processing parameters.
Claims 1-18, 20-21, 24, 25, 44-51 are rejected under 35 U.S.C. 103 as being unpatentable over Dangerfield (US 2006/0191609), cited herein.
Dangerfield teaches an Al-Zn-Cu-Mg alloy comprising (in wt%):
Claim 1
Dependent cl.
Dangerfield
Zn
5.90-6.50
-6.30 (cl. 8)
6.2-7.2
6.00- (cl. 15)
6.00-6.30 (cl. 16)
Mg
1.50-1.90
-1.90 (cl. 8)
1.5-2.4
-1.80 (cl. 9)
1.55- (cl. 10)
1.60- (cl. 11)
1.55-1.90 (cl. 12)
1.60-1.80 (cl. 13)
Cu
1.60-2.30
-2.00 (cl. 2)
1.7-2.1
-1.9 (cl. 3)
1.70- (cl. 4)
1.80- (cl. 5)
1.70-2.00 (cl. 6)
1.80-1.90 (cl. 7)
Zr
0.08-0.12
0.06-0.13
Ti
0.01-0.05
0-0.06
Mn
-0.05 (cl. 17)
0-0.04
substantially free
balance
Al+ unavoidable impurities
Al and impurities
Table 2: instant claims vs. prior art of Dangerfield
see Dangerfield at abstract [0015-0024], etc., which overlaps the claimed ranges of Zn, Mg, Cu, Zr, Ti, Mn, and balance Al and impurities (claims 1-18). Dangerfield does not teach a product by process step of extrusion, to provide the instant “extruded aluminum alloy product”.
However, with respect to said product by process step, 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.
The presently stated claims do not clearly define the instant alloy product over the rolled or forged alloys of Dangerfield (i.e. the instant claims do not state a property, microstructure, etc. to clearly define/distinguish the product by process from that of the prior art). The structure implied by the instant “extruded” alloy product is held to be met by Dangerfield’s wrought alloy product (formed by rolling or forging, [0015]) with overlapping alloying ranges.
Because Dangerfield teaches an alloy product with overlapping alloying ranges, together with a product structure that meets the claimed product-by-process limitation of “extruded”, it is held that Dangerfield 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 dependent claims 2-18, Dangerfield teaches overlapping alloying ranges (see Table 2 for comparison), and therefore meets the instant limitations.
Concerning claims 20 and 21, the ranges of Zn and Mg, or Zn, Cu, and Mg; taught by Dangerfield meet the instant inequalities.
Concerning claim 24, Dangerfield teaches an elongation (L) of 14.5% (Table 9), which meets the instant minimum.
Concerning claim 25, 50, 51, Dangerfield teaches a TYS(L) of 73.2 ksi (Table 5), which meets the instant minimum.
Concerning claims 44-45, Dangerfield teaches a TYS(ST)=65.3 ksi (Table 5), which meets the instant minimum.
Concerning claims 46-49, Dangerfield teaches a K1C(SL)=31.9 ksi (sample K, Table 10), which also exhibits a TYS(ST)=62.3 ksi (Table 9), which meets the instant minimums.
Claim(s) 1-18, 20-54 are rejected under 35 U.S.C. 103 as being unpatentable over Karabin et al. (US 2023/0250516), cited herein.
Karabin teaches an Al-Zn-Cu-Mg alloy comprising (in wt%):
Claim 1
Dependent cl.
Karabin ex.F
(Table 1)
Karabin broad range
Zn
5.90-6.50
-6.30 (cl. 8)
6.46
5.0-9.0
6.00- (cl. 15)
6.00-6.30 (cl. 16)
Mg
1.50-1.90
-1.90 (cl. 8)
1.47
1.30-2.05
-1.80 (cl. 9)
1.55- (cl. 10)
1.60- (cl. 11)
1.55-1.90 (cl. 12)
1.60-1.80 (cl. 13)
Cu
1.60-2.30
-2.00 (cl. 2)
1.94
1.10-2.10
-1.9 (cl. 3)
1.70- (cl. 4)
1.80- (cl. 5)
1.70-2.00 (cl. 6)
1.80-1.90 (cl. 7)
Zr
0.08-0.12
0.10
0.02-0.15
Ti
0.01-0.05
0.02
-0.15
Mn
-0.05 (cl. 17)
-
optional 0.03-0.40
substantially free
Table 3: instant claims vs. prior art of Karabin
see Karabin at abstract, etc., which overlaps the claimed ranges of Zn, Mg, Cu, Zr, Ti, and Mn. Karabin also teaches a close example to the instant alloy composition (see Karabin at Table 1, example F). Karabin teaches processing said alloy by extrusion at [0059, 0067], thereby forming an extruded product.
Because Karabin teaches an alloy product with overlapping alloying ranges, together with forming into a wrought product by extrusion, it is held that Karabin 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 dependent claims 2-18, Karabin teaches overlapping alloying ranges (see Table 3 for comparison), and therefore meets the instant limitations.
Concerning claims 20 and 21, the ranges of Zn and Mg, or Zn, Cu, and Mg; taught by Karabin meet the instant inequalities (see Table 3 above).
Concerning claims 22, 53-54, which mention density or conductivity of the instant extruded alloy product, Karabin does not specify the density or conductivity. However, because Karabin teaches an overlapping alloy, processed by extrusion, then substantially the same properties are expected for the extruded alloy product of Karabin (such as density and conductivity), as for the instant invention.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Concerning claims 23-52, Karabin does not teach EAC resistance under the claimed conditions, elongation (L), TYS(L), Kq(TL), Kq(LT), K1C(SL). However, because Karabin teaches an overlapping alloy, together with processing by homogenization, hot working by extrusion [0059] [0067], solution heat treating, quenching, stretching [0112], and aging [0034], then substantially the same properties are reasonably expected for the extruded alloy product of Karabin, as for the instant invention, due to the overlap in composition together with substantially identical processing.
Concerning claim 55, Karabin teaches processing said alloy by homogenization, hot working by extrusion [0059] [0067], solution heat treating, quenching, stretching [0112], and aging at 200-450F[0034], which meets the instant process steps and overlaps the claimed aging temperature range. Karabin does not specify solution heat treating within the particular temperature range 880-910F. However, it would have been obvious to one of ordinary skill in the art, given the disclosure of Karabin, to have solution heat treated the Al-Zn alloy of Karabin elevated temperatures, such as within the claimed 880-910F, because Karabin teaches solution heat treating at elevated temperatures is sufficient to dissolve precipitates (see Karabin at [0033]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Karabin et al. (US 2023/0250516) or Dangerfield (US 2006/0191609) or Cambier (US 2022/0106672) in view of Boselli (US 2021/0340656), cited herein.
Karabin, Dangerfield, and Cambier are discussed in paragraphs above. Neither Karabin, Cambier, nor Dangerfield teach the inclusion of 0.01-0.10% Sr (cl. 19). However, Boselli, also drawn to Al-Zn-Mg-Cu alloys, teaches 0.001-0.03% Sr is added to Al-Zn alloys, in order to provide deoxidization [0024]. It would have been obvious to one of ordinary skill in the art to have added 0.001-0.03% Sr to the Al-Zn alloys or Karabin or Cambier or Dangerfield, because Boselli teaches said addition is useful as a deoxidizer (see Boselli at [0024]).
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
