DETAILED ACTION
Claims 1-2, 5-6, and 9-11 are pending and currently under review.
Claims 3-4, 7-8, and 12-13 are cancelled.
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 .
Response to Amendment
The amendment filed 2/23/2026 has been entered. Claims 1-2, 5-6, and 9-11 remain(s) pending in the application.
The affidavit under 37 CFR 1.132 filed 2/23/2026 is insufficient to overcome the previous rejections over Oishi et al. as set forth in the last Office action because:
It is first noted that p.1-4 of the affidavit contain evidence/remarks already presented in the previous affidavit filed 8/27/2025 and accordingly have already been addressed by the examiner in the previous office action mailed 9/23/2025.
On p.5-9 of the affidavit, applicant alleges criticality and unexpected results of the claimed Si range in view of the data provided on p.5-9 of the affidavit. Applicant specifically alleges that the claimed Si range is critical and achieves unexpected results of controlling hardness and kappa phase connectivity. The examiner cannot concur.
Again, although applicant argues that controlling Si within the claimed range unexpectedly achieves controls hardness and corrosion resistance, the examiner notes that this is entirely expected, not unexpected. Oishi expressly teaches that increasing Si serves to increase hardness and decrease ductility (which increases hardness as recognized by one of ordinary skill) [0037]. Oishi further teaches that decreasing Si serves to lower corrosion resistance [0037]. These are the same benefits as purportedly obtained by applicant and therefore these results are not unexpected, but rather entirely expected.
Regarding the purported “kappa connectivity”, the examiner still cannot concur. Firstly, it is noted that applicant has not provided a sufficient number of tests/data both inside and outside of the claimed range, such that applicant’s allegations are not commensurate in scope with the claimed invention range. See MPEP 716.02(b-d). Specifically, the lower Si limit of 2.4 percent is not shown to be critical. Furthermore, evidence must be of both practical and statistical significance (emphasis added). See MPEP 716.02(b). The examiner cannot consider applicant’s arbitrary, qualitative labeling of “separated”, “partly connected”, “strongly connected”, etc. for the images in p.6-8 of the affidavit to be of statistical or practical significance because no clear means of distinguishing between the aforementioned labels have been provided. The examiner cannot concur with applicant absent some concrete quantitative parameter, which has not been provided.
On p.9-10 of the affidavit, applicant again alleges criticality and unexpected results of the claimed Al range. The examiner cannot concur. The examiner notes that applicant has not provided a sufficient number of tests/data both inside and outside of the claimed range, such that applicant’s allegations are not commensurate in scope with the claimed invention range. See MPEP 716.02(b-d). Specifically, the upper Al limit of 0.05 percent is not shown to be critical.
On p.10-11 of the affidavit, applicant again alleges that the upper Si limit of 2.9 percent is critical in terms of hardness, machinability, and ductility in view of the data presented on p.11 of the affidavit. The examiner cannot concur. Expected results are evidence of obviousness, and as stated above, an increase in hardness due to increase in Si is entirely expected as expressly taught by Oishi et al. See MPEP 716.02(c). One of ordinary skill would further readily recognize that hardness of an alloy is proportional to strength and inversely proportional to elongation (ie. ductility). Therefore, the trend demonstrated by the data on p.11 of the affidavit is entirely expected in view of the prior art.
Claim Interpretation
The examiner interprets the limitation “lead-free” to be met by any amount of lead in a copper alloy that can be considered “lead-free” by one of ordinary skill in the art, the examiner notes that this can mean zero lead, impurity amounts of lead, or lead up to a certain maximum amount to one of ordinary skill in the art.
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.
Claim(s) 1-2, 5-6, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oishi (US 2013/0315660).
Regarding claim 1, Oishi discloses a copper alloy composition as shown below in table 1 below [0011-0013]. The examiner notes that the overlap between the composition of Oishi and that as claimed is prima facie obvious. See MPEP 2144.05(I). The examiner notes that while lead may be included, lead is not necessarily required (ie. preferable) which means that lead can be omitted (ie. zero percent), which is further supported by several examples in Oishi wherein lead is not included and meets the limitation of “lead free” and “consisting of” as claimed. Oishi further discloses a fraction of kappa content being 15-68% [0011]. The examiner notes that the overlap of the copper alloy microstructures of the instant claims and Oishi is prima facie obviousness. See MPEP 2144.05(I).
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Oishi (wt.%)
Cu
70 – 83
73 – 79.5
Si
2.4 – 2.9
2.5 – 4
P
0.05 – 0.1
0.015 – 0.2
Al
0.01 – 0.05
0.03 – 1.5
Sn
0.01 – 0.3
0.03 – 1
Zn
Balance
Balance
Regarding claims 2, 5-6, and 9, Oishi discloses the alloy of claim 1 (see previous). The examiner notes that the aforementioned composition of Oishi further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 10-11, Oishi discloses the alloy of claim 1 (see previous). Oishi further teaches using the alloy as a component for water supply equipment, which meets the limitation of “configured for use in an installation for a mains water sector” [0002-0003].
Claim(s) 1-2, 5-6, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hoffmann et al. (US 2004/0234411) as evidenced by 4MS (2016, Acceptance of metallic materials used for products in contact with drinking water).
