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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 05/09/2024, 10/02/2025, 01/13/2026, 03/11/2026 and 08/12/2026 are being considered by the examiner.
Claim Objections
Claim 2-3, 5-6 are objected to because of the following informalities: all these claims recite “Claim”, where the word “C” of claim is capitalized in the middle of a sentence, it would be “claim”. Appropriate correction is required.
Claim Rejections - 35 USC § 112 (d)
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.
Claim 1 is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3 USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a “single structural similarity” and a common use. A Markush grouping meets these requirements in two situations. First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use. Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a “single structural similarity” and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. See MPEP § 2117.
The Markush grouping of inevitable impurities is improper because the alternatives defined by the Markush grouping do not share both a single structural similarity and a common use for the following reasons:
Claim 1 recites a transitional phrase “including” in line 4 to identify a "Markush group” of the inevitable impurities, as well as a relation of these inevitable impurities to Mg content, which is open-ended as the transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03), therefore, claim does not exclude additional, unrecited inevitable impurities. However, paragraph [0037] of the instant specification of the disclosure describes, “Examples of inevitable impurities other than the above-described elements include Al, B, Ba, Be, Ca, Cd, Cr, Sc, rare earth elements, V, Nb, Ta, Mo, Ni, W, Mn, Re, Ru, Sr, Ti, Os, Co, Rh, Ir, Pb, Pd, Pt, Au, Zn, Zr, Hf, Hg, Ga, In, Ge, Y, Tl, N, Si, Sn, and Li. These inevitable impurities may be contained within a range not to affect the properties”, therefore, it is not clear which inevitable impurities are limited by the claimed composition.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Appropriate correction is required.
Claims 2-11 are dependent on claim 1 and therefore rejected for the same reason above.
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.
Claims 1, 4-9 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hirotaka Matsunaga [JP2022069413A] (machine translation) (Matsunaga’413 hereafter).
Matsunaga is qualified as prior art under 35 U.S.C. 102(a)(1) as one inventor is different than the instant application and effectively published on 05/11/2022, which is more than one year before the effective filling date 05/09/2024 of US Application.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified English translation may result in no benefit accorded for the non-English application.
Regarding claim 1, Matsunaga’413 discloses a copper alloy having a composition comprising Mg and a balance being Cu and inevitable impurities, (the copper alloy has a composition in which the Mg content, and the balance is Cu and inevitable impurities, see Matsunaga’413’s [0032]) as well as claimed composition have been shown in following table.
Element
Instant claim 1 (ppm)
Matsunaga’413’s composition (ppm) (see Matsunaga’413’s [0032])
Within/Overlaps with claimed range
Mg
greater than 10 mass ppm and 100 mass ppm or less
greater than 10 mass ppm and 100 mass ppm or less (see Matsunaga’413’s [0032])
within
Total inevitable impurities P Se Te Sb Bi As
30 mass ppm or less,
P Se Te Sb Bi As etc. total amount is
15 mass ppm or less, (see Matsunaga’413’s [0033])
within
[Mg]/[S + P +Se+ Te+ Sb+ Bi+ As]
0.6 or greater and 50 or less
0.6 to 15 (calculated)
within
Cu
balance
Balance (see Matsunaga’413’s [0032])
within
Properties of the copper alloy
Electrical conductivity
97% IACS or greater
preferably 97% IACS or more (see Matsunaga’413’s [0025] [0041]
within
Matsunaga’413’s disclosed composition including all elements as well as electrical conductivity of the copper alloys are within the range as recited in the instant claims.
