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 .
Information Disclosure Statement
It is noted that the information disclosure statement (IDS) filed 3/13/2024, cited three Foreign Patent Documents (FPD), see FPD #3, 7, and 8, wherein the copies thereof submitted with the IDS appear incomplete. The three references, being relevant to Applicant’s disclosure, have been considered by the Examiner and are cited on the attached PTO-892 with a complete copy of each reference included with this office action.
Drawings
The drawings are objected to for the following reason(s): Figure 7 should be designated by a legend such as --Prior Art-- because only that which is old is illustrated. See MPEP § 608.02(g). Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-6 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. Independent claims 1 and 3 recite, “a composition of the aluminum alloy member comprising: Mg: 1.2 mass% to 4.5 mass%; and Si: 0.2 mass% to 1.0 mass%, wherein an excess Mg concentration is 0.5 mass% or more” (emphasis added), however, given that the amounts do not add to 100% and that the claims do not clearly recite a basis for said mass%, e.g., relative to the mass of the aluminum in the alloy, based upon the total mass of all components of the aluminum alloy, etc., one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
In addition, dependent claims 2 and 4, which depend upon claims 1 and 3, respectively, recite that “the composition further comprises Cu: 0.40 mass% or less, Fe: 0.7% or less, Mn: 0.15 mass% or less, Cr: 0.35 mass% or less, and the balance being Al and inevitable impurities” (emphasis added), however, given again that the claims do not clearly recite a basis for the mass percentages and do not specifically require the recited amounts to total 100% such that “the balance” is unclear, especially in light of the open transitional language of “comprises” in claims 2 and 4 and “comprising” in claims 1 and 3, dependent claims 2 and 4 are further indefinite given that one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
Similarly, dependent claim 5 recites, “The aluminum alloy member having a fluoride coating, as recited in claim 3, wherein a surface Mg concentration is 4.0 mass% or more”, however, it is unclear as to what surface the recited “surface Mg concentration” refers and on what basis.
Dependent claim 6, which is dependent upon claim 1, does not remedy the above, and hence is indefinite for the same reasons as discussed above with respect to independent claim 1.
Claim Interpretation
For examination purposes with respect to prior art, the Examiner has assumed that the recited mass% values may be calculated on any basis. It is also noted that given that both the claimed Mg and Si concentrations are recited in independent claims 1 and 3 to only one significant figure following the decimal point (versus two significant figures as in claims 2 and 4 and/or as in Table 1 of the instant specification), values disclosed by the prior art that are reported with two or more significant figures will be rounded by the Examiner to a value of one significant figure as in instant claims 1 and 3. Hence, the Examiner takes the position that a prior art reported value of 0.17 mass% would be rounded to 0.2 mass% (one significant figure) and would thus read upon the claimed 0.2 mass% content of Si of instant claims 1 and 3, as would be clearly interpreted by one having ordinary skill in the art.
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 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jogan (JP2003-119539A, please refer to the attached machine translation for the below cited sections). Jogan discloses an aluminum alloy for film formation treatment and an aluminum alloy material having excellent corrosion resistance suitable for use as a material in a semiconductor manufacturing device (Abstract, Paragraphs 0001, i.e., “being designed for use as a component in a semiconductor production apparatus” as in the instantly claimed invention), wherein the aluminum alloy material having excellent corrosion resistance comprises “an aluminum alloy base material containing 0.2 to 1.0 wt% Si and 0.3 to 2.0 wt% Mg, with the contents of Fe, Cu, Mn, Cr, Zn and Ni as impurities restricted to 0.1 wt% or less, with the remainder being Al and other impurities, and having a corrosion-resistant coating formed on the surface thereof” (Paragraph 0012, falling within or overlapping the claimed mass% ranges of instant claims 1-4) which “is preferably a single coating of an anodized coating or a fluoridation coating, or a composite coating of Ni-P plating and fluoridation, or a composite coating of anodized coating and fluoridation” (Paragraph 0013). Jogan discloses that “[p]referably, the aluminum alloy base material contains Si at 