DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-15, in the reply filed on April 4, 2026 is acknowledged. The traversal is on the ground(s) that a search of both groups of claims does not pose a serious search burden, however this is not found persuasive because search group of claims requires the use of distinct search strategies including searching of distinct classifications and use of distinct text quires. The requirement is still deemed proper and is therefore made FINAL. Claims 16-20 are withdrawn as directed to non-elected subject matter.
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 1-15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4, 6-7, and 17-18 of U.S. Patent No. 11,519,057. Although the issued claims are not identical to the claims of the instant application, the issued claims set forth each feature of applicants’ instant claims. With regards to overlapping ranges, one of ordinary skill in the art would have found it obvious to select form the ranges disclosed in the issued claims including values which satisfy the instantly claimed ranges.
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.
Claims 1-6 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Platek et al. (PGPub US 2008/0041501).
Regarding applicants claims 1-3 and 10-14, Platek et al. disclose an aluminum alloy slab comprising (in weigh percent): 0.1 to 0.7% silicon, 0.2 to 0.9% iron, 0.05 to 0.5% copper, 0.05 to 1.3% manganese, 0.2 to 2.8% magnesium, 0.3% or less chromium, 0.3% or less zinc, 0.2% or less titanium, and a remainder of aluminum and incidental impurities (paragraph 0038 and 0046).
Platek et al. do not appear to disclose the exact compositional ranges claimed however the ranges disclosed overlap applicants’ claimed ranges. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select from within the ranges disclosed by Platek et al. including values which fall within the claimed ranges.
With regards to the use of the alloy for an impact extrusion processes, the slab disclosed by Platek et al. meets the claimed compositional requirements and has the necessary structure such that it is capable of being used in impact extrusion processes to form metallic containers configured to receive end closures.
Regarding applicants claims 4-6, the source and proportions of the composition of the claimed aluminum alloy are product-by-process limitations. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior art product was made by a different process (MPEP 2113).
Therefore, absent evidence of criticality regarding the presently claimed source materials, and given that the resulting alloy satisfies the claimed compositional proportions, the aluminum slab of Platek et al. meets the requirements imposed by the claimed process limitations.
Claims 7-9 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Platek et al. (PGPub US 2008/0041501) as applied to claims 1 and/or 4 above further in view of Okochi et al. (JPH09272944A, references herein made to the English translation from the EPO dated May 16, 2026).
Regarding applicants claim 7, Platek et al. disclose an aluminum alloy slab as discussed above with respect to claim 1 but do not appear to explicitly disclose the addition of titanium boride to alter the grain structure of the aluminum alloy. Okochi et al. disclose an aluminum alloy where titanium and boride are used to form titanium boride to produce finer crystals in the alloy thereby improving the strength and toughness. (page 4 lines 19-22). One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to form titanium boride in the aluminum alloy of Platek et al. in order to improve the strength and toughness of the alloy. The addition of titanium boride to refine the crystal grains alters the grain structure of the aluminum alloy as claimed.
Regarding applicants claims 8-9 and 15, Platek et al. do not appear to disclose the hardness, yield strength, and tensile strength of the alloy as claimed, however substantially identical materials are expected to have substantially identical properties. Given the selection of compositional proportions within applicants’ disclosed ranges and the addition of titanium boride, the aluminum alloy composition of Platek et al. as modified by Okochi et al. would be substantially identical to applicants’ disclosed aluminum alloy and therefore would be expected to exhibit substantially identical properties, including a hardness, yield strength, and tensile strength at least overlapping applicants’ claimed ranges.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ADAM C KRUPICKA whose telephone number is (571)270-7086. The examiner can normally be reached Monday-Friday 8-5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571)272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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