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`BACHMAN LAPOINTE
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`RECEIVED
`CENTRALFAXCENTER
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`I004
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`SEP 1 12005
`
`IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES
`
`Appl. No.
`Applicant
`Filed
`TC/A.U.
`Examiner
`
`: 11/185,619
`2 Wangen Lin et a1.
`:
`July L9, 2005
`: 1725
`: RacheL E. Beveridge
`
`Confirmation No. 5656
`
`Docket No-
`Customer No.
`
`085-10452—US-AA(00—749-3)
`:
`: 52237
`
`Commissioner for Patents
`P.O- Box 1450
`
`Alexandria, VA 22313
`
`Dear Sir:
`
`APPEAL BRIEF
`
`This is an appeal to the Board of Patent Appeals and
`
`Interferences from the final rejection of claims 7 - 14, dated March
`
`14, 2006, made by the Primary Examiner in Tech Center Art unit 1725.
`
`REAL PARTY IN ’INTEREQ
`
`The real party in interest is United Technologies Corporation
`
`of Hartford, Connecticut.
`
`RELATED APPEALS AND INTERFERENCES
`
`There are no other appeals or interferences known to
`
`Appellants, Appellants'
`
`legal representative, or assignee which will
`
`directly affect or be directly affected by or have a bearing on the
`
`Board's decision in the pending appeal.
`
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`.005
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`
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`STATUS OF CLAIMS
`
`Claims 1 — 6 have been previously cancelled. Claims 7 — 14 are
`
`pending in the application and are on appeal.
`
`A true copy of the claims on appeal are attached hereto as
`
`Appendix A.
`
`STATUS OF AMENDMENTS
`
`No amendment was filed subsequent to the final rejection.
`
`SUMMARY OF CLAIMED SUBJECT MATTER
`
`The present invention, as set forth in independent claim 7,
`
`relates to a method for brazing an article comprising the steps of:
`
`(1) providing an article formed from a ferrous material;
`
`(2)
`
`applying a brazing material to said article formed from an alloy
`
`consisting essentially of from abOut 52.25 wt% to about 57.0 wt%
`
`silver,
`
`from abOut 38.95 wt% to about 43.0 wt% copper,
`
`from absut
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`0.5 wt% to about 5.5 wt% manganese, and up to about 2.5 wt% nickel;
`
`and (3) heating said article and said brazing material at a
`
`temperature in the range of from about 900°C to about 1050°C for a
`
`time sufficient to melt said brazing material.
`
`See page 2,
`
`paragraph 0009; also see page 3, paragraph 0015 of the
`
`specification.
`
`As set forth in claim 8,
`
`the heating step comprises heating
`
`said article and said brazing material at a temperature in the range
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`[21008
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`of frOm about 950°C to about 1050°C.
`
`See page 3, paragraph 0015 of
`
`the specification.
`
`Independent claim 9 is directed to a method for brazing an
`
`article comprising the steps of:
`
`(1) providing an article formed
`
`from a ferrous material;
`
`(2) applying a brazing material consisting
`
`of 56 wt% silver, 42 wt% copper, and 2-0 wt% manganese (see page 3,
`
`paragraph 0013 of the specification); and (3) heating said article
`and said brazing material at a temperature in the range of from
`
`about 900°C to about 1050°C for a time sufficient to melt said
`
`brazing material;
`
`See page 3, paragraph 0015 of the Specification.
`
`Independent claim 10 is directed to a method f0r brazing an
`
`article comprising the steps of:
`
`(1) providing an article formed
`
`from a ferrous material;
`
`(2) applying a brazing material consisting
`
`essentially of 0.5 to 5.5 wt% manganese with remaining cemposition
`
`being proportional to 56 wt% silver, 42 wt% copper, and 2.0 wt%
`
`nickel
`
`(see page 3, paragraph 0013 of the specification); and (3)
`
`heating said article and said brazing material at a temperature in
`
`the range of from about 900°C to about 1050%: for a time Sufficient
`
`to melt said brazing material.
