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 I, claims 28-30 in the reply filed on 07/21/2026 is acknowledged. The traversal is on the grounds that the International Searching Authority (ISA) determined original claims 1-27 did not lack unity of invention and searching all claimed inventions would not impose an undue burden on the Office (remarks, pages 6-7).
Regarding the lack of unity of invention argument, this is not found persuasive because Groups I-III lack unity of invention because the technical feature is not a special technical feature in view of US 2020/0224299 A1 of Sarban as previously set forth in the Restriction Requirement mailed 06/15/2026. Where unity of invention exists “a priori,” the prior art must be consulted to determine whether the shared (or corresponding) technical feature is novel and nonobvious and thereby a “special” technical feature. Unity of invention is said to exist “a posteriori” – that is, after the prior art has been reviewed – when the shared technical feature is a “special” technical feature. In other words, the shared (or corresponding) technical feature is considered to be novel and nonobvious over the prior art. When unity of invention exists a posteriori, a restriction requirement is improper.
Conversely, if the shared technical feature is anticipated by or obvious over the prior art, then the claimed inventions are said to lack unity “a posteriori,” and a restriction requirement may be proper.
In the instant case, the claimed inventions are said to lack unity “a posteriori,” because the shared technical feature as required by instant claim 28 is anticipated by or obvious over cited prior art US 2020/0224299 A1 of Sarban. Hence, a restriction requirement is proper.
Regarding the search burden argument, this is not found persuasive because the groups were shown to be distinct for the reasons given in the Restriction Requirement mailed 06/15/2026 and have acquired a separate status in the art because of their recognized divergent subject matter. Additionally, examination is not limited simply to search. In addition to the search, much of the examination is devoted to determining patentability of claims. Said determination requires the formulation of rejections and responding to applicant's arguments with regard to same. The Examiner notes that product and method claims are evaluated differently when determining patentability. For example, the patentability of a product does not depend on its method of production. See MPEP 2113. The additional search and the determination of patentability for multiple, patentability distinct inventions would place serious burden on the examiner.
The requirement is still deemed proper and is therefore made FINAL.
Claims 31-42 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 07/21/2026.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 05/30/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS is being considered by the examiner.
Claim Objections
Claim 30 is objected to because of the following informalities: claim 30 recites the limitation “further comprising cooling from a first hot hot rolling exit temperature to a second hot rolling start temperature” (emphasis added) in line 3. The term “hot” is recited twice in a row and appears to be a typographical error.
Appropriate correction is required.
Claim Interpretation
In claim 28, the recitation “for producing a sheet or a blank” has been given little patentable weight because the recitation occurs in the preamble. A preamble is generally not accorded patentable weight where it merely recites the purpose of a process or the intended use of a structure, and where the body of the claim does not depend on the preamble for completeness but, instead, the process steps or structural limitations are able to stand alone. See In re Hirao, 535 F.2d 67, 190 USPQ 15 (CCPA 1976) and Kropa v. Robie, 187 F.2d 150, 152, 88 USPQ 478, 481 (CCPA 1951).
Regarding claim 28, the term “6xxx alloy” is interpreted as an aluminum alloy of the 6000 series. If this interpretation is incorrect, Applicant should specify the correct interpretation of this term in response to this Office action, and indicate where such interpretation finds support in the specification as originally filed.
Regarding the composition of claim 28, the claimed composition is interpreted as open-ended due to the use of the term “comprising”. The transitional term "comprising" is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03. In this case, the claimed 6xxx alloy may contain additional unrecited elements.
Regarding claims 28 and 30, the limitations preceded by the term “optionally”, including “optionally inter-annealing”, “optionally pre-aging”, “optionally, the sheet temperature at an end of the quenching is from 50 to 160°C” in claim 28, and “optionally between 600 and 900°C/s*mm, optionally between 700 and 800°C/s*mm” in claim 29, are interpreted as optional limitations and thus not being required by the claim. See MPEP 2173.05(h)(II).
