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 Amendment and Status of Claims
Applicant’s amendments to the claims, filed October 28, 2025, are acknowledged. Claim 1 and 13-14 are amended, and Claims 26-27 are newly added. Claims 8 and 11 are cancelled.
Claims 1-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to nonelected invention, Group I, drawn to drawn to a rolled or forged aluminum-based alloy product, there being no allowable generic or linking claim. Applicant timely elected in the reply filed July 1, 2025.
Claims 1-2, 4-7, 9-10, 13-14 and 19-27 are pending, and Claims 13-14 and 19-27 are currently considered in this office action.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim 13-14 and 19-27 are rejected under 35 U.S.C. 103 as being unpatentable over Pickens (previously cited and cited by Applicant in IDS filed May 30, 2024, US 5,455,003 A) in view of Danielou (previously cited and cited by Applicant in IDS filed May 30, 2024, US 20090159159 A).
Regarding Claim 13, Pickens discloses a method of manufacturing a rolled and/or forged product based on an aluminum alloy (Abstract), comprising:
casting an ingot using an induction melting furnace, which reads on claimed steps a) and b) of creating a bath of liquid metal and casting an unwrought product from the metal bath (Col. 6, lines 31-33 and lines 66-67);
homogenizing the unwrought product (ingot) at 450C for 16 hours and at 504C for 8 hours, which reads on the claimed ranges in step c) of homogenizing at 450-550C for 5-60 hours (Col. 6, lines 34-36); and
forming a billet by means of hot working, such as by extrusion, rolling or forging, into a plate comprising a thickness of 0.250 inches or more, which reads on claimed step d) requiring hot working (and optionally cold working – see Col. 6, lines 51-53 of Pickens) into a rolled and/or forged product comprising at thickness of 12 mm or more (Col. 6, line 64-Col. 7, line 4, wherein product is hot worked by such methods as rolling, extrusion and forging; Col. 6, lines 34-35, extruding (hot working) at 370C to a 3/4x2in (19x50.8mm) bar; see also Col. 12, lines 5-60, cast and rolled to a plate, and Col. 7 lines 11-22, wherein a plate is 0.250in (6.35mm) or greater, which reads on the claimed range of 12mm or more).
While Pickens does not expressly disclose the claimed thickness range of 12mm or more, Pickens discloses hot working by rolling, extrusion and forging (Col. 6, line 64-Col. 7, line 4), and forming plates of 0.250in (6.35mm) or greater. Further, Danielou teaches hot rolling ingots into plates with a thickness of 30mm or more, including 60-100mm or thicker plates, in order to be useful for aerospace applications and integrally machined parts (Abstract; para. [0002]; para. [0005]-[0007]; para. [0045]; para. [0047]; para. [0049]-[0050]).
It would be obvious to one of ordinary skill in the art to hot work the ingots of Pickens by hot rolling into plates which are 30mm or thicker, particularly 60-100mm or thicker, as taught by Danielou, in order to produce a rolled aluminum product useful for aerospace applications and integrally machined parts (see teachings above). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Additionally, it would be obvious and routine for one of ordinary skill in the art to modify the plate thickness to be within the claimed range by hot working/hot-rolling, as a change in size is generally recognized as being within the level of ordinary skill in the art. See MPEP 2144.04.IV.A.
Pickens further discloses solution heat treating the product for one hour just below solidus and then water quenching, which reads on step e) requiring solution heat treatment at 490-530C for 15min-8 hours followed by quenching (Col. 6, lines 37-39; one of ordinary skill in the art would appreciate that just below solidus, for the alloys of Pickens, reads on the claimed range of 490-530C – see also Col. 7, line 54, solution treatment at 504C and Col. 12, lines 60-61, solution heat treatment at 510C);
stretching up to 12%, preferably for 4.5-7%, which reads on the claimed step f) requiring stress relief in a controlled manner with a permanent set of 1-7% (Col. 6, lines 38-49; see also Col. 7, line 57-58; Col. 1, line 59-61, one of ordinary skill in the art would appreciate that the stretching therefore reads on stress relieving – “straightening the product by plastic offset”); and
aging at 120-180C for 0.25-500 hours, preferably 4-24 hours, which reads on the claimed range of 130-170C and 5-100 hours of aging in step g) (Col. 6, lines 53-65).
