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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/29/25 has been entered.
Claim Rejections - 35 USC § 112
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, 5, 8, 11, 26, and 31-34 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.
Claims 1 and 34 recite “a balance of nickel to 100 wt%”. It is unclear as to how the balance can be 100% when the most it can be is ~67.9 wt% since a-d add up to 32.1 wt%. The examiner encourages the applicant to simply delete “to 100 wt%”.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3, 5, 8, 11, 26, and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Xai et al. (CN 106141494 A) in view of Cremer et al. (US 2,856,281) and alternatively Miglietti (US 6,520,401 B1).
Regarding claims 1, 3, 5, 11, and 32-34, Xai teaches:
A nickel-rich Ni-Mn-Si -based braze filler alloy [26%Mn, 6%Si, 6%Cu, 3%Zr, 63%Ni; example 1 and 0028, note that this composition is extremely similar to applicant’s example 2 on Table 1, which contains no boron] comprising:
a) manganese in an amount of from 26 wt% to 29 wt%,
b) silicon in an amount of from 6/6.6 wt% to 8/7.2% wt%,
c) copper in an amount of greater than 0/4 wt% to 7/6 wt%, and
e) a balance/ 58/60.9 wt% to 63.5/61.1 wt% of nickel to 100%.
Xai does not teach:
d) boron in an amount of greater than 0.1 wt% to 0.5 wt%,
wherein the nickel-rich braze filler alloy has at least one of:
a solidus temperature which is less than or equal to 1,040/1,030/1,000/975 °C,
a liquidus temperature which is less than or equal to 1,060/1,040/1,030/1,000 °C, or
a melting range where the difference between the solidus temperature and the liquidus temperature is less than or equal to 100/85 °C.
Xai and the claims differ in that Xai does not teach the exact same ranges as recited in the instant claims.
However, one of ordinary skill in the art at the time/before the effective filing date of the invention would have considered the invention to have been obvious because the ranges taught by Xai overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of In re Peterson 65 USPQ2d 1379 (CAFC 2003); In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974), and MPEP 2144.05. This reasoning applies to any claim and limitation in this action where a range is being claimed.
Concerning the claimed B:
Cremer teaches Ni-Mn-Si brazing alloys wherein up to 3 wt% B is added in order to lower the melting point of the braze alloys and the flow point (solidus temperature) should be within 50-100°C of the melting point (liquidus temperature); Table 1, 1:65-69, and 4:48-63.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to add greater than 0.1 wt% and equal to or less than 0.5 wt% of boron to Xai in order to lower the melting point of the alloy to that claimed and/or to make the flow point (solidus temperature) be within 50-100°C of the melting point, minus any unexpected results.
Alternatively:
Miglietti teaches B and Zr are melting point depressants for Ni brazes but boron is about four times stronger; 3:26-40.
Thus, while Xai may add Zr to decrease the melting point; 0020, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to use B because it is a stronger melting point depressant.
Concerning any claimed results, materials, and/or functions:
Note that Xai teaches the brazing temperature is 1020-1100 °C; abstract.
Thus, even before the addition of the B, Xai meets the liquidus temperature limitation.
With the incorporation of B, the prior art alloy, i.e. the alloy based on the combined prior art references above, is identical to the claimed alloy. Thus, it is the examiner’s position that the prior art alloy will achieve any of the claimed properties; such as the solidus, liquidus, melting range, etc. This reasoning applies to any claim below where functional language, material worked upon, and/or a result is claimed.
Regarding claims 8 and 31, all of the limitations of these claims are addressed in the rejections of claims 1 and 5 above except:
a) the amount of manganese is from 26.5 wt% to 27.5/27.1 wt%.
However, since 26 wt% Mn would reasonably include 26.5 wt% Mn, the examiner takes the position that a person having ordinary skill in the art would have reasonably expected that the Mn of Xai would have been the same as, or similar to, the performance in the claimed range. “[A] prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.” MPEP 2144.05 Section I. Note that Xai gives no criticality to the upper limit of Mn.
