CTNF 18/238,619 CTNF 96375 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Priority 02-26 AIA Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. Claim Objections 07-29-01 AIA Claim s 2 and 5-7 are objected to because of the following informalities: Claim 2: “tensile strength is” in line 2 should read “tensile strength of the continuous cast wire rod is” Claim 2: “elongation is” in line 2 should read “elongation of the continuous cast wire rod is” Claim 5: “further contained” in line 2 should read “further contained in the continuous cast wire rod in” Claim 6: “further contained” in line 2 should read “further contained in the continuous cast wire rod in” Claim 7: “which is” in lines 1-2 should read “wherein the continuous cast wire rod is” Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 3-4 are 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. Claim 3 recites the limitation "a worked material after a working process" in line 2. The limitation is indefinite as nothing in claim 3 discloses any relationship between the worked material and the continuous cast wire rod of parent claim 1, making unclear how if at all the cast wire rod is further limited by claim 3. Claim 4 recites the limitation "Zr-P compounds" in line 2. The limitation is indefinite as nothing in claim 4 discloses any relationship between the Zr-P compounds and the continuous cast wire rod of parent claim 1, making unclear how if at all the cast wire rod is further limited by claim 4. Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-12-aia AIA (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. 07-15 AIA Claim s 1-2, 4, and 7 are rejected under 35 U.S.C. 102( a)(1 ) as being anticipated by Oishi et al. (US 20090260727 A1) . Regarding claim 1, Oishi teaches a continuous cast wire rod [0056] of an alloy containing Cu, Zn, and Sn (i.e., Cu-Zn-Sn-based alloy) (Abstract). Oishi teaches the alloy in an embodiment 30 comprising 65.1 mass% Cu, 0.8 mass% Sn, 0.019 mass% Zr, and 0.05 mass% P (Table 1), which are within the claimed ranges. Oishi teaches the alloy in embodiment 30 comprises 33.94 mass% Zn (Table 1), and comprises impurities [0054], thus the alloy has a balance of Zn and impurities. Oishi teaches the alloy comprises 0.019 mass% Zr and 0.05 mass% has a mass ratio of Zr/P of 0.38 (Table 1), which is within the claimed range. When, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated' if one of them is in the prior art, thus Oishi teaches the claimed ranges. See MPEP 2131.03(I). Regarding claim 2, Oishi is silent to wherein a tensile strength is 370 N/mm 2 or greater and an elongation is 14% or greater. However, paragraphs [0012] and [0034] of the present specification discloses the continuous cast wire rod of Cu-Zn-Sn based alloy to have a tensile strength of 370 N/mm 2 or greater and an elongation is 14% or greater, and that the wire rod is cold drawable in accord with the method as presently claimed. As Oishi discloses substantially the same process that Applicant states produces this feature, and that the alloy of embodiment 30 may be cold processed (i.e., cold drawn) (Oishi: Table 3), one of ordinary skill would have a reasonable assumption that the features of claim 2 would also occur when practicing the method of Oishi. See MPEP 2112 § (III-V) and 2112.01 § (I). Regarding claim 4, Oishi is silent to wherein a number density of Zr-P compounds containing Zr and P is in a range of 50 pieces/mm 2 or greater and 500 pieces/mm 2 or less. However, paragraph [0030] of the present specification discloses Zr and P are added together for the purpose of forming fine dendrites when coexisting in the appropriate ranges, and [0033] of the present specification discloses the number of Zr-P compounds being in the appropriate ranges achieves formation of fine dendrites (i.e., the amount of Zr and P results in the appropriate ranges of Zr-P compounds) in accord with the method as presently claimed. As Oishi suggests Zr and P coexisting in the claimed ranges that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that the features of claim 4 would also occur when practicing the method of Oishi. Regarding claim 7, Oishi teaches the continuous cast wire rod of a Cu-Zn-Sn-based alloy is continuous casting such as horizontal continuous casting, upward (upcast), or the like (i.e., an up-drawn continuous cast wire rod) [0026] . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-23-aia AIA 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. 07-20-02-aia AIA 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. 07-21-aia AIA Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Oishi as applied to claim 1 under 35 USC 102(a)(1) above, further in view of Hori et al. (US 20110100676 A1) and Ishida et al. (US 6406566 B1) . Oishi teaches the alloy of embodiment 30 may be cold worked (Table 3), and that a product made from the alloys should be cold worked with proper heat treatment [0057]. Oishi does not teach the process used for cold working or the properties of the product produced. Hori teaches a high strength and high conductivity copper alloy rod or wire (Title), comprising 0.042-0.095 mass% P, 0.005 to 0.70 mass% Sn (Abstract), 0.002 to 0.5 mass % Zn and Zr of 0.001 to 0.1 mass % Zr [0041], and a remainder Cu and impurities (Abstract), thus Hori and Oishi are analogous to the instant application as both are directed to alloys comprising Cu, Sn, Zr, P, and Zn used to make wire. Hori teaches after continuous casting [0021], forming the alloy into wire comprises subjecting the alloy to a heat treatment TH1 at 350-620 °C for 0.5-16 hours [0021], and then cold wire drawing (i.e., cold working) [0021-0022] for example reducing a diameter of the wire from 8 mm to 2 mm (i.e., a cold working ratio of 94%, which is within the claimed range) (Fig. 1, [0099]). Hori teaches the heat treatment and cold wire drawing may be repeated multiple times (i.e., a second heat treatment and second cold working step) [0043]. Hori teaches after the first heat treatment(s), a further heat treatment TH2 is performed at 200 to 700 °C for 0.001 seconds to 180 minutes [0043], followed by another wire drawing