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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/2/26 has been entered.
Status of Claims
Claims 1, 3-9, 11-16, and 21 are examined in this office action as claims 2 and 17-20 are directed to a withdrawn invention, claim 10 is canceled, claim 21 is new, and claims 1 and 7-8 were amended in the reply dated 2/2/26.
Claim Interpretation
Claim 1 recites “An iron-based braze filler alloy comprising:” and then concludes after reciting the compositional elements a) through f) with “the percentages of a) to f) adding up to 100 wt %”. The transitional term “comprising” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps, see MPEP § 2111.03. This would normally allow for other components to be a part of the iron-based braze filler alloy. However, as applicant has specifically noted that the amounts of nickel, chromium, silicon, phosphorus, boron, and iron must add up to 100 wt%, the claimed composition excludes all other elements and will be interpreted as such below.
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, 3-6, 9, and 11-16 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.
Claim 1 has been amended to recite where “the balance being iron in an amount of less than 40 wt %” in element f). Applicant points to paragraphs [0022] and [0057] of the specification as support for this amendment. The specification teaches in these paragraphs that the iron is from 29 to 60 wt%, but does not teach where the iron amount is below 29 wt%. Therefore, the specification does not describe the claimed subject matter of iron in an amount of less than 40 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 2-6, 9, and 11-16 are also rejected as they depend from claim 1 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%. 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 3-9, 11-16, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0015574 A1 of Yoshizawa.
As to claims 1, 3-9, and 21, Yoshizawa discloses a brazing alloy powder which is an alloy powder that includes particles including 55 mass % or more of at least one element selected from Ni, Fe, and Co (Yoshizawa, paragraph [0008]), meeting the limitation of an iron-based brazing filler alloy. Yoshizawa discloses the composition in comparison to the claims in Table A below.
Table A
Element
Claims 1, 7, 8, and 21 limitation unless otherwise noted (wt%)
Yoshizawa claim 1 (mass %)
a) Ni
0 to 35%
Claims 3 & 7: 25 to 35 %
Claim 8: 28 to 33 %
Claim 21: 29 to 31.7%
55 % or more of at least one selected from Ni and Fe
b) Cr
0 to 25 %
Claim 4 & 7: 18 to 25%
Claim 8: 18 to 22 %
Claim 21: 20.4 to 21.5%
15 to 30 % (claim 4)
c) Si
5 to 6 %
Claim 8: 5 to 6%
Claim 21: 4.4 to 5.8%
0 to 8 % (claim 4)
d) P
5 to 11 %
Claim 8: 6-10%
Claim 21: 6.1 to 9.6%
1 to 12 % of at least one elements selected from B and P (claim 4)
e) B
0 to 1 %
Claim 5 : greater than 0 but less than 1 %
Claims 6-8: 0.1 to 0.5 %
Claim 9: 0.3 to 0.4 %
Claim 21: 0.1 to 0.5%
1 to 12 % of at least one elements selected from B and P (claim 4)
f) Fe
Balance in an amount of less than 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%
55 % or more of at least one selected from Ni and Fe
Total amount of Fe, Ni, and Cr
From 84 to 90%
70 to 98%
So Yoshizawa discloses where Ni and Fe is 55 mass % or more, overlapping the combined claimed ranges for these elements of 57% to 90%. Yoshizawa also discloses a range for P and B that overlaps the combined claimed range for these elements of 5 to 12%. Yoshizawa discloses overlapping ranges for Cr and Si. 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 alloy powder with reduced defects and increased joint strength (Yoshizawa, 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 Yoshizawa also results in overlapping ranges for the claimed ratios of a/(a + f) which would be 0-1 in Yoshizawa, overlapping the claimed range of 0-0.5 and for b/(a + b + f) which would be 0.153-0.428 in Yoshizawa, overlapping the claimed range of 0-0.33.
Yoshizawa discloses an example where the liquidus temperature is 966°C (Yoshizawa, paragraph [0062]), meeting the limitation of where the liquidus temperature is less than or equal to 1,075°C. Further, “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 Yoshizawa would necessarily have the same properties of a liquidus temperature of less than or equal to 1,075°C.
Finally, Yoshizawa does not explicitly disclose where the alloy has the property of a brazing temperature of less than 1,100°C, where the solidus temperature is less than or equal to 1,030°C, nor where the alloy has a melting range where the difference between the solidus and liquidus temperature is less than 85°C. 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 Yoshizawa discloses the overlapping composition, this composition must possess the same properties of brazing temperature, solidus temperature, and melting range between solidus and liquidus temperatures thereby meeting the claim limitations.
