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
Pending:
1, 3, 4
Withdrawn:
NONE
Rejected:
1, 3, 4
Amended:
1, 4
New:
NONE
Independent:
1
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.
(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.
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 and 4 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2002-180173A (JP’173, translation cited herein).
JP’173 teaches (see abstract, etc.) an aluminum alloy rolled sheet product said alloy comprising (in wt.%):
Claim 1
cl. 4
JP’173
JP’173 ex. 1, Table 1
Si
0.20-0.40
0.20-0.40
0.25-0.45
0.30
Fe
0.29-0.70
0.30-0.70
0.35-0.6
0.45
Cu
0.11-0.40
0.11-0.40
0.25-0.45
0.37
Mn
0.7-1.2
0.7-1.2
0.9-1.2
0.99
Mg
2.1-4.0
2.1-3.0
2.0-3.5
2.60
balance
Al and impurities
Al and impurities
Al and impurities
Table 1: instant claims vs. prior art of JP’173
which overlaps the claimed alloying ranges of Si, Fe, Cu, Mn, Mg, and balance aluminum and impurities (including the amended Mg minimum of 2.1%). Further, Example 1 of JP’173 falls within the amended alloying ranges of Si, Fe, Cu, Mn, Mg, and aluminum (see JP’173 at Table 1, see above Table 1 for comparison with JP’173). JP’173 teaches said alloy sheet is suitable for production of aluminum cans (translation [0004]), which includes and therefore meets the instant intended use limitation of “aluminum alloy sheet for a can lid”.
Concerning the limitation of a “paint-baked coating” (independent claim 1), JP’173 teaches the application of a “coating and baking a resin paint” – which meets said limitation.
JP’173 (at Table 2, page 6) teaches Example 1 exhibits: UTS =377 MPa, YS= 336 MPa, and therefore σfm=344 MPa. Therefore, the equation in instant claim 1:
σ
f
m
(
Y
S
U
T
S
)
=
356.5
M
P
a
(
336
377
)
=
400
M
P
a
wherein 400 MPa meets the claimed minimum of ≥350 MPa.
JP’173 does not specify a) the total area of Mg2Si particles with an area ≥0.3µm2 is ≤1.0 area% (cl. 1) or b) the relationship of H0p, H45p, and Hv (instant claim 3). However, though JP’173 does not specify the claimed microstructural characteristics (cl. 1) or properties (cl. 3), because JP’173 teaches an example with alloying ranges that fall within the claimed ranges processed by substantially identical process steps of casting an ingot, homogenizing, hot rolling, cold rolling, and application of a baked coating (see translation of JP’173 p 4, see discussion above of baked coating), then substantially the same properties (such as H0p, H45p, and Hv) and microstructure are inherently expected for the rolled alloy product of the prior art, as for the instant invention. Therefore, it is held that JP’173 anticipates the instant invention. Alternatively, because of the overlap in alloying ranges together with substantially identical processing taught by the prior art (wherein the claimed microstructure and properties are expected to be present, due to such), is held that JP’173 has created a prima facie case of obviousness of the presently claimed invention.
Overlapping ranges have been held to establish 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).
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 dependent claim 3, see above discussion of H0p, H45p, and Hv properties.
Concerning dependent claim 4, as set forth above, JP’173 teaches overlapping alloying ranges (see Table 1 for comparison).
Response to Amendment/Arguments
In the response filed 3/2/26, applicant amended claims 1, 3, and 4, and submitted various arguments traversing the rejections of record. No new matter has been added.
The instant amendments have overcome the previous rejections in view of JP’149 and CN’111, who do not teach or suggest an Al-Mg alloy with the amended range of Mg. The closest prior art to the amended claims is held to be JP 2002-180173A (JP’173) as set forth above.
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 3/11/26