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 8-21 are cancelled. Claims 1-7 and 22-25 are pending where claim 1 has been amended. Claims 22-24 are withdrawn from consideration and claims 1-7 and 25 remain for examination on the merits.
Status of Previous Rejections
The previous 35 USC § 103 rejections of the claims over DE102013214464A1 to Bayer et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al and over JP 2005097650 to Harada et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al have been maintained.
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 (i.e., changing from AIA to pre-AIA ) 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) 1-7 and 25 is/are rejected under 35 U.S.C. 103 as obvious over DE102013214464A1 to Bayer et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al.
Regarding claim 1, Bayer discloses a Ni-based alloy comprising a composition overlapping the instantly claimed composition as follows (Bayer, abstract, para [0010-0049]), which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Bayer wt%
Overlaps?
W
10.3-15.0
0-14.20
Yes
Mo
2.5-11.0
0-26.00
Yes
Al
5.0-7.5
0-7.00
Yes
Cr
0.5-3.0
1.00-24.00
Yes
Zr
0-0.5
≤impurity
Yes
Hf
0-0.5
0-1.60
Yes
REM
0-0.2
≤impurity
Yes
Y
0-0.2
≤impurity
Yes
Mg
0-0.03
≤impurity
Yes
Ta
0-3.3
0-8.90
Yes
Ti+Nb
0-3.5
Ti: 0-5.20
Nb: 0-5.60
Yes
Ta+Ti+Nb
1.0-6.8
Ti: 0-5.20
Nb: 0-5.60
Yes
Co
0-15.0
≤impurity
Yes
C
0-0.25
0-3.3
Yes
B
0-0.05
0-0.025
Yes
Ni
balance
balance
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 Bayer including the instantly claimed because Bayer discloses the same utility throughout the disclosed ranges.
Regarding the limitation “consisting of,” the alloy of Bayer does not require any elements not required by the instant claims.
Bayer does not explicitly disclose that the alloy is in the form of a hot forging die and at least 80% of a surface area of the Ni-based alloy for hot die is covered with an aluminum oxide layer.
Zheng discloses that hot forging dies are an alternative application for Ni-base alloys used in turbine components (Zheng, page 743, “Introduction”).
Zeilinger discloses that protective oxide layers may be formed on metallic materials by surface treatment in an oxidizing atmosphere at elevated temperatures in over to improve chemical and physical resistance of the alloy (Zeilinger, page 1, lines 34-50) and that oxidation of an aluminum containing Ni alloy will result in an Al2O3 surface layer (Zeilinger, page 3, lines 90-110 and page 5 lines 28-60).
Regarding claims 1 and 7, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the alloy of Bayer into a hot forming die as suggested by Zheng and to oxidize the alloy of Bayer in an oxidizing atmosphere at elevated temperatures in order to form an Al2O3 surface layer by oxidation of Al in the Ni-based alloy as suggested by Zeilinger. The motivation for doing so is that hot forging dies are an alternative application for Ni-base alloys used in turbine components (Zheng, page 743, “Introduction”) and to improve chemical and physical resistance of the alloy (Zeilinger, page 1, lines 34-50).
Regarding claims 2-6, Bayer appears to overlap the instantly claimed ranges in so far as the elements that Bayer not explicitly recite are present in no more than impurity amounts in Bayer and the instant claims do not positively recite a lower concentration limit for said elements.
Regarding claim 25, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Bayer in view of Zheng and Zeilinger would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Bayer in view of Zheng and Zeilinger has the same or substantially the same composition and structure.
Claim(s) 1-7 and 25 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2005097650 to Harada et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al..
Regarding claim 1, Harada discloses a Ni-based alloy comprising a composition overlapping the instantly claimed composition as follows (Harada, abstract, para [0005-0011]), which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Harada wt%
Overlaps?
W
10.3-15.0
0-15
Yes
Mo
2.5-11.0
0-10
Yes
Al
5.0-7.5
2-10
Yes
Cr
0.5-3.0
0-20
Yes
Zr
0-0.5
0-3
Yes
Hf
0-0.5
0-10
Yes
REM
0-0.2
La: 0-0.2
Ce: 0-0.2
Yes
Y
0-0.2
0-0.2
Yes
Mg
0-0.03
≤impurity
Yes
Ta
0-3.3
Ta+T+Nb: 0-16
Yes
Ti+Nb
0-3.5
Yes
Ta+Ti+Nb
1.0-6.8
Yes
Co
0-15.0
0-20
Yes
C
0-0.25
0-0.3
Yes
B
0-0.05
0-0.2
Yes
Ni
balance
balance
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 Harada including the instantly claimed because Harada discloses the same utility throughout the disclosed ranges.
Regarding the limitation “consisting of,” the alloy of Harada does not require any elements not required by the instant claims.
