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 .
Response to Arguments
Applicant's arguments filed 4/6/2026 have been fully considered but they are not persuasive.
With respect to the 112 Rejections, Applicant argues the amendments overcome the rejections. The Examiner disagrees. How does a composition satisfy the claimed limitation with 60% platinum? For example, 60% platinum plus the minimum 40% nickel plus the minimum 0.5% iridium is 100.5%, which is more than is possible. How does adding “and balance nickel” solve this issue?
Furthermore, adding “and balance nickel” adds the issue of new matter, as adding nickel to an already disclosed range of nickel is outside of the originally disclosed design space.
Applicant argues on Pages 6 and 7 that Kato (US PGPub 2005/0067933 A1) allegedly fails to teach platinum-dominant composition with at least 1% mass iridium.
However, Paragraph 51 of Kato recites “a platinum alloy containing 20% by mass (or rather by weight) or less of iridium and 10% by mass or less of nickel, in which a total of iridium and nickel does not exceed 20% by mass.”
Therefore, Applicant’s assertion is not persuasive since Kato does teach a platinum alloy with iridium in the range of 0 (or slightly above 0) to 20%.
Applicant further argues that Kato does not disclose the sufficiently narrow range. However, Applicant’s remarks do not allege that there anything critical about the claimed ranges that would not be present in the ranges just outside of the claimed range.
As seen in MPEP §2131.03 the claimed range (1 to less than 10 mass% iridium) anticipates the prior art range discloses the claimed range with sufficient specificity. Due to the sufficient overlap in the ranges of the specific material explicitly recited by the prior art, the prior art Kato discloses the range with sufficient specificity and therefore anticipates the claimed range.
Alternatively, should it be found that Kato does not anticipate the claimed ranges, as seen in MPEP §2144.05(I), overlapping ranges between the prior art range and the claimed range presents a prima facie case of obviousness.
Furthermore, Applicant’s remarks failed to address the alternative rejection in further view of Kato et al. (US PGPub 2002/0017847 A1). Kato et al. teaches (Fig. 1b, Paragraph 39) that inclusion of iridium in the range of 2 to 40 wt percent spark durability and preventing peeling are satisfied and inclusion of nickel in the range of 2 to 40% preventing peeling and spark durability, workability are satisfied. Therefore, it can be seen that the specific amounts of inclusion of each of iridium and nickel present different tradeoffs that are well-known in the art and finding the specific amount within the ranges amounts to routine optimization. As seen in MPEP §2144.05 (II)(A) optimization within prior art conditions or through routine experimentation generally satisfies the condition for obviousness. It would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be in the lower end of the ranges for iridium and nickel in order to reduce peeling, as taught by Kato et al.
Applicant arguments Specification Page 12, lines 1-15 states without evidence that the nickel percentage allows for reduced melting range and facilitating processability by welding with high spark erosion wear due to noble metals.
However, this optimization consideration is already known as seen in the teachings of Kato et al. where the inclusion of iridium increased durability and the inclusion of nickel increases workability.
Therefore, even if Applicant were to overcome the range being anticipated and the range being prima facie obvious, the range is not critical and merely routine optimization within the known skill and knowledge of one having ordinary skill in the art.
Applicant’s Remarks failed to address the prior art rejection of claims 17 and 18 and therefore Applicant’s Remarks are also unpersuasive in this matter.
Information Disclosure Statement
The reference(s) cited within the IDS document(s) submitted on 1/7/2026 have been considered.
Specification
The amendments filed 4/6/2026 are sufficient to overcome the objections to the specification stated in the previous office action. Therefore, said objections are withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17 and 18 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As discussed below, it is unclear if the recitation of “and balance nickel” is intended to mean. Insofar as the “and balance nickel” adds and/or subtracts nickel from the already recited nickel range, this is not disclosed in the original specification in such a way as to convey to one having ordinary skill in the art had possession of the claimed invention.
Applicant’s Original Specification Page 13, lines 20-24 recites the “alloy containing 30 to 60 mass% platinum, 40 to 65 mass% nickel, and 0.5 to 5 mass%
iridium.
In particular, the alloy forming the noble metal pin 7 for a spark plug electrode consists substantially of 30 to 60 mass% platinum, in particular 40 to 50 mass% platinum, 40 to 65 mass% nickel, in particular 50 to 60 mass% nickel, and 0.5 to 5 mass% iridium, in particular 0.8 to 2 mass% iridium.”
The Specification does not discuss Applicant’s modification of “and balance nickel.”
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 17 and 18 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.
As to claim 17, the upper end of the platinum range (30 to 60 %) is not possible with the other required ranges. For example 60% platinum is not possible as the claim also requires at minimum 40 % nickel and 0.5% iridium, which would combine to be more than 100%.
Similarly, the upper end of platinum in claim 18 is not possible with the other required ranges.
