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 .
Status of Claims
Claims 1-8 are pending where no claims have been amended.
Status of Previous Rejections
The previous 35 USC § 102 rejections of the claims over JP 2013234362 A to Okada and CN 101161836 to Xiao et al have been withdrawn.
The previous 35 USC § 102 rejections of the claims over CN 112226645 A to Chao et al and § 103 rejections of the claims over CN 101161836 to Xiao et al and DE 102013107011 to Blumenau have been maintained.
Claim Interpretation
The phrase “lead-free and antimony-free brass alloy” has been interpreted in light of para [0032] of the instant specification to mean an alloy which contains less than 0.1% Pb and less than 0.001% Sb.
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 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.
Claim(s) 8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by CN 112226645 A to Chao et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 8, Chao discloses numerous examples of lead-free and antimony-free brass alloys lying within the scope of instant claim 8, such as Chao alloy 7 (Chao, Table 1, alloy 7) which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Chao alloy 7 wt%
Lies within?
Cu
56-66
58.45
Yes
Mg
0.1-<0.5
0.17
Yes
Pb
<0.1
0.06
Yes
Zn
Balance
Balance
Yes
Chao anticipates instant claim 8 because Chao discloses an alloy lying wholly within the scope of instant claim 8.
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 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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over CN 101161836 to Xiao et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1-8, Xiao discloses a lead-free and antimony free brass alloy composition overlapping the instantly claimed ranges as follows: (Xiao, para [0009])
Element
Claimed wt%
(narrower claims listed after | )
Xiao wt%
Overlaps?
Cu
56-66 | 57-60 | 57.5-58.5
55-63
Yes
Mg
0.1-<0.5
0.5-3.0
Yes
Pb
<0.1 | 0.05-0.09
Impurities < 0.10
Yes
Zn
40-42.5
Balance (~36-44.5)
Yes
As
<0.15
Impurities < 0.10
Yes
P
<0.15
Impurities < 0.10
Yes
Al
<0.1
Impurities < 0.10
Yes
Sn
<0.1
Impurities < 0.10
Yes
In
<0.005
Impurities < 0.10
Yes
Regarding the instantly claimed limitation of “consisting of,” the alloy of Xiao need not contain any additional elements in more than impurity amounts.
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 copper and zinc content of Xiao including the instantly claimed because Xiao discloses the same utility throughout the disclosed ranges.
Regarding the instantly claimed Mg content, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the instantly claimed Mg content of "from 0.1 to less than 0.5% by weight of Mg" and the prior art range of Xiao of 0.5-3.0 wt% Mg are so mathematically close that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over DE 102013107011 to Blumenau (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1-8, Blumenau discloses copper alloys overlapping the scope of instant claims 1-8 as follows (Blumenau, para [0024-0029]):
Element
Claimed wt%
(narrower claims listed after | )
Blumenau wt%
Lies within?
Cu
56-66 | 57-60 | 57.5-58.5
Balance
Yes
Mg
0.1-<0.5
0-5
Yes
Pb
<0.1 | 0.05-0.09
0-3.5
Yes
Zn
40-42.5
0-45
Yes
As
<0.15
0-0.05
Yes
P
<0.15
0-0.3
Yes
Al
<0.1
0-14
Yes
Sn
<0.1
0-8
Yes
In
<0.005
≤impurity
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 Blumenau including the instantly claimed because Blumenau discloses the same utility throughout the disclosed ranges.
Regarding the limitation “consisting of,” additionally recited elements in Blumenau are optional and are not required to be present in the copper alloy of Blumenau.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Applicant argues that the subject matter of claim 8 is not disclosed by Chao because claim 8 consists of enumerated amounts of Cu, Mg, Pb, and Zn and Chao contains additional unrecited elements. This is not found persuasive because instant claim 8 does not “consist of” the instantly claimed elements but rather instant claim 8 recites the limitation “comprising.” 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 I.
Applicant argues that the instant claims are patentable over Xiao because the instant claims recite a Mg content of from 0.1 to less than 0.5% by weight of Mg whereas Xiao recites a Mg content of 0.5-3.0 wt%. This is not found persuasive because regarding the instantly claimed Mg content, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties (See MPEP 2144.05 I). See In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs/ft3 and 25 lbs/ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.) In the instant case, the instantly claimed Mg content of "from 0.1 to less than 0.5% by weight of Mg" and the prior art range of Xiao of 0.5-3.0 wt% Mg are so mathematically close that the difference between the claimed ranges is virtually negligible absent any showing of unexpected results or criticality.
Applicant argues that the instantly claimed ranges are patentable over Blumenau because the ranges of Blumenau are broader than the instantly claimed ranges. This is not found persuasive because as stated in ln re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003):
“In cases involving overlapping ranges, we and our predecessor court have consistently held that even a slight overlap in range establishes a prima facie case of obviousness .... We have also held that a prima facie case of obviousness exists when the claimed range and the prior art range do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775,783 (Fed. Cir. 1985).”
See also Merck & Co., Inc. v. Biocrafi Labs., 874 F.2d 804, 807 (Fed. Cir. 1989) (The fact that a reference "discloses a multitude of effective combinations does not render any particular formulation less obvious." ); In re Susi, 440 F.2d 442, 445 (CCPA 1971) (obviousness rejection affirmed where the disclosure of the prior art was "huge, but it undeniably include[d] at least some of the compounds recited in appellant's generic claims and [was] of a class of chemicals to be used for the same purpose as appellant's additives").
Conclusion
THIS ACTION IS MADE FINAL. 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.
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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