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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-5 in the reply filed on 08/03/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Status of Claims
Claims 1-12 are pending. Claims 1-5 are presented for this examination. Claims 6-12 are withdrawn.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an application filed in Germany on 05/27/2020. It is noted, however, that applicant has not filed a certified copy of the DE102020206620.5 application as required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 04/17/2024, 06/03/2025 and 12/17/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 112
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.
Claims 1-5 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 pre-AIA the applicant regards as the invention.
Instant claim 1 has numerical value within bracket. It is unclear whether these values represent anything or just numeral value in instant application Figure 2 which has no meaning at all. Clarification is required.
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
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.
Claims 2-5 are 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 1 requires “consisting of” which exclude any other unrecited element. However, dependent claims 2-5 recited “the alloy has” encompasses (does not exclude) any unrecited element because “has” is equivalent to “comprising”.
Hence, dependent claims 2-5 fails to further limit the subject matter of the claim upon which it depends. Applicant is suggested to recite from “where the alloy has a copper content from” to “wherein the copper is …” in claim 2.
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 § 102
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 –
(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.
(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.
Claim(s) 1, 3 and 5 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Agarwal’568 (US 6,406,568B1).
As for claims 1, 3 and 5, Agarwal’568 discloses an 18-karat gold alloy composition used in multicolored jewelry articles, such as bracelets, necklace. (Col 1 line 13)
The gold alloy composition comprising ranges of Au, Ag and Cu and Zn as illustrated in Table 2 below. (Abstract line 1-3 and Claim 1) The fact Agarwal’568 does not require presence of other element meets claimed “consisting of”.
Table 2
Element
Applicant
(weight %)
Agarwal’568 et al.
(weight %)
Within/Overlap
(weight %)
Au
33-75.5
75
75
Ag
1.5-45
6-7
6-7
Cu
8-45
9-11.7
9-11.7
Zn
Remainder
6.5-9
6.5-9
Ag (Claim 3)
2.5-10
6-7
6-7
Ag (Claim 5)
3.5-10
6-7
6-7
Instant claim 1 required how the semi-finished product is formed from a sheet metal elongated in a first direction is product by process limitation according to MPEP 2113.
Agarwal differs from instant claim 1 such that it does not disclose claimed spring constant, which is an inherent property of claimed product according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, Argarwal’588 discloses broad range of gold silver copper composition all within claimed ranges. Instant claimed spring constant would be expected absent evidence of the contrary.
Claim(s) 1 is rejected under 35 U.S.C. 102(a)(1)/(a)(2) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Agarwal (US 6,676,776B1).
As for claim 1, Agarwal discloses 14 karat gold alloy composition used for spring and findings in jewelry (Col 4 line 8) which suggests claimed semi-finished product in the form of a slotted tube, shaped in a circular shape.
Instant claim 1 required how the semi-finished product is formed from a sheet metal elongated in a first direction is product by process limitation according to MPEP 2113.
When the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either Section 102 or Section 103 is proper. See MPEP 2113.
According to MPEP 2113, determination of patentability of product is based on the product itself. That is, the patentability of product does not depend on its method of production unless the process of making the claimed product imparts any structural and/or functional limitation and characteristic on the claimed product.
The gold alloy composition comprising ranges of Au, Ag, Cu and remainder being Zinc all within instant claimed ranges as illustrated in Table 1 below.
Table 1
Element
Applicant
(weight %)
Agarwal et al.
(weight %)
Within/Overlap
(weight %)
Au
33-75.5
58.65
58.65
Ag
1.5-45
11.5-25
11.5-25
Cu
8-45
11.85-23.35
11.85-23.35
Zn
remainder
2-7
2-7
Cu (Claim 2)
20.6-42
11.85-23.35
20.6-23.35
Ag (Claim 3)
2.5-10
About 11.5-25
About 11.5 is close to 10
Cu (Claim 4)
20.6-27
11.85-23.35
20.6-23.35
Ag (Claim 5)
3.5-10
About 11.5-25
About 11.5 is close to 10
Agarwal differs from instant claim 1 such that it does not disclose claimed spring constant, which is an inherent property of claimed product according to MPEP 2112.01.
When the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, the prior art products necessarily possess the characteristics of the claimed product. See MPEP 2112.01.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). Therefore, the prima facie case can be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product. In re Best, 562 F.2d at 1255, 195 USPQ at 433. See also Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985)
In the instant case, Argarwal discloses broad range of gold silver copper elemental compositions all within claimed ranges. Instant claimed spring constant would be expected absent evidence of the contrary.
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.
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.
Claim(s) 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal (US 6,676,776B1).
As for claims 2-5, Table 1 above illustrates overlapping range of Cu, Ag of instant claims.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Claim(s) 3 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Agarwal (US 6,676,776B1) in view of Agarwal’568.
As for claims 3 and 5, it is noted Agarwal discloses Ag about 11.5%.
Agarwal’568. explicitly discloses silver content needs to be lowered to increase the hardness. (Col 1 lines 47-65) Agarwal’568 discloses 6-7% Ag for the purpose of balance between hardness and color.
If a particular parameter is recognized as a result-effective variable, then the determination of the optimum or workable ranges of said parameter might be characterized as routine experimentation.
Hence, it would have been obvious to one skilled in the art to have reduced amount of silver in the semi-finished product of Agarwal to be within claimed range as Agarwal’568 discloses claimed Ag amount will achieve a balance of color and hardness. See MPEP 2144.05 II.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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