`
`See page 3, paragraph 0015 of the
`
`specification.
`
`As set forth in claim 11, which depends from claim 7,
`
`the
`
`brazing material has a nickel content in the range of from abOut 1.5
`
`wt% to about 2.5 wt%.
`
`See page 2, paragraph 0012 of the
`
`Specification.
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`As set forth in claim 12, which also depends frOm claim 7,
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`the
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`brazing material has a manganese content in the range of from about
`
`1.0 wt% to about 5.5 wt%.
`
`See page 2, paragraph 0012 of the
`
`specification.
`
`As set forth in claim 13, which also depends frOm claim 7,
`
`the
`
`article prOViding step comprises providing an article formed frOm
`
`steel-. See page 3, paragraph 0015 of the specification.
`
`Independent claim 14 relates to a method for brazing an article
`
`comprising the steps of:
`
`(1) providing an article formed from
`
`stainless steel
`
`(see page 3, paragraph 0015 of the specification);
`
`(2) applying a brazing to said article formed from an alloy
`
`consisting essentialLy of from about 52.25 wt% to about 57.0 wt%
`
`‘silver,
`
`from about 38.95 wt% to-about 43.0 wt% copper,
`
`from about
`
`0.5 to “5.5 wt% manganese, and up to about 2.5 wt% nickel
`
`(see page
`
`2, paragraph 0012 of the specification); and (3) heating said
`
`article and said brazing material at a temperature in the range of
`
`from about 900°C to about 1050°C for a time sufficient to melt said
`
`brazing material
`
`(see page 3, paragraph 0015 of the specification.
`
`GROUNDS OF REJECTION TO BE REVIEWED ON APPEAL
`
`The grounds of rejection to be reviewed on appeal are as
`
`follows:
`
`(1) The rejection of claims 7 — 13 under 35 U.S.C. 103(a) as
`
`being unpatentable over U.S. Patent No. 2,303,272 to Haskell; and
`
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`@008
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`(2) The rejection of claim 14 under 35 U.S.C. 103(a) as being
`
`unpatentable over Haskell in view of U.S- Patent No. 2,138,638 to
`
`Leach.
`
`ARGUMENT
`
`I.
`
`The rejection of claims 7 - 13 under 35 U.S.C. 103(a) as being
`unpatentable over U.S. Patent No. 2,303,272 to Haskell
`
`(a) Independent Claims 7, 9,
`and 10 Are Not Rendered
`
`Obvious By Haskell
`
`The Haskell patent relied upon by the Examiner is directed to a
`
`metal alloy for soldering and brazing purposes.
`The alloy is
`intended to be used in a process uniting metal carbide—containing
`
`bodies to steel—supporting bodies.
`
`See left hand column,
`
`lines 1 —
`
`5.
`
`The Haskell alley contains from 47.5 to 58 wt% 511Ver;
`
`from 36
`
`to 47 wt% copper;
`
`from 2.5 to 9.0 wt% nickel; and from a trace to
`
`3.0 wt% manganese. Haskell in the right hand column,
`
`line 9 et seq.
`
`states that the silver and copper employed impart malleability and
`
`ductility, with the silver keeping the melting point within the
`
`desired range. Haskell goes on to say that the nickel contributes
`
`strength and is particularly valuable in causing the alloy to
`
`effectively wet the carbides of the fourth and fifth groups.
`
`The Haskell patent is totally silent on how any brazing process
`
`is to be carried out and at what temperature,
`
`the brazing process
`
`would be carried out.
`
`.
`
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`To establish a prima facie case of obviousness,
`
`there must be
`
`some teaching, suggestion or motivation in the pri0r art to make the
`
`specific combination that was made by the applicant.
`
`See In re
`
`Raynes,
`
`7 F.3d 1037, 1039, 28 USPQ2d 1630, 1631 (Fed. Cir. 1993)-
`
`ObviouSness can not be established by hindsight combination to
`
`produCe the claimed invention.
