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 the Claims
Claims 1-12 and 17-24 are pending wherein claims 1-3, 5-6, 8 and 10-12 are amended, claims 17-24 are new and claims 13-16 are canceled.
Status of Previous Rejections
The previous rejection of claims 2, 5-6, 8 and 10-12 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendment to claims 2, 5-6, 8 and 10-12.
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 and 17-24 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (CN 112063879).
In regard to claim 1, Liu et al. (CN ‘879) discloses palladium-copper-silver alloys having compositions relative to that of the instant invention as set forth below (abstract and Summary of the invention).
Element
Instant Claim
(weight percent)
Liu et al. (CN ‘879)
(weight percent)
Overlap
Pd
40 – 58
40 – 60
40 – 58
Cu
25 – 42
25 – 45
25 – 42
Ag
6 – 20
5 – 15
6 – 15
Ru/Rh/Re
0 – 6
1.5 – 5 Ru
1.5 – 5 Ru
Impurities
0 – 1
0
0
The Examiner notes that the amounts of palladium, copper, silver, ruthenium and impurities disclosed by Liu et al. (CN ‘879) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill prior to the filing of the instant invention to select the claimed amounts of palladium, copper, silver, ruthenium and impurities from the amounts disclosed by Liu et al. (CN ‘879) because Liu et al. (CN ‘879) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of” in claim 1, the Examiner notes that Liu et al. (CN ‘879 does not require the presence of elements beyond what is specified in the claims and therefore would read on this transitional language. MPEP 2111.03.
With respect to the recitation “wherein the palladium-copper-silver alloy contains a crystalline phase with a B2 crystal structure” in claim 1, the specification indicates at [0072] that the crystalline phase with the B2 crystal structure may be produced by annealing at a temperature between 300 and 450°C for at least 2 minutes. Liu et al. (CN ‘879) teaches an aging treatment at a temperature in the range of 350 to 500°C for 30 to 120 minutes (page 3). Therefore, it would be expected that the alloy of Liu et al. (CN ‘879) after aging would have a crystalline phase with the B2 crystal structure.
With respect to the recitation “wherein the palladium-copper-silver alloy has 0% to 10% by volume of precipitates of silver, palladium, and binary silver-palladium compounds” in claim 1, since Liu et al. (CN ‘879) discloses a substantially similar composition and processing, 0 to 10% precipitates of silver, palladium and binary silver-palladium compounds would be expected. MPEP 2112.01 I.
In regard to claim 2, Liu et al. (CN ‘879) discloses palladium-copper-silver alloys having compositions relative to that of the instant invention as set forth below (abstract and Summary of the invention).
Element
Instant Claim
(weight percent)
Liu et al. (CN ‘879)
(weight percent)
Overlap
Pd
41 – 56
40 – 60
41 – 56
Cu
26 – 42
25 – 45
26 – 42
Ag
7 – 19
5 – 15
7 – 15
Ru/Rh/Re
0 – 6
1.5 – 5 Ru
1.5 – 5 Ru
Impurities
0 – 1
0
0
In regard to claim 3, Liu et al. (CN ‘879) discloses palladium-copper-silver alloys such as one that would comprise 41 weight percent palladium, 26 weight percent copper and 8 weight percent silver (abstract and Summary of Invention). As such the ratio of palladium to copper would be 1.57, which would meet the claimed ratio of a palladium to copper ratio of 1.05 to 1.6 and the palladium to silver would be 5.125, which would meet the claimed ratio of 3 to 6.
In regard to claims 4 and 6, Liu et al. (CN ‘879) discloses 1.5 to 5 weight percent ruthenium (abstract and Summary of Invention).
In regard to claim 5, Liu et al. (CN ‘879) discloses a substantially similar composition processed in a substantially manner. Therefore, claimed content/amount of precipitates of ruthenium arranged at grain boundaries would be expected. MPEP 2112.01 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, discloses a substantially similar composition processed in a substantially manner. Therefore, a crystalline phase with the B2 crystal structure with silver in an amount of at least 6% by weight would be expected. MPEP 2112.01 I.
In regard to claim 8, the claims are drawn to product and not a process and claim 8 appears to only rely upon processing limitations. Even though product-by-process claims are limited by and defined by the process, the 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113.
With respect to the recitation “where the palladium-copper-silver alloy has a mean grain size of at most 2 µm” in claim 9, Liu et al. (CN ‘879) discloses processing a substantially similar composition in a substantially similar manner. Therefore, the claimed grain size would be expected. MPEP 2112.01 I.
In regard to claim 10, Liu et al. (CN ‘879) discloses processing a substantially similar composition in a substantially similar manner. Therefore, the claimed content of precipitates of silver, palladium, and/or binary silver-palladium compounds would be expected. MPEP 2112.01 I.
In regard to claims 11-12, Liu et al. (CN ‘879) discloses forming a needle or spring-loaded probe (molded body) it would be used as a potentiometer brush wire or a semiconductor test probe material (page 4). 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 claims 17 and 19, Liu et al. (CN ‘879) discloses palladium-copper-silver alloys having compositions relative to that of the instant invention as set forth below (abstract and Summary of the invention).