Pickens discloses wherein the composition prepared by the metal bath comprises:
Element
Claim 1 (wt%)
Pickens (wt%)
Citation
Overlap
Cu
3.2-4.0
3.0-4.5
Table 1, most pref.
3.2-4.0
Li
0.80-0.95
0.7-1.1
Table 1, most pref.
0.80-0.95
Zn
0.45-0.70
0-0.75
Table 1, most pref.
0.45-0.70
Mg
0.15-0.7
0.3-0.6
Table 1, most pref.
0.3-0.43
Zr
0.07-0.15
0.01-1.0*
Col. 5, lines 43-45; Table 2, 0.14-0.17%
0.07-0.15
Mn
0.1-0.6
0.01-1.0*
Col. 5, lines 43-45
0.1-0.6
Ag
<0.05
0-0.6 (optional)
Table 1, most pref.; Table 2, 0%
0 to <0.05
Fe+Si
≤0.20
0.01-1.0 Fe*, 0% (silent) Si
Table 2, no Fe (0%), no Si (0%)
0-0.20
At least one of:
Ti
0.01-0.15
0.01-1.0*
Table 2, 0.02-0.04%
0.01-0.015
Sc
0.02-0.15
silent (0%)
Cr
0.02-0.3
0.01-1.0*
Col. 5, lines 43-45
Hf
0.02-0.5
0.01-1.0*
Col. 5, lines 43-45
V
0.02-03
0.01-1.0*
Col. 5, lines 43-45
Balance
Al
Al
Col. 3, line 52
*0.01-1.0% total grain refiners, including Fe, Zr, Mn, Cr, Hf and V (Col. 5, lines 43-45)
Regarding Zr, Fe, Mn, Cr, Hf and V, Pickens discloses these elements as grain refiners, in a preferred total amount of 0.01-1.0wt%, and discloses wherein compositions also preferably comprise a combination of Ti and Zr, with working examples comprising 0-0.04% Ti and 0.14-0.17% Zr (Col. 5, lines 4-52; Table 2, Ti and Zr values). Amounts of 0-0.04% Ti and 0.14-0.17% Zr read on the claimed amount of at least one of 0.01-0.15% Ti and 0.07-0.15% Zr. It would have been obvious to one of ordinary skill in the art to have used the range exemplified by the working examples of Pickens and which fall within the range of total amounts of grain refining elements.
Further, Danielou teaches including 0.3-0.5% Mn in order to produce manganese dispersoids from thermo-mechanical treatment, thereby avoiding stress localization and stress at grain boundaries, and contributing to low crack branching propensity (para. [0041]). One of ordinary skill in the art would appreciate that the thermo-mechanical treatment of Danielou is substantially similar to that of Pickens, and therefore the Mn range taught by Danielou is particularly applicable to Pickens (see Danielou, para. [0044]-[0046], comprising casting, homogenization at 470-510C for 2-30 hours, hot rolling (hot working), solution heat treatment at 490-540C for 15min to 4hours, quenching, stretching at 2-5%, and aging at 130-160C for 5-60 hours).
Additionally, while Danielou discloses a different range of Zn (0.05% or less – see Abstract), the Mn range and teachings of Danielou do not depend on interactions with the Zn content and Danielou does not provide a teaching for the Zn range. Thus, one of ordinary skill in the art would appreciate that the Mn range taught by Danielou is applicable to Pickens despite the different range of Zn by Pickens. Further, Danielou teaches 0.04-0.18% Zr and preferably 0.01-0.04% Ti (para. [0040]), which overlaps the values disclosed by Pickens (see above, and range of Zr and Ti used by Pickens in Table 2).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have comprised 0.3-0.5% Mn, as taught by Danielou, and 0-0.04% Ti and 0.14-0.17% Zr, as disclosed by Pickens, in order to produce manganese dispersoids from the thermo-mechanical treatment of Pickens, thereby avoiding stress localization and stress at grain boundaries, and contributing to low crack branching propensity (see teaching by Danielou), while also obtaining grain refining properties and recrystallization inhibition (Pickens, Col. 5, lines 42-52; see also para. [0040] of Danielou, wherein Ti is a grain refining element). The range of grain refining elements as taught above (Mn, Ti and Zr) would comprise a total amount of 0.44-0.71%, which lies within the range disclosed and desired by Pickens of 0.01-1.0% (see Col. 5, lines 42-43), and falls within the claimed ranges of 0.07-0.15% Zr, 0.1-0.6% Mn and at least one of 0.01-0.15% Ti.