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 28-30 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3, 4 and 5 of U.S. Patent No. 12128463 B2.
US12128463B2 claims a “process for hot rolling an AA6xxx series aluminum alloy” (reads on claimed process for producing a sheet or a blank), “a. casting a rolling ingot made of AA6xxx series alloy, b. homogenizing the rolling ingot, optionally followed by a reheating, c. first hot rolling to convert the rolling ingot into a blank having a first output thickness from a first hot rolling starting temperature, d. cooling the blank obtained with a mean cooling rate of the mean temperature of the blank of V=C/e up to a second starting temperature of second hot rolling, where V is in ° C./s, e is the thickness of the blank in mm, and C is a constant which equals between 400 and 1000° C./s*mm, optionally between 600 and 900° C./s*mm, more optionally between 700 and 800° C./s*mm, e. second hot rolling to convert the blank obtained into a strip at the final hot rolling thickness under deformation and temperature conditions such that the strip is recrystallized to at least 50%, f. cold rolling the strip into a sheet” (reads on claimed (a)-(e) and claimed cooling rate) in claim 1, “ the continuous heat treatment furnace operates such that equivalent hold time at 560° C” (reads on claimed quenching start temperature) of claim 3, “after f, further comprising g. solution heat treatment and quenching” (reads on claimed (f) and (g)) in claim 4 and “after the solution heat treatment and the quenching, a pre-ageing is optionally performed, and the sheet ages at ambient temperature, so as to attain temper T4, the sheet is cut out and formed” (reads on claimed (h) and (i)) in claim 5.
The issued patent differs in reciting a specific composition for the claimed AA6xxx series alloy. However, it would have been obvious to one of ordinary skill in the art to find specific compositions of AA6xxx alloys (see US12128463B2, col. 24, lines 32-41, for example, or alternatively, US 2020/0224299 A1 of Sarban cited in the 35 U.S.C. 102 and 103 rejections in this Office action), which overlap with the claimed composition. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
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.
Claims 28-30 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 28 recites the broad recitation “process for producing a sheet or a blank” (emphasis added) in line 1, and the claim also recites “wherein a sheet temperature at a beginning of the quenching is from 480 to 570°C and optionally, the sheet temperature at an end of the quenching is from 50 to 160°C” (emphasis added) in the last 2 lines of the claim 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. In this case, it is unclear whether the claimed sheet temperature is narrowing the end product to only a sheet, or if the claimed “sheet” temperature would also apply to a “blank”.
Claims 29-30 depend on claim 28, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 30 recites the limitation “wherein an ingot is heat treated and hot rolled without any reheating and without forced cooling before start of hot rolling”. This limitation renders the claim indefinite. It is unclear whether the claimed “heat treated” and “hot rolled” are the same heat treating and hot rolling of claim 28 or different processing steps.
Claim 30 recites the limitation “wherein an ingot is heat treated and hot rolled without any reheating and without forced cooling before start of hot rolling”. This limitation renders the claim indefinite. It is unclear whether or how the ingot is related to the process of claim 28 since claim 28 does not presently claim an ingot.
Claim 30 recites the limitation “the cooling being obtained with a cooling rate of the temperature of V= C/e, where V is in °C/s, e is a thickness after the first hot rolling in mm, and C is a constant which equals between 400 and 1000°C/s*mm, optionally between 600 and 900°C/s*mm, optionally between 700 and 800°C/s*mm”. This limitation renders the claim indefinite. While the claim recites a cooling rate and a formula to obtain it, the claim encompasses any cooling rate since it does not recite any cooling rate ranges. The ranges recited in the claim are for a constant used in the formula, but do not provide sufficient evidence for one of ordinary skill in the art to understand what cooling rates are required by the claimed process. The claim does not clearly set forth the metes and bounds of the patent protection desired and would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102/103
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 28-30 are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US 2020/0224299 A1 of Sarban (as cited in prior Office action).
