`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United SKINS Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`9.0. Box I450
`Alexandria. Virginia ZZJIB-HSO
`wwwluspmguv
`
`I III 85,61 9
`
`07/19/2005
`
`Wangcn Lin
`
`EH- |04528(00—749—3)
`
`5656
`
`BACHMAN & LAPOINTE, P.C. (P&W)
`900 CHAPEL STREET
`-
`sum .20]
`
`NEW HAVEN, CT 065l0-2802 ‘
`
`-
`
`BEVERIDGE, RACHEL E
`
`I725
`DATE MAILED: 03/14/2006
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`

`

`Office Aetion Summary
`
`Application No.
`
`11/185.619
`
`Applicant(s)
`
`LIN ET AL.
`
`Examiner
`
`Rachel E. Beven'dge
`
`Art Unit
`
`1725 -
`
`- The MAILING DATE of this communication appears on the cover sheet with the correspondence address —-
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE _3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`- Extensions of time may be available under the provisions of 37 OFR 1.136(3).
`In no event, however. may a reply be timely filed
`alter SIX (6) MONTHS from the mailing date of this communication.
`ll NO period for reply is specified above. the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will. by statute. cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`HIE Responsive to communication(s) filed on 19 July 2005.
`
`2a)IZ This action is FINAL.
`
`2b)[:I This action is non-final.
`
`3)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`
`closed in accordance with the practice under Ex parte Quayle, 1935 CD. 11, 453 0.6. 213.
`
`Disposition of Claims
`
`MIX Claim(s) _7_-_1_4 is/are pending in the application.
`
`4a) Of the above Claim(s) __ is/are withdrawn from consideration.
`
`5)|:l Claim(s) _ islare allowed.
`
`6)E Claim(s) 1:15 is/are rejected.
`
`7)I:I Claim(s) _ is/are objected to.
`
`8)I:I Claim(s)
`
`are subject to restriction and/or election requirement.
`
`Application Papers
`
`9)l:l The specification is objected to by the Examiner.
`10):] The drawing(s) filed on _ is/are: a)Ij accepted or b)E] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`11)|:] The oath or declaration is objected to by the Examiner. Note the attached Office Action or form PTO-152.
`
`Priority under 35 U.S.C. § 119
`
`12)I:] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`
`a)I:l All
`
`b)EI Some * c)|:] None of:
`
`1C] Certified copies of the priority documents have been received.
`
`2!] Certified copies of the priority documents have been received in Application No. _
`
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
`
`application from the International Bureau (PCT Rule 17.2(a)).
`
`* See the attached detailed Office action for a list of the certified copies not received.
`
`. U
`
`Attachment(s)
`
`1) E] Notice of References Cited (PTO-892)
`2) E] Notice of Draflsperson's Patent Drawing Review (PT07948)
`3) E] lnforrnation Disclosure Statement(s) (PTO-1449 or PTO/SB/OB)
`Paper No(s)/Mail Date
`.
`S. Patent and Trademark Office
`PTOL-326 (Rev. 7-05)
`'
`
`4) E] Interview Summary (PTO-413)
`Paper N°(SIIM3" Date. __ -
`5) CI Notice of Informal Patent Application (PTO-152)
`6) C] Other:
`
`j
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 03092006
`
`

`

`Application/Control Number: 11/185,619
`Art Unit: 1725
`
`Page 2
`
`DETAILED ACTION
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and
`the prior art are such that the subject matter as a whole would have been obvious at the time the
`invention was made to a person having ordinary skill in the art to which said subject matter pertains.
`Patentability shall not be negatived by the manner in which the invention was made.
`
`Claims 7-13 are rejected under 35 U.S.C. 103(a) as being unpatentable over
`
`Haskell (US 2,303,272).
`
`With respect to claim 7, Haskell discloses alloys for brazing purposes to unite
`
`steel-supporting bodies (Column 1, lines 1-5). Haskell's alloy consists of the following
`
`composition ranges: silver 47.5 to 58%, copper 36 to 47%, nickel 2.5 to 9%, and
`
`manganese tr. to 3% (Column 2, lines 1-7). The composition ranges for silver and
`
`copper as disclosed by Haskell anticipate the ranges disclosed by the applicant. The
`
`composition range for manganese as disclosed by Haskell encompasses the majority of
`
`the applicants claimed range, and Haskell’s nickel composition range encompasses
`
`2.5% as is also disclosed by the applicant. Furthermore, Haskell discloses that a “high
`
`melting point is necessary” for brazing (Column 1, lines 28-29). Because applicant’s
`
`braze material is substantially the same as the instant invention's, it would have been
`
`obvious to one having ordinary skill in the art at the time of the invention to modify
`
`Haskell's invention to arrive at applicant’s claimed high temperature range of 900 to
`
`1050 °C to sufficiently melt the said composition of brazing material in order to create a
`
`firm bond between the steel parts to be joined together (Column 1, lines 42—44).
`
`