It is not clear if this is a typo or if the ranges are wrong or if the ranges of platinum and nickel forgot to account for the fact that iridium is also present. The endpoints of the ranges are unclear.
For the purposes of examination, the endpoints of the ranges of platinum and nickel will be extended by the maximum amount of iridium, although this range is for examination purposes only, as it does not appear that the Specification has support for these ranges.
Furthermore, Claims 17 and 18 have been amended to recite “and balance nickel.” The scope of this limitation and how it interacts with an already recited nickel range is unclear. For example, in claim 17, could the electrode alloy contain 30% platinum, 65% nickel, 0.5% iridium and the remaining 4.5% also be nickel, resulting in 69.5% nickel? If so, where is the support for this limitation in the original disclosure?
Furthermore, if the ranges were chosen to be over 100%, would the “and balance nickel subtract nickel? For example, 60% platinum plus the minimum 40% nickel plus the minimum 0.5% iridium is 100.5%, would the “and balance nickel” mean that there is -0.5% nickel, meaning the overall nickel percentage is 39.5%?
Alternatively, did Applicant intend to delete the nickel range?
For the purposes of examination the limitation of “and balance nickel” will be examined as though it were not further limiting the rest of the scope of claims 17 and 18.
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.
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.
Claim(s) 12-16, 19 and 20 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Kato (US PGPub 2005/0067933 A1) or, in the alternative, under 35 U.S.C. 103 as obvious in further view of Kato et al. (US PGPub 2002/0017847 A1).
As to claims 12, 14 and 19, Kato discloses (Fig. 1) a spark plug comprising a spark plug electrode, comprising: a noble metal pin (51 or 52) for a spark plug electrode (3 or 4), the pin 51, 52 including an alloy containing: more than 80 mass% platinum; 1 to 10 mass% nickel; and 1 to less than 10 mass% iridium (Paragraph 51, claim 5, platinum based with 20% or less iridium, 10% or less nickel, combination of iridium and nickel less than 20%).
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With respect to the ranges disclosed by Kato, the ranges are overlapping and very close to the claimed ranges of claim 12. As seen in MPEP §2131.03 the claimed range anticipates the prior art range discloses the claimed range with sufficient specificity. Due to the sufficient overlap in the ranges of the specific material explicitly recited by the prior art, the prior art Kato discloses the range with sufficient specificity and therefore anticipates the claimed range.
Alternatively, should it be found that Kato does not anticipate the claimed ranges, as seen in MPEP §2144.05(I), overlapping ranges between the prior art range and the claimed range presents a prima facie case of obviousness.
Further alternatively, should it be argued that the disclosed ranges do not satisfy the requirements for obviousness by themselves, Kato et al. teaches (Fig. 1b, Paragraph 39) that inclusion of iridium in the range of 2 to 40 wt percent spark durability and preventing peeling are satisfied and inclusion of nickel in the range of 2 to 40% preventing peeling and spark durability, workability are satisfied. Therefore, it can be seen that the specific amounts of inclusion of each of iridium and nickel present different tradeoffs that are well-known in the art and finding the specific amount within the ranges amounts to routine optimization. As seen in MPEP §2144.05 (II)(A) optimization within prior art conditions or through routine experimentation generally satisfies the condition for obviousness. It would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be in the lower end of the ranges for iridium and nickel in order to reduce peeling, as taught by Kato et al.
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As to claims 13 and 16, Kato or alternatively in further view of Kato et al. teaches that the alloy includes: more than 90 mass% platinum, 3 to 7 mass% nickel; and 1 to 3 mass% iridium. (Kato Paragraph 51, claim 5; Kato et al. Paragraph 39) Similarly to the analysis of claims 12, 14 and 19, these ranges overlap the disclosed ranges and are anticipated or obvious, or in the alternative obvious in further view of Kato et al. for substantially the same reasoning.
As to claim 15, Kato discloses (Fig. 1) that the noble metal pin 51, 52 for the spark plug electrode is connected to a nickel-based electrode main body 3, 4 (Paragraph 48 and 50, nickel-based alloy) by a weld seam (Paragraph 49 and 50, welding process disclosed, which would result in a weld seam).
As to claim 20, Kato discloses (Fig. 1) a method for producing a spark plug electrode, comprising: a noble metal pin (51 or 52) for a spark plug electrode (3 or 4) attached to a nickel-based electrode main body (Paragraph 48 and 50, nickel-based alloy), the pin 51, 52 including an alloy containing: more than 80 mass% platinum; 1 to 10 mass% nickel; and 1 to less than 10 mass% iridium (Paragraph 51, claim 5, platinum based with 20% or less iridium, 10% or less nickel, combination of iridium and nickel less than 20%).