Regarding claims 28-29, Sarban teaches a method of manufacturing an Al-Si-Mg alloy rolled sheet product with excellent formability (Abstract, reads on claimed process for producing a sheet or a blank). Sarban teaches an Al—Si—Mg alloy or AA6000-series ([0008], Al-Si-Mg reads on claimed 6xxx alloy).
Sarban teaches casting an Al-Si-Mg aluminum alloy (claim 1) and further teaches inventive examples Sheets A and B ([0052], Table 1) with resulting sheet products having a composition lying within the claimed composition, as shown in List 1.
List 1
Instant claims (wt%)
Sarban Examples: Sheets A and B ([0052])
Sarban Broader Disclosure (wt%)
Si
1.25-1.45
1.35
1.0-1.50
Fe
≤ 0.30
0.14
0.08-0.30
Cu
≤ 0.15
0.01
Up to 0.15
Mn
0.01-0.15
0.07
0.01-0.15
Mg
0.25-0.40
0.25
0.10-0.40
Cr
≤ 0.03
0.01
Up to 0.10
Ni
≤ 0.04
-
-
Zn
≤ 0.15
-
Up to 0.20
Ti
0.01-0.10
0.02
Up to 0.10
Other elements
< 0.05 each
< 0.15 in total
Zr: up to 0.03
V: up to 0.03
Unavoidable impurities: up to 0.05
Al
“Rest”
Balance (“and impurities”)
Balance (“and impurities”)
Sarban therefore reads on the limitations process for producing a sheet or a blank, comprising the following in succession: (a) casting a 6xxx alloy comprising, in wt.%: Si: 1.25 - 1.45 Fe: < 0.30 Cu: < 0.15 Mn: 0.01-0.18 Mg: 0.25 - 0.40 Cr: < 0.03 Ni: < 0.04 Zn: < 0.15 Ti: 0.01-0.10 other elements: < 0.05 each and < 0.15 in total rest aluminium of claim 28.
Additionally, or alternatively, Sarban teaches a broader disclosure of casting an Al-Si-Mg aluminum alloy having a chemical composition (claim 1, [0021]) overlapping with the claimed alloy and further teaches inventive examples Sheets A and B ([0052], Table 1), as shown in List 1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I. Regarding the Zr and V content of Sarban, Sarban teaches these elements are optional since the term “up to” includes a content of 0 wt%.
Regarding the processing of claims 28-29, Sarban teaches the rolling feedstock of sheets A and B have been cast into rolling ingots having a thickness of 500 mm (reads on claimed (a) casting a 6XXX alloy with claimed composition) and scalped on either side, pre-heated (reads on claimed (b) heat treating), hot rolled (reads on claimed (c) hot rolling), cold rolled to intermediate gauge (reads on claimed (d) cold rolling), inter-annealed and cold rolled to final gauge of 1.0 mm (reads on claimed (e) optionally inter-annealing between hot rolling and cold rolling and/or during cold rolling and/or after cold rolling), solution heat treated at 560°C in a continuous annealing furnace (reads on claimed (f) solution heat treating) and then quenched (reads on claimed (g) quenching) ([0053], method of sheets A and B of Sarban read on claimed process). Sarban teaches quenching is by means of water ([0018], reads on claimed quenching is a water quenching). Since Sarban teaches solution heat treating at 560°C in a continuous furnace and then quenching, one of ordinary skill in the art understands the sheet temperature at a beginning of the quenching is 560°C, and is within the claimed temperature range of claim 28. Sarban teaches obtaining a sheet product ([0052]) which implies a forming process to obtain a sheet by cutting, trimming, or shearing. Sarban teaches stamping as a forming operation ([0033]), which one of ordinary skill in the art understands shears a sheet without any milling.
Sarban therefore reads on the limitations (b) heat treating; (c) hot rolling; (d) cold rolling; (e) optionally inter-annealing between hot rolling and cold rolling and/or during cold rolling and/or after cold rolling; (f) solution heat treating; (g) quenching; (h) optionally pre-aging; (i) shearing without any milling wherein a sheet temperature at a beginning of the quenching is from 480 to 570°C and optionally, the sheet temperature at an end of the quenching is from 50 to 160°C of claim 28 and wherein (g) quenching is a water quenching of claim 29.
