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 1-4, 6-8, 11-12 and 14-15 are canceled. Claim 17 is newly added. Claims 5, 9-10, 13, 16 and 17 are pending where claims 13 has been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims over JP 2003119527 A to Ichida et al in view of CN 102851533 A to He et al have been withdrawn in view of amendments to the claims.
The previous 35 USC § 103 rejections of the claims over CN 102851533 A to He et al have been maintained.
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) 5, 9-10, 13, 16 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 102851533 A to He et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 13 and 17, He discloses a plunger pump (i.e. sliding block) for a hydraulic part wherein the part is formed from a lead-free brass alloy containing the following composition which overlaps the instantly claimed composition as follows (He, abstract, para [0014-0020, 0038]):
Element
Claimed wt%
He wt%
Overlaps?
Cu
57.0-60.0
59.0-63.0
Yes
Al
1.0-2.0
1.0-2.5
Yes
Mn
1.5-2.1
1.2-4.0
Yes
Fe
0.1-1.0
0-0.7
Yes
Ni
0.06-1.0
0-0.4
Yes
Sn
0-<0.06
0.1-0.5
See below
Si
0.5-2.0
0.8-2.8
Yes
Pb
0.02-<0.1
0-<0.1
Yes
Zn
Balance
Balance
Yes
Regarding the instantly claimed Sn content, the lower limit of the disclosed Sn content of He of 0.1 wt% Sn is disclosed with one significant figure and as such would allow for values that round to 0.1 wt% Sn, i.e. values of 0.05 wt% Sn or more, and as such overlaps the instantly claimed Sn content of 0-0.06 wt%. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of He including the instantly claimed because He discloses the same utility throughout the disclosed ranges. Alternatively, 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 (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the lower limit of He of 0.1 wt% Sn is close enough to upper limit of the instantly claimed range of 0-<0.06 wt% Sn that one of ordinary skill in the art would expect them to have the same properties.
Regarding the instantly claimed CuEq, the instantly CuEq fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the alloy of He is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of He including those which fall within the boundaries of the instantly claimed composition-based formulas because He discloses the same utility throughout the disclosed ranges.
Regarding the limitations “consisting of” or “consisting essentially of,” the alloy of He need not contain any elements not recited in the instant claims.
Regarding claims 5, 9-10 and 16 the alloy of He overlaps the scope of instant claims 5, 9-10 and 16.
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2003119527 A to Ichida et al (an English language machine translation has been relied upon for examination purposes) in view of CN 102851533 A to He et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 17, Ichida discloses a sliding block for a hydraulic unit wherein the part is formed from a lead-free brass alloy containing the following composition which overlaps the instantly claimed composition as follows (Ichida, abstract, para [0001, 0007-0016]):
Element
Claimed wt%
Ichida wt%
Overlaps?
Cu
57.0-60.0
Balance (16-79.8)
Yes
Al
1.0-2.0
0-6
Yes
Mn
1.5-2.1
0.1-6
Yes
Fe
0.1-1.0
0-3
Yes
Ni
0.06-1.0
0-4
Yes
Sn
0-0.06
≤impurity
Yes
Si
0.5-2.0
0-3
Yes
Pb
0.02-<0.1
≤impurity
See below
Zn
Balance
20-45
Yes
Regarding the instantly claimed Pb content, Ichida discloses that the alloy of Ichida is “lead-free” but that the alloy contains impurities (Ichida, para [0009]). Ichida does not explicitly disclose the upper limit of said impurities, specifically any Pb impurities.
He discloses “lead-free” brass means that no lead is added, but that lead exists as an inevitable trace impurity in various elements of the raw materials and that brass with a lead content of less than 0.1 wt% (overlapping the instantly claimed range of 0.02 to less than 0.1 wt% Pb) meets the standards of “lead-free” brass (He, para [0007, 0012]).
Regarding claim 17, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to allow for up to less than 0.1 wt% Pb (overlapping the instantly claimed range of 0.02 to less than 0.1 wt% Pb) in the lead-free brass of Ichida as suggested by He. The motivation for doing so is that that lead exists as an inevitable trace impurity in various elements of the raw materials and that brass with a lead content of less than 0.1 wt% (overlapping the instantly claimed range of 0.02 to less than 0.1 wt% Pb) meets the standards of “lead-free” brass (He, para [0007, 0012]), and allowing for some amount of Pb impurities would save on costs associated with eliminating Pb down to the atom, if such a process is even possible.
