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 .
Claim Interpretation
Claim 1 recites “room temperature” which is interpreted as 10 °C - 38 °C per ASTM-E8M cited in the instant Specification at [0069].
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 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.
Claim 1 recites in Line 3 “preparing an aluminum (Al) alloy”. As used, the word “preparing” is a relative term rendering the claim indefinite. The word “preparing” does not convey to persons of ordinary skill in the art the metes and bounds of a tangible and repeatable method step. Appropriate correction is required to detail actionable and repeatable method steps with positive active claim language.
Claim 1 recites “performing primary cooling” in Line 5 and “performing secondary cooling” in Line 7. It is unclear from these phrases what elements are cooled. It is unclear for example whether the aluminum alloy is cooled or some other element entirely. Appropriate correction is required to recite method steps with specificity.
Claim 1 recites “performing secondary cooling to room temperature after the primary cooling is performed” in Lines 7-8. It is unclear the nexus between the “primary cooling” step of Lines 5-6 and the “secondary cooling” of Lines 7-8. The “secondary cooling” step as recited can encompass the “primary cooling step.” For example, cooling to room temperature from solid solution heat necessarily encompasses the claimed “primary cooling” step. In other words, cooling from an elevated temperature to room temperature includes cooling to 250 °C to 400 °C from higher temperatures. Appropriate correction is required to make clear the nexus between any first and any second cooling steps.
Claim 1 recites “performing solid solution treatment on the Al alloy” in Line 4 and “performing primary cooling” in Line 5. While it is not clear from the claim language what article is being cooled as set forth above, this recitation presents the following issues:
Solid Solution Treatment is a known term of art that includes heating, holding, and quenching. It is unclear at what point, if any, heat is applied, and to what claimed element.
Because solid solution treatment includes cooling, it is further unclear how an article can be further cooled if a heating process or the application of heat above the claimed cooling temperature range has not been clearly established.
Appropriate correction is required to recite an actionable and repeatable method step with positive active claim language.
Claim 7 recites “the solid solution treatment is performed in a temperature range of 450 °C to 540 °C” in Lines 1-2. As established above, because the application of heat in “solid solution treatment” has not been clearly established in Claim 1 on which Claim 7 depends, it is unclear from Claim 7 whether the solid solution treatment includes a holding or quenching temperature. Appropriate correction is required to establish a more clear nexus between the “solid solution treatment” and any claimed temperature range.
Claim 9 recites “at a time-temperature-transformation curve” in Lines 3-4. As set forth above, it is unclear which article to which “primary cooling” applies. It is further unclear to what article “time-temperature-transformation curve” applies. As used, the TTT curve need not represent any of the claimed elements. Appropriate correction is required to establish an actionable and repeatable method step with positive active claim language.
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.
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 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over NPL Liu et al. in view of NPL Shang et al.
Regarding Claim 1, NPL Liu et al. teaches heat treating an aluminum alloy, performing solid solution treatment on the aluminum alloy, performing primary cooling to 355 °C, a value lying within the instantly claimed range of 250 °C to 400 °C after the solid solution treatment, performing secondary cooling to room temperature after the primary cooling is performed (Section 2).
NPL Liu et al. does not expressly teach a cooling rate.
However, NPL Shang et al. teaches solid solution treatment of an aluminum alloy wherein the quenching rate ranges from 0.5 to 100 °C/s (Section 3.3). NPL Shang et al. teaches interrupted quenching of an aluminum alloy comprising quenching at a rate of 15 °C/s followed by cooling at a rate greater than 15 °C/s in order to suppress precipitation reaction and enhance mechanical properties (Section 3.3).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to set a primary cooling rate lower than a secondary cooling rate in order to suppress precipitation reaction and enhance mechanical properties of a heat-treated aluminum alloy based on the teachings of NPL Shang et la. at (Section 3.3), meeting the limitations of the instant Claim.
Regarding Claims 2-6, modified NPL Liu et al. teaches the limitations set forth above. As set forth above, NPL Shang et al. teaches solid solution treatment of an aluminum alloy wherein the quenching rate ranges from 0.5 to 100 °C/s (Section 3.3), overlapping the instantly claimed ranges and meeting the limitations of the instant Claims.
