`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 22313-1450
`www.uspto.gov
`
`
`
`APPLICATION NO.
`
`FILING DATE
`
`FIRST NAMED INVENTOR
`
`11/185,619
`
`07/19/2005
`
`Wangen Lin
`
`CONFIRMATION NO.
`ATTORNEY DOCKET NO.
`II
`EH-lO4523(00—749-3)
`5656
`
`BACHMAN & LAPOINTE, P.C. (P&W)
`900 CHAPEL STREET
`sum: 1201
`
`NEW HAVEN, CT 06510-2802
`
`'
`
`BEVERIDGE, RACHEL E
`
`1725
`
`DATE MAILED: 06/26/2006
`
`Please find below and/or attached an Office communication concerning'this application or proceeding.
`
`PTO-90C (Rev. 10/03)
`
`

`

`Application No.
`
`Applicant(s)
`
`_ A
`
`
`Advisory Action
`Before the Filing of an Appeal Brief
`
`
`--The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`THE REPLY FILED 15 June 2006 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`
`Examiner
`
`Art Unit
`
`
`---
`
`
`
`
`
`1. E The reply was filed after a final rejection, but prior to or on the same day as filing a Notice of Appeal. To avoid abandonment of
`this application, applicant must timely file one of the following replies: (1) an amendment, affidavit, or other evidence, which
`places the application in condition for allowance; (2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3)
`a Request for Continued Examination (RCE) in compliance with 37 CFR 1.114. The reply must be filed within one of the following
`time periods:
`a) XI The period for reply expires 1months from the mailing date of the final rejection.
`b) I] The period for reply expires on: (1) the mailing date of this Advisory Action, or (2) the date set forth in the final rejection, whichever is later.
`no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`Examiner Note: If box 1
`is checked, check either box (a) or (b). ONLY CHECK BOX (b) WHEN THE FIRST REPLY WAS FILED WITHIN
`TWO MONTHS OF THE FINAL REJECTION. See MPEP 706.07(f).
`Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate extension fee
`have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The appropriate extension fee
`under 37 CFR 1.17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally set in the final Office action; or (2) as
`set forth in (b) above, if checked. Any reply received by the Office later than three months after the mailing date of the final rejection, even if timely filed,
`may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`NOTICE OF APPEAL
`
`In
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`2. X The Notice of Appeal was filed on 15 June 2006. A brief in compliance with 37 CFR 41.37 must be filed within two months of the
`date of filing the Notice of Appeal (37 CFR 41.37(a)), or any extension thereof (37 CFR 41 .37(e)), to avoid dismissal of the
`appeal. Since a Notice of Appeal has been filed, any reply must be filed within the time period set forth in 37 CFR 41 .37(a).
`AMENDMENTS
`
`3. E] The proposed amendment(s) filed after a final rejection, but prior to the date of filing a brief, will n_ot be entered because
`(a) E] They raise new issues that would require further consideration and/or search (see NOTE below);
`(b) I] They raise the issue of new matter (see NOTE below);
`(0) [:1 They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`(d) E] They present additional claims without canceling a corresponding number of finally rejected claims.
`NOTE:
`. (See 37 CFR 1.116 and 41.33(a)).
`4. E] The amendments are not in compliance with 37 CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5. El Applicant’s reply has overcome the following rejection(s):
`6. [:1 Newly proposed or amended claim(s)
`would be allowable if submitted in a separate, timely filed amendment canceling the
`non-allowable claim(s).
`7. [:I For purposes of appeal, the proposed amendment(s): a) C] will not be entered, or b) C] will be entered and an explanation of
`how the new or amended claims would be rejected is provided below or appended.
`The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed:
`Claim(s) objected to:
`Claim(s) rejected:
`Claim(s) withdrawn from consideration:
`AFFIDAVIT OR OTHER EVIDENCE
`
`8. E] The affidavit or other evidence filed after a final action, but before or on the date of filing a Notice of Appeal will n_o_t be entered
`because applicant failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and
`was not earlier presented. See 37 CFR 1.116(e).
`9. E] The affidavit or other evidence filed after the date of filing a Notice of Appeal, but prior to the date of filing a brief, will n_ot be
`entered because the affidavit or other evidence failed to overcome a_l| rejections under appeal and/or appellant fails to provide a
`showing a good and sufficient reasons why it is necessary and was not earlier presented. See 37 CFR 41 .33(d)(1).
`
`
` RE UEST FOR RECONSIDERATION/OTHER
`
`11. E The request for reconsideration has been considered but does NOT place the application in condit
`
`
`see continuation sheet.
`
`
`
`12. El Note the attached Information Disclosure Statement(s). (PTO/SB/O8 or PTO-1449) Paper No(s).W
`AhIIK‘Fp
`13. III Other:
`.
`pnMW EX
`
`
`
`
`U.S. Patent and Trademark Office
`PTOL-303 (Rev. 7-05)
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Part of Paper No. 20060621
`
`