`

`Application/Control Number: 11/185,619
`
`Page 3
`
`Art Unit: 1725
`
`Regarding claim 8, Haskell discloses that a “high melting point is necessary" for
`
`brazing (Column 1, lines 28-29). Because applicant’s braze material is substantially the
`
`same as the instant invention’s, it would have been obvious to one having ordinary skill
`
`in the art at the time of the invention to modify Haskell’s invention to arrive at applicant’s
`
`claimed high temperature range of 900 to 1050 °C to sufficiently melt the said
`
`composition of brazing material in order to create a firm bond between the steel parts to
`
`be joined together (Column 1, lines 42-44).
`
`With respect to claim 9, Haskell’s alloy consists of the following composition
`
`ranges: silver 47.5 to 58%, copper 36 to 47%, nickel 2.5 to 9%, and manganese tr. to
`
`3% (Column 2, lines 1-7). The composition ranges for silver and copper as disclosed by
`
`Haskell anticipate the ranges disclosed by the applicant. The composition range for
`
`manganese as disclosed by Haskell encompasses the majority of the applicants
`
`claimed range. Put another way, Haskell teaches sufficient malleability and ductility
`
`from silver and copper, maintenance of the desired melting range from silver, and
`
`purification of the alloy by manganese to eliminate oxidation (Column 2, lines 9—16), to
`
`be an art recognized result effective variable depending on the type of material to be
`
`used.
`
`It would have been obvious to one having ordinary skill in the art at the time of
`
`the invention was made to modify the invention of Haskell to include the instant
`
`composition disclosed by the applicant in claim 9. That is it would have been obvious to
`
`one of ordinary skill in the art at the time of the invention to choose the instantly claimed
`
`values through process optimization, since it has been held that there are general
`
`conditions of a claim are disclosed in the prior art, discovering the optimum or workable
`
`

`

`Application/Control Number: 11/185,619
`
`Page 4
`
`Art Unit: 1725
`
`ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA
`
`1980).
`
`With regard to claim 10, Haskell’s alloy consists of the following composition
`
`ranges: silver 47.5 to 58%, copper 36 to 47%, nickel 2.5 to 9%, and manganese tr. to
`
`3% (Column 2, lines 1-7). The composition ranges for silver and copper as disclosed by
`
`Haskell anticipate the ranges disclosed by the applicant. The composition range for
`
`manganese as disclosed by Haskell encompasses the majority of the applicants
`
`claimed range. Haskell’s nickel composition range encompasses 2.5% as is also
`
`disclosed by the applicant. Put another way, Haskell teaches sufficient malleability and
`
`ductility from silver and copper, maintenance of the desired melting range from silver,
`
`increased strength and effective wetting ability from nickel, and purification of the alloy
`
`by manganese to eliminate oxidation (Column 2, lines 9-16), to be an art recognized
`
`result effective variable depending on the type of material to be used.
`
`It would have
`
`been obvious to one having ordinary skill in the art at the time of the invention was
`
`made to modify the invention of Haskell to include the instant composition disclosed by
`
`the applicant in claim 10. That is it would have been obvious to one of ordinary skill in
`
`the art at the time of the invention to choose the instantly claimed values through
`
`process optimization, since it has been held that there are general conditions of a claim
`
`are disclosed in the prior art, discovering the optimum or workable ranges involves only
`
`routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
`
`Regarding claim 11, Haskell's alloy consists of the following composition ranges:
`
`silver 47.5 to 58%, copper 36 to 47%, nickel 2.5 to 9%, and manganese tr. to 3%
`
`