Regarding claim 26, Xai teaches:
which is in the form of a powder, amorphous foil, atomized powder, paste, tape, or sintered preform [foil; abstract and 0032-0033].
Claims 1, 3, 5, 6, 8, 11, 26, and 31-34 are rejected under 35 U.S.C. 103 as being unpatentable over Cremer et al. (US 2,856,281).
Regarding claims 1, 3, 5, 6, 8, 11, and 31-34, Cremer teaches:
A nickel-rich Ni-Mu-Si -based braze filler alloy [see Table 1 and claims 1, 2, 4, 7, and 8] comprising:
a) manganese in an amount of from 26/26.5 wt% to 29/27.5/27.1 wt%,
b) silicon in an amount of from 6/6.6 wt% to 8/7.2% wt%,
c) copper in an amount of greater than 0/4 wt% to 7/6 wt%,
d) boron in an amount of greater than 0.1 wt% equal to or less than 0.5 wt%, and
e) a balance to 100 wt%/ 60.9/58 wt% to 61.1/63.5 wt% nickel,
wherein the nickel-rich braze filler alloy has at least one of:
a solidus temperature which is less than or equal to 1,040/1,030/1,000/975 °C,
a liquidus temperature which is less than or equal to 1,060/1,040/1,030/1,000 °C, or
a melting range where the difference between the solidus temperature and the liquidus temperature is less than or equal to 100/85 °C [the flow point (solidus temperature) should be within 50-100°C of the melting point (liquidus temperature); 1:65-69].
Concerning the exact claimed ranges
Cremer and the claims differ in that Cremer does not teach the exact same ranges as recited in the instant claims.
However, one of ordinary skill in the art at the time/before the effective filing date of the invention would have considered the invention to have been obvious because the ranges taught by Cremer overlap the instantly claimed ranges and therefore are considered to establish a prima facie case of obviousness. It would have been obvious to one of ordinary skill in the art to select any portion of the disclosed ranges including the instantly claimed ranges from the ranges disclosed in the prior art reference, particularly in view of In re Peterson 65 USPQ2d 1379 (CAFC 2003); In re Geisler 43 USPQ2d 1365 (Fed. Cir. 1997); In re Woodruff, 16 USPQ2d 1934 (CCPA 1976); In re Malagari, 182 USPQ 549, 553 (CCPA 1974), and MPEP 2144.05, minus any unexpected results. This reasoning applies to any claim and limitation in this action where a range is being claimed.
Concerning any claimed results, materials, and/or functions:
Since the prior art article, i.e. the article based on prior art reference above, is identical to the claimed alloy it is the examiner’s position that the prior art alloy will achieve any claimed property; such as the solidus, liquidus, melting range, etc. This reasoning applies to any claim below where functional language, material worked upon, and/or a result is claimed.
Regarding claim 26, Cremer teaches:
which is in the form of a powder, amorphous foil, atomized powder, paste, tape, or sintered preform [powder; 9:30-34].
Response to Arguments
Applicant's arguments filed 12/29/25 have been fully considered but they are not persuasive.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In this case, Xia was not relied upon to teach the inclusion and the claimed amount of boron nor the claimed melting range.
The applicant argues,
“However, Applicant submits that a person ordinarily skilled in the art reviewing XIA would found no discernible disclosure of… a liquidus temperature which is less than or equal to 1,060 °C”.
Xia teaches the brazing temperature is between 1020-1100°C; abs. Also, note that it is common practice in the art to braze between 10-30°C above the melting point of the braze. Since brazing requires the brazing material to melt by definition then Xia intrinsically teaches a range of alloys wherein the liquidus is at least below 1,060 °C.