`
`See In re Gorman, 933 P.2d 982, 986,
`
`18 USPQ2d 1885, 1888 (Fed. Cir. 1991). As discussed in Interconnect
`
`Planning Corp. v. Feil, 774 F.2d 1132, 1143, 227 USPQ 543, 551 (Fed.
`
`Cir. 1985), it is the prior art itself, and not the applicant's
`
`achievement,
`
`that must establish obviOusness,
`
`Independent claims 7, 9, and 10 are each allowable for the same
`
`reasons over Haskell — namely, Haskell does'not teach 0r suggest the
`
`claimed heating step.
`
`In particular, Haskell does not teach or
`
`suggest heating the article find the brazing material. Nowhere in
`
`the rejection does the Examiner address this point.
`
`In other words,
`
`the Examiner has faiLed to explain why the prior art reference would
`
`have suggested the cLaimed heating steps to one or ordinary skill in
`
`the art.
`
`Further, Haskell does not teach or suggest heating the article
`
`and the brazing material to a temperature within the claimed range.
`
`Haskell is totally silent on the issue of how his alloy would be
`
`used in a brazing method.
`
`The Examiner merely contends that
`
`“because applicants' braze material is substantially the same as the
`
`instant invention’s, it would have been obvious to one havinQ
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`.010
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`ordinary skill in the art at the time of the inventiOn to modify
`
`Haskell’s invention to arrive at applicant's claimed 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.”
`
`It is well established that the mere
`
`fact that the prior art could be modified as proposed by the
`
`examiner is not sufficient to establish a_prima facie case of
`
`obviousness.
`
`See In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1730,
`
`1783 (Fed. Cir. 1992).
`
`In this case,
`
`the Examiner has not explained
`
`why the prior art would have suggested the desirability of using the
`
`claimed temperature range. Haskell does not identify any
`
`temperature range at which he would carry out a brazing operation.
`
`Thus,
`
`the claimed method step oculd not possibly flow from the
`
`teachings of Haskell. As pointed out to the Examiner, one could
`
`perform a brazing operation using the Haskell alloy at a temperature
`
`outside the claimed range.
`
`The Examiner focuses on the issue of the melting point of the
`
`claimed alloy and the Haskell alloy.
`
`The Examiner concludes that
`
`since both alloys have similar compositions,
`
`they both have melting
`
`temperatures in the claimed range. Of course,
`
`there is no evidence
`
`that supports such a conclusion.
`
`On this issue; however, it should
`
`not go unnoticed that the Leach patent relied upon by the Examiner
`
`relates to an alloy similar in composition to Haskell's alloy.
`
`The
`
`Leach alloy is reported as having a melting point of 1375°F and a use
`
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`.011
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`temperature below about 1500°F (815.55°C). Both of these
`
`temperatures are Outside the claimed range. Thus,
`
`there is the
`
`possibility that Haskell’s alloy may melt and be used at
`
`temperatures outside the claimed range.
`
`The critical point that the Examiner seems to miss is that
`
`Haskell is not just joining any two materials- Haskell is joining a
`
`steel support to metal carbide containing bodies and uses an alloy
`
`specifically designed to do that. Thus,
`
`the brazing temperature
`
`used in Haskell is not insignificant.
`
`The issue is not at what
`
`temperature dees the alloy in Haskell melt. Rather,
`
`the issue is
`
`what temperature would be used to join the hard metal carbide body
`
`to a steel body and how would the brazing material be applied.
`
`Would One heat the article formed-from steel or would one heat the
`
`hard metal carbide body? The answer to these questions is unknown
`
`because Haskell has not provided any teachings on how to join the
`
`steel body to the hard metal carbide body. As far as the Examiner’s
`
`argument abOut similar compositions,
`
`thus similar temperatures would
`
`be used, Such an argument is without merit in light of the
`
`information in Leach. As noted above, one could melt the alloy of
`
`Haskell at a temperature outside the claimed range. Absent
`
`something that teaches or suggests the claimed heating step and the
`
`claimed temperature range,
`
`the obviousness rejection fails.