`

`Application/Control Number: 11/185,619
`
`,
`
`Page 5
`
`Art Unit: 1725
`
`(Column 2, lines 1-7). Haskell’s nickel composition range encompasses 2.5% as is also
`
`disclosed by the applicant. Thus, it would have been obvious to one of ordinary skill in
`
`the art at the time of the invention to modify the disclosed nickel composition of Haskell
`
`to encompass the values lower than 2.5% of applicant's instant invention in order to
`
`obtain desirable high wetting ability so that a firm bond can be created between the
`
`steel parts joined together (Column 1, lines 42-44).
`
`it is also the examiner’s position
`
`that the amounts in question are so close that is it prima facie obvious that one skilled in
`
`the art would have expected them to have the same properties. Titanium Metals Corp.
`
`v. Banner, 227 USPQ 773.
`
`With respect to claim 12, Haskell’s alloy consists of the following composition
`
`ranges: silver 47.5 to 58%, copper 36 to 47%, nickel 2.5 to 9%, and manganese tr. to
`
`3% (Column 2, lines 1-7). The composition range for manganese as disclosed by
`
`Haskell encompasses the majority of the applicants claimed range. Hence, it would
`
`have been obvious to one of ordinary skill in the art at the time of the invention to modify
`
`the disclosed manganese composition of Haskell with the broader range of the applicant
`
`in order to purify the alloy and eliminate oxidation (Column 2, lines 15-16) and to obtain
`
`desirable high wetting ability so that a firm bond can be created between the steel parts
`
`joined together (Column 1, lines 42-44).
`
`With regard to claim 13, Haskell discloses alloys for brazing purposes to unite
`
`steel-supporting bodies (Column 1, lines 1-5). Therefore, it would have been obvious to
`
`one of ordinary skill in the art at the time of the invention to modify the invention of
`
`Haskell to encompass the claimed alloy composition ranges for brazing of steel bodies
`
`

`

`Application/Control Number: 11/185,619
`
`Page 6
`
`Art Unit: 1725
`
`in order to obtain desirable high wetting ability so that a firm bond can be created
`
`between the steel parts joined together (Column 1, lines 42-44).
`
`Claim 14 is rejected under 35 U.S.C. 103(a) as being unpatentable over Haskell (US
`
`2,303,272) as applied to claim 7 above, and further in view of Leach (US 2,138,638).
`
`Haskell lacks disclosure of stainless steel bodies for brazing with the said alloy
`
`compositions. However, Leach discloses alloys for brazing purposes adapted to unite
`
`objects made of stainless steel (Leach, page 1, column 1, lines 1-5). Therefore, it would
`
`have been obvious to one of ordinary skill in the art at the time of the invention to modify
`
`the invention of Haskell to incorporate the joining of stainless steel as taught by Leach
`
`in order to utilize silver alloys to braze stainless steel with significant wetting ability
`
`(Leach, page 1, column 1, lines 7-15).
`
`Response to Arguments
`
`Applicant's arguments filed January 18, 2006 have been fully considered but they
`
`are not persuasive.
`
`Withrespect to claims 7, 8, 9, and 10 the applicant argues that Haskell does not
`
`teach or suggest the claimed temperature range set forth in the claims and states,
`
`“Haskell is totally silent on the issue” (p.5). The applicant also states, “the Examiner
`
`has not complied with the requirements for setting forth a prima facie case of
`
`obviousness” (p.5). The examiner disagrees. As stated in the rejection, Haskell
`
`discloses, “a relatively high melting point is necessary” (Haskell, col. 1, lines 28-29).
`
`Also, Haskell discloses the applicant's claimed composition; therefore, under the same
`
`