`

`Application/Control Number: 11/185,619
`
`Page 2
`
`Art Unit: 1725
`
`CONTINUATION OF ITEM 11
`
`Response to Arguments
`
`Applicant's arguments filed June 15, 2006 have been fully considered but they
`
`are not persuasive.
`
`Applicant argues Haskell lacks disclosure of the claimed heating step for heating
`
`the article and the brazing material (page 2). The examiner disagrees and reminds the
`
`applicant that Haskell discloses a “high melting point is necessary” for the alloy, which
`
`implies that heating of the materials occurs during the brazing step defined in column 1,
`
`lines 1-5. Haskell further discloses the connection/bond developed between with an
`
`alloy between two bodies, thus it is further obvious that heating occurs to both the article
`
`and the brazing material (alloy). Furthermore, the definition of brazing implies at least
`
`one heating step involved in order to join or unite the bodies together.
`
`Applicant also argues that Haskell is totally silent on the issue of how his alloy
`
`would be used in a brazing product (page 2). The examiner disagrees. Furthermore,
`
`Haskell discloses his invention relating “to alloys particularly suited for soldering and
`
`brazing purposes, and is concerned more particularly with the novel alloy especially
`
`adapted for uniting metal carbide containing bodies to steel-supporting bodies (col. 1,
`
`lines 1-5).
`
`Applicant argues with the Examiner’s previous notation about “similar
`
`compositions, thus similar temperatures would be used” (page 3), further stating, “one
`
`could melt the alloy of Haskell at a temperature outside of the claimed range (page 3).
`
`The examiner acknowledges the applicant's argument that Haskell can be performed
`
`

`

`Application/Control Number: 11/185,619
`
`Page 3
`
`Art Unit: 1725
`
`within a range of temperatures; however, the examiner reminds the applicant that the
`
`material would melt within the claimed range because it contains the same
`
`compositional ranges (hence, leading to a range of temperatures at which the alloy will
`
`melt depending on the specific amounts of each element in each independent mixture)
`
`and combination of materials as applicant. The examiner further 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 “claim 9 is further allowable because Haskell requires the
`
`presence of nickel that is excluded from amended claim 9 (page 4). The examiner
`
`disagrees and repeats that 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 (Le. 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.
`
`With respect to claim 10, the applicant argues, “the nickel content is outside the
`
`nickel range of Haskell" and states, “there is nothing in Haskell that would teach or
`
`suggest using a nickel content less than 2.5 wt%” (page 5). The examiner disagrees,
`
`and reminds the applicant that 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
`
`

`

`Application/Control Number: 11/185,619
`
`Page 4
`
`Art Unit: 1725
`
`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).
`
`Applicant again argues that the examiner misapplies Leach, with regard to claim
`
`14 (page 5), and goes so far as to argue that Leach is teaching away from the claim
`
`inventions (page 5). The examiner disagrees and again repeats that the limitations of
`
`Leach are 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
`Lame/son, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)).
`
`

`

`Application/Control Number: 11/185,619
`
`Page 5
`
`Art Unit: 1725
`
`A reference may be relied upon for all that it would have reasonably 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 Celen'tas Technologies Ltd. v. Rockwell
`International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 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 modem with a single
`carrier data signal is shown to be less than optimal does not vitiate the fact that it
`is disclosed") MPEP 2123 l.
`
`Conclusion
`
`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.
`
`lf 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 numberfor
`
`the organization where this application or proceeding is assigned is 571-273—8300.
`
`

`

`Application/Control Number: 11/185,619
`
`Page 6
`
`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.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786—9199 (IN USA OR CANADA) or 571 -272-1000.
`
`'eb
`
`THANJOt-NSON
`PRIMARY EXAMINER
`
`