Regarding Fe and Si, Pickens discloses wherein other elements and combinations thereof, including Fe, are optional (see Col. 5, lines 36-41), and thus are inclusive of 0%. Pickens is silent towards Si and therefore one of ordinary skill in the art would appreciate that the composition of Pickens comprises 0% Si. A composition which comprises 0% Si and 0% Fe, as disclosed by Pickens, reads on the claimed limitation of Fe+Si ≤ 0.20 (for example, see Table 2 compositions which comprise 0% Si and 0% Fe).
While Pickens does not expressly disclose wherein the other elements (see Col. 5, lines 36-37) are limited to <0.05 % each and <0.15% total, these additional elements are optional, and therefore inclusive of 0%, which reads on the claimed range such that other elements are <0.05% each and <0.15% total. Additionally, it would be obvious to one of ordinary skill in the art to limit impurities or unintentionally added elements to be as low as possible in order to reduce contamination and to reduce detrimental effects to properties.
Regarding the compositional ranges, in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 14, Pickens discloses stress relieving in a controlled manner by stretching from 4.5-7% and wherein the aging duration is 4-24 hours, which reads on the claimed limitations wherein a permanent set of stress relief (stretching) is between 5-7% and aging is between 10-30 hours (Col. 6, lines 38-49 and lines 60-64). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 19, Pickens discloses wherein the unwrought product is homogenized at a temperature of between 480-530C (Col. 6, line 33-34, 504C for 8 hours).
Regarding Claim 20, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a 40mm or more thick plate (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0049], 30-100mm). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Additionally, Examiner notes cold working is optional, and not required to meet the claim limitations.
Regarding Claim 21, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a plate at least 30mm thick, and further to one which is 100mm thick or greater, which reads on the claimed limitations requiring a thickness of 121-150mm in the aged product (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0050], more than 100mm; one of ordinary skill in the art would appreciate that the thickness in the hot-rolled plate is maintained through aging). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens and Danielou fail to disclose the claimed yield stress and the claimed toughness Kic values at the mid thickness in the claimed directions (ST and S-L, respectively); however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 121-150mm (see teaching by Danielou, 100mm thickness or greater).
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 22, Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kapp values in the claimed directions; however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 and Claim 21 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 121-150mm (see Claim 21; see teaching by Danielou,100mm or greater thickness).
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 23, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a plate at least 30mm thick, and further to one which is 100mm thick or greater, which reads on the claimed limitations requiring a thickness of 76-120mm in the aged product (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0049]-[0050], 30-100mm, or further, more than 100mm; one of ordinary skill in the art would appreciate that the thickness in the hot-rolled sheet is maintained through aging). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kic values at the quarter and/or mid thickness in the claimed directions; however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 76-120mm (see teaching by Danielou, 100mm thickness or greater).
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 24, Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kapp values in the claimed directions; however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 and Claim 23 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 76-120mm (see Claim 23; see teaching by Danielou, 30-100mm, or greater, thicknesses).
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 25, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a plate at least 30mm thick, and further to one which is 30-100mm thick, which reads on the claimed limitations requiring a thickness of 40-75mm in the aged product (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0049], 30-100mm thick; one of ordinary skill in the art would appreciate that the thickness in the hot-rolled sheet is maintained through aging). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kapp values in the claimed directions; however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 40-75mm (see teaching by Danielou, 30-100mm thickness).
