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 5-7 are canceled. Claims 1-4 and 8-13 are pending where claims 1 and 9 have been amended.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims as being unpatentable over CN-105925835-A to Wang and US 2014/0161661 A1 to Kuhn et al have been withdrawn in view of amendments to the claims.
The previous 35 USC § 103 rejections of the claims as being unpatentable over WO 2017/009176 A1 to Zeigler et al (an English language machine translation has been relied upon for examination purposes) in view of JP 2005290475 A to Yamagishi (an English language machine translation has been relied upon for examination purposes) have been maintained.
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) 1-3, 8 and 10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 108754220 to Liu et al (cited by applicant in IDS, an English language machine translation of the claims has been relied upon for examination purposes).
Regarding claims 1-3 and 13, Liu discloses a brass alloy consisting of the following composition (Liu, abstract, claims 1-3) which overlaps the instantly claimed composition:
Element
Claimed wt%
Liu wt%
Overlaps?
Cu
54-64
51-65
Yes
Al
0.05-0.15
0.1-5.0
Yes
In
0.005-0.5
In+Sn: 0.05-3.0
Yes
Si
0-0.01
Yes
Fe+Sn+Ni
0.01-3.0
Ni+Sn: 0.01-2.0
Yes
Sn
0.1-0.3
Yes
Ni
0.1-0.3
Yes
Mn
0-0.2
0
Yes
Zn
>41-<43
Balance (25-48.84)
Yes
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]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Liu including the instantly claimed because Liu discloses the same utility throughout the disclosed ranges.
Regarding claim 8 and the limitation “consisting of,” elements besides Cu, Ni, Sn, In, Al and Zn recited in Liu are optional and need not be added to the alloy.
Regarding claims 10-12, 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 brass alloy of Liu would be expected to have the same or similar microstructure as the instantly claimed alloy because the alloy of Liu has the same or substantially the same composition, structure and method of manufacturing.
Claim(s) 1-4 and 8-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2017/009176 A1 to Zeigler et al (an English language machine translation has been relied upon for examination purposes) in view of JP 2005290475 A to Yamagishi (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1-4 and 13, Zeigler discloses a brass alloy comprising the following composition (Zeigler, abstract, para [0052]) which partially overlaps the instantly claimed composition:
Element
Claimed wt%
Zeigler wt%
Overlaps?
Cu
54-64
57.0-57.5
Yes
Al
0.05-0.15
Silent
No
In
0.005-0.5
0.05-0.2
Yes
Fe
0.1-0.3
0.2-0.3
Yes
Sn
0.1-0.3
0.2-0.3
Yes
Ni
0.1-0.3
0.2-0.3
Yes
Si
0-0.01
0
Yes
Mn
0-0.2
0
Yes
Zn
>41-<43
Balance (41.4-42.35)
Yes
Zeigler is silent as to an Al content of the alloy.
Yamagishi discloses that Al is contained in brass scrap, and allowing for 0.01-3.4 wt% Al in a brass alloy is advantageous in terms of cost as well as increases the strength of the material (Yamagishi, abstract, para [0007]).
Regarding claims 1-7 and 13, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add 0.01-3.4 wt% Al to the brass of Zeigler as suggested by Yamagishi. The motivation for doing so would be to increase the strength of the material and decrease the cost (Yamagishi, para [0007]).
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]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Zeigler in view of Yamagishi including the instantly claimed because Zeigler in view of Yamagishi discloses the same utility throughout the disclosed ranges.
Regarding claim 8 and the limitation “consisting of,” elements besides Cu, Fe, Ni, Sn, In, Al and Zn recited in Zeigler in view of Yamagishi are optional and need not be added to the alloy.
Regarding claim 9, the alloy of Zeigler in view of Yamagishi overlaps the instantly claimed ranges.
Regarding claims 10-12, the alloy of Zeigler has a microstructure comprising a matrix of 30-60 wt% beta solid solution with a remaining fraction of alpha solid solution, lying within the instantly claimed ranges.
Response to Arguments
Applicant's arguments filed 12/04/2025 have been fully considered but they are not persuasive.
Applicant argues that the overriding teaching in Yamagishi is adding Al together with Bi (0.5-3.5%) and B (0.002-0.3%) which are excluded by the instant claims. This is not found persuasive because the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Yamagishi has been relied upon that Al is contained in brass scrap, and allowing for 0.01-3.4 wt% Al in a brass alloy is advantageous in terms of cost as well as increases the strength of the material (Yamagishi, abstract, para [0007]). This teaching is applicable to brass alloys in general, including the brass alloy of Zeigler, as the advantages of that amount of aluminum in Yamagishi are true for brass alloys regardless of their Bi or B content.
Applicant argues that Zeigler does not teach using manganese in its alloy as recited in amended claim 1 of the instant application. This is not found persuasive because instant claim 1 recites no lower limit for Mn in the limitation “up to 0.2 wt% Mn,” and thus the absent or impurity amounts of Mn in Zeigler meets the instant limitation.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action and applicant's submission of an information disclosure statement under 37 CFR 1.97(c) with the timing fee set forth in 37 CFR 1.17(p) on 1/27/2026 prompted 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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