`

`Application/Control Number: 11/185,619
`
`Page 7
`
`Art Unit: 1725
`
`working conditions the same chemical composition will melt at the same temperature.
`
`The examiner notes that the applicant has not stated any working conditions (i.e.
`
`pressure, environment) that separate it's brazing process from the prior art.
`
`Applicant argues that Haskell requires the presence of nickel that is excluded
`
`from amended claim 9 (p.6). The examiner notices that nickel is excluded from claim 9;
`
`however, the claimed composition is disclosed in Haskell regardless of the presence of
`
`nickel and the rejection stands for these reasons and the reasons stated above. Also,
`
`the examiner points out that the applicant has not claimed nor stated why nickel should
`
`not be included in claim 9 (i.e. what are the unexpected results?). Furthermore, the
`
`examiner made reference to US Pat. 2,196,303 (Hensel et al.) on the record and points
`
`the applicant to the compositions stated in column 2, lines 5-15.
`
`Applicant argues that Haskell requires the presence of a minimum nickel content
`
`of 2.5 wt% and that “no matter what the manganese content of the brazing applying
`
`material, the nickel content must always be less than 2.0 wt% in the invention set forth
`
`in claim 10" (p.6). The examiner points out that the claim language does not state that
`
`the manganese content must be “less than or equal to" or “no more than" 2.0 wt% as
`
`applicant has argued and therefore, the obviousness rejection stands. Furthermore,
`
`during patent examination, the pending claims must be “given the broadest reasonable
`
`interpretation." Applicant always has the opportunity to amend the claims during
`
`prosecution, and broad interpretation by the examiner reduces the possibility that the
`
`claim, once issued, will be interpreted more broadly than is justified. In re Prater, 415
`
`F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969).
`
`

`

`Application/Control Number: 11/185,619
`
`Page 8
`
`Art Unit: 1725
`
`Applicant further argues, "claims 11-13 are allowable for the same reasons as
`
`claim 7, as well as on their own accord" (p.6). The examiner disagrees for the same
`
`reasons stated with regard to claims 7-10 above.
`
`Regarding claim 14, applicant argues that the examiner misapplied Leach
`
`because it teaches a silver-copper-manganese-nickel brazing material that
`
`includes silicon, and further argues that Leach is teaching away from the claimed
`
`invention (p.6). Although, the examiner agrees that Leach teaches the addition
`
`of silicon, the examiner disagrees that the limitations of Leach are not obvious for
`
`rejection of applicant’s broad claim. The amount of silicon is very limited (almost
`
`zero) and Leach even goes so far as to state that an increase in the silicon
`
`content “does not produce a further improvement in the characteristics of the
`
`alloy and, in fact, appears to be detrimental in some respects” (Leach, col. 2,
`
`lines 9-13). Furthermore, the examiner points out that Leach still discloses the
`
`claimed components of applicants brazing composition in each example listed.
`
`Also, the MPEP states, “patents are relevant as prior art for all they contain,”
`
`more specifically stating,
`
`"'The use of patents as references is not limited to what the patentees
`describe as their own inventions or to the problems with which they are
`concerned. They are part of the literature of the art, relevant for all they
`contain." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039
`(Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ
`275, 277 (CCPA 1968)).
`
`it would have reasonably
`A reference may be relied upon for all that
`suggested to one having ordinary skill
`the art,
`including nonpreferred
`embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10
`USPQZd 1843 (Fed. Cir.), cert. denied, 493 US. 975 (1989). See also
`
`

`

`Application/Control Number: 11/185,619
`
`Page 9
`
`Art Unit: 1725
`
`lntemational Corp, 150 F.3d
`Celen'tas Technologies Ltd. v. Rockwell
`1354, 1361, 47 USPQZd 1516, 1522-23 (Fed. Cir. 1998) (The court held
`that the prior art anticipated the claims even though it taught away from
`the claimed invention. "The fact that a modern with a single carrier data
`signal is shown to be less than optimal does not vitiate the fact that it is
`disclosed") MPEP 2123 I.
`
`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
`
`extension fee 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 Rachel E. Beveridge whose telephone number is 571-
`
`272-5169. The examiner can normally be reached on Monday through Friday, 9 am to
`
`6 pm.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Patrick Ryan can be reached on 571-272—1292. The fax phone number for
`
`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

`

`Application/Control Number: 11/185,619
`
`Page 10
`
`Art Unit: 1725
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.usptogov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free).
`
`reb
`
`PRIMARY EXA mug:
`
`