`
`Appellants agree a reference may be relied upon for all that it
`
`would have reasonably suggested to one having ordinary skill in the
`
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`.012
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`art including non-preferred embodiments.
`
`The problem with Haskell
`
`is that it does not contain any teachings or suggestions relating to
`
`the claimed heating step. As noted above, it is totally silent on
`
`the issue.
`
`Claim 9 is further allowable because Haskell requires the
`
`presence of nickel, an element that is excluded from claim 9. Thus,
`
`there is nothing in Haskell which would teach or suggest the brazing
`
`material applying step of claim 9.
`
`The Examiner's comments are duly noted; however, Appellants are
`
`not required by statute to show any unexpected results.
`
`In this
`
`case, such results are not required since the Examiner has failed to
`
`make a prima facie case of obviousness.
`
`If Haskell suggests
`
`anything to one of ordinary skill in the art, it is that nickel isfa
`
`necessary component of Haskell’s alloy. As Haskell states, “[t]he
`
`nickel contributes strength and is particularly valuable in causing
`
`the alloy to-effectively wet the carbides of the fourth and fifth
`
`groups." (See right—hand column,
`
`lines 12 -15 of Haskell.) Given
`
`this disclosure in Haskell,
`
`there is absolutely no reason one of
`
`ordinary skill in the art would be motivated to eliminate nickel
`
`from the alloy.
`
`The Examiner's statement that the claimed
`
`composition is disclosed in Haskell regardless of the presence of
`
`nickel is incomprehensible to Appellants.
`
`It is unreasonable and
`
`illogical to take the position that the claimed composition is
`
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`.013
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`disclosed, when what is disclosed includes a constituent which has
`
`been excluded by the claim language.
`
`With regard to the Hansel et al. patent referred to by the
`
`Examiner in the Examiner's comments, Appellants point out that it
`
`has not been applied against any of the claims and for very good
`
`reason. Hensel's alloy contains a canstituent, namely lithium,
`
`which is excluded by the claim language. There can be no question
`
`that Haskell teaches away from using a nickel—less composition since
`
`Haskell teaches using nickel because it contributes strength and is
`
`valuable in causing the alloy to effectiVely wet the carbides of the
`
`fourth and fifth groups.
`
`Claim 10 is further allowable because Haskell requires the
`
`presence of a minimum nickel content of 2.5 wt%. Therefore, Haskell
`
`does not teach or suggest, and never would,
`
`the brazing material
`
`applying step of claim 10 and in particular the proportions set
`
`forth in the claim. No matter what the manganese content of the
`
`claimed brazing material,
`
`the nickel content must always be less
`
`than 2.0 wt% in the invention set forth in claim 10. This nickel
`
`content is Outside the nickel range of Haskell. There is nothing in
`
`Haskell that would teach or suggest using a nickel content less than
`
`2.5 wt%.
`
`In fact, Haskell clearly teaches away frOm the claimed
`
`invent ion .
`
`With regard to the Examiner's comments that it would be obvious
`
`to one of ordinary skill in the art at the time of the invention to
`
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`.014
`
`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 rontine skill in the art, such comments ignore
`
`the teachings of Haskell. Haskell clearly teaches using a nickel
`
`content in the range of 2.5 to 9.0%. There is nothing in Haskell
`
`which would teach or suggest that this nickel content should be
`
`modified for any reason.
`
`The Examiner's position is nothing more
`
`than an end run around the requirement that there be some teaching
`or suggestion of the modification in the priOr art.
`It is submitted
`
`that one Can not take the position that an invention is obvious by
`
`varying all parameters or trying each of numerous possible choices
`
`until one possibly arrives at a successful result, where the prior
`
`art gives no indication of which parameters were critical or no
`
`direction as to which of may possible choices is likely to be
`
`succassful.
