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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 19, 2026 has been entered.
Status of the Claims
Claims 1-12, 17-23 and 25 are pending wherein claim 1 is amended, claim 25 is new and claims 13-16 and 24 are canceled.
Status of Previous Rejections
The previous rejection of claims 1-12 and 17-23 under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 112063879) is withdrawn in view of the Applicant’s amendment to claim 1.
Claim Rejections - 35 USC § 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 1-12, 17-23 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Klein et al. (US 2017/0218481).
In regard to claim 1, Klein et al. (‘481) discloses alloys having compositions relative to that of the instant invention as set forth below (abstract, [0010] and [0037]).
Element
Instant Claim
(weight percent)
Klein et al. (‘481)
(weight percent)
Overlap
Pd
40 – 58
about 45 – 55
about 45 – 55
Cu
25 – 42
about 32 – 42
about 32 – 42
Ag
6 – 20
about 8 – 15
about 8 – 15
Re
0 – 6
about 0 – 5
about 0 – 5
The Examiner notes that the amounts of palladium, copper, silver and rhenium disclosed by Klein et al. (‘481) is within the ranges of the instant invention.
With respect to the recitation “consisting of” in claim 1, Klein et al. (‘481) does not require the presence of elements beyond what is specified in claim 1 and therefore would read on this recitation. MPEP 2111.03.
With respect to the recitation “the palladium-copper-silver alloy has 0% to 10% by volume of precipitates of silver, palladium, and binary silver-palladium compounds” in claim 1, Klein et al. (‘481) fails to specify the presence of precipitates of silver, palladium and binary silver-palladium compounds and therefore would read on this recitation.
With respect to the recitation “and the palladium-copper-silver alloy has an electrical conductivity of 26-30% IACS” in claim 1, Klein et al. (‘481) discloses wherein IACS would exceed 25% [0031], which would encompass or overlap the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “the palladium-copper-silver alloy contains a crystalline phase with a B2 crystal structure” in claim 1, Klein et al. (‘481) discloses the same composition (abstract, [0010] and [0037]) and IACS exceeding 25% [0031] and thus the presence of the B2 crystal structure would be expected. 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). MPEP 2112.01 I.
In regard to claim 2, Klein et al. (‘481) discloses alloys having compositions relative to that of the instant invention as set forth below (abstract, [0010] and [0037]).
Element
Instant Claim
(weight percent)
Klein et al. (‘481)
(weight percent)
Overlap
Pd
41 – 56
about 45 – 55
about 45 – 55
Cu
26 – 42
about 32 – 42
about 32 – 42
Ag
7 – 19
about 8 – 15
about 8 – 15
Re
0 – 6
about 0 – 5
about 0 – 5
The Examiner notes that the amounts of palladium, copper, silver and rhenium disclosed by Klein et al. (‘481) is within the ranges of the instant invention.
In regard to claim 3, the ratio of palladium to copper in Klein et al. (‘481) would be about 1.07 to about 1.71875, which would overlap the range of the instant invention. MPEP 2144.05 I. Additionally, the ration of palladium silver in Klein et al. (‘481) would be from about 3 to 6.875, which would encompass the range of the instant invention.
In regard to claim 4, Klein et al. (‘481) discloses 0 to about 5 weight percent rhenium [0037].
In regard to claim 5, Klein et al. (‘481) discloses forming large rhenium precipitates formed in the matrix [0050]. With respect to the recitation “at least 90% by volume of the precipitates are arranged at grain boundaries of the palladium-copper-silver alloy” in claim 5, Klein et al. (‘481) discloses the same composition (abstract, [0010] and [0037]) and IACS exceeding 25% [0031] and thus at least 90% by volume of the precipitates are arranged at grain boundaries of the palladium-copper-silver alloy would expected. 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). MPEP 2112.01 I.
In regard to claim 6, Klein et al. (‘481) discloses wherein there would be up to about 1 weight percent of elements such as ruthenium [0039], which would overlap the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “wherein the crystalline phase with the B2 crystal structure has a silver content of at least 6% by weight” in claim 7, Klein et al. (‘481) discloses the same composition and (abstract, [0010] and [0037]) and IACS exceeding 25% [0031] and thus a crystalline phase with the B2 crystal structure with a silver content of at least 6% by weight would be expected. 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). MPEP 2112.01 I.