0.4 to 0.7 wt%, Mg at 0.5 to 1.5 wt%, and Fe, Cu, Mn, Cr, Zn, and Ni at 0.05 wt% or less” (Paragraph 0014), wherein both Si and Mg are elements that improve strength, and that “[f]urthermore, Mg has the effect of forming a fluoride passivation film together with fluorine when fluorination treatment is carried out, and also of improving machinability” (Paragraph 0019). Jogan also discloses that “the composite coating is recommended because the combination of different types of coatings can synergistically improve corrosion resistance” (Paragraph 0022), wherein when a composite film is formed by anodizing and fluoriding, the anodizing is performed to form an anodizing film and then the fluoriding is performed (i.e., sequentially as in instant claim 6) resulting in a composite film consisting of an anodic oxide film and a fluoride passivation film (Paragraph 0028). Jogan specifically discloses working examples wherein the aluminum alloy composition contains Mg, Si, Cu, Fe, Mn, Cr, and a balance of Al and inevitable impurities (e.g., Zn, Ni, and Ti less than 0.03wt%), falling within the claimed ranges as recited in instant claims 1-4 (based on a total mass/weight of the alloy of 100%) and an “excess Mg concentration” (calculated as equal to [Mg concentration in the alloy] – 1.73 x [Si concentration in the alloy] as in the instant invention) being 0.5 mass% or more as recited in instant claims 1 and 3 (Examples, see particularly Paragraphs 0033 and 0037, Table 1 on page 6, at least Alloy Nos. 2, 3, 5, and 6); with one working example having a fluoride only coating (No. 11), one working example having a Ni-P plating/fluoride composite coating (No. 12), and one working example (No. 13) demonstrating the method for forming the preferred anodized/fluoride composite coating (as in instant claim 6). Hence, the Examiner takes the position that Jogan discloses the claimed invention with sufficient specificity to anticipate instant claims 1-4 and 6.
With respect to instant claim 5, if the claimed surface Mg concentration is meant to refer to a concentration of Mg at a surface of the fluoride coating of the aluminum alloy member, then the Examiner notes that the magnesium fluoride (MgFl2) passivation film disclosed by Jogan formed on the surface of the aluminum alloy material by the fluoriding treatment would inherently have a surface Mg concentration of 4.0 mass% or more as instantly claimed, and hence Jogan also anticipates instant claim 5.
Claims 1-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murase (WO2020/008704A1, please refer to US2021/0317551A1 as an English language translation of the WO document for the below cited sections). Murase discloses “an aluminum alloy member for forming a fluoride film thereon…for use in a semiconductor producing apparatus [that] consists of Si: 0.3 mass % to 0.8 mass %; Mg: 0.5 mass % to 5.0 mass %; Fe: 0.05 mass % to 0.5 mass %; Cu: 0 mass % or more and 0.5 mass % or less; Mn: 0 mass % or more and 0.30 mass % or less; Cr: 0 mass % or more and 0.30 mass % or less 0.5 mass % or less; and the balance being Al and inevitable impurities” (Abstract, falling within and/or overlapping the claimed ranges as recited in instant claims 1-4 based on 100 mass%). Murase discloses that the fluoride film (2) is formed on the aluminum alloy member (1) by first subjecting the aluminum alloy member (1) to an anodizing process to form an anodic oxide coating thereon, and then a fluorine treatment is performed on the aluminum alloy member after the formation of the anodic oxide coating to form a fluoride film (2) (as in instant claim 6) having a first film layer (3) containing magnesium fluoride and a second film layer (4) containing aluminum fluoride and aluminum oxide (Paragraphs 0029-0032 and 0063-0065; Examples). Murase specifically discloses at least one example having a composition as recited in instant claims 1-4 with an excess Mg concentration of greater than 0.5 mass% (see particularly, Example 3 wherein the aluminum alloy contains 0.30 mass% Si, 1.15 mass% Mg that rounded to one significant figure as in the claimed invention equals the claimed 1.2 mass%, an excess Mg concentration of greater than 0.6 mass% as in instant claims 1 and 3, and 0.20 mass% Cu, 0.10 mass% Fe, 0.03 mass% Mn, and 0.05 mass% Cr, with a balance being Al and inevitable impurities as in instant claims 2 and 4) and provided with an anodized oxide coating and a fluoride film provided thereon as in instant claims 3-4, by a method as in instant claim 6, and given that a surface of the first film layer of magnesium fluoride would have a surface Mg concentration as recited in instant claim 5, the Examiner takes the position that Murase discloses the claimed invention with sufficient specificity to anticipate instant claims 1-6 (Examples, Table 1).