process (i.e., cold working) [0043], where the cold working may be from 2 mm to 0.8 mm (equivalent to a working ratio of 84%, which is within the claimed range of the third cold working) (Fig. 1, [0099]). Because Oishi is silent with respect to the conditions used when the alloy is formed into wire by heat treatment and cold working, in order to carry out the invention of Oishi one of ordinary skill in the art would necessarily look to the art for a reference teaching conditions suitable for use within the process of Oishi, such as the heat treating and cold working process of Hori. As Oishi and Hori both relate to Cu-Zn-Sn based alloys comprising Cu, Sn, Zr, P, Zn, and impurities, one of ordinary skill would be motivated to use the heat treating and cold working process of Hori. Hori teaches first and second heat treatments at 350-620 °C for 0.5-16 hours and a third heat treatment at 200 to 700 °C for 0.001 seconds to 180 minutes. This overlaps the claimed values of first and second heat treatment at 550 °C for 2 hours and a third heat treatment at 450 °C for 2 hours. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. See MPEP § 2144.05(I). Hori teaches cold working the alloy after heat treatment [0021-0022], which would be recognized by one of ordinary skill to intrinsically require cooling the alloy from the heat treatment temperature to room temperature (~25 °C). Oishi in view of Hori is silent to how the cooling is performed. Ishida teaches a method of producing a copper-based alloy having shape memory properties and superelasticity (Title), where the alloy comprises Cu, and may further comprise Sn, Zr, P, and Zn (Col. 2 lines 34-42), and the alloy is annealed and cold worked to obtain wire (Col. 6 lines 11-22), thus Ishida and Oishi in view of Hori are analogous to the instant application as both are directed to producing wires made of copper alloys comprising Sn, Zr, P, and Zn by annealing and cold working. Ishida teaches cooling after annealing may be air-cooling (Col. 7 lines 48-50). Because Hori is silent with respect to how cooling is performed between heat treatment and cold working, in order to carry out the invention of Hori one of ordinary skill in the art would necessarily look to the art for a reference teaching a method of cooling between heat treatment and cold working suitable for the copper alloy wire of Hori, such as that of air cooling taught by Ishida. As Hori and Ishida both relate to producing wires made of copper alloys comprising Sn, Zr, P, and Zn by annealing and cold working, one of ordinary skill would be motivated to use the air cooling of Ishida. Oishi in view of Hori and Ishida is silent to wherein a worked material after a working process has a tensile strength of 420 N/mm 2 or greater, an elongation of 22% or greater, and a 0.2% yield strength of 300 N/mm 2 or greater and 350 N/mm 2 or less. However, paragraphs [0013] and [0035] of the present specification discloses “a worked material after a working process preferably has a tensile strength of 420 N/mm 2 or greater, an elongation of 22% or greater, and a 0.2% yield strength of 300 N/mm 2 or greater and 350 N/mm 2 or less, and the working process include: a first heat treatment of holding at 550 °C for 2 hours and subsequently conducing air cooling; a first cold working at a working ratio of 41 %; a second heat treatment of holding at 550 °C for 2 hours and subsequently conducing air cooling; a second cold working at a working ratio of 41 %; a third heat treatment of holding at 450 °C for 2 hours and subsequently conducing air cooling; and a third cold working at a working ratio of 11 %”, in accord with the method as presently claimed. As Oishi in view of Hori and Ishida discloses substantially the same process that Applicant states produces this feature, one of ordinary skill would have a reasonable assumption that the features of claim 3 would also occur when practicing the method of Oishi in view of Hori and Ishida. See MPEP 2112 § (III-V) and 2112.01 § (I) . 07-21-aia AIA Claim s 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Oishi . Regarding claim 5, as indicated above with respect to claim 1, Oishi teaches a continuously cast wire rod as presently claimed. Oishi teaches wherein Al is contained in an amount of 0.01 to 3 mass % (preferably 0.05 to 2.5 mass % and more preferably 0.1 to 2.3 mass %) [0019]. This overlaps the claimed range of wherein Al is further contained in an amount of 0.20 mass% or greater and 0.80 mass% or less. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. Regarding claim 6, as indicated above with respect to claim 1, Oishi teaches a continuously cast wire rod as presently claimed. Oishi teaches wherein Sb is contained in an amount of 0.02 to 0.2 mass %, preferably 0.03 to 0.12 mass % [0019]. This overlaps the claimed range of wherein Sb is contained in an amount of 0.02 mass% or greater and 0.06 mass% or less. The overlap between the ranges taught in the prior art and recited in the claims creates a prima facie case of obviousness because the prior art indicates substantial utility over the entire range disclosed therein, including that portion of the range which also falls within the claimed range. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Nikolas T Pullen whose telephone number is (571)272-1995. The examiner can normally be reached Monday - Thursday: 10:00 AM - 6:00 PM EST. 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, Keith Hendricks can be reached at (571)-272-1401. 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. /Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733 /NIKOLAS TAKUYA PULLEN/Examiner, Art Unit 1733 Application/Control Number: 18/238,619 Page 2 Art Unit: 1733 Application/Control Number: 18/238,619 Page 3 Art Unit: 1733 Application/Control Number: 18/238,619 Page 4 Art Unit: 1733 Application/Control Number: 18/238,619 Page 5 Art Unit: 1733 Application/Control Number: 18/238,619 Page 6 Art Unit: 1733 Application/Control Number: 18/238,619 Page 7 Art Unit: 1733 Application/Control Number: 18/238,619 Page 8 Art Unit: 1733 Application/Control Number: 18/238,619 Page 9 Art Unit: 1733