Regarding claim 1, Hoffmann et al. discloses a lead-free alloy composition as shown below in table 2 below [abstract, 0016, 0039-0041]. The examiner notes that the overlap between the composition of Hoffmann et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Although Hoffmann et al. discloses further inclusions of Fe, Ni, and Mn, the examiner notes that these elements are merely included in known impurity amounts for Cu-Zn-Si-P alloys to be used in water applications as evidenced by 4MS and are therefore allowed in the claim scope as “unavoidable impurities” as claimed [p.1, 22]. Therefore, the disclosed alloy of Hoffmann et al. meets the recitation of “consisting of…” because no further non-recited elements are necessarily required by Hoffmann et al. It is further noted however that no indication or reasoning has been presented as to how these elements would materially affect the basic and novel characteristics of the instant application, such that the above elements can still be reasonably included even if the narrower interpretation of “consisting essentially of…” was required.
Hofmann et al. does not specify a kappa content, however the examiner notes that the instant application discloses that kappa content is dependent upon silicon content [0013, 0023, instant spec] and that Table 2 of the instant specification shows that the kappa content is further dependent upon the rest of the composition of the alloy [0023, instant spec] and so the examiner submits that a kappa content that overlaps with that as claimed would naturally flow from the copper alloy of Hofmann et al. because Hofmann et al. discloses a copper alloy with an overlapping composition including an overlapping silicon content. See MPEP 2112 & MPEP 2144.05(I).
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Hoffmann et al. (wt.%)
Cu
70 – 83
70 – 83
Si
2.4 – 2.9
1 – 5
P
0.05 – 0.1
0.003 – 0.1
Al
0.01 – 0.05
0 – 0.5
Sn
0.01 – 0.3
0.01 – 2
Zn
Balance
Balance
Regarding claims 2, 5-6, and 9, Hoffmann et al. discloses the alloy of claim 1 (see previous). The examiner notes that the aforementioned composition of Hoffmann et al. further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 10-11, Hoffmann et al. discloses the alloy of claim 1 (see previous). Hoffmann et al. further teaches using the alloy as a component for water sanitation and equipment, which meets the limitation of “configured for use in an installation for a mains water sector” [0011, 0053].
Claim(s) 1-2, 5-6, and 9-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over 4MS (2016, Acceptance of metallic materials used for products in contact with drinking water) alone or further in view of Oishi (US 2013/0315660).
Regarding claim 1, 4MS discloses copper alloys having compositions as seen in table 3 below [p.22]. The copper alloy of 4MS includes Pb only in impurities amounts, if at all, which meets the limitation of “lead-free” as claimed. 4MS is further silent regarding any necessary inclusion of non-recited elements, which meets the limitation of “consisting of…” as claimed. The examiner notes that the overlap between the compositions of 4MS and that as claimed is prima facie obvious. See MPEP 2144.05(I).
4MS does not specify a kappa content, however the examiner notes that the instant application discloses that kappa content is dependent upon silicon content [0013, 0023, instant spec] and that Table 2 of the instant specification shows that the kappa content is further dependent upon the rest of the composition of the alloy [0023, instant spec] and so the examiner submits that a kappa content that overlaps with that as claimed would naturally flow from the copper alloys of 4MS because 4MS discloses a copper alloy with an overlapping composition including an overlapping silicon content. See MPEP 2112 & MPEP 2144.05(I). Alternatively, Oishi et al. discloses that it is known to control an amount of kappa phase to be 15 to 68 percent in Cu alloys for water equipment to achieve desirable alloy properties such as corrosion resistance, ductility, etc. [abstract, 0003, 0048]. Therefore, it would have been obvious to one of ordinary skill to modify the alloy of 4MS by controlling an amount of kappa phase to achieve the aforementioned benefits expressly disclosed by Oishi et al. The examiner notes that the overlap between the kappa amount of Oishi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Table 3.
Element (wt.%)
Claim 1 (wt.%)
4MS 12.1 (wt.%)
4MS 12.2
Cu
70 – 83
60 – 80
75 – 77
Si
2.4 – 2.9
0.5 – 5.5
2.7 – 3
P
0.05 – 0.1
0.01 – 0.3
0.02 – 0.06
Al
0.01 – 0.05
0 – 0.1
0 – 0.05
Sn
0.01 – 0.3
0 – 0.5
0 – 0.3
Zn
Balance
Balance
Balance
Regarding claims 2 and 5-6, the aforementioned prior art discloses the alloy of claim 1 (see previous). The examiner notes that the aforementioned composition of 4MS further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claim 9, the aforementioned prior art discloses the alloy of claim 1 (see previous). The examiner notes that the aforementioned broader composition of 4MS further overlaps with the claimed ranges. See MPEP 2144.05(I).
Regarding claims 10-11, the aforementioned prior art discloses the alloy of claim 1 (see previous). 4MS further teaches using the alloy as a component for water equipment, which meets the limitation of “configured for use in an installation for a mains water sector” [p.4-6].
Response to Arguments
Applicant's arguments filed 8/27/2025 regarding the rejections over Oishi have been fully considered but they are not persuasive.
Applicant’s arguments as they relate to the affidavit filed 2/23/2026 are not persuasive for the reasons explained in the above “response to amendment” section.
Applicant's arguments filed 8/27/2025 regarding the rejections over Hoffmann et al. have been fully considered but they are not persuasive.
Applicant argues that Hoffmann et al. requires Fe which is omitted from the claim scope. The examiner cannot concur. The Fe inclusion of Hoffmann et al. can be considered as an unavoidable impurity, which is allowed for in the instant claim scope, as evidenced by 4MS above.
Applicant’s arguments are further moot in view of the new grounds of rejection over 4MS above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734