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wada (USPN 6,686,053, also printed as JP2003-034894A1). Wada discloses an aluminum alloy member having excellent corrosion resistance for a vacuum chamber or parts used in the inside thereof, which are employed for the manufacturing process of semiconductors (Abstract, Col. 1, lines 7-17; Col. 8, lines 36-59), wherein the aluminum alloy member comprises an aluminum alloy substrate and an anodic oxide film thereon, with at least one example aluminum alloy, A02, containing 0.2 mass% Si (falling within the claimed 0.2 to 1.0 mass% Si range), 3.2 mass% Mg (falling within the claimed 1.2 to 4.5 mass% Mg range), thus an “excess Mg concentration” (calculated as equal to [Mg concentration in the alloy] – 1.73 x [Si concentration in the alloy] as in the instant invention) of greater than 0.5 mass% as in instant claim 1, 0.1 mass% Cu, with the balance being Al and inevitable impurities (as in instant claim 2, Table 1); and given that the claimed “for forming a fluoride coating thereon” in the preamble of instant claims 1-2 constitutes intended end use of the aluminum alloy member and does not actually require the aluminum alloy member to have the fluoride coating thereon (e.g., as in instant claims 3-4), the Examiner takes the position that Wada anticipates instant claims 1-2.
Claim Rejections - 35 USC § 103
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.
Alternatively, claims 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Murase. The teachings of Murase are discussed in detail above and although the Examiner takes the position that the reference is anticipatory with respect to instant claims 1-6, especially given that the claimed mass% values of Si and Mg of instant claims 1 and 3 are recited with only one significant figure after the decimal, the Examiner alternatively takes the position that the claimed invention would have been obvious over the teachings of Murase given the mass% ranges taught by Murase and the working examples, and especially given that per MPEP § 2144.05, “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)...Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)”.
Claims 3-6 are rejected under 35 U.S.C. 103 as being unpatentable over Wada, as applied above to claims 1-2, and in further view of Jogan. The teachings of Wada are discussed in detail and although Wada clearly teaches that the anodized aluminum alloy member has excellent corrosion resistance and is suitable for use in producing parts for inside of a vacuum chamber employed for the manufacturing process of semiconductors as discussed in detail above, Wada does not teach that the aluminum alloy member has a fluoride coating on a surface thereof as recited in instant claims 3-5 or is subjected to a method to form a fluoride coating thereon as in instant claim 6. However, Jogan teaches a similar aluminum alloy member, as discussed in detail above (and incorporated herein by reference), that is also suitable for use as a material in a semiconductor manufacturing device, as in Wada, wherein Jogan similarly teaches that a corrosion-resistant coating is formed on the surface thereof, with the coating preferably being a single coating of an anodized coating (e.g., as in Wada) or a fluoridation coating, or a composite coating of Ni-P plating and fluoridation, or a composite coating of anodized coating and fluoridation (Paragraph 0013). Jogan further teaches that “the composite coating is recommended because the combination of different types of coatings can synergistically improve corrosion resistance” (Paragraph 0022), wherein when a composite film is formed by anodizing and fluoriding, the anodizing is performed to form an anodizing film and then the fluoriding is performed (i.e., sequentially as in instant claim 6) resulting in a composite film consisting of an anodic oxide film and a fluoride passivation film (Paragraph 0028). Hence, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to further provide a fluoride passivation film as taught by Jogan after forming the anodic oxide film in the invention taught by Wada to further or synergistically improve the corrosion resistance as taught by Jogan. Hence, instant claims 3-4, which recite the same aluminum alloy composition as recited in instant claims 1-2, as well as instant claim 6 directed to the anodization/fluoridation process of the aluminum alloy of instant claim 1 would have been obvious over the teachings of Wada in view of Jogan.
With respect to instant claim 5, if the claimed surface Mg concentration refers to a concentration of Mg at a surface of the fluoride film, then the Examiner takes the position that the claimed invention would have been obvious over the teachings of Wada in view of Jogan given that one having ordinary skill in the art would have reasonably expected the Mg concentration of the fluoride film taught by Wada in view of Jogan, which is produced by the same process as in the instant invention to be greater than 4.0 mass% as instantly claimed.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Waldfried (US2021/0198788A1) discloses a metal body made of a magnesium-containing metal, particularly a magnesium-containing aluminum alloy, for forming a magnesium fluoride coating thereon, and designed for use as a component in a semiconductor production apparatus; wherein the fluoride coating is preferably formed on a naturally-oxidized surface of the metal alloy, and in one embodiment, the metal alloy is an aluminum alloy comprises: from 95 to 99 weight percent aluminum; from 0.8 to 1.2 weight percent magnesium; from 0.4 to 0.8 weight percent silicon; not more than 0.7 weight percent iron; from 0.15 to 0.4 weight percent copper; and from 0.04 to 0.35 weight percent chromium.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787