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, 9, 11 and 13-23 are pending wherein claims 1, 9, 11 and 14 are amended and claims 2-8, 10 and 12 are canceled.
Status of Previous Rejections
The previous rejection of claims 9 and 11 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to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendment to claims 9 and 11. The previous rejection of claim 1 under 35 U.S.C. 102(a)(1) as being anticipated by Tanaka (JP 10-029087) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1, 9 and 11 under 35 U.S.C. 103 as being unpatentable over Kempf et al. (EP 1078711 B1) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1 and 9 under 35 U.S.C. 103 as being unpatentable over Kembaiyan (GB 2 409 209) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1 and 13-14 under 35 U.S.C. 103 as being unpatentable over Wiehl et al. (WO 2015/014968) is withdrawn in view of the Applicant’s amendment to claim 1.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, 9, 11, 13 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Steine et al. (US 4,052,531).
In regard to claim 1, Steine et al. (‘531) discloses brazing alloys having compositions relative to that of the instant invention as set forth below (abstract and column 2).
Element
Instant Claim
(mass percent)
Steine et al. (‘531)
(weight percent)
Overlap
Ag
38 – 48
about 30 – 70
38 – 48
Cu
12 – 21
Balance (>0 – 64)
12 – 21
Zn
18 – 28
about 3 – 20
18 – 28
Mn
0.1 – 9
0 – about 1
0.1 – 1
Ni
0.1 – 9.3
0 – about 4
0.1 – 4
In
5 – 15
about 3 – 20
5 – 15
The Examiner notes that the amounts of silver, copper, zinc, manganese, nickel and indium in the alloys disclosed by Steine et al. (‘531) 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 in the art prior to the filing of the instant invention to select the claimed amounts of silver, copper, zinc, manganese, nickel and indium from the amounts disclosed by Steine et al. (‘531).
With respect to the transitional language “consisting of” in claim 1, Steine et al. (‘531) does not require the presence of elements in addition to those specified in the claim and would therefore read on this transitional language. MPEP 2111.03.
With respect to the recitation “solder alloy” in claim 1, the Examiner notes that this recitation would not further limit the structure of the alloy and has been considered an intended use. MPEP 2111.02 II.
In regard to claim 9, Steine et al. (‘531) discloses 3 to 20 weight percent indium, which encompasses the range of the instant invention (abstract and column 2).
In regard to claim 11, Steine et al. (‘531) discloses 0 to about 4 weight percent nickel, which overlaps the range of the instant invention (column 2).
In regard to claim 13, Steine et al. (‘531) suggests mixed paste of flux and metal (column 1). The recitation “solder” or “soldering” has been considered an intended use of the paste. MPEP 2111.03.
In regard to claim 15, Steine et al. (‘531) discloses about 3 to 20 weight percent indium, which encompasses the range of the instant invention (abstract and column 2).
In regard to claim 16, Steine et al. (‘531) discloses about 3 to 20 weight percent indium, which encompasses the range of the instant invention (abstract and column 2).
In regard to claim 17, Steine et al. (‘531) discloses 0 to about 4 weight percent nickel, which overlaps the range of the instant invention (column 2). MPEP 2144.05 I.
In regard to claim 18, Steine et al. (‘531) discloses 0 to about 4 weight percent nickel, which overlaps the range of the instant invention (column 2). MPEP 2144.05 I.
In regard to claim 19, Steine et al. (‘531) discloses 0 to about 4 weight percent nickel, which overlaps the range of the instant invention (column 2). MPEP 2144.05 I.
In regard to claim 20, Steine et al. (‘531) discloses 0 to about 4 weight percent nickel, which would be close enough to establish prima facie obviousness. MPEP 2144.05 I.
Allowable Subject Matter
Claims 14 and 21-23 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 14, Steine et al. (‘531) fails to disclose or adequately suggest a solder foil made of an alloy consisting of 38 to 48 mass percent silver, 12 to 21 mass percent copper, 18 to 28 mass percent zinc, 0.1 to 9 mass percent manganese, 0.1 to 9.3 mass percent nickel, 5 to 15 mass percent indium and impurities.
In regard to claims 21-23 Steine et al. (‘531) discloses wherein the maximum content of manganese can be 1 weight percent and each of claims 21-23 require at least twice the amount of manganese disclosed in Steine et al. (‘531) (column 2).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 9, 11 and 13-14 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
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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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