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 .
DETAILED ACTION
Claims 5, 7-8, 14, and 19 have been cancelled; claims 1, 4, 6, 9, 11-13, 15-18, 20, and 22-25 have been amended; Claims 27-30 are added as new claims; and Claims 1-4, 6, 9-13, 15-18, 20, and 22-30 remain in examination, wherein claim 1 is an independent claim.
Previous Claim Objections/Rejections
Previous rejection of claims 1-26 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
Previous rejection of claims 4, 6, 11-12, 16-18, 20, and 23-24 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
Previous rejection of claims 1, 3, 5, and 25-26 under 35 U.S.C. 102 (a)(1) as being anticipated by Zajac et al (US-PG-pub 2013/0202477 A1, thereafter PG’477) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
Previous rejection of Claim(s) 2, 7-10, and 21-22 under 35 U.S.C. 103 as being unpatentable over PG’477 is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
Previous rejection of Claim(s) 13-15 and 19 under 35 U.S.C. 103 as being unpatentable over PG’477 in view of Sun et al (CN 110846539 A, with on-line translation, thereafter CN’539) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
Previous rejection of Claims 1-26 on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026.
In view of the Applicant’s “Arguments/Remarks with amendment” filed on 9/23/2026, newly cited reference(s), and reconsideration, a new ground rejection is listed as following:
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 17 and 29 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, claims 17 and 29 depends on claim 13. It is noted that the claimed cooling rate in claims 17 and 29 have no proper up limit, which is outside the cooling-rate range in claim 13. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Proper amendment is necessary.
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.
Claim(s) 1-4, 6, 9-12, and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Zajac et al (US-PG-pub 2013/0202477 A1, updated as US 10,661,338 B2, thereafter PG’477).
Regarding claims 1-4, 11-12, and 27, PG’477 teaches a 6xxx aluminum alloy manufactured by extruding for application such as suspension part in a car, for which damage intolerant material has an adverse effect on the fatigue performance of the component. (Abstract, examples, claims, and par.[0027] of Pg’477). The comparison between the claimed alloy composition and the example #A in table 1 of PG’477 is listed as following. All of the essential alloy composition ranges, and Sieff/Mg disclosed by example #A in table 1 of PG’477 are within the claimed composition ranges. It is noted that the Mg, Ti and Ti + V range disclosed by the example #A in table 1 of PG’477 are outside the claimed ranges. However, PG’477 indicates adjusting ranges of 0.3-1.5 wt% Mg; 0-<0.2wt% Ti (claims and par.[0031]-[0043] of PG’477), which overlaps the claimed Mg and Ti ranges. Overlapping in Mg and Ti ranges creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Mg and Ti amounts from the disclosure of PG’477 since PG’477 teaches the same 6xxx aluminum alloy as claimed throughout whole disclosing range. The value of 0.13wt% of (Ti + V) disclosed by the example #A in table 1 of PG’477 is very close to the low limit of 0.14 wt% of (Ti + V) as claimed in the instant claim, which creates a prima facie case of obviousness. MPEP 2144 05 I. Furthermore, the claimed (Ti + V) value (cl.1 and 4) is considered as a general formula. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Ti and V from PG’477 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Element
From instant Claims 1-4, 11-12, and 27 (wt %)
#A in table 1 of PG’477 (wt %)
Within range
(wt %)
Mg
0.55-0.75
0.83
Adjusting: 0.3-1.5
--
Overlapping: 0.55-0.75
Si
0.40-0.65
0.61
0.61
Ti
0.07-0.15 (cl.1)
0.07-0.12 (cl.2)
0.05
Adjusting: <0.2
--
Overlapping:
0.07-0.15 (cl.1)
0.07-0.12 (cl.2)
V
0.07-0.15 (cl.1)
0.07-0.12 (cl.3)
0.08
0.08
Cu
< 0.30 (cl.1)
< 0.2 (cl.11)
0.08-0.15 (cl.27)
0.12
0.12
Mn
< 0.30
0.09
0.09
Cr
< 0.08 (cl.1)
< 0.05 (cl.12)
Not intended added
0-trace amount
Zr
< 0.15
Not intended added
0-trace amount
Fe
< 0.50
0.19
0.19
Zn
< 0.50
Not intended added
0-trace amount
Al
Balance + impurities
Balance + impurities
Balance + impurities
Ti + V
0.14-0.24 (cl.1)
0.15-0.20 (cl.4)
0.13
General formula
0.13 close to low limit 0.14 (cl.1)
Sieff/Mg
0.60-0.85
About 0.62
About 0.62
From instant Claim 9 (wt %)
From PG’477 (claims and par. 0031]-[0043])
Overlapping
Si
0.45-0.55
0.3-1.5
0.45-0.55
Mg
0.55-0.65
0.3-1.5
0.55-0.65
From instant Claim 10 (wt %)
From PG’477 (claims and par. 0031]-[0043])
Mn
0.10-0.20
< 0.6
0.10-0.20
Regarding claim 6, the claimed ratio of Sieff/Mg is considered as a general formula. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Si and Al from CN’285 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claims 9-10, PG’477 indicates adjusting ranges of 0.3-1.5 wt% Mg; 0.3-1.5 wt% Si; and < 0.6 wt% Mn (claims and par.[0031]-[0043] of PG’477), which overlaps the claimed Mg and Ti ranges. Overlapping in Mg and Si ranges (cl.9) and Mn range (cl.10) creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Si, Mg and Mn amounts from the disclosure of PG’477 to meet the claimed ranges since PG’477 teaches the same 6xxx aluminum alloy as claimed throughout whole disclosing range
Claim(s) 13, 15-18, 20, 22-26, and 28-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’477 in view of Sun et al (CN 110846539 A, with on-line translation, thereafter CN’539).