Matsunaga’413 further discloses process of making copper alloy and a copper alloy material, wherein finish working step S05, either cold or warm working is performed to suppress a decrease in the ratio of small-angle grain boundaries and subgrain boundary lengths. Furthermore, the rolling ratio will be appropriately selected to approximate the final shape, but it is preferable to set the rolling ratio to 10% or more in the finishing rolling process S05 in order to increase the ratio of small-angle grain boundaries and subgrain boundary lengths, thereby improving strength through work hardening, and in order to set the average value of the orientation density in the range of φ2 = 20°, φ1 = 20° to 40°, and Φ = 30° to 60°, which are the rolled texture, to 1.0 or more. Furthermore, to further improve strength, it is more preferable to have a rolling ratio of 15% or more, and even more preferable to have a rolling ratio of 20% or more, (see Matsunaga’413’s [0050]) and a mechanical surface treatment process S06, including shot peening, blasting, lapping, polishing, buffing, grinding, sandpaper polishing, tension leveling, and light rolling with a low reduction ratio per pass (a reduction ratio of 1-10% per pass, repeated three or more times) (see Matsunaga’413’s [0051]), which are similar as the process step of the instant invention as shown in the paragraph [0051].
Although, above φ2 Matsunaga’413’s measurement is different and Matsunaga’413 is silent about “a crystal orientation distribution function obtained from texture analysis by an EBSD method is expressed in terms of Euler angles, an average value of orientation densities at φ = 0°, in a range of φ= 0° to 20°, and in a range of Φ = 35° to 55° is 1.3 or greater and less than 20.0, and an area ratio of crystals having a crystal orientation of 10° or less with respect to an S orientation { 123} <634> is 10% or less”, as given the copper alloy composition and electrical conductivity, as well as the process of producing a copper alloy material of Matsunaga’413, are substantially identical to the copper alloy having the composition and properties, as because, “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)]”, in addition texture analysis by an EBSD method is a measurement process, therefore, if crystal orientation distribution function obtained from texture analysis by an EBSD method is expressed in terms of Euler angles, is performed for the copper alloy of Matsunaga’413, that would inherently possesses an average value of orientation densities at φ1 = 0°, in a range of φ2 = 0° to 20°, and in a range of Φ = 35° to 55° is 1.3 or greater and less than 20.0, and an area ratio of crystals having a crystal orientation of 10° or less with respect to an S orientation { 123} <634> is 10% or less.
Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980) [See MPEP 2112.01 (I)].
Regarding claim 4-9 and 11, all the discussions regarding claim 1 is applicable to claim 4-9 and 11, as shown above Matsunaga’413 already discloses a plastically-worked copper alloy material, (finish rolling step S05, see Matsunaga’413’s [0050]) and a mechanical surface treatment process S06, see Matsunaga’413’s [0051]). Matsunaga’413 discloses
multi-gauge strip (copper sheet strip, see Matsunaga’413’s [0023]),
the plastically-worked copper alloy material further comprising a metal plating layer on a surface (metal plating (such as Sn plating, Ni plating, or Ag plating) may be applied after the finishing heat treatment step S07, see Matsunaga’413’s [0052]),
a component for electronic and electrical devices, bus bar, heat dissipation substrate comprising: the plastically-worked copper alloy material (electronic and electrical equipment components, busbars, and heat dissipation substrates, see Matsunaga’413’s [0021]), a terminal (electrical equipment components such as terminals see Matsunaga’413’s [0041]).
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.
Claims 2-3 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Hirotaka Matsunaga [JP2022069413A] (machine translation) (Matsunaga’413 hereafter).
Regarding claim 2, all the discussions regarding claim 1 are applicable to claim 2, wherein Matsunaga’413 discloses the total amount of impurities is 30 mass ppm or less, and impurities can be Ag, P, Se, Te, Sb, Bi, As, etc. (see Matsunaga’413’s [0033]), therefore, Matsunaga’413’s Ag would be 30 mass ppm or less, which overlaps with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Matsunaga’413 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Regarding claim 3, all the discussions regarding claim 1 are applicable to claim 3, in addition, Matsunaga’413 discloses a heatproof temperature is 260°C or higher (heat resistance temperature is most preferably 250°C or higher, see Matsunaga’413’s [0043]), which overlaps with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a heat resistance temperature from the teachings of Matsunaga’413 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Regarding claim 10, all the discussions regarding claim 1 are applicable to claim 10, although Matsunaga’413 is silent about a lead frame comprising: the plastically-worked copper alloy material, but claim recites “a lead frame” as an intended use of the plastically-worked copper alloy material, without defining any structure. As Matsunaga’413 teaches a copper alloy and a plastically-worked copper alloy material, which is pure and higher electrical conductivity as well as use of plastically-worked copper alloy material for application in electronic and electrical equipment components see Matsunaga’413’s [0021] and [0041], and as a lead frame an electronic component therefore, Matsunaga’413’s plastically-worked copper alloy material would be used for a lead frame too.
