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
Claims 1, 3-4, 6-9, 11-16, and 21-22 are examined in this office action as claims 2 and 17-20 are directed to a withdrawn invention, claim 5 is canceled, claim 22 is new, and claims 1, 3-4, 6-9, 11-16 and 21 were amended in the reply dated 6/4/26.
Claim Interpretation
Claim 1 recites the limitation “An iron-based braze filler alloy” in the preamble of the claim. While claim 1 as well as claims 7-8 go on to recite chromium amounts which are higher than the lowest amount of iron in the claimed range, the claims below will be interpreted as requiring where iron is nevertheless present in the largest proportion in the alloy as this is what is required for the alloy to be “iron-based”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
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 1, 3-4, 6-9, 11-16, and 21-22 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 21 do not recite where the amounts of nickel, chromium, silicon, phosphorus, boron and iron add up to 100 wt%. However, original claim 1 requires where “the percentage of a) to f) adding up to 100 wt%”. This requirement is mirrored in the specification which when laying out the scope of the invention notes that “the percentages of a) to f) adding up to 100 % by weight” where a) to f) is nickel, chromium, silicon, phosphorus, boron and iron (Specification, paragraph [0022]). All other mentions of the composition in the specification include this requirement for these elements to add up to 100 wt% and the inventive examples in Table 1 of the specification also do not show where other elements are included in the inventive composition. Therefore, the specification does not describe the claimed subject matter of a composition “comprising” nickel, chromium, silicon, phosphorus, boron and iron without a requirement for these elements to add up to 100 wt% in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor had possession of the claimed invention. Claims 3-4, 6-9, 11-16, and 22 are also rejected as they depend from claims 1 and 21 and do not solve the above issue.
Claims 1, 3-9 and 11-16 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 the preamble that it is “An iron-based braze filler alloy” and then goes on to recite that nickel is in an amount of 0 to 35 wt% and chromium is in an amount of 0 to 25 wt% while reciting iron amounts of from 29 to 40 wt%. Similar recitations exist in claims 7-8 which recite iron amounts of from 29 to 40 wt% and 31.8 to 39.1 wt% respectively while claim 7 has a nickel amount of 25 to 35 wt% and claim 8 recites a nickel amount of 28 to 33 wt%. As “iron-based” means that iron is present in the largest proportion in the alloy but claims 1, 7, and 8 all claim amounts for iron which is below the maximum amount of nickel (and chromium in the case of claim 1), it is not clear whether iron must be present in the largest proportion in the alloy or not. Claims 3-6, 9, and 11-16 are also rejected as they depend from claim 1 and do not solve the above issue.
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 and 3-4, 6-9, 11-16, and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over US 2009/0305078 A1 of Sjodin.
Table A
Element
Claims 1, 7, 8, and 21 limitation unless otherwise noted (wt%)
Sjodin claim 16 (wt %)
a) Ni
Greater than 0 to 35%
Claims 3 & 7: 25 to 35 %
Claim 8: 28 to 33 %
Claim 21: 29 to 31.7%
15 to 30%
b) Cr
Greater than 0 to 25 %
Claim 4 & 7: 18 to 25%
Claim 8: 18 to 22 %
Claim 21: 20.4 to 21.5%
15 to 30%
c) Si
5 to 6 %
Claim 8: 5 to 6%
Claim 21: 4.4 to 5.8%
0 to 20 %
d) P
5 to 11 %
Claim 8: 6-10%
Claim 21: 6.1 to 9.6%
0 to 16%
e) B
Greater than 0 to 1 %
Claims 6-8: 0.1 to 0.5 %
Claim 9: 0.3 to 0.4 %
Claim 21: 0.1 to 0.5%
0 to 2.0%
f) Fe
Balance in an amount of from 29% to 40%
Claim 8: Balance in an amount of from 31.8% to 39.1%
Claim 21: balance in an amount of from 31.8% to 39.1%
Alloy balanced with Fe (claim 17)
Total amount of Fe, Ni, and Cr
From 84 to 90%
56 to 98.9%
As to claims 1, 3-4, 6-9, and 21-22, Sjodin discloses an iron based brazing material (Sjodin, abstract), meeting the limitation of an iron-based brazing filler alloy. Sjodin discloses the composition in comparison to the claims in Table A above. Sjodin discloses overlapping ranges for Ni, Cr, Si, P, B, and Fe. Also, the total amount of Fe, Ni, and Cr overlaps the claimed range for the total of these elements. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches a brazing material with the properties to braze an area below the temperature where the brazing material is fully melted and be able to fill and wet the area and crevices etc. when brazing (Sjodin, paragraph [0006]) throughout the disclosed ranges. 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) . See MPEP § 2144.05 I.