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 26, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a plate at least 30mm thick, and further to one which is 100mm thick or greater, which reads on the claimed limitations requiring a thickness of 76-150mm in the aged product (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0049]-[0050], 30-100mm, or further, more than 100mm; one of ordinary skill in the art would appreciate that the thickness in the hot-rolled sheet is maintained through aging). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kic values at the quarter and/or mid thickness in the claimed directions; however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 76-150mm (see teaching by Danielou, 100mm thickness or greater).
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 27, Danielou discloses wherein the unwrought product is hot worked by hot rolling into a plate at least 30mm thick, and further to one which is 100mm thick or greater, which reads on the claimed limitations requiring a thickness of 76-150mm in the aged product (para. [0045], hot rolling to produce a plate of at least 30mm; para. [0049]-[0050], 30-100mm, or further, more than 100mm; one of ordinary skill in the art would appreciate that the thickness in the hot-rolled sheet is maintained through aging). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Pickens and Danielou fail to disclose the claimed yield stresses and the claimed toughness Kic values at the quarter and/or mid thickness in the claimed directions for the claimed thickness (76-120mm or 121-150mm); however, the process and composition of Pickens and Danielou are the same as claimed (see Claim 13 above) and it would be obvious to one of ordinary skill in the art that the invention of Pickens and Danielou comprise the claimed features when manufactured to a thickness of 76-120mm or 121-150mm (see teaching by Danielou, 100mm thickness or greater).
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.
Response to Arguments
Applicant's arguments filed October 28, 2025 have been fully considered but they are not respectfully not found persuasive. Applicant argues that the amended feature, <0.05% Ag, presents unexpected mechanical strength and damage tolerance, as demonstrated by alloys 54-57 of the instant invention (Alloys 54-55 are comparative with 0.13% Ag and Alloys 56-57 are inventive with 0% Ag).
This argument is not found persuasive.
Sufficient data, inside and outside the claimed range, has not been presented in order to show unexpected results. Only two values of Ag are shown, 0% and 0.13%, which is not enough data points inside and outside of the claimed range. Additionally, these alloys (see tables 2-3, remarks, pg. 10-11) show extremely similar or even overlapping yield strength and toughness values at 50mm (comparative alloys range 490-495 MPa and 32.8-33.6 Kic and inventive alloys range 481-499 MPa and 33.8-38 Kic) and at 121mm (comparative alloys range 467-489 MPa and 25.9-30.7 Kic and inventive alloys range 466-479 MPa and 29.8-31.8 Kic). Additionally, the data points of comparative alloy 54 and 55 appear to be very similar with inventive alloy 56 in Fig. 2 in the remarks (pg. 11), and alloy 55 appears to be very similar to inventive alloy 56 and 57 in Fig. 4 of the remarks (pg. 12). Thus, the claimed range of silver does not appear to show unexpected results as 0% and 0.13% Ag appear to produce similar properties.
Applicant argues that alloys 58-59 and 61-62 further demonstrate that alloys with 0% Ag and those comprising Zn have better uniformality and stability of yield strength.
These arguments are not found persuasive.
Firstly, Pickens discloses the claimed range of Zn. Further, Alloy 59 comprises no Zn and is therefore not commensurate in scope with the claims. Alloy 58 and 61 (0% Ag) and comparative Alloy 62 (0.14% Ag) only provide 3 data points, and there are insufficient data points inside and outside of the claimed range of <0.05% Ag to show unexpected results. In comparison of Alloys 58 and 61 to comparative Alloy 62, comparative alloy 62 comprises substantially similar yield strength values to alloy 61 and substantially similarly Kic values to alloy 58 (see Fig. 6 of Remarks, Pg. 13). Therefore, the claimed properties do not appear to be unexpected based on the Ag content, and the claimed range of Ag does not appear to be critical.
Applicant argues that Pickens is silent towards yield strength data in the claimed (L-T) direction, and does not demonstrate the effects of lowering Ag content.
Applicant argues that one of ordinary skill in the art would have no reason to comprise 0% Ag from the disclosure of Pickens or Danielou.