With respect to the recitation “wherein the crystalline phase with the B2 crystal structure is obtained by quenching the palladium-copper-silver alloy after a temperature treatment, and/or the palladium-copper-silver alloy is shaped and hardened by multiple heat treatments and multiple coolings” in claim 8., Klein et al. (‘481) discloses annealing followed by quenching [0057]. However, the claim is drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
In regard to claim 9, Klein et al. (‘481) discloses the same composition (abstract, [0010] and [0037]) and IACS exceeding 25% [0031]. Additionally, Klein et al. (‘481) discloses annealing followed by quenching [0057]. Therefore, the claimed mean grain size would be expected.
In regard to claim 10, Klein et al. (‘481) fails to specify the presence of precipitates of silver, palladium and binary silver-palladium compounds and therefore would read on this recitation.
In regard to claim 11-12, Klein et al. (‘481) suggests using the palladium alloys to form probe wires [0027]. However, merely changing the shape of a prior art product would not be sufficient to distinguish that product from the prior art. MPEP 2144.04(IV)(B).
In regard to claim 17, Klein et al. (‘481) discloses alloys having compositions relative to that of the instant invention as set forth below (abstract, [0010] and [0037]).
Element
Instant Claim
(weight percent)
Klein et al. (‘481)
(weight percent)
Overlap
Pd
41 – 56
about 45 – 55
about 45 – 55
Cu
26 – 42
about 32 – 42
about 32 – 42
Ag
10 – 18
about 8 – 15
10 – about 15
Re
0 – 6
about 0 – 5
about 0 – 5
The Examiner notes that the amounts of palladium, copper, silver and rhenium disclosed by Klein et al. (‘481) overlap the amounts of the instant invention. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of palladium, copper, silver and rhenium from the amounts disclosed by Klein et al. (‘481) because Klein et al. (‘481) discloses the same utility throughout the disclosed ranges.
In regard to claim 18, Klein et al. (‘481) discloses forming large rhenium precipitates formed in the matrix [0050]. With respect to the recitation “at least 99% by volume of the precipitates are arranged at grain boundaries of the palladium-copper-silver alloy” in claim 18, Klein et al. (‘481) discloses the same composition (abstract, [0010] and [0037]) and IACS exceeding 25% [0031] and thus at least 90% by volume of the precipitates are arranged at grain boundaries of the palladium-copper-silver alloy would expected. 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). MPEP 2112.01 I.
In regard to claim 19, Klein et al. (‘481) discloses wherein there would be up to about 1 weight percent of elements such as ruthenium [0039], which would overlap the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “wherein the heat treatments take place at a temperature between 700°C and 950°C and quenching takes place after heat treatment, wherein no melting of the palladium-copper-silver alloy takes place during the heat treatment, and/or the palladium-copper-silver alloy is produced by melting metallurgy and is subsequently hardened by rolling and tempering, wherein the palladium-copper-silver alloy has a hardness of at least 380 HV0.05” in claim 20, Klein et al. (‘481) discloses annealing at 900°C followed by quenching [0057]. However, the claim is drawn to a product and not a process. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. Additionally, Klein et al. (‘461) discloses hardnesses above 350 HK [0032].
In regard to claims 21-22, Klein et al. (‘481) fails to specify the presence of precipitates of silver, palladium and binary silver-palladium compounds and therefore would read on this recitation.
In regard to claim 23, Klein et al. (‘481) suggests using the palladium alloys to form probe wires [0027]. However, merely changing the shape of a prior art product would not be sufficient to distinguish that product from the prior art. MPEP 2144.04(IV)(B).
In regard to claim 25, Klein et al. (‘481) discloses wherein there would be up to about 1 weight percent of elements such as ruthenium [0039], which would overlap the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “the palladium-copper-silver alloy has a weight ratio of palladium to copper of at least 1.05 and at most 1.6” in claim 25, the ratio of palladium to copper in Klein et al. (‘481) would be about 1.07 to about 1.71875, which would overlap the range of the instant invention. MPEP 2144.05 I.
With respect to the recitation “the palladium-copper-silver alloy has less than 1% by volume of precipitates of silver, palladium, and binary silver-palladium compounds” in claim 25, Klein et al. (‘481) fails to specify the presence of precipitates of silver, palladium and binary silver-palladium compounds and therefore would read on this recitation.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-12 and 17-23 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 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, Curt Mayes can be reached at 571-272-1234. 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.
/JESSEE R ROE/Primary Examiner, Art Unit 1759
Prosecution Insights