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 1-26 remain for examination, wherein claim 1 is an independent claim.
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 1-26 are rejected 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. In the instant case, claim 1, 5-7, 13, 19-20, and 25 include limitation: “Sieff” which does not have clear definition. It is noted in paragraph [0101]-[0102] of US-PG-pub 2925/0019802 A1 (corresponding to the instant application) discuss the “Sieff”, however, 1) the claims still need proper definition for this limitation in the instant claims; 2) it is noted that all of Fe, Mn, Cr, and Zr are optional elements in the instant claims 1, 13, and 25, it is unclear why “Sieff” have two different formula (refer to the par.[0101]-[0102] of US-PG-pub 2925/0019802 A1). Proper amendment/clarification is necessary. The claims 2-26 depend on the independent claim 1 directly/indirectly, they are also rejected.
Claims 4, 6, 11-12, 16-18, 20, and 23-24 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, claims 4, 6, 11-12 16-18, 20, and 23-24 recites the broad recitation “Ti + V is 0.14-0.24” (cl.4,18); “Cu<0.20” (cl.11, 23); “Cr<0.08” (cl.12, 24); “Sieff/Mg ratio is 0.60-0.85” (cl.6, 20); “cooling rate is less than 40oC/s” (cl.16); “cooling rate is more than 5oC/s” (cl.17), and the claims also recites “Cu is 0.08-0.15” (cl.11, 23); “Ti + V is 0.15-0.20” (cl.4,18); “Cr<0.05” (cl.12, 24); “Sieff/Mg ratio is 0.65-0.75, or 0.80-0.96” (cl.6, 20); “cooling rate is less than 20oC/s” (cl.16); “cooling rate is more than 7oC/s” (cl.17), 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. Proper amendment is necessary. Since these claims need further clarification/amendments, Claims 4, 6, 11-12, 16-18, 20, and 23-24 are not included in the following examination.
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 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.
Claim(s) 1, 3, 5, and 25-26 is rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Zajac et al (US-PG-pub 2013/0202477 A1, thereafter PG’477).
Regarding claims 1 and 25-26, 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 alloy composition ranges, the value Ti + V, and Sieff/Mg disclosed by example #A in table 1 of PG’477 are within the claimed composition ranges, and meet the claim language “consisting of” in claim 25, therefore, instant claims 1 and 25-26 are anticipated by PG’477.
Element
From instant Claims 1, 13, and 25 (wt %)
#A in table 1 of PG’477 (wt %)
Within range
(wt %)
Mg
0.45-1.2
0.83
0.83
Si
0.40-1.0
0.61
0.61
Ti
0.05-0.2
0.05
0.05
V
0.05-0.15
0.08
0.08
Cu
< 0.30
0.12
0.12
Mn
< 0.30
0.09
0.09
Cr
< 0.15
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
0.10-0.30
0.13
0.13
Sieff/Mg
< 1.0
About 0.62
About 0.62
Regarding claim 3, 0.08wt% V disclosed by example #A in table 1 of PG’477 reads on the claimed limitation.
Regarding claim 5, about 0.62 of Sieff/Mg disclosed by example #A in table 1 of PG’477 reads on the claimed limitation.
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) 2, 7-10, and 21-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over PG’477..
Regarding claims 2, 8-10, and 21-22, the example #A in table 1 of PG’477 does not specify the claimed alloy ranges as claimed in the instant claims. However, PG’477 indicates adjusting the alloy elements in ranges as shown in the following comparison table. All of the alloy composition ranges disclosed by PG’477 overlaps the claimed alloy composition ranges, 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 optimize the Ti amount (cl.2), the Si and Mg amount (claims 8-9 and 21-22); and Mn amount (cl.10) from the disclosure of PG’477 since PG’477 teaches the same 6xxx aluminum alloy as claimed throughout whole disclosing range.
Element
From instant Claim 2 (wt %)
From PG’477 (wt %)
(cl.3 and par.[0031]-[0051])
Overlapping range
(wt %)
Ti
0.07-0.12
< 0.2
0.07-0.12
From instant Claims 8-9 and 21-22 (wt %)
Si
0.45-0.65 (cl.8, 21)
0.45-0.55 (cl.9, 22)
0.3-1.5
0.45-0.65 (cl.8, 21)
0.45-0.55 (cl.9, 22)
Mg
0.55-0.75 (cl.8, 21)
0.55-0.65 (cl.9, 22)
0.3-1.5
0.55-0.75 (cl.8, 21)
0.55-0.65 (cl.9, 22)
From instant Claim 10 (wt %)
Mn
0.10-0.20
< 0.6
0.10-0.20
Regarding claims 7, 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.
Claim(s) 13-15 and 19 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 and 19, 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 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 optional stretching as recited in the instant claim. 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’529 (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 optional stretching process and homogenizing conditions as claimed in the instant claim. 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 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
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
included
included
Stretching
Optional
--
Stretching (CN’539)
--
Stretching (CN’539)
Ageing
included
included
included
From claims 14-15
From CN’539
Overlapping range
Stretching rate
1.5-4% (cl.14)
1.5-3% (cl.15)
1.4-1.7%
1.5-1.7%
Regarding claims 14-15, 1.4-1.7% stretching rate disclosed by CN’539 overlap the claimed stretching rate as claimed in the instant claims, which creates a 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 stretching rate from the disclosure of CN’539 in the process PG’477 since both CN’539 and PG’477 teaches the same 6xxx aluminum alloy as claimed throughout whole disclosing range and CN’539 indicates obtaining a high-energy Al-Mg-Cu alloy. (Title, abstract, and claims of CN’539).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-26 are rejected 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).
Regarding instant Claims 1-26, although the conflicting claims are not identical, they are not patentable distinct from each other because Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1) teaches the same extruded aluminum alloy and related manufacturing process steps. The disclosure of copending application Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1) indicates the similar aluminum alloy and Sieff with all of the essential composition overlapping the claimed alloy, 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 optimize the alloy composition from the disclosure of Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1) since Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1) teaches the same aluminum alloy and manufacturing process for extruding part application. Thus, no patentable distinction was found in the instant claims compared with Claims 1-13 of copending application No. 18/687439 (US-PG-pub 2025/0129455 A1).
This is a provisional obvious-type double patenting rejection since the conflict claims in the copending application have not in fact been patented.
Conclusion
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/JIE YANG/Primary Examiner, Art Unit 1734
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