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 .
Election/Restrictions
Applicant’s election without traverse of Group I (Claims 1-14) in the reply filed on 08/06/2026 is acknowledged. Claims 15-19 are withdrawn. Claims 1-14 are examined herein.
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 1-14 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 1 recites “A Cu-Zn alloy with” in line 1. The meaning of “with” is unclear. One of ordinary skill in the art would not understand whether additional elements are excluded. Please amend claims 1-5 to replace “with” with “comprising” (open-ended transitional phrase to include additional elements) or “consisting of” (closed-transitional phrase to exclude additional elements). Appropriate correction is required.
The term “hard” in claims 6 and 7 is a relative term which renders the claim indefinite. The term “hard” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over JP’583 (JP4100583B2).
Regarding claims 1-5, JP’583 discloses (Abstract; [0012]; Table 1) a Cu-Zn alloy with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each element from the ranges disclosed in JP’583 to produce a Cu-Zn alloy that meets the recited composition in claims 1-3. See MPEP 2144.05 I. (The Cu amount is calculated based on the composition disclosed in Table 1 of JP’583).
Element
Claim 1
(mass %)
JP’583
(mass %)
Overlap
(mass %)
Cu
60.5-65.5
52.5-76.33
60.5-65.5
Si
1.1-1.7
0.1-3
1.1-1.7
Mn
2.51-2.9
0.1-5
2.51-2.9
Ni
0.15-0.55
0.1-5
0.15-0.55
Fe
0.02-0.12
0.1-4
0.1-0.12
P
0.26-0.39
0.005-0.5
0.26-0.39
Cr
0.018-0.12
0.01-2
0.018-0.12
Al
0-0.3
0-3
0-0.3
Sn
0-0.3
0.1-3
0.1-0.3
Pb
0-0.1
0.1-4
0.1
Zn
Zn
15-50
Zn
The amount of Cu, Si, Mn, Ni, P and Cr disclosed by JP’583 discloses overlaps the recited composition in claims 4-5 and the amount of Fe disclosed by JP’583 is close to the recited Fe amount in claims 4-5. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). See MPEP 2144.05 I. Thus, claims 4-5 are obvious over JP’583.
Regarding claims 6-10, JP’583 does not explicitly disclose the recited structure and property limitations. However, in view of the fact that JP’583 teaches a Cu-Zn alloy that meets the recited composition limitation in claim 1, one of ordinary skill in the art would expect that the alloy disclosed by JP’583 to meet the recited structure and property limitations in claims 5-10. “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). See MPEP 2112.01 I.
Regarding claim 11, JP’583 discloses that the alloy is used to make sliding shoe ([0002]). JP’583 does not disclose that the sliding shoe is formed from an extruded rod by machining. However, extrusion and machining are process limitations in the product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” See MPEP 2113 [R-9]. Thus, claim 11 is obvious over JP’583.
Allowable Subject Matter
Claims 12-14 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