The applicant argues,
“Further, as noted above, as XIA includes zirconium (and no boron) while the claimed embodiments include boron (but no zirconium), Applicant submits that the Examiner has not identified any discernible teaching to suggest that a person ordinarily skilled in the art would have found no suggestion that these compositions are extremely similar, as alleged by the Examiner. Applicant further notes that the Examiner supports this erroneous allegation by pointing to Applicant's Example 2 in Table 1, which is directed to a non-elected species that does not include boron, while boron content is expressly recited in Applicant's claimed embodiments of independent claims 1 and 34.”
The examiner agrees that example 2 does not include boron but notes that example 2 does achieve the claimed properties. Further, Xia teaches Zr does lower the melting point. Thus, one of ordinary skill in the art would at least suspect that Xia alloy may achieve one of the claimed properties. Furthermore, the Xia alloy clearly falls within the originally filed claim 1 which gives one of ordinary skill the art reasonable expectation to believe that Xia alloy would achieve at least one of the claimed results. Therefore, in the very least the Xia alloy is on the cusp of achieving at least one of the results and with the addition of B as claimed it would assuredly do so.
The applicant argues,
“As shown in the graph below, the boron content in the braze alloy described in CREMER's examples 2 - 5 and 8 - 13 have been plotted against the reported flow point, which a person ordinarily skilled in the art would recognize effectively correlates to the melting temperature. From a review of these plotted values, Applicant submits that a person ordinarily skilled in the art reviewing CREMER would have found no correlation between boron content and melting temperature, such that the Examiner's allegation that it would have been obvious to modify XIA in view of CREMER to include boron to reduce the melting temperature is not supported by the applied art. In fact, as graphically illustrated by the dotted line included in the plot, which has been provided as best as possible based on the scatter, the dotted line plot suggests that, as boron content increases, the flow point/melting temperature increases, which is contrary to the Examiner's allegation for modifying XIA in view of CREMER.”
The examiner notes that no persuasive evidence can be gleaned from this graph. One of ordinary skill in the art would readily understand that one cannot draw any reasonable conclusion about the effect of B from this graph because there is no control point for comparison. Instead, every example varies in amount, number of, and combination of each element. In other words, a proper comparison is to hold all the elements in each example to the same amount, number of, and combination and then only vary the amount of B between each example.
The applicant argues,
“As it has been shown in CREMER's examples 2 - 5 and 8 - 13 and in Applicant's plot above, that adding boron may increase or may decrease the flow point/melting point of CREMER's alloy (but generally increases the flow point/melting point), Applicant submits that, contrary to the Examiner's assertions, a person ordinarily skilled in the art would have found no suggestion in the applied art of record that simply adding boron to XIA's alloy, would result in a decrease in the melting temperature of XIA's alloy. Applicant further directs the Examiner's attention to Applicant's Table 1 in which increasing amounts of boron from 0.1 to 0.3 resulted in lowering solidus and liquidus temperatures and increasing the melting range, while increasing boron from 0.3 to 0.5 increased the solidus and liquidus temperatures and decreased the melting ranges. Thus, Applicant submits that the Examiner's general conclusion drawn from CREMER's disclosure with regard to boron content is erroneous.
Moreover, as the amounts of boron in the examples disclosed in CREMER varies, Applicant submits that a person ordinarily skilled in the art would have found no guidance in CREMER to suggest how much boron should be added to XIA's brazing metal or even if the inclusion of boron in XIA's brazing metal makes sense for the broader Mn-Mn-Si-Cu alloying space.”
