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
Responsive to the amendment filed 17 August 2026 claim 1 is amended. Claims 1-6 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 17 August 2026 new grounds of rejection are presented.
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.
Claim(s) 1-6 are rejected under 35 U.S.C. 103 as being unpatentable over Harkness et al., Beryllium-Copper and Other Beryllium-Containing Alloys, ASM Handbook, Volume 2: Properties and Selection: Nonferrous Alloys and Special-Purpose Materials, ASM Handbook Committee, p 403-427 (1990) (hereinafter “Harkness”).
Regarding claim 1, Harkness is an article from the ASM Handbook which describes the properties and processing of known beryllium- copper alloys (see title and p. 403). Harkness teaches that typical alloys include 0.2-2.00% Be and 0.2 to 2.7% of Co (Composition on p. 403). Harkness teaches specific examples of known beryllium copper alloys at Table 1. Harkness teaches alloys such as C82500, which includes 1.90-2.25% Be, 0.35-0.70% Co+Ni, and 0.20-0.35% Si (Table 1). The composition of the known C82500 alloy overlaps the claimed compositional ranges, establishing a prima facie case of obviousness for the ranges. It would have been obvious to one of ordinary skill in the art at time of invention to have selected a composition in the range as claimed because Harkness teaches the same utility over an overlapping range. Applicant is further directed to MPEP 2144.05.
Regarding wherein the alloy includes matrix α phase, a Si-rich κ phase, and a Co-Be-Si intermetallic, Harkness does not describe this microstructure. Harkness teaches that the Beryllium-Copper alloy is processed to include solutionizing and ageing heat treatments (see Physical Metallurgy, pp. 403-404). Harkness teaches that intermetallic phases of beryllides will form when the third element of Co or Ni is added (see p. 404-405). Harkness teaches that the copper beryllium alloys typically exhibit an alpha structure with beryllides (pp. 404-405).
The copper alloy composition which would have been obvious over Harkness, when processed in solutionizing and aging treatment, would have exhibited the same microstructure as claimed. The structure would have flowed naturally from following the teachings of the art.
Regarding being “free-cutting,” this is considered to be a statement of intended use for the alloy. Statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference (or, in the case of process claims, manipulative difference) between the claimed invention and the prior art. If so, the recitation serves to limit the claim. See, e.g., In re Otto, 312 F.2d 937, 938, 136 USPQ 458, 459 (CCPA 1963). Applicant is directed to MPEP 2111.02. in this case being “free cutting” does not require or imply any structure further than what is already required elsewhere in the claim.
Regarding being lead free, Harkness does not teach any lead present in the C82500 alloy (Table 1), meeting the requirement.
Regarding claims 2-6, Harkness does not describe the particular features of the Co-Be-Si intermetallic phase such as hardness, count per area, etc. or the free machining property, or the BCC/(BCC+FCC) ratio. Harkness teaches that the hardening of the copper alloy takes place and generates an intermetallic phase which restricts grain growth (see pp 404-405). Harkness teaches a variety of heat treating options such as underaging, peak aging (pp. 405-410). A suitable heat treating recipe would have been optimized by a skilled artisan through a routine investigation of the microstructure and effects of aging well described in Harkness.
The alloy having the claimed structure would have flowed naturally from following the teachings of Harkness of the C82500 alloy, and hardening to generate intermetallic particles (p 404 and pp 405-410).
Response to Arguments
Applicant's arguments filed 17 August 2026 have been fully considered but they are not persuasive.
Regarding the Goldstein reference, applicant argues that the alloying elements such as Al would not have counted as impurities. While the composition of Goldstein is still considered to overlap the claimed range, in order to expedite prosecution the claim rejections over Goldstein are withdrawn. Specifically, Goldstein does not anticipate the claim alloy with 0.3-3.00% of Si.
Regarding the Harkness reference, applicant argues that the Be-rich pahases as enumerated in the right column on p 404 would have applied to the C17500 and C17200 alloys specifically. Whie applicant is technically correct, the Office action was not intending to describe a phenomenon specific to one alloy, but rather the general teaching of beryllides. The rejection ground is restated in order to be more clear. Specifically, Harkness teaches that the Co or Ni addition, which is present in every single one of the commercial alloys listed, tends to cause such intermetallic beryllides to form. Additionally, Harkness describes that the alpha phase is generally present in these alloys. The skilled artisan would have been well aware of the solutionizing and ageing treatments which applicant discloses as generating said microstructure, as these are detailed in Harkness. For these reasons, applicant’s arguments are not persuasive.
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 CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