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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Ichida in view of He including the instantly claimed because Ichida discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed CuEq, the instantly CuEq fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art, In re Cooper and Foley 1943 C.D.357, 553 O.G.177; 57 USPQ 117, Taklatwalla v.Marburg. 620 O.G.685, 1949 C.D.77, and In re Pilling, 403 O.G.513, 44 F(2) 878, 1931 C.D.75. In the instant case, as the alloy of Ichida is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected any portion of the disclosed ranges of each element of Ichida in view of He including those which fall within the boundaries of the instantly claimed composition-based formulas because Ichida discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed limitation of “consisting essentially of,” the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially affect the basic and novel characteristics of applicant’s invention (see MPEP 2111.03 [R-3]). In the instant case, there is no clear indication in the instant specification or instant claims that the alloy of Ichida in view of He contains any additional materials that materially affect the basic and novel characteristics of applicant's invention.
Response to Amendment
The declaration under 37 CFR 1.132 filed 11/18/2025 is insufficient to overcome the rejection of claims 5, 9-10, 13, 16 and 17 based upon 35 U.S.C. 103 as being unpatentable over CN 102851533 A to He et al as set forth in the last Office action because of the following reason.
The declaration filed 11/18/2025 states a variety of alleged differences between less than 0.06% and 0.1% Sn, but the declaration provides no evidence or data demonstrating the alleged differences. Thus, the declaration fails to show any major difference in properties between less than 0.06% and 0.1% Sn.
Response to Arguments
Applicant's arguments filed 5/27/2025 have been fully considered but they are not persuasive.
Applicant argues that the Sn content of the instant claims and the Sn content of He do not overlap. This is not found persuasive because regarding the instantly claimed Sn content, the lower limit of the disclosed Sn content of He of 0.1 wt% Sn is disclosed with one significant figure and as such would allow for values that round to 0.1 wt% Sn, i.e. values of 0.05 wt% Sn or more, and as such overlaps the instantly claimed Sn content of 0-0.06 wt%. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of He including the instantly claimed because He discloses the same utility throughout the disclosed ranges. Alternatively, 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 (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the lower limit of He of 0.1 wt% Sn is close enough to upper limit of the instantly claimed range of 0-0.06 wt% Sn that one of ordinary skill in the art would expect them to have the same properties.
Applicant argues that a lower limit of 0.1 Sn should not be interpreted to include values that round to 0.1 Sn and instead should be interpreted to exclude any values below 0.10000… This is not found persuasive because this interpretation ignores the technical concept of significant figures that are used in technical documents including patents. An example of the use of significant figures in both He and the instant applicant can be found throughout the instantly claimed composition ranges as well as the claimed composition ranges of He. For instance, both the instant claims and He disclose a lower limit of Al of “1.0.” If applicant’s interpretation of ignoring significant figures were accurate, there would be no reason to write the lower limit as “1.0” as “1” would be sufficient. The same argument applies to the instantly claimed Cu content. The disclosed lower limit of Sn of “0.1” is not analogous to “0.10” or “0.100” or “0.1000” or, as applicant argues “0.10000….” as the disclosed digits after the decimal point indicate the precision of the number. The lower limit of the disclosed Sn content of He of 0.1 wt% Sn is disclosed with one significant figure and as such would allow for values that round to 0.1 wt% Sn, i.e. values of 0.05 wt% Sn or more, and as such overlaps the instantly claimed Sn content of 0-0.06 wt%. 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 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of He including the instantly claimed because He discloses the same utility throughout the disclosed ranges. Alternatively, 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 (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the lower limit of He of 0.1 wt% Sn is close enough to upper limit of the instantly claimed range of 0-0.06 wt% Sn that one of ordinary skill in the art would expect them to have the same properties.
Applicant argues that the declaration filed 11/18/2025 demonstrates the difference between less than 0.06% Sn and 0.1% Sn. This is not found persuasive because the declaration filed 11/18/2025 states a variety of alleged differences between less than 0.06% and 0.1% Sn, but the declaration provides no evidence or data demonstrating the alleged differences. Thus, the declaration fails to show any major difference in properties between less than 0.06% and 0.1% Sn.
Applicant argues that instant claim 17 is patentable over Ichida in view of He because Ichida contains Bi which is excluded by the recitation of “consisting essentially of.” This is not found persuasive because regarding the instantly claimed limitation of “consisting essentially of,” the transitional phrase “consisting essentially of” limits the scope of a claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristic(s)” of the claimed invention. For the purposes of searching for and applying prior art under 35 U.S.C. 102 and 103, absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, “consisting essentially of” will be construed as equivalent to “comprising.” If an applicant contends that additional steps or materials in the prior art are excluded by the recitation of “consisting essentially of,” applicant has the burden of showing that the introduction of additional steps or components would materially affect the basic and novel characteristics of applicant’s invention (see MPEP 2111.03 [R-3]). In the instant case, there is no clear indication in the instant specification or instant claims that the alloy of Ichida in view of He contains any additional materials that materially affect the basic and novel characteristics of applicant's invention.
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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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