With respect to the ranges disclosed by Kato, the ranges are overlapping and very close to the claimed ranges of claim 12. As seen in MPEP §2131.03 the claimed range anticipates the prior art range discloses the claimed range with sufficient specificity. Due to the sufficient overlap in the ranges of the specific material explicitly recited by the prior art, the prior art Kato discloses the range with sufficient specificity and therefore anticipates the claimed range.
Alternatively, should it be found that Kato does not anticipate the claimed ranges, as seen in MPEP §2144.05(I), overlapping ranges between the prior art range and the claimed range presents a prima facie case of obviousness.
Further alternatively, should it be argued that the disclosed ranges do not satisfy the requirements for obviousness by themselves, Kato et al. teaches (Fig. 1b, Paragraph 39) that inclusion of iridium in the range of 2 to 40 wt percent spark durability and preventing peeling are satisfied and inclusion of nickel in the range of 2 to 40% preventing peeling and spark durability, workability are satisfied. Therefore, it can be seen that the specific amounts of inclusion of each of iridium and nickel present different tradeoffs that are well-known in the art and finding the specific amount within the ranges amounts to routine optimization. As seen in MPEP §2144.05 (II)(A) optimization within prior art conditions or through routine experimentation generally satisfies the condition for obviousness. It would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be in the lower end of the ranges for iridium and nickel in order to reduce peeling, as taught by Kato et al.
Claim(s) 21 and 22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato in view of Juestel et al. (US PGPub 2005/0176332 A1), or alternatively in further view of Kato et al.
As to claim 21, Kato discloses (Fig. 1) a method for producing a spark plug electrode, comprising: a noble metal pin (51 or 52) for a spark plug electrode (3 or 4) attached to a nickel-based electrode main body (Paragraph 48 and 50, nickel-based alloy), the pin 51, 52 including an alloy containing: more than 80 mass% platinum; 1 to 10 mass% nickel; and 1 to less than 10 mass% iridium (Paragraph 51, claim 5, platinum based with 20% or less iridium, 10% or less nickel, combination of iridium and nickel less than 20%).
Kato is silent as to Applicant’s step of completely alloying the noble metal pin into the electrode main body.
Juestel et al. teaches (Figs. 2A and 2B) completely alloying the noble metal pin into the electrode main body 1 (Claims 14 and 28, Paragraph 25) in order to make a homogenous fusion zone, increased service life, a smooth electrode, faster manufacturing, reduced thermal load (Paragraphs 34-38).
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Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make attachment of the metal pin to the electrode main body by complete alloying in order to make a homogenous fusion zone, increased service life, a smooth electrode, faster manufacturing, reduced thermal load, as taught by Juestel et al.
With respect to the ranges disclosed by Kato, the ranges are overlapping and very close to the claimed ranges of claim 12. As seen in MPEP §2131.03 the claimed range anticipates the prior art range discloses the claimed range with sufficient specificity. Due to the sufficient overlap in the ranges of the specific material explicitly recited by the prior art, the prior art Kato discloses the range with sufficient specificity and therefore anticipates the claimed range.
Alternatively, should it be found that Kato does not anticipate the claimed ranges, as seen in MPEP §2144.05(I), overlapping ranges between the prior art range and the claimed range presents a prima facie case of obviousness.
Further alternatively, should it be argued that the disclosed ranges do not satisfy the requirements for obviousness by themselves, Kato et al. teaches (Fig. 1b, Paragraph 39) that inclusion of iridium in the range of 2 to 40 wt percent spark durability and preventing peeling are satisfied and inclusion of nickel in the range of 2 to 40% preventing peeling and spark durability, workability are satisfied. Therefore, it can be seen that the specific amounts of inclusion of each of iridium and nickel present different tradeoffs that are well-known in the art and finding the specific amount within the ranges amounts to routine optimization. As seen in MPEP §2144.05 (II)(A) optimization within prior art conditions or through routine experimentation generally satisfies the condition for obviousness. It would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be in the lower end of the ranges for iridium and nickel in order to reduce peeling, as taught by Kato et al.
As to claims 22, Kato in view of Juestel et al., or alternatively in further view of Kato et al. teaches that the alloy includes: more than 90 mass% platinum, 3 to 7 mass% nickel; and 1 to 3 mass% iridium. (Kato Paragraph 51, claim 5; Kato et al. Paragraph 39) Similarly to the analysis of claim 21, these ranges overlap the disclosed ranges and are anticipated or obvious, or in the alternative obvious in further view of Kato et al. for substantially the same reasoning.
Claim(s) 17 and 18 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by Lykowski et al. (US PGPub 2007/0222350 A1) and Juestel et al. or, in the alternative, under 35 U.S.C. 103 as obvious in further view of Kato et al.
