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 of species B, wherein the copper-titanium alloy excludes aluminum, relevant to claims 1-8, 13, 18 and 19 in the reply filed on 6/23/2026 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)).
Claims 9-12 and 17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 6/23/2026.
Claim Objections
Claims 11 and 13 are objected to because of the following informalities:
Instant claims 11 and 13 should specify that the claimed percentage is by weight.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 2-7 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 claims 2-4 recite the limitation “wherein the content of titanium is at least” a certain percentage without reciting an upper limit, thus allowing for titanium contents outside of the upper titanium content range of instant claim 1, from which instant claims 2-4 depend. Likewise, instant claims 5-7 recite the limitation “wherein the content of” titanium or iron “is at most” a certain percentage without reciting a lower limit, thus allowing for titanium and iron contents outside of the lower titanium and iron content ranges of instant claim 1, from which claims 5-7 depend.
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
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 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) 1-7 and 19 is/are rejected under 35 U.S.C. 102(a)(1 and 2) as being anticipated by WO 2021143257 A1 to Yang et al (an English language machine translation has been relied upon for examination purposes).
Regarding claim 1, Yang discloses numerous examples of copper-titanium alloys lying within the instantly claimed composition as follows (Yang, Examples, para [0042-0082], specifically example 3 para [0056]):
Element
Claimed wt%
Yang Example 3 wt%
Lies within?
Cu
≥90
92.45
Yes
Ti
5-7
6
Yes
Fe
0.25-0.5
0.3
Yes
Yang anticipates instant claim 1 because Yang discloses an example of a copper-titanium alloy lying wholly within the claimed composition ranges of instant claim 1.
Regarding claims 2-7, Yang Example 3 lies wholly within the claimed composition ranges of instant claims 2-7 (Yang, Examples, para [0042-0082], specifically example 3 para [0056]).
Regarding claim 19, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the instant claim does not appear to imply any structural limitation that the alloy of Yang does not possess as the alloy of Yang is able to perform as “a part of a timepiece” by, for example, being the shadow casting part of a sundial.
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.
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) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021143257 A1 to Yang et al (an English language machine translation has been relied upon for examination purposes) as applied to claims 1-7 and 19 above, and further in view of “Fatigue Properties of Copper Alloys” by Crane et al.
Yang discloses a copper-titanium alloy as set forth above. Yang does not explicitly disclose that the copper-alloy is made into a Bourdon tube.
Crane discloses that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Regarding claim 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the copper alloy of Yang into a Bourdon tube as suggested by Crane. The motivation for doing so is that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Claim(s) 1-8, 13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,599,119 to Ikushima et al.
Regarding claim 1, Ikushima discloses a copper-titanium alloy overlapping the instantly claimed composition as follows (Ikushima, abstract, column 2 lines 10-22):
Element
Claimed wt%
Ikushima wt%
Overlaps?
Cu
≥90
Balance (≥92)
Yes
Ti
5-7
2-6
Yes
Fe
0.25-0.5
Fe+Zr+Cr+B+Si: 0-2
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 Ikushima including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 2-7, Ikushima overlaps the instantly claimed composition ranges of instant claims 2-7 (Ikushima, abstract, column 2 lines 10-22).
Regarding claim 8, the additional alloys recited in Ikushima besides copper, titanium, iron and unavoidable impurities are optional and need not be present in the alloy of Ikushima (Ikushima, abstract, column 2 lines 10-22).
Regarding claim 13, silver is not added to the alloy of Ikushima (Ikushima, abstract, column 2 lines 10-22).
Regarding claim 19, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the instant claim does not appear to imply any structural limitation that the alloy of Ikushima does not possess as the alloy of Ikushima is able to perform as “a part of a timepiece” by, for example, being the shadow casting part of a sundial.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,599,119 to Ikushima et al as applied to claims 1-8, 13 and 19 above, and further in view of “Fatigue Properties of Copper Alloys” by Crane et al.
Ikushima discloses a copper-titanium alloy as set forth above. Ikushima does not explicitly disclose that the copper-alloy is made into a Bourdon tube.
Crane discloses that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Regarding claim 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the copper alloy of Ikushima into a Bourdon tube as suggested by Crane. The motivation for doing so is that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Claim(s) 1, 5-8, 13 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 2196548 to Gao et al.
Regarding claim 1, Gao discloses a copper-titanium alloy overlapping the instantly claimed composition as follows (Gao, abstract, para [0045-0053]):
Element
Claimed wt%
Ikushima wt%
Overlaps?
Cu
≥90
Balance (≥89.0)
Yes
Ti
5-7
1.0-5.0
Yes
Fe
0.25-0.5
0-0.5
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 Gao including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 5-7, Gao overlaps the instantly claimed composition ranges of instant claims 2-7 (Gao, abstract, para [0045-0053]).
Regarding claim 8, the additional alloys recited in Gao besides copper, titanium, iron and unavoidable impurities are optional and need not be present in the alloy of Gao (Gao, abstract, para [0045-0053]).
Regarding claim 13, silver is not added to the alloy of Gao (Gao, abstract, para [0045-0053]).
Regarding claim 19, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the instant claim does not appear to imply any structural limitation that the alloy of Gao does not possess as the alloy of Gao is able to perform as “a part of a timepiece” by, for example, being the shadow casting part of a sundial.
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 4,599,119 to Ikushima et al as applied to claims 1-8, 13 and 19 above, and further in view of “Fatigue Properties of Copper Alloys” by Crane et al.
Gao discloses a copper-titanium alloy as set forth above. Gao does not explicitly disclose that the copper-alloy is made into a Bourdon tube.
Crane discloses that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Regarding claim 18, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the copper alloy of Gao into a Bourdon tube as suggested by Crane. The motivation for doing so is that Bourdon tubes are a known application of copper alloys (Crane, page 879, third paragraph of leftmost column).
Conclusion
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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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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