`
`See In re O’Farrell, 853 F.2d 894, 903~04 (Fed. Cir.
`
`1988).
`
`(b) Patentability of Claims 8 and 11 — 13
`
`Claim 8 calls for the heating step to comprise heating the
`
`article and the brazing material at a temperature in the range of
`
`from about 950°C to about 1050°C. As noted above,
`
`there is nothing
`
`in Haskell which teaches or suggests heating the article and the
`
`brazing material. There is also nothing in Haskell which teaches or
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`.015
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`suggests heating the article and the brazing material to the claimed
`
`temperature .
`
`Claims 11 ~ 13 stand or fall with claim 7.
`
`II.
`
`The rejection of claim 14 under 35 U.S.C. 103(a) as being
`unpatentable over Haskell in view of U.s. Patent No. 2,138,638
`to Leach
`
`(a) Patentability of Claim 14
`
`Claim 14 is directed to a method for brazing an article
`
`comprising the steps of:
`
`(1) providing an article formed from
`
`stainless steel;
`
`(2) applying a brazing material to said article
`
`. formed from an alloy consisting essentially of frOm about 52.25 wt%
`
`to about 57.0 wt% silver,
`
`from about 38.95 to about 43.0 wt% copper,
`
`from about 0.5 wt% to 5.5 wt% manganese, and up to about 2.5 wt%
`
`nickel; and (3) heating said article and said brazing material at a
`
`temperature in the range of from about 900°C to about 1050°C for a
`
`time sufficient to melt said brazing material.
`
`As noted ab0ve, Haskell fails to teach or suggest the claimed
`
`heating step. Haskell also fails to teach the step of prOViding an
`
`article formed from stainless steel.
`
`To cure this defect,
`
`the Examiner applies the Leach patent as
`
`disclosing alloys for brazing purposes adapted to unite objects made
`
`of stainless steel.
`
`The Examiner contends that it would have been
`
`obvious to modify 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.
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`First, one of ordinary skill in the art would not want to
`
`modify Haskell to use stainless steel as a support for metal carbide
`
`containing bodies to be used in metal-cutting and forming tools.
`
`Second, it is submitted that the Examiner misapplies Leach. Leach
`
`does not only teach brazing a stainleSS steel material, it teaches
`
`using a silVer-copper—manganese—nickel brazing material that
`
`includes silicon. Clearly, one of ordinary skill in the art having
`
`Haskell and Leach before him would be motivated to add silicon to
`
`the brazing material when brazing a stainless steel material.
`
`In
`
`other words, Leach is teaching away from the claimed invention.-
`
`Therefore, one of ordinary skill in the art would not be motivated
`
`to combine the references in the manner suggested by the Examiner.
`
`va anything, one wouLd be motivated to use a brazing material other
`
`than what is set forth in the claim.
`
`Even if it were obvious to combine the references as suggested
`
`by the Examiner, neither reference teaches or suggests the claimed
`
`heating step. Leach clearly teaches a use temperature of 1500°F
`
`(815.55°C) which is higher than the alley's melt temperature.
`
`In
`
`other words, Leach teaches away from the claimed temperature range.
`
`As discussed above, Haskell is silent on the heating temperature.
`
`For these reasons,
`
`independent claim 14 is allowable over the
`
`cited and applied refierences.
`
`CONCLUS I ON
`
`13
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`BACEMAN LAPOINTE
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`.017
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`For the foregoing reasons,
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`the Board is hereby requested to
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`reverSe the rejections of record and remand the instant application
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`back to the Primary Examiner for allowance.
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`APPEAL BRIEF FEE
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`The Director is hereby authorized to charge the $500.00 appeal
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`brief fee to Deposit Account No. 21~0279.
`
`ShOuld the Director
`
`determine that an additional fee is due, he is hereby authorized to
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`charge said additional fee to said Deposit Account.
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`Respectfully submitted,
`
`Wangen Lin et al.