See MPEP 2144.05. In cases where 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).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 7, modified NPL Liu et al. teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, NPL Liu et al. teaches heat treating an aluminum alloy, performing solid solution heat treatment on the aluminum alloy at 470 °C (Section 2), a value lying within the instantly claimed range of 450 °C to 540 °C, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 8, modified NPL Liu et al. teaches the limitations set forth above. NPL Liu et al. teaches heat treating an aluminum alloy, performing solid solution heat treatment on the aluminum alloy for 60 minutes (Section 2), a value lying within the instantly claimed range of a time exceeding 0 hour and not exceeding 12 hours, meeting the limitations of the instant Claim.
See MPEP 2144.05. In cases where 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).
"[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 9, modified NPL Liu et al. teaches the limitations set forth above. Notwithstanding the 112(b) rejections above, NPL Shang et al. teaches cooling an aluminum alloy at a rate greater than the critical cooling rate in order to suppress precipitation reaction and enhance mechanical properties (Section 3.3). Rapidly cooling at a rate greater than the critical cooling rate meets the limitation of the instant Claim for a cooling rate range in which a cooling curve by the primary cooling does not meet a portion of or intersect a time-temperature-transformation curve.
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to set a primary cooling rate lower than a secondary cooling rate in order to suppress precipitation reaction and enhance mechanical properties of a heat treated aluminum alloy based on the teachings of NPL Shang et la. at (Section 3.3), meeting the limitations of the instant Claim.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding Claim 10, modified NPL Liu et al. teaches the limitations set forth above. NPL Liu et al. further teaches performing an aging treatment on the aluminum alloy (Section 1), meeting the limitations of the instant Claim.
Regarding Claim 11, modified NPL Liu et al. teaches the limitations set forth above. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir.1990). “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
Persons of ordinary skill in the art at the time of filing the invention would expect the aluminum alloy heat treated by the method of modified NPL Liu et al. to present the same or similar yield strength, tensile strength, and elongation as instantly claimed. As NPL Liu et al. names the same material, an aluminum alloy, and teaches a heat treatment process overlapping and encompassing the instantly claimed method, persons of ordinary skill in the art would expect the same or similar mechanical properties as instantly claimed.
Claim 11 is additionally and alternatively rejected under 35 U.S.C. 103 as being unpatentable over NPL Liu et al. in view of NPL Shang et al. as applied to Claims 1-10 above further in view of NPL Lu et al.
Regarding Claim 11, modified NPL Liu et al. teaches the limitations set forth above but NPL Liu et al. and NPL Shang et al. do not expressly teach the yield strength, tensile strength, and elongation obtained by heat treatment.
However, notwithstanding the 112(b) rejections above, NPL Lu et al. teaches a heat treatment method wherein an aluminum alloy undergoes solid solution treatment, primary cooling, and secondary cooling to room temperature. NPL Lu et al. teaches age treatment impacts mechanical strength and elongation (Section 3.2). NPL Lu et al. further teaches achieving an ultimate tensile strength of 557 MPa, overlapping the instantly claimed range of 290 MPa to 320 MPa. NPL Lu et al. teaches achieving an ultimate yield strength of 525 MPa, overlapping the yield strength range of 235 MPa to 270 MPa (Section 3.2). NPL Lu et al. teaches achieving an exemplary elongation value of 11% (Fig. 9), lying within the instantly claimed range of 8.5% to 12%.
See MPEP 2144.05. In cases where 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). "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
It would have been obvious to one having ordinary skill in the art at the time of filing the invention to age treat the aluminum alloy of NPL Liu et al. and tune the yield strength, tensile strength, and elongation values to those taught in NPL Lu et al. in order to increase the mechanical strength of the interrupted quenched alloy based on the teachings of NPL Lu et al. at (Abstract).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 4488913 A teaches interrupted quenching of aluminum alloys.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/M.S.S./Examiner, Art Unit 1733
