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 .
Election/Restrictions
Applicant's election with traverse of group III in the reply filed on 3/27/26 is acknowledged. The traversal is on the ground(s) that groups I-IV can be searched together without undue burden. This is found partially persuasive. Groups I and II can be searched together without undue burden, and groups III and IV can be searched together without undue burden. With respect to searching (I & II) together with (III & IV), it is maintained that there is a serious burden on the examiner if restriction is not required (see restriction requirement for details).
Claims 10-12 are examined herein (groups III & IV).
Withdrawn claims 1-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected (groups I and II), there being no allowable generic or linking claim.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 101/112
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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.
Claim 12 is rejected under 35 U.S.C. 101 because the only method step of the instant claims is “using”, which does not properly define a statutory class of subject matter (see Ex parte Dunki, 153 USPQ 678), MPEP 2173.05(q). Appropriate correction is required.
Claim 12 is also rejected under 35 U.S.C. 112(b). Claiming a process without setting forth any steps involved in the process raises an issue of indefiniteness under 35 U.S.C. 112(b), because a process without any steps is indefinite; see MPEP 2173.05(q). Claims dependent on the above rejected claim are likewise rejected under this statute. Appropriate correction is required.
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 10-11 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c).
In the present instance, claim 10 line 5 recites the broad recitation “casting the melt into an ingot”, and the claim also recites “preferably by DC casting” which is the narrower statement of the range/limitation. Claim 10 line 8 recites the broad recitation “cold rolling the hot strip to form a cold strip of final thickness”, and the claim at lines 9-10 also recites “preferably being in the range 0.20-0.24 mm” which is the narrower statement of the range/limitation.
Claim 11 line 2 recites the broad recitation “at least 5 wt.%”, and the claim also recites “preferably at least 30 wt%” which is the narrower statement of the range/limitation.
The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims dependent on the above rejected claims are likewise rejected under this statute. 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 10 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2015/125791 (WO’791), cited on IDS dated 7/26/24.
WO’791 teaches a method of casting an Al-Mg alloy comprising (in wt%):
Instant cl. 1
WO’791
Mg
3.0-5.0
3.8-5.5
Mn
0.20-1.4
0.01-0.6
Fe
0.15-0.8
0.1-0.5
Si
0.03-0.6
0.05-0.3
Cu
0.02-0.25
-0.3
Cr
-0.1
-
Zn
-0.25
-
Ti
-0.10
-
balance
Al and ≤0.05%ea impurities
≤0.15% total impurites
Balance aluminum and unavoidable impurities
Table 1: instant alloying ranges vs. prior art of WO’791
which overlaps the claimed alloying ranges. With respect to the impurity maximum of ≤0.05%ea and ≤0.15% total, WO’791 teaches impurities are ≤0.05% each [0020]. It would have been within the level of one of ordinary skill in the art to have minimized the total amount of impurities to within the claimed ≤0.15% total in order to preserve the properties of the Al-Mg product (as taught by WO’791 at [0020]).
WO’791 teaches a process of casting and ingot, homogenizing, hot rolling, cold rolling, intermediate annealing, cold rolling to a final thickness typically 0.215 mm (1st embodiment) and optionally painting (see WO’791 at [0023-0024], 1st embodiment), which meets the instant process steps and falls within the claimed thickness range. It is held to be within the level of one of ordinary skill in the art to have cast said alloy from the molten state, given the disclosure of WO’791 (see [0023-0024]).
Because WO’791 teaches a substantially identical process of subjecting an overlapping Al-Mg alloy to casting, homogenizing, hot rolling, cold rolling, intermediate annealing, and painting to form a rolled workpiece with a thickness within the claimed thickness, it is held that WO’791 has created a prima facie case of obviousness of the presently claimed invention.
Concerning claim 12, WO’791 teaches said process of forming said Al-Mg alloy into a rolled workpiece is usable to provide rolled stock for can lids (abstract), and therefore meets the instant limitations.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over WO’791 in view of Selepack (US 2023/0227952), cited herein.
WO’791 is discussed in paragraphs above. WO’791 does not specify using scrap to form the molten Al-Mg alloy composition. However, Selepack teaches using 20-35% recycled materials with the remainer prime constituents to form a melt composition intended for Al-Mg container body, end, and tab stock [0008]. It would have been obvious to one of ordinary skill in the art, before the effective filing date of the instant invention, to have formed the Al-Mg alloy taught by WO’791 with 20-35% scrap material in order to reduce the need for prime materials and reduce the environmental impact [0013].
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 7/16/26
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