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 .
Status of Claims
Pending and under examination: claims 1-6
Rejected: claims 1-6
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.
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 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Hummel et al (US 20230008295 A1; available as prior art under 102(a)(2)).
Regarding claim 1, Hummel teaches the following composition which overlaps with the claimed ranges:
Element
Instant claim 1(wt. %)
Hummel(wt. %)
Location in reference
Al
Balance
Balance
Balance
Si
5.0-12.0
5.0-9.0
[0005]
Mn
0.4-1.5
0.3-0.6
[0028]
Mg
0.05-0.6
0.25-0.5
[0005]
Cr
0.1-0.5
0.08-0.35
[0009]
Fe
>0 to 0.6
0-0.25
[0009]
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 2, Hummel teaches the alloy of claim 1 above, and further teaches that the aluminum alloy can optionally have one or more alloying elements from the following group: up to 0.20 wt % copper (Cu), up to 0.025 wt % strontium (Sr), up to 0.2 wt % [0009]. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 3, Hummel teaches the alloy of claim 1 above, and further teaches making a casting from the alloy as described above (Abstract).
Regarding claim 4, Hummel teaches the alloy of claim 3 above, and although Hummel does not explicitly teach the claimed vending angle in the VDA bending test, Hummel teaches a substantially similar and overlapping composition with mechanical properties that are substantially similar to those in the instant disclosure; see Table 3 of Hummel: the tensile strength is 250-277 MPa, the 0.2% yield strength is 195 MPa, and the elongation at break is 12.4-12.8%, which is similar to the ranges of the disclosed inventive examples of 218-261 MPa, 90-127 MPa, and 12.7-16.4 MPa, respectively. Thus, it is prima facie expected that the alloy of Hummel has the same or substantially similar bending angle property as that in claim 4.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on ‘inherency’ under 35 U.S.C. 102, on ‘prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. (MPEP 2112 V).
"It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."); In re Wells, 56 F.2d 674, 675 (CCPA 1932) (MPEP 2144.05 III. A.).
Regarding claim 5, Hummel teaches the casting of claim 3 above, and further teaches that the yield strength is 190 MPa or more [0047], which lies within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists (MPEP 2144.05 I.). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP 2144.05 I.).
Regarding claim 6, Hummel teaches the alloy casting of claim 3 above, and further teaches that die-cast component is firmly connected to another component by means of a punch rivet [0035], which is the same as a self-piercing rivet.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adil Siddiqui whose telephone number is (571)272-8047. The examiner can normally be reached M-F 10AM-6PM CST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ADIL A. SIDDIQUI/Primary Examiner, Art Unit 1735
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