Additionally, or alternatively, further regarding processing of claims 28-29, the broader disclosure of Sarban teaches the ingot is homogenised by heating the ingot to a temperature of above 550°C ([0022], homogenized by heating reads on claimed (b) heat treating of claim 28). Sarban teaches in a first hot rolling operation the heated feedstock is subjected to breakdown hot rolling in one or more passes using reversing or non-reversing mill and after the breakdown hot rolling, the feedstock is supplied to a mill for hot finish rolling in one or more passes to a final gauge using a reverse mill or a tandem mill ([0023]-[0026], breakdown hot rolling and hot finish rolling both read on claimed (c) hot rolling of claim 28). Sarban teaches the hot rolled material is being further down gauged by cold rolling applying in one or more rolling steps ([0027], cold rolling reads on claimed (d) cold rolling of claim 28) and following the optional intermediate annealing heat treatment the feedstock is cold rolled in one or more cold rolling steps ([0029]). Sarban teaches optionally during the cold rolling operation an intermediate annealing (continuous or batch) can be applied to the cold-rolled product at an intermediate gauge and following the optional intermediate annealing heat treatment the feedstock is cold rolled in one or more cold rolling steps ([0029], intermediate annealing reads on claimed (e) optionally inter-annealing between hot rolling and cold rolling and/or during cold rolling and/or after cold rolling of claim 28). Sarban teaches the cold rolled aluminium sheet product at final gauge is solution heat treated ([0030], reads on claimed (f) solution heat treating of claim 28). Finally, Sarban teaches after the solution heat treating the sheet is quenched, e.g. by means of water such as cold water quenching or cold water spray quenching ([0030], quenched reads on claimed (g) quenching of claim 28 and by means of water reads on claimed (g) quenching is a water quenching of claim 29). Sarban teaches solution heat-treatment temperature is at least 500°C, and is preferably in a range of 530°C to 570°C ([0030]). One of ordinary skill in the art understands the quenching start temperature will be the same as the solution heat treatment temperature since the quenching is performed after the solution heat treating of Sarban. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding claim 30, Sarban teaches the process of claim 28 as described above.
Sarban teaches the rolling feedstock of sheets A and B is cast into rolling ingots and are pre-heated and hot rolled ([0052]-[0053], Table 1, reads on claimed an ingot is heat treated and hot rolled without any reheating and without forced cooling before start of hot rolling). Sarban teaches a breakdown finish temperature of 435°C for sheet A and 345°C for sheet B and a tandem rolling start temperature of 425°C for sheet A and 330°C for sheet B (Table 1, breakdown is a breakdown hot rolling and tandem is a hot finish rolling, as explained in [0023] and [0024] of Sarban). Since the tandem rolling start temperature is lower than the breakdown finish temperature in sheets A and B of Sarban, one of ordinary skill in the art understands there is cooling from a first hot rolling exit temperature to a second hot rolling start temperature between the first hot rolling and the second hot rolling. While Sarban does not explicitly disclose a cooling rate or a formula for its calculation, the cooling of Sarban between breakdown rolling and Tandem rolling necessarily has a cooling rate and the sheet of Sarban has an intermediate gauge after hot rolling (claim 1) and therefore has a thickness e after the first hot rolling.
Sarban therefore reads on the limitation wherein an ingot is heat treated and hot rolled without any reheating and without forced cooling before start of hot rolling and further comprising cooling from a first hot hot rolling exit temperature to a second hot rolling start temperature between the first hot rolling and the second hot rolling, the cooling being obtained with a cooling rate of the temperature of V= C/e, where V is in °C/s, e is a thickness after the first hot rolling in mm, and C is a constant which equals between 400 and 1000°C/s*mm, optionally between 600 and 900°C/s*mm, optionally between 700 and 800°C/s*mm of claim 30.
Sarban therefore reads on all the limitations of claims 28-30.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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