The examiner disagrees and notes that adding B to Ni brazes as a melting point suppressant is extremely well-known in the art; see cited reference US 4,075,009 and Miglietti. Even so, Cremer explicitly teaches boron lowers the melting and flow points (flow point = solidus point) of the Ni braze; 4:47-53, that the flow point should be 50-100°F of the melting point, and that up to 3 wt% can be added to accomplish this; Table 1. Thus, a person of ordinarily skill in the art would have found easily discernible teachings in the applied art that suggests adjusting the composition of Xia’s brazing metal/alloy in view of CREMER’s disclosure in order to achieve the claimed values. Lastly, after the addition of B to Xia it stands to reason that where the claimed and prior art products are identical or substantially identical in structure or composition, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). “When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Products of identical chemical composition cannot 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. See MPEP 2112.01. Lastly, while applicant’s examples 3-5 have increasing amounts of boron from 0.1 to 0.3 which resulted in lowering solidus and liquidus temperatures and increasing the melting range, the examples all still have lower solidus and liquidus temperatures than boron-less example 2 and thus, this corroborates the fact that boron lowers the melting point of Ni-brazes.
The applicant argues,
“Applicant further submits that only CREMER's example 8 includes the five recited elements recited in at least Applicant's independent claims 1 and 34. However, the braze alloy in CREMER's example 8 includes boron in an amount (0.9 wt%) outside of Applicant's claimed embodiments. As discussed in the pending application, a high fraction of boron will erode the substrate. Specification, [0020]. Accordingly, Applicant has amended independent claims 1 and 34 to include the recited boron content range recited in claim 8, i.e., greater than 0.1 wt% to 0.5 wt%. Of course, CREMER's example 8 is also deficient in that it includes manganese in an amount outside of the range recited in at least Applicant's independent claims 1 and 34 and silicon in an amount well outside of the range recited in at least Applicant's independent claims 1 and 34, as well as including carbon and iron, neither of which are even suggested in Applicant's claims or disclosure.
Further, Applicant respectfully submits that a review of CREMER reveals that the only exemplary composition in CREMER in which the amount of manganese is within the range recited in Applicant's independent claims 1 and 34 is found in example 7. However, as the composition described in CREMER's example 7 only contains 1.67 wt% silicon, which is well outside of the silicon amount range of 6 wt% to 8 wt% recited in Applicant's independent claims 1 and 34, and fails to even include copper as an element, which is clearly contrary to the expressly recited braze filler alloy recited in at least independent claims 1 and 34. Applicant submits that a person ordinarily skilled in the art would have found no discernible teaching that suggests that example 7 (or any of the other disclosed examples) would have been understood to have suggested modifying XIA in any manner that would have been understood to have rendered obvious the embodiments recited in at least Applicant's independent claims 1 and 34.”
This is not persuasive because Cremer is not limited to its examples. See In re Fracalossi, 681 F.2d 792, 794 n.1 (CCPA 1982); In re Mills, 470 F.2d 649, 651 (CCPA 1972). Instead, all disclosures therein, including Cremer’s ranges, must be evaluated for what they would have fairly suggested to one of ordinary skill in the art. See In re Boe, 355 F.2d 961, 965 (CCPA 1966). Furthermore, any argument drawn to the claimed set of elements is not persuasive as they are do not exclude the inclusion of additional elements.
The applicant argues,
“Moreover, Applicant further notes that, while CREMER discloses flow point temperatures, which as noted above is understood to correlate to a melting temperature, a person ordinarily skilled in the art would have found no teaching in CREMER that suggests a solidus or liquidus temperature for the examples or that suggests a melting range, nor is there any articulated reasoning with technical underpinnings found in CREMER that would have suggested to a person ordinarily skilled to determine the solidus temperature, the liquidus temperature and/or the melting range of a braze filler alloy or to modify the composition of a braze filler alloy in order to adjust the solidus temperature, the liquidus temperature and/or the melting range of the braze filler alloy.”
The applicant is wrong in that the Cremer “flow point” and “melting point” are the same temperature. Cremer states, “the maximum flow point of the brazing alloy should not be greater than approximately 2000 F., and preferably should be within 50 to 100 degrees [F] of the melting point of the braze alloy”; 1:65-69. Thus, Cremer clearly states the flow point; i.e. solidus temperature, is less than the melting point; i.e. liquidus temperature. Thus, any argument based on this incorrect reading of Cremer is moot.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure; see PTO 892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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