Element
Instant Claim
(weight percent)
Liu et al. (CN ‘879)
(weight percent)
Overlap
Pd
41 – 56
40 – 60
41 – 56
Cu
26 – 42
25 – 45
26 – 42
Element
Instant Claim
(weight percent)
Liu et al. (CN ‘879)
(weight percent)
Overlap
Ag
10 – 18
5 – 15
10 – 15
Ru/Rh/Re
0 – 6
1.5 – 5 Ru
1.5 – 5 Ru
Impurities
0 – 1
0
0
The Examiner notes that the amounts of palladium, copper, silver, ruthenium and impurities disclosed by Liu et al. (CN ‘879) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill prior to the filing of the instant invention to select the claimed amounts of palladium, copper, silver, ruthenium and impurities from the amounts disclosed by Liu et al. (CN ‘879) because Liu et al. (CN ‘879) discloses the same utility throughout the disclosed ranges.
In regard to claim 18, Liu et al. (CN ‘879) discloses a substantially similar composition processed in a substantially manner. Therefore, claimed content/amount of precipitates of ruthenium arranged at grain boundaries would be expected. MPEP 2112.01 I.
In regard to claim 20, Liu et al. (CN ‘879) discloses a hardness in the range of 360 to 460 Hv, which would overlap the range of the instant invention (abstract and page 4). MPEP 2144.05 I.
With respect to the recitation “the heat treatments take place at a temperature between 700°C and 950°C and quenching takes place after the 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” in claim 20, these are processing limitations whereas the claims are drawn to a product. Even though product-by-process claims are limited by and defined by the process, the 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 or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. MPEP 2113.
With respect to the recitation “wherein the palladium-copper-silver alloy has from 0% to 1% by volume precipitates of silver, palladium, and/or binary silver-palladium compounds” in claim 21, Liu et al. (CN ‘879) discloses substantially similar compositions processed in a substantially similar manner. Therefore, 0% to 1% by volume precipitates of silver, palladium, and/or binary silver-palladium compounds would be expected. MPEP 2111.02 I.
With respect to the recitation “wherein the palladium-copper-silver alloy has no precipitates of silver, palladium, and/or binary silver-palladium compounds” in claim 22, Liu et al. (CN ‘879) discloses substantially similar compositions processed in a substantially similar manner. Therefore, 0% by volume precipitates of silver, palladium, and/or binary silver-palladium compounds would be expected. MPEP 2111.02 I.
In regard to claim 23, Liu et al. (CN ‘879) discloses forming a needle or spring-loaded probe (molded body) it would be used as a potentiometer brush wire or a semiconductor test probe material (page 4). However, merely changing the size/shape of a prior art product would not be sufficient to distinguish that product from the prior art. MPEP 2144.04(IV)(A) and 2144.04(IV)(B).
With respect to the recitation “wherein the palladium-copper-silver alloy has an electrical conductivity of 26-30% IACS” in claim 24, Liu et al. (CN ‘879) discloses substantially similar compositions processed in a substantially similar manner. Therefore, the claimed property would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed January 9, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the Office’s sole reliance on overlapping annealing/aging temperature ranges and periods of times ignores additional process steps that differ between the teachings of the instant application and Liu et al. (CN ‘879), the performance of which lead to palladium-copper-silver alloys with different properties and one of ordinary skill would not expect that the alloy of Liu et al. (CN ‘879) would have a crystalline phase with the B2 crystal structure and Liu et al. (CN ‘879) does not contain any teaching or suggestion evidencing the production of such an alloy.
In response, the Examiner notes that it is not only overlapping of annealing/aging steps, but also an overlapping composition that leads one having ordinary skill in the art to associate the presence of the claimed structure of Liu et al. (CN ‘879) with the instant claims. [0072] of the instant specification indicates how the B2 structure is formed and because the annealing set forth therein overlaps the aging set forth in Liu et al. (CN ‘879), the same or substantially the same structure would be expected.
Second, the Applicant primarily argues that prior to the annealing step referenced by the Office above, the instant application teaches that the alloy is rolled to achieve the final thickness of not more than 100 micrometers and references [0150], [0180] and [0195] indicating that the thickness of the alloy is a variable affecting the final properties of the alloy, such as the presence of B2 crystal structure and Liu et al. (CN ‘879) does not teach the production of palladium-copper-silver alloy by rolling the alloy to a thickness of not more than 100 micrometers prior to annealing and instead Liu et al. (CN ‘879) teaches elongation of the alloy to achieve a wire having a minimum thickness of 0.5 mm.
In response, the Examiner notes that the instant specification does not make it to [0180] and [0195] as the last paragraph is [0176] and [0150] is a specific example of a palladium-copper-alloy that is rolled, solution annealed and then annealed, but there is no indication that B2 structure is not formed unless rolling occurs. [0072] of the instant specification indicates how the B2 structure is formed and because the annealing set forth therein overlaps the aging set forth in Liu et al. (CN ‘879), the same or substantially the same structure would be expected. Merely changing the thickness of a prior art product would not be sufficient to patently distinguish from that prior art product. MPEP 2144.04(IV)(A). Additionally, Applicant is referencing processing steps whereas the claims are drawn to a product. MPEP 2113.
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759