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 .
Rejections – 35 U.S.C. 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.
Claim 7 is 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.
It is unclear what is meant by “using” the material according to claim 1 “as a material”. The examiner suggests amending this claim to recite “…comprising the copper alloy plate material according to claim 1.”
Rejections – 35 U.S.C. 103
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.
Claims 1, 2 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shutoh et al. (JP 2020/050923). [Note: For purposes of this rejection, reference will be made to US 2021/0238724. The relevant disclosures of JP ‘923 and US ‘724 are believed to be identical].
Shutoh discloses a copper alloy sheet material comprising amounts of nickel and aluminum, as well as one or more of the additional elements recited in instant claim 1, and with a Ni/Al ratio in accord with instant claim 1; see Table 1 of Shutoh. The Shutoh material has a Vickers hardness of 300 or more; see Table 3A of Shutoh. With respect to claim 7, the purpose of Shutoh is for a conductive spring material; see Shutoh para [0093].
The Shutoh disclosure differs from the claimed invention in that i) Shutoh discloses the presence of a precipitated phase containing Ni and Al but does not state the Cu concentration in that phase as recited in instant claim 1, and ii) Shutoh discloses a number density of fine precipitate particles with a diameter of 20-100 nm as opposed to those with a major axis of 5-50 nm as recited in instant claim 2. However:
a) With respect to the precipitated phase, it appears that this phase as presently claimed is in fact the same phase as the Ni-Al based precipitate disclosed by Shutoh, i.e. this phase appears to be formed in both the prior art and the invention by solution treating and aging a given alloy composition. Further, the present claims require this phase to be 15 to 50 mass% Cu, which would indicate the majority of that phase comprises Ni and Al. One of skill in the metallurgical arts would understand that the actual percentage of Cu in such a phase would depend upon the precise conditions (temperature, time) of the heat treatments of the alloy. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
b) With respect to the fine precipitate particles, the major axis size range presently claimed considerably overlaps the diameter phase of the prior art. Further, the actual examples of the prior art indicate that the number density of those particles is as high as 33 x 107/mm2 (see Shutoh Table 3A), suggesting that the prior art materials would have a sufficient density of particles within the presently claimed size range to meet the requirements of claim 2.
Thus the disclosure of Shutoh et al. ‘923 is held to establish a prima facie case of obviousness of a material as presently claimed.
Claims 1, 3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Shudo et al. (JP 2020/079436). [Note: An English translation of JP ‘436 has been obtained from PE2E search and will be referred to herein].
Shudo discloses a copper alloy plate material comprising amounts of nickel and aluminum, as well as one or more of the additional elements recited in instant claim 1, and with a Ni/Al ratio in accord with instant claim 1; see Table 1 of Shudo. The Shudo material has a Vickers hardness of 300 or more; see Table 3A of Shudo. With respect to claim 7, Shudo discloses a conductive spring member using the plate material; see the Technical Field on p. 1 of the translation of Shudo.
The Shudo disclosure differs from the claimed invention in that i) Shudo discloses the presence of a precipitated phase containing Ni and Al but does not state the Cu concentration in that phase as recited in instant claim 1, and ii) Shudo discloses a ratio of the X ray diffraction intensities of the {311} and {220} planes but not the FWHM of the {220} plane as recited in instant claim 3. However:
a) With respect to the precipitated phase, it appears that this phase as presently claimed is in fact the same phase as the Ni-Al based precipitate disclosed by Shudo, i.e. this phase appears to be formed in both the prior art and the invention by solution treating and aging a given alloy composition. Further, the present claims require this phase to be 15 to 50 mass% Cu, which would indicate the majority of that phase comprises Ni and Al. One of skill in the metallurgical arts would understand that the actual percentage of Cu in such a phase would depend upon the precise conditions (temperature, time) of the heat treatments of the alloy. Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation; see In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
b) The {311}/{220} ratio in the majority of the examples in Table 3A of Shudo is less than 1, meaning the {220} plane has a higher intensity than the {311} in those examples. This implies that the FWHM of the {220} plane would be rather broad, i.e. would suggest a value of 0.50 or more as required by instant claim 3.
Thus, the disclosure of Shudo et al. ‘436 is held to create a prima facie case of obviousness of a material as presently claimed.
Response to Arguments
In response to applicant's arguments that Shutoh’s and Shudo’s conditions of the manufacturing process are different from applicants’, the examiner notes that the examiner’s position of obviousness is not based on using the exact same conditions as applicants. Indeed, applicants point out several differences between their process and Shutoh’s and Shudo’s (pp. 6-11). This, however, is not conclusive of nonobviousness. It is well settled that where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, 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). See MPEP 2112.01. In this regard, the examiner points out that Shutoh and Shudo teach forming by solution treating and aging a given alloy composition (see action pp. 6 and 8). Thus, while Shutoh’s and Shudo’s processes may differ from Applicant’s, it’s the examiner’s position that they do not substantially differ to the extent that applicant has shown that Shutoh’s or Shudo’s product is different from applicant’s.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., controlling the cooling rate after solution treatment such that the average cooling rate from 900C to 700C is set within a range of 110 to 150 C/s) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Alternatively, to the extent that applicant points out varying conditions of Shutoh’s or Shudo’s teachings, the examiner is not relying on these teachings in the rejections. Instead, Applicants do not explicitly dispute the examiner’s determination that
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Conclusion
THIS ACTION IS MADE FINAL. 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 JONATHAN J JOHNSON whose telephone number is (571)272-1177. The examiner can normally be reached Monday-Friday, 6:30 AM - 3 PM.
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JONATHAN JOHNSON
Primary Examiner
Art Unit 1734
/JONATHAN JOHNSON/Primary Examiner, Art Unit 1734
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