Ex parte KURODA et al. - Page 4


                 Appeal No. 97-2220                                                                                                                     
                 Application 08/250,607                                                                                                                 

                       of manganese and phosphorous are known, and are known to be corrosion resistant, have                                            
                       good thermal conductivity, and be readily solderable. [Id., page 7.]                                                             
                 In further response to appellants’ arguments in their principal brief, the examiner makes the following                                
                 two statements with respect to Hensel.  At pages 9-10 of the answer:                                                                   
                       Switching one known corrosion resistant copper alloy for another is a substitution of known                                      
                       equivalents which would be well within the level of ordinary skill in the art. Indeed, if one                                    
                       constructed a “shopping list” of properties necessary for a suitable alloy which could be used                                   
                       to make heat exchanger tubes, one could hardly do better than the properties of                                                  
                       anticorrsiveness, easy solderability, and good thermal conductivity which Hensel et al.                                          
                       ascribe to their alloy.                                                                                                          
                          As has been pointed out previously, applicants are not claiming a novel compound, but                                         
                       rather a narrow range of percentages of ingredients within the broader ranges disclosed in                                       
                       Hensel et al. It is considered obvious to determine optimum concentrations and/or ranges of                                      
                       ingredients, provided the prior art teaches the ‘general conditions of a claim’, [sic] in this                                   
                       case the basic ingredients and general proportions are taught in Hensel et al. [Id., pages 10-                                   
                       11.]                                                                                                                             
                 And, at page 13 of the answer:                                                                                                         
                       In this case, Hensel et al. do teach controlling the percentages of both phosphorous and                                         
                       manganese within certain ranges. There are [sic] is nothing which must be “read into” Hensel                                     
                       et al. . . . to create the implication that Hensel et al. teach controlling the respective ratios of                             
                       phosphorous, manganese, and copper to produce the desired alloy of “improved                                                     
                       characteristics” including those listed previously; it is right there on page 1 of Hensel et al. If                              
                       Hensel et al. did not believe phosphorous and manganese content to be “result effective”                                         
                       variables, they would not have stipulated utilizing a limited range of percentages of these                                      
                       additives.                                                                                                                       
                          Thus, it is clear from the answer, in both the statement of the rejections and in response to                                 
                 appellants’ arguments in their principal brief, that the examiner was relying on the copper based alloy                                
                 and the ranges and ratios of manganese and phosphorous contained therein to achieve the properties of                                  
                 corrosion resistant, thermal conductivity, solderability taught at least “right there on page 1 of Hensel et                           
                 al.” (answer, page 13).  Indeed, it is apparent from appellants’ principal brief that they argue the ranges                            
                 and ratios of the same two ingredients as well as the same or similar properties of their claimed copper                               
                 alloys, as disclosed in their specification (principal brief, e.g., pages 7-8), vis--vis the copper alloys as                         
                 taught in Hensel with respect to Hensel alone and as combined with Miura (principal brief, pages 6-10).                                
                 Appellants then allege that the specification Examples and Comparative Examples show the criticality of                                


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