Claims 1-2 and 4-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hirotaka Matsunaga [US20220396853A1] (PCT Filed: Nov. 27, 2020) (Matsunaga’853 hereafter).
Regarding claim 1 and 2, Matsunaga’853 discloses a copper alloy having a composition comprising Mg and a balance being Cu and inevitable impurities, (the copper alloy has a composition in which the Mg content, the Ag content, and the balance is Cu and inevitable impurities, see Matsunaga’853’s [0034]) as well as claimed composition have been shown in following table.
Element
Instant claim 1 (ppm)
Instant claim 2 (ppm)
Matsunaga’853’s composition (ppm) (see Matsunaga’853’s [0034])
Within/Overlaps with claimed range
Mg
greater than 10 mass ppm and 100 mass ppm or less
70 mass ppm or more and 400 mass ppm or less (see Matsunaga’853’s [0054])
overlaps
Ag
5 mass ppm or greater and 20 mass ppm or less
0.6 to 2.5 (see Matsunaga’853’s [0056])
overlaps
Total inevitable impurities
30 mass ppm or less,
less than 3.0 mass ppm (as only contains P)
overlaps
p
10 mass ppm or less
less than 3.0 mass ppm
within
Se
5 mass ppm or less
as little as possible
overlaps
Te
5 mass ppm or less
as little as possible
overlaps
Sb
5 mass ppm or less
as little as possible
overlaps
Bi
5 mass ppm or less
as little as possible
overlaps
As
5 mass ppm or less
as little as possible
overlaps
[Mg]/[S + P +Se+ Te+ Sb+ Bi+ As]
0.6 or greater and 50 or less
23 to 133 (calculated)
overlaps
Cu
balance
Balance (see Matsunaga’853’s [0060])
within
Properties of the copper alloy
Electrical conductivity
97% IACS or greater
preferably 97% IACS or more (see Matsunaga’853’s [0061]
within
Matsunaga’853’s disclosed composition including all elements as well as electrical conductivity of the copper alloy overlaps with the range as recited in the instant claims.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a composition from the teachings of Matsunaga’853 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Matsunaga’853 further discloses a process Matsunaga’853 further discloses a process which is similar as the invented application, especially Matsunaga’853 teaches rolled surface was mechanically polished using waterproof abrasive paper and diamond abrasive grains, and then finish-polished using a colloidal silica solution (see Matsunaga’853 [0112]) which is also similar process step of the instant invention as shown in the paragraph [0051], of the instant specification, a “Mechanical Surface Treatment Step S05” is “a treatment that applies a compressive stress to the vicinity of the surface. In a case where the mechanical surface treatment is combined with a heat treatment before finishing step S07 to be described below, the orientation density at φ = 0°, in a range of φ= 0° to 20°, and in a range of Φ = 35° to 55° when represented by the Euler angles (.:p 1, <D, <p2) increases and the S orientation decreases, so that the heat resistance can be improved. And at the mechanical surface treatment, it is possible to use various methods that a polishing treatment, buff polishing, grinder polishing, sandpaper polishing”.
Although Matsunaga’853 is silent about “a crystal orientation distribution function obtained from texture analysis by an EBSD method is expressed in terms of Euler angles, an average value of orientation densities at φ = 0°, in a range of φ= 0° to 20°, and in a range of Φ = 35° to 55° is 1.3 or greater and less than 20.0, and an area ratio of crystals having a crystal orientation of 10° or less with respect to an S orientation { 123} <634> is 10% or less”, as given the copper alloy composition and electrical conductivity, as well as the process of producing a copper alloy material of Matsunaga’853, are substantially identical to the copper alloy having the composition and properties, as because, “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)]”, therefore, if crystal orientation distribution function obtained from texture analysis by an EBSD method is expressed in terms of Euler angles, is performed for the copper alloy of Matsunaga’853, that would inherently possesses an average value of orientation densities at φ1 = 0°, in a range of φ2 = 0° to 20°, and in a range of Φ = 35° to 55° is 1.3 or greater and less than 20.0, and an area ratio of crystals having a crystal orientation of 10° or less with respect to an S orientation { 123} <634> is 10% or less.
Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980) [See MPEP 2112.01 (I)].
Regarding claim 4-9 and 11, all the discussions regarding claim 1 is applicable to claim 4-9 and 11, as shown above Matsunaga’853 already discloses a plastically-worked copper alloy material, (finish working step S05, rolling, drawing, extrusion, groove rolling, forging, pressing, or the like can be adopted see Matsunaga’853’s [0083])). Matsunaga’853 discloses
multi-gauge strip (producing strip materials, see Matsunaga’853’s [0106]),
the plastically-worked copper alloy material further comprising a metal plating layer on a surface (metal plating (a Sn plating layer or an Ag plating layer is formed on a surface of the copper alloy plastically worked material, see Matsunaga’853’s [0097]),
a component for electronic and electrical devices, terminal, bus bar, heat dissipation substrate comprising: the plastically-worked copper alloy material (the copper alloy, the copper alloy plastically-worked material, and the component for an electric or electronic device (a terminal, a busbar, a heat dissipation substrate, or the like), see Matsunaga’853’s [0099]).
Regarding claim 10, all the discussions regarding claim 1 are applicable to claim 10, although Matsunaga’853 is silent about a lead frame comprising: the plastically-worked copper alloy material, but claim recites “a lead frame” as an intended use of the plastically-worked copper alloy material, without defining any structure. As Matsunaga’853 teaches a copper alloy and a plastically-worked copper alloy material, which is pure and higher electrical conductivity as well as use of plastically-worked copper alloy material for application in electronic and electrical equipment components see Matsunaga’853’s [0099], and as a lead frame an electronic component therefore, Matsunaga’853’s plastically-worked copper alloy material would be used for a lead frame too.
Claims 3 is rejected under 35 U.S.C. 103 as being unpatentable over Hirotaka Matsunaga [US20220396853A1] (PCT Filed: Nov. 27, 2020) (Matsunaga’853 hereafter) as applied to claim 1, and further in view of Masanori Kato et.al. [US5077005] (Kato hereafter).
Regarding claim 3, all the discussions regarding claim 1 are applicable to claim 3, but Matsunaga’853 is silent about a heatproof temperature is 260°C or higher (heat resistance temperature is most preferably 250°C or higher, see Matsunaga’413’s [0043]), which overlaps with the range as recited in the instant claim.
However, Kato discloses a high-conductivity copper alloy with excellent workability and heat resistance, (see Kato’s Abstract) and a heatproof temperature is 210-350°C or higher (Table 1, all the example copper alloys exhibited excellent strength (hence workability), heat-resistance (softening temperature) 210-350°C in Table 1, and electric conductivity, see Kato’s, col. 6, line 28-35, Table 1), which overlaps with the range as recited in the instant claim.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have selected and produced a heat resistance temperature from the teachings of Matsunaga’413 that falls within the instantly-claimed ranges, because “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)” [See MPEP § 2144.05.I].
Kato further discloses high-conductivity copper alloys which combine the excellent conductivity of existing materials with good heat resistance, mechanical strength, workability, etc. thus offers advantages of very great industrial significance, contributing, for example, to further improvements in performance of magnet wires, leads for electronic components, printed-circuit boards (col. 7, line 43-51).
Kato is directed to high purity high-conductivity copper alloys therefore analogous to the instant claim as well as Matsunaga’853.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filling date of the present invention, to have Kato’s teachings of high-conductivity copper alloys with good heat resistance, to modify Matsunaga’853’s copper alloy to have advantages of very great industrial significance, contributing, for example, to further improvements in performance of magnet wires, leads for electronic components, printed-circuit boards.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NAZMUN NAHAR SHAMS whose telephone number is (571)272-5421. The examiner can normally be reached M-F 11:00 AM - 7:00PM (EST).
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/NAZMUN NAHAR SHAMS/Examiner, Art Unit 1738
/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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