Specifically, Applicant argues that the claimed features are not foreseeable from the teachings of Pickens and Danielou because Pickens discloses a broad range of 0-0.6% Ag, does not instruct one of ordinary skill in the art to limit Ag to less than 0.05%, and because Pickens teaches that the presence of Ag does not affect the cryogenic fracture toughness trend and that Ag improves strength. Applicant similarly argues that Danielou teaches Ag is beneficial.
These arguments are not found persuasive.
Both Pickens and Danielou disclose wherein Ag may be 0% and wherein Ag is an optional element (also reads on 0%), and Danielou acknowledges that Ag is a costly element and economically prohibitive (para. [0042]). Applicant has not sufficiently shown unexpected results for the claimed Ag range (see above), and therefore, the disclosure of Pickens and Danielou, which includes 0% Ag, reads on the claimed invention and claimed range of <0.05% Ag.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding the claimed yield strength in the (LT) direction, the composition and method steps of Pickens in view of Danielou are the same as claimed, and it would be expected that Pickens and Danielou comprise the claimed features. Further, Applicant has not shown that the alloy of Pickens in view of Danielou would not achieve the claimed properties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Boselli (cited by Applicant in IDS filed May 30, 2024, US 20120225271 A1): teaches including 0.05-0.50wt% of at least one of Zr, Sc, Cr, V and Hf in order to form solid state second phase particles, thereby controlling solid state grain structure during thermal processes such as recovery and recrystallization. Boselli teaches wherein values are chosen to maintain the elements below maximum solubility, and wherein 0.07-0.15wt% Zr is included (para. [0011]-[0012]). Boselli also teaches adding up to 0.15wt% Ti in order to refine the as-cast grain structure, and including at least 0.1wt% Mn and not greater than 0.6wt% Mn in order to refine the grain structure by forming manganese dispersoids and to enhance the strength when in solid solution (para. [[0013]; para. 0010]).
Boselli discloses including 0.40-0.50% Zn, and wherein Si and Fe are considered impurities (para. [0009]; para. [0014]). Boselli also teaches rolling ingots into plates and comprising thickness from at least 50.8mm and up to 152.4mm, in order to achieve improved properties (para. [0004]; para. [0020]).
Danielou (cited above, additional teachings): teaches wherein Ag is high cost and economically prohibitive (para. [0042]). Therefore, it would have been obvious to one of ordinary skill in the art to exclude the optional element Ag from the composition of Pickens, because Pickens already discloses wherein the amount may be 0%, and further in order to reduce the cost of the alloy.
Danielou teaches homogenization at 470-510C for 2-30 hours in order to form dispersoids and to prepare for an efficient solution heat treatment while preventing a higher propensity to crack branching (para. [0012] and para. [0044]).
Pickens (cited above, additional teachings): teaches wherein Zn provides beneficial effects such as increased aging response and increased strength without affecting cryogenic fracture toughness (Col. 11, lines 61-63; Col. 18, line 64-Col. 19, line 5).
Yanar (cited by Applicant in IDS filed May 30, 2024, US 20110247730 A1): teaches including 0.4-0.75% Zn in order to improve strength differentials during aging while balancing for density (para. 0015]).
Rioja (cited by Applicant in IDS filed May 30, 2024, US 20040071586 A1): teaches an alloy with a similar composition (Mg is about 0.5), wherein plates for aerospace applications are 0.25” to 8”, and up to 4” (101.mm) for wing applications (para. [0030]).
Rioja also teaches a substantially similar process wherein rolled plates are formed by casting from a melt, homogenizing at 905-970F (485-520C) with a soak time of 20 hours, hot rolling, solution heat treatment at 970 (520C) for 2 hours followed by quenching in room temperature water (cold water quenching), stretching at 4%, and aging at 310F (154C) for 24 hours (para. [0046]-[0050]). Rioja teaches wherein an alloy made by this process comprises improved combinations of fracture toughness and strength while exhibiting good fatigue crack growth resistance.
Additionally, Rioja demonstrates wherein these steps are suitable for an alloy composition which overlaps with the compositions taught by Pickens.
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 CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached on Monday - Friday 9:00-4:00 MT.
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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