`
`By
`Barry L. Kelmachter
`BACHMAN & LaPOINTE, P.C.
`Reg. No. 29,999
`Attorney for Applicants
`Telephone:
`(203)777—6628 ext. 112
`Telefax:
`(203)865—0297
`Email: docket@bach1ap.com
`
`IN'TRIPLICATE
`
`Date: August 9, 2006
`
`1, Karen M. Gil]. hereby certify that this can: mundane: is being deposimd with the United States Postal Saviec wlth sumciem passage as first class mail
`in an mvclupc addressed Io: “Commission: for Parents PO. Box 1460. Alexandria, VA 22313‘ on August 9, 2006.
`
`
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`BACHIMAN LAPOINTE
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`.018
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`RECEIVED
`CENTfiAL FAX CENTER
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`SEP 1 12005
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`CHJXDdSCHJAPPEAL-AJHHHVDEXIX
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`7- A method for brazing an article comprising the steps of:
`
`(1)
`
`(2) applying a
`providing an article formed from a ferrous material;
`brazing material to said article formed from an a110y consisting
`essentially of from about 52.25 wt% to about 57.0 wt% silver,
`from
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`about 38.95 wt% to about 43.0 wt% copper,
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`from about 0.5 wt% to
`
`about 5.5 wt% manganese, and up to about 2-5 wt% nickel; and (3)
`
`heating said article and said brazing material at a temperature in
`
`the range of from abOut 900°C to about 1050°C for a time sufficient
`
`to melt said brazing material.
`
`8. The method of claim 7, wherein said heating step comprises
`
`heating said article and said brazing material at a temperature in
`
`the range of from about 950°C to about 1050°C.
`
`9. A method for brazing an article comprising the steps of: (1)
`
`(2) applying a
`providing an article formed from a ferrous material;
`brazing material consisting of 56 wt% silver, 42 wt% copper, and 2.0
`
`wt% manganese; and (3) heating said article and said brazing
`
`material at a temperature in the range of from about 900°C to about
`
`1050°C for a time sufficient to melt said brazing material.
`
`10. A method for braxing an article camprising the steps of:
`
`(1)
`
`(2) applying a
`providing an article formed from a ferrous material;
`brazing material consisting essentially of 0.5 to 5.5 wt% manganese
`with remaining composition being proportional to the 56 wt% silver,
`42 wt% copper, and 2.0 wt% nickel; and (3) heating said article and
`
`said brazing material at a temperature in the range of from about
`900°C to about 1050°C for a time sufficient to melt said brazing
`material.
`
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`BACHMAN LAPOINTE
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`.019
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`11. The method according to claim 7, wherein said brazing material
`
`being applied has a nickel content in the range of from about 1.5
`
`wt% to about 2.5 wt%.
`
`12. The method according to claim 7, wherein said brazing material
`
`being applied has a manganese content in the range of from about 1.0
`wt% to about 5.5 wt%.
`
`13. The method according to claim 7, wherein said article providing
`
`step comprises providing an article formed from steel.
`
`(1)
`14- A method for brazing an article comprising the steps of:
`providing an article formed frOm stainless steel;
`(2) applying a
`
`brazing material to said article formed from an alloy consisting'
`
`essentially of from about 52.25 wt% to about 57.0 wt% silver,
`
`from
`
`about 38.95 wt% to about 43.0 wt% copper,
`
`from about 0.5 wt% to 5.5
`
`wt% manganese, and up to about 2.5 wt% nickel; and (3) heating said
`
`article and said brazing material at a temperature in the range of
`
`from about 900°C to about 1050°C for a time sufficient to melt said
`
`brazing material.
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`BACHMAN LAPOINTE
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`.
`
`I020
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`EVIDENCE - APPENDIX B
`
`NOT APPLICABLE
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`‘
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`11:29 FAX 203 865 0297'
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`BACHMAN LAPOINTE
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`.021
`
`RELATED PROCEEDINGS - APPENDIX C
`
`NOT APPLICABLE
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