As to claims 11-12 and 14-15, while Yoshizawa discloses the alloy of claim 1, see claim 1 rejection above, Yoshizawa 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) and Yoshizawa does not disclose where the difference between the solidus temperature and the liquidus temperature is less than 50°C (claim 14) nor does Yoshizawa 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 Yoshizawa discloses the overlapping composition, this composition must possess the same properties of brazing temperature, solidus temperature, and melting range between solidus and liquidus temperatures, thereby meeting the claim limitations.
As to claim 13, Yoshizawa discloses an example where the liquidus temperature is 966°C (Yoshizawa, paragraph [0062]), meeting the limitation of where the liquidus temperature is less than or equal to 1,060°C. Further, “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 Yoshizawa would necessarily have the same properties of a liquidus temperature of less than or equal to 1,075°C.
As to claim 16, brazing alloy powder comprising particles including 55 mass % or more of at least one element selected from Ni, Fe, and Co, meeting the claim limitation of the alloy being in the form of a powder or tape.
Response to Arguments
With respect to the 103 rejection over Yoshizawa, applicant argues that the instant amendment to recite a balance of iron in an amount of less than 40 wt% differentiates the claims from the art (Applicant’s remarks, pg. 8, 1st paragraph). Applicant argues that as Yoshizawa provides no suggestion as to the individual mass % amounts of Fe and Ni within the brazing material (Applicant’s remarks, pg. 9, 2nd paragraph). Applicant notes that the examples in Yoshizawa are Ni-based alloy powders and as such a skilled artisan would have found no teaching as to an amount of iron in Yoshizawa’s Fe-based alloy powder (Applicant’s remarks, pg. 10, 1st and 2nd full paragraphs). Applicant argues that no modification of Yoshizawa would have rendered the instant claims obvious to one of ordinary skill in the art (Applicant’s remarks, pg. 11, 1st paragraph).
“The use of patents as references is not limited to what the patentees describe as their
own inventions or to the problems with which they are concerned. They are part of the
literature of the art, relevant for all they contain.” A reference may be relied upon for all
that it would have reasonably suggested to one having ordinary skill the art,
including non-preferred embodiments, see MPEP § 2123(I). In the instant case, Yoshizawa recites the inclusion of 55 mass% or more of one or more of Ni, Fe, and Co in its brazing composition and a person of ordinary skill does not need further exact examples to carry out this invention. This is merely a composition formed of elements and a person of ordinary skill can select from these overlapping ranges to reach the claimed invention. There is no claim of criticality nor indicia of unexpected results from the claimed composition. When a compositional range is disclosed, all of the points within that range are disclosed. Here, by disclosing where Fe and Ni are present in an amount of 55 mass% or more, it is overlapping the claimed invention and thereby disclosing the claimed invention. This is recognized in the MPEP which states that “In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.”, see MPEP § 2144.05(I).
Applicant also argues that at least claims 7-8 are separately allowable as they recite a boron amount of 0.1 wt% to 0.5 wt% whereas Yoshizawa cautions against boron amounts of less than 1 mass% and therefore it would not be obvious to select amounts of less than 1 mass% of boron (Applicant’s remarks, pg. 11, last paragraph – pg. 12, 1st paragraph).
However, this is not what Yoshizawa teaches. The admonishment concerning amounts of less than 1 mass% is concerning the combined amount of melting point reducers phosphorus and boron, not merely boron as applicant incorrectly asserts. Yoshizawa states in paragraph [0043] that “If Q is less than 1 mass %, formation of amorphous phase becomes unstable” and earlier in the paragraph notes that “Q is at least one element selected from B or P”. Thus, Yoshizawa is not teaching away from selecting amounts of boron of less than 1%, it is teaching against the combined amount of boron and phosphorus together being less than 1%. As Yoshizawa teaches an overlapping range for the amount of boron, the claimed ranges for boron are obvious, see MPEP § 2144.05 I.
Finally, applicant argues that new claim 21 is allowable over the prior art (Applicant’s remarks, pg. 12, last paragraph, however a rejection is made for reasons stated above. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Also, applicant requests rejoinder of the withdrawn claims (Applicant’s remarks, pg. 13, 2nd full paragraph), however as the instant claims are not allowable, rejoinder is not ripe for review. However, it is noted that withdrawn claim 2 no longer falls within the scope of linking claim 1.
Conclusion
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.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733