As to claim 17, Lykowski et al. discloses (Fig. 2) A spark plug electrode, comprising: a noble metal pin 30 for the spark plug electrode, wherein the noble metal pin 30 for the spark plug electrode is attached into a nickel-based electrode (Paragraphs 11 and 29) main body 20, wherein the noble metal pin 30 for the spark plug electrode includes an alloy containing: 30 to 60 mass% platinum, 40 to 65 mass% nickel, and 0.5 to 5 mass% iridium (Paragraph 30, example 9 including platinum, nickel, iridium, Paragraph 33, nickel up to 50%, Paragraph 28, iridium for platinum based materials up to 40 or up to 20%, satisfied for example by nickel Platinum 50%, nickel 49%, iridium 1%).
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Kato is silent as to Applicant’s step of completely alloying the noble metal pin into the electrode main body.
Juestel et al. teaches (Figs. 2A and 2B) completely alloying the noble metal pin into the electrode main body 1 (Claims 14 and 28, Paragraph 25) in order to make a homogenous fusion zone, increased service life, a smooth electrode, faster manufacturing, reduced thermal load (Paragraphs 34-38).
Therefore, it would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to make attachment of the metal pin to the electrode main body by complete alloying in order to make a homogenous fusion zone, increased service life, a smooth electrode, faster manufacturing, reduced thermal load, as taught by Juestel et al.
With respect to the ranges disclosed by Kato, the ranges are overlapping and very close to the claimed ranges of claim 12. As seen in MPEP §2131.03 the claimed range anticipates the prior art range discloses the claimed range with sufficient specificity. Due to the sufficient overlap in the ranges of the specific material explicitly recited by the prior art, the prior art Kato discloses the range with sufficient specificity and therefore anticipates the claimed range.
Alternatively, should it be found that Kato does not anticipate the claimed ranges, as seen in MPEP §2144.05(I), overlapping ranges between the prior art range and the claimed range presents a prima facie case of obviousness.
Further alternatively, should it be argued that the disclosed ranges do not satisfy the requirements for obviousness by themselves, Kato et al. teaches (Fig. 1b, Paragraph 39) that inclusion of iridium in the range of 2 to 40 wt percent spark durability and preventing peeling are satisfied. Therefore, it can be seen that the specific amounts of inclusion of iridium presents different tradeoffs that are well-known in the art and finding the specific amount within the ranges amounts to routine optimization. As seen in MPEP §2144.05 (II)(A) optimization within prior art conditions or through routine experimentation generally satisfies the condition for obviousness. It would be obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to be in the lower end of the ranges for iridium and nickel in order to reduce peeling, as taught by Kato et al.
As discussed in the 112, second paragraph rejection, above, the limitation “and balance nickel” is being examined as though it were not further limiting. However, should it be found that the term “and balance nickel” were further limiting, Lykowski et al. in view of Juestel et al., or alternatively in further view of Kato et al. would still read on this limitation, at least because the ranges discussed in the rejection would easily be chosen to sum to 100%, thereby obviating any need for balance nickel.
As to claim 18, Lykowski et al. in view of Juestel et al., or alternatively in further view of Kato et al. teaches that the alloy includes: more than 90 mass% platinum, 3 to 7 mass% nickel; and 1 to 3 mass% iridium. (Lykowski et al. Paragraphs 11, 28-30 and 33; Kato et al. Paragraph 39) Similarly to the analysis of claims 12, 14 and 19, these ranges overlap the disclosed ranges and are anticipated or obvious, or in the alternative obvious in further view of Kato et al. for substantially the same reasoning.
As discussed in the 112, second paragraph rejection, above, the limitation “and balance nickel” is being examined as though it were not further limiting. However, should it be found that the term “and balance nickel” were further limiting, Lykowski et al. in view of Juestel et al., or alternatively in further view of Kato et al. would still read on this limitation, at least because the ranges discussed in the rejection would easily be chosen to sum to 100%, thereby obviating any need for balance nickel.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kowalski (US PGPub 2015/0236482 A1) discloses (Fig. 2) Platinum tip 38 with 10 to 30 wt% of Ni and/or Ir (Paragraph 40).
Nunome et al. (US PGPub 2010/0264803 A1) discloses (Fig. 1) a noble metal tip 31, 32 with platinum with nickel 2 to 30 mass% and iridium 3 to 40 mass % (Paragraphs 41 and 41).
Hrastnik (US PGPub 2004/0140745 A1) discloses (Fig. 2d and 3c) embedding sparking tips 31, 41 in base electrode 32, 42.
Yoshimoto (US PGPub 2006/0152129, US application related to Applicant’s cited JP 2006 210325 A) discloses a noble metal tip with Pt-RX-X-Ni alloy with Pt main component, Rh 5-40 wt%, X 1-20 wt%, Ni 0.2 to 3 wt %, wherein X is at least one of Ir, Re, Ru.
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.
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/S.Y.H/ Examiner, Art Unit 2875
/ABDULMAJEED AZIZ/ Supervisory Patent Examiner, Art Unit 2875
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