Regarding claims 13, 15-17, and 28-29, all of the alloy composition ranges, the value Ti + V, and Sieff/Mg disclosed by example #A in table 1 of PG’477 are within or overlap the claimed composition ranges as recited in the instant claims (refer to the rejection for the independent claim 1 above). The process conditions comparison between claimed in claim 13 and those disclosed by PG’477 is listed as following. PG’477 teaches all of the essential process steps as claimed in the instant claim 13. PG’477 does not specify the claimed holding duration, and stretching as recited in the instant claim 13. CN’539 teaches a high-energy Al-Mg-Cu alloy and preparation method (Title, abstract, and claims of CN’539). All of the alloy composition ranges disclosed by CN’539 (Abstract, Examples, and claims of CN’539) overlaps the claimed alloy composition ranges. MPEP 2144 05 I. CN’539 specify all of the essential process steps including homogenizing at temperature 560 ± 5oC for 7 hours, cooling, extruding, cooling at rate 17-32oC/s, stretching 1.4-17.%, and ageing (Claims, Examples, and par.[0009]-[0012] of CN’539), which reads on the claimed stretching process and homogenizing conditions as claimed in the instant claims and overlap the claimed stretching ranges as claimed in the instant claims 13 and 15 and cooling rate in claim 28, which creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply stretching process and optimize stretching rate and homogenizing conditions from the disclosure of CN’539 in the process of PG’477 since in order to obtain a high-energy Al-Mg-Cu alloy. (Title, abstract, and claims of CN’539).
Element
From instant Claim 13, 15-17, 28-29
From PG’477 (wt %)
(examples)
Overlapping range
(wt %)
Homogenizing
480oC-600oC
1-24 hours
545oC holding
545oC holding
Cooling
Included
Air cooling
Air cooling
Extruding
Included
Included
Included
Cooling at rate
< 80oC/sec (cl.13)
< 40oC/sec (cl.16)
> 5oC/sec (cl.17)
< 20 oC/sec (cl.28)
> 7oC/sec (cl.29)
Included
17-32oC/s (CN’539)
Included
17-32oC/s (CN’539) reads on claims 13,16-17,and 29
Overlapping 17-20 oC/s (cl.28)
Stretching rate
1.5-4% (cl.13)
1.5-3% (cl.15)
--
Stretching 1.4-1.7% (CN’539)
--
Stretching (CN’539) Overlapping range: 1.5-1.7%:
Regarding claims 18 and 20, the formula (Ti + V) (cl.18), and Sieff/Mg (cl.20) are recognized as general formula. It is well settled that there is no invention in the discovery of a general formula if it covers a composition and dimension described in the prior art. In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v. Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, in the absence of evidence to the contrary, the selection of the proportions of Si and Al from CN’285 in order to meet the claimed equation would appear to require no more than routine investigation by those ordinary skilled in the art. In re Austin, et al., 149 USPQ 685, 688.
Regarding claims 22-24 and 30, PG’477 indicates adjusting ranges of 0.3-1.5 wt% Mg; 0.3-1.5 wt% Si; less than 0.5 wt% Cu, and less than 0.3wt% Cr (claims and par.[0031]-[0043] of PG’477), which overlaps the claimed Si, Mg (cl.22), Cu (cl.23), and Cr (cl.24) ranges. Overlapping in Mg and Si ranges and Mn range (cl.22), Cu range (cl.23, 30), and Cr range (cl.24) creates a prima facie case of obviousness. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the Si, Mg, Cu, and Cr amounts from the disclosure of PG’477 to meet the claimed ranges since PG’477 teaches the same 6xxx aluminum alloy as claimed throughout whole disclosing range.
Regarding claim 25, all of the alloy composition ranges, the value Ti + V, and Sieff/Mg disclosed by example #A in table 1 of PG’477 are within or overlap the claimed composition ranges as recited in the instant claims (refer to the rejection for the independent claims 1 and 13 above). PG’477 specify applying T6 aging and 297 MPa Rp0.2 YS for the example #A in table 3 of PG’477, which reads on the claimed aging condition and YS as claimed in the instant claim.
Regarding claim 26, PG’477 teaches a 6xxx aluminum alloy manufactured by extruding for application such as suspension part in a car (Abstract, examples, claims, and par.[0027] of Pg’477), which reads on the extruded product for structure component in vehicle as claimed in the instant claim.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-4, 6, 9-13, 15-18, 20, and 22-30 have been considered but they are moot in view of new ground rejection as stated above.
Conclusion
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