Further, the overlapping ranges for elements in Sjodin also results in overlapping ranges for the claimed ratios of a/(a + f) which would be 0.17-1 in Sjodin, overlapping the claimed range of greater than 0-0.5 and for b/(a + b + f) which would be 0.151-0.667 in Sjodin, overlapping the claimed range of greater than 0-0.33.
Sjodin discloses where the temperature range between the solidus state and liquidus state is within a range of 75°C or even 50°C (Sjodin, paragraph [0018]), meeting the limitation of where the difference between these temperatures is less than 85°C.
While Sjodin does not explicitly disclose the solidus, liquidus, nor brazing temperature, “Products of identical chemical composition can not 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)), see MPEP § 2112.01(II). As such, the composition in Sjodin would necessarily have the same properties of a liquidus temperature of less than or equal to 1,075°C, a solidus temperature of less than or equal to 1,030. °C, and a brazing temperature of less than 1,100°C.
As to claims 11-13 and 15, while Sjodin discloses the alloy of claim 1, see claim 1 rejection above, Sjodin does not explicitly disclose wherein the solidus temperature is less than or equal to 1,000°C (claim 11) nor less than or equal to 975°C (claim 12), Sjodin does not disclose a liquidus temperature of less than 1,050°C (claim 13), nor does Sjodin explicitly disclose a brazing temperature of less than 1,060°C (claim 15). However, products of identical chemical composition can not 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)), see MPEP § 2112.01(II). Thus, as Sjodin discloses the overlapping composition, this composition must possess the same properties of brazing temperature, solidus temperature, and liquidus temperatures, thereby meeting the claim limitations.
As to claim 14, Sjodin discloses where the alloy has a solidus temperature and a liquidus temperature within a range of 50° C (Sjodin, paragraph [0018]), meeting the limitation of where the melting range where the difference between the solidus temperature and liquidus temperature is less than 50the alloy may have a solidus temperature and a liquidus temperature within a range of 50° C.
As to claim 16, Sjodin discloses where the alloy is in the form of powder (Sjodin, paragraph [0020]).
Response to Arguments
With respect to the written description issue, applicant’s amendment cures the previous issue concerning support for amounts of iron of less than 29%, and therefore the rejection is withdrawn. However, it was not agreed in the interview on 4/22/26 that the removal of “the percentages of a) to f) adding up to 100 wt%” has support in the specification. See Examiner Interview Summary dated 5/5/26 and new 112(a) rejection above.
With respect to the 112(b) rejection concerning iron-based and whether that allows for where other elements in the alloy can be present in an amount of greater than the amount of iron, Applicant points to Table 1 in the specification where examples 5-10 and 12 include iron in the highest amount and this combined with the common meaning in the art would be understood to limit the claims to where Fe is the component added in the highest amount (Applicant’s remarks, pg. 11, 2nd – 3rd paragraphs).
However, the common meaning for the phrasing leads to the clarity issues. It is not clear whether the preamble controls the scope of the claim and requires that iron to be the largest element or if the stated composition amount for iron controls the scope of the claim. Applicant’s data in Table 1 adds to the unclarity as Inventive Example 4 includes a higher amount of Ni than Fe, but is considered an “iron-based braze filler alloy” (see paragraph [0065] of Specification and Table 1). Thus applicant’s arguments are not persuasive and the rejection is maintained.
Applicant’s arguments, see pg., filed 6/4/26, with respect to the rejection(s) of claim(s) 1, 3-4, 6-9, 11-16, and 21 under 35 USC 103 have been fully considered and are persuasive. It is agreed that it would not be obvious to select Ni and Fe from a group of Ni, Fe, and Co and to also select B and P as well as reach the claimed ranges for these elements from the teachings in Yoshizawa. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Sjodin.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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 Hendricks can be reached on (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
