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 19 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.
Claim 19 refers to a “first hold temperature” twice, and references two different ranges of temperatures, which renders the claim indefinite. The second reference to a “first hold temperature” appears to be a typographical error, likely intending “second hold temperature”. For the purposes of this office action, the second reference to “first hold temperature” is interpreted as such. Appropriate correction is required.
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 1-3, 5-17, 19, 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura (US 2007/0017605).
Nakamura [0022-0028] teaches an extruded multi-hole pipe and a process of forming such, said pipe formed from a composition (in wt%):
Claim 1
Claim 7
cl. 17
Claim 20
Nakamura
Si
-2.00*
-2.00*
0.20-2.00 (cl. 8)
0.70-2.00
-2.00*
0.4-0.8
Fe
-0.60*
-0.60*
0.10-0.60 (cl. 10)
0.15-0.50
-0.60*
-0.7
Cu
-0.60*
-0.60*
0.05-0.60 (cl. 11)
-0.60*
-0.05
0.03-0.40 (cl. 12)
Mn
-2.00*
-2.00*
0.40-2.00 (cl. 9)
1.00-2.00
-2.00*
0.8-1.6
Mg
-0.40*
-0.40*
0.05-0.30
-0.40*
-0.2
Cr
-0.10*
-0.10*
0.01-0.10 (cl. 13)
0.02-0.10
-0.10*
-0.25% total Zn, Cr, Zr, Ni
Zn
-1.50*
-1.50*
0.05-1.50 (cl. 14)
0.10-1.00
-1.50*
Ti
-0.10*
-0.10*
0.005-0.10 (cl. 15)
0.005-0.10
-0.10*
-0.3
B
-0.10*
-0.10*
0.005-0.10 (cl. 16)
-0.10*
-0.01
Si+Mn
≤3.20
≤3.20
≤3.20
Si<Mn
bal. Al and impurities
Si<Mn
Si<Mn
*=one or more elements
*=one or more elements
*=one or more elements
*=one or more elements
Table 1: composition of aluminum alloy formed into pipe of claims vs. Nakamura
which overlaps or touches the boundary of the alloying ranges of instant claims 1, 7-17, and therefore meets the instant composition limitations. Nakamura teaches ranges of Si and Mn that meet the instant Si<Mn limitation, as well as Mn+Si≤3.20%, and therefore meets said limitations. Nakamura further teaches a heat treatment is performed on said alloy, post casting and prior to extrusion, said heat treatment comprising steps of:
Instant cl. 1
cl. 19
Instant cl. 20
Nakamura [0017-0018]
1st homogenization
550-650°C time ≥2 hr
1st: 580-620°C
550-650°C time ≥2 hr
550-650°C for time≥2 hr
Cooling rate
20-60°C/hr (cl. 2)
20-60°C/h
Heating rate
(Cooled to T<2nd homog. then heated at rate)
20-60°C/hr (cl. 3)
20-60°C/h
2nd homogenization
450-540°C time ≥ 3 hr
2nd: 450-540°C
450-540°C time ≥ 3 hr
400-500°C for time≥3 hrs
Table 2: Nakamura process steps vs. prior art
which overlaps the claimed 1st homogenization temperature and holding time, cooling rate, heating rate, and 2nd homogenization parameters (cl. 1-3, 19, 20). Because of the overlap in alloying ranges as well as processing steps and parameters, it is held that Nakamura 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 2-3, 19, 20, as set forth above in Table 2, Nakamura teaches overlapping processing steps and parameters, and therefore meets the instant limitations.
Concerning claim 5, Fig. 1 of Nakamura shows a multi-hold-pipe with a cross-sectional shape exhibiting a width to thickness ratio between 2-50. More particularly, using the scale as shown on Fig. 1 of Nakamura, the thickness is approx. 1.3 mm and the width approx. 120 mm, which leads to a width/thickness ratio of 12.3, which falls within and therefore meets the instant range.
Concerning claim 6, Fig. 1 of Nakamura shows the outer-wall portions that partitions an exterior space from an interior space is approx. 0.3 mm (given the scale on Fig. 1 of Nakamura), which meets the instant range.
Claims 4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nakamura as applied to claims above, and further in view of “Rolling Aluminum: from the Mine through the Mill”, p 1-1 to 12-1.
Nakamura is discussed in paragraphs above. Nakamura does not specify using scrap to form the alloy ingot, to be further processed by heat treating and extrusion. However, “Rolling Aluminum: from the Mine through the Mill” teaches it is well known to use scrap (in-house scrap as well as recycled products) when casting aluminum alloy ingots in order to use 95% less energy than making new aluminum (see page 2-7). It would have been obvious to one of ordinary skill in the art, given the disclosure of “Rolling Aluminum: from the Mine through the Mill”, to have used scrap (such as at least 45% scrap, cl. 18) together with supplementing with alloying elements, in order to form the Al-Mn alloy ingot of Nakamura, thereby saving energy and money (as taught by “Rolling Aluminum: from the Mine through the Mill” at 2-7).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure, but is considered no more analogous to the instant claims than the applied prior art (see rejections supra).
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
