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 1-28 are pending where claims 1, 4-6, 13, 14 and 27 have been amended. Claims 27 and 28 are withdrawn from consideration and claims 1-26 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 102 rejections of the claims have been withdrawn in view of amendments to the claims.
The previous 35 USC § 103 rejections of the claims obvious over CN 114752807A to Wang et al have been maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claim 16 recites the limitation “wherein a mole ratio of Zr to Nb is from 0.2 to 1,” which is already recited in instant claim 1, from which instant claim 16 depends.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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) 1-26 is/are rejected under 35 U.S.C. 103 as being obvious over CN 114752807A to Wang et al (hereinafter referred to as Wang ‘807).
Regarding claim 1, 4 and 9-12, Wang ‘807 discloses a Cu-based alloy consisting of the following composition, which lies close to the instantly claimed composition as follows:
Element
Claimed wt%
Wang ‘807 Ex 2 wt%
Lies within?
Cr
1.0-2.0
1.6
Yes
Nb
0.5-1.5
1.12
Yes
Zr
0.1-0.5
0.2
Yes
O
<0.025
≤impurity
Yes
N
<0.01
≤impurity
Yes
C
<0.01
≤impurity
Yes
Sn
<0.12
≤impurity
Yes
Fe
<0.1
≤impurity
Yes
Zr/Nb molar ratio
0.2-1
0.18
Close at 0.18-0.2
Cu
Balance
Balance
Yes
Wherein the alloy comprises Cr2Nb precipitates within the grain boundaries and Cu5Zr and Cr precipitates in the grain matrix, and wherein the alloy is manufactured by annealing at 980 °C (within the claimed range of 950 to 980 °C” and then aging at 475 °C (within the claimed range of 460 to 490 °C).
(Wang ‘807, abstract, Example 2, para [0044-0050])
Regarding the instantly claimed molar ratio of Zr/Nb 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 molar ratio of Zr to Nb of example 2 of Wang ‘807 of 0.18 is close enough to the instantly claimed range of molar ratio of Zr to Nb of 0.2 to 1 that one of ordinary skill in the art would expect them to have the same properties, especially considering that 0.18 is within distance of rounding to the instantly claimed range of “0.2.” Additionally in the alternative, Wang ‘807 more broadly allows for a Cr content of 1.0-2.0 wt% and a Nb content of from 0.85-1.7 wt%, which allows for a molar ratio of Zr to Nb overlapping the instantly claimed ranges. 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]). The instantly claimed molar ratio 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 Wang ‘807 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 Wang ‘807 including those which fall within the boundaries of the instantly claimed composition based formulas because Wang ‘807 discloses the same utility throughout the disclosed ranges.
Regarding claims 2, 3, 5-8, 14 and 17-26, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Wang ‘807 would be expected to have the same or similar properties, microstructures and precipitates as the instantly claimed alloy because the alloy of Wang ‘807 has the same or substantially the same composition, method of manufacturing and disclosed structure.
Regarding claim 13, Wang ‘807 discloses the Cr2Nb grain boundary precipitates are from 5 to 10 µm (within the claimed range of 2 to 20 µm in diameter), the Cr matrix precipitates are from 2 to 8 nm (within the claimed range of 1 to 10 nm in diameter), and the CuZr matrix precipitates are from 20 to 30 nm in diameter (within the claimed range of 10 to 50 nm in diameter) (Wang ‘807, para [0050]).
Regarding claim 15, Example 2 of Wang ‘807 contains Cr 1.6 wt%, Nb 1.12 wt%, Zr 0.2 wt%; the remainder being Cu and unavoidable impurities (Wang ‘807, Example 2, para [0028-0034]). When converted from wt% to mole%, this results in a molar ratio of Cr to Nb of the alloy of Wang ‘807 of 2.55, within the claimed range of 2.5 to 4.0.
Response to Amendment
The declaration under 37 CFR 1.132 filed 6/04/2026 is insufficient to overcome the rejection of claims 1-26 based upon 35 U.S.C. 103 as being obvious over CN 114752807A to Wang et al as set forth in the last Office action because of the reasons set forth below in the response to arguments section.
Response to Arguments
Applicant's arguments filed 6/04/2026 have been fully considered but they are not persuasive.
Applicant argues that the examples of Wang ‘807 have a Zr/Nb ratio lower than the instantly claimed range of 0.2-1. This is not found persuasive because regarding the instantly claimed molar ratio of Zr/Nb 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 molar ratio of Zr to Nb of example 2 of Wang ‘807 of 0.18 is close enough to the instantly claimed range of molar ratio of Zr to Nb of 0.2 to 1 that one of ordinary skill in the art would expect them to have the same properties, especially considering that 0.18 is within distance of rounding to the instantly claimed range of “0.2.” Additionally in the alternative, Wang ‘807 more broadly allows for a Cr content of 1.0-2.0 wt% and a Nb content of from 0.85-1.7 wt%, which allows for a molar ratio of Zr to Nb overlapping the instantly claimed ranges. 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]). The instantly claimed molar ratio 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 Wang ‘807 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 Wang ‘807 including those which fall within the boundaries of the instantly claimed composition based formulas because Wang ‘807 discloses the same utility throughout the disclosed ranges.
Applicant argues that Wang ‘807 does not disclose both CuZr precipitates and Cr precipitates simultaneously in the grain matrix, together with grain-boundary Cr2Nb. This is not found persuasive because the alloy of Wang ’807 Cr2Nb precipitates within the grain boundaries and Cu5Zr and Cr precipitates in the grain matrix, and wherein the alloy is manufactured by annealing at 980 °C (within the claimed range of 950 to 980 °C” and then aging at 475 °C (within the claimed range of 460 to 490 °C) (Wang ‘807, abstract, Example 2, para [0044-0050]).
Applicant argues that the Cr/Nb ratio of Wang ‘807 is outside the instantly claimed ragne of 2.5-4. This is not found persuasive because Example 2 of Wang ‘807 contains Cr 1.6 wt%, Nb 1.12 wt%, Zr 0.2 wt%; the remainder being Cu and unavoidable impurities (Wang ‘807, Example 2, para [0028-0034]). When converted from wt% to mole%, this results in a molar ratio of Cr to Nb of the alloy of Wang ‘807 of 2.55, within the claimed range of 2.5 to 4.0.
Applicant argues that the comparison of examples of the instant alloy to Wang 2020 demonstrates the criticality of the instantly claimed Zr/Nb ratio. This is not found persuasive because an affidavit or declaration under 37 CFR 1.132 must compare the claimed subject matter with the closest prior art to be effective to rebut a prima facie case of obviousness. See MPEP 716.02(e) [R-2]. See In re Baxter Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[W]hen unexpected results are used as evidence of nonobviousness, the results must be shown to be unexpected compared with the closest prior art.”). In the instant case, Example 2 of Wang ‘807 is closer than the example of Wang 2020, and applicant makes no attempt to demonstrate unexpected results of the instantly claimed alloy over Example 2 of Wang ‘807.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. JP 2021127491 to Danjo et al discloses a Cu-based alloy with a composition overlapping the instantly claimed ranges.
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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