Harada does not explicitly disclose that the alloy is in the form of a hot forging die and at least 80% of a surface area of the Ni-based alloy for hot die is covered with an aluminum oxide layer.
Zheng discloses that hot forging dies are an alternative application for Ni-base alloys used in turbine components (Zheng, page 743, “Introduction”).
Zeilinger discloses that protective oxide layers may be formed on metallic materials by surface treatment in an oxidizing atmosphere at elevated temperatures in over to improve chemical and physical resistance of the alloy (Zeilinger, page 1, lines 34-50) and that oxidation of an aluminum containing Ni alloy will result in an Al2O3 surface layer (Zeilinger, page 3, lines 90-110 and page 5 lines 28-60).
Regarding claims 1 and 7, it would have been obvious to one of ordinary skill in the art at the time the invention was made to form the alloy of Harada into a hot forming die as suggested by Zheng and to oxidize the alloy of Bayer in an oxidizing atmosphere at elevated temperatures in order to form an Al2O3 surface layer by oxidation of Al in the Ni-based alloy as suggested by Zeilinger. The motivation for doing so is that hot forging dies are an alternative application for Ni-base alloys used in turbine components (Zheng, page 743, “Introduction”) and to improve chemical and physical resistance of the alloy (Zeilinger, page 1, lines 34-50).
Regarding claims 2-6, Harada appears to overlap the instantly claimed ranges in so far as the elements that Bayer not explicitly recite are present in no more than impurity amounts in Harada and the instant claims do not positively recite a lower concentration limit for said elements.
Regarding claim 25, when the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Harada in view of Zheng and Zeilinger would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Harada in view of Zheng and Zeilinger has the same or substantially the same composition and structure.
Response to Amendment
The declaration under 37 CFR 1.132 filed 11/10/2025 is insufficient to overcome the rejection of claims 1-7 and 25 based upon the 35 USC § 103 rejections of the claims over DE102013214464A1 to Bayer et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al and over JP 2005097650 to Harada et al (an English language machine translation has been relied upon for examination purposes) in view of “Abnormal Phases in High W Content Nickel Base Superalloys and Phase Control” by Zheng et al and GB 2159542 to Zeilinger et al as set forth in the last Office action because of the reasons set forth below in the response to arguments section.
Response to Arguments
Applicant's arguments filed 11/10/2025 have been fully considered but they are not persuasive.
Applicant argues in both the remarks and declaration filed 11/10/2025 that the data disclosed in the declaration filed 11/10/2025 establishes unexpected results for the instantly claimed composition ranges in terms of the sufficient formation of an aluminum oxide layer. This is not found persuasive for multiple reasons.
First, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d) [R-2]. In the instant case, the data relied upon by applicant to show unexpected results does not show that the alleged unexpected results occur over the entirety of the claimed range as the data in the declaration filed 11/10/2025 only compares one single inventive example against one comparative example which is insufficient to demonstrate that the alleged unexpected results occur over the entirety of the claimed range.
Furthermore, applicant only alleges that the lower limit of the aluminum content range is critical, and makes no argument for the upper range of aluminum being critical despite the prior art encompassing both the upper and lower limits of the claimed Al content range. As such, there is no attempt to show that the entirety of the claimed range demonstrates unexpected results
Furthermore, “[I]t is not enough to show that results are obtained which differ from those obtained in the prior art: that difference must be shown to be an unexpected difference.” See In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972). In the instant case, the alleged unexpected result is that an increase in aluminum content results in greater formation of an aluminum oxide layer. This is not unexpected because it is readily apparent to one of ordinary skill in the art that the formation of an aluminum oxide layer would be limited by the amount of aluminum in an alloy, and that alloys with more aluminum would be capable of forming more of an aluminum oxide layer compared to alloys with less aluminum.
Furthermore, the data in the instant specification (see instant Tables 1-3) demonstrates that alloys completely outside of the instantly claimed composition range, specifically instant alloys 3 and 8-10) are capable of achieving the alleged unexpected results, thus demonstrating that the instantly claimed composition range is not in fact critical for achieving the alleged unexpected results.
In response to applicant's argument that Zeilinger discloses alloys with a Cr content of 12% or more, which is significantly higher than the Cr content of 3% or less recited in instant claim 1, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, Bayer and Harada have been relied upon to teach the instantly claimed composition ranges, whereas Zeilinger has been relied upon to teach that protective oxide layers may be formed on metallic materials by surface treatment in an oxidizing atmosphere at elevated temperatures in over to improve chemical and physical resistance of the alloy (Zeilinger, page 1, lines 34-50) and that oxidation of an aluminum containing Ni alloy will result in an Al2O3 surface layer (Zeilinger, page 3, lines 90-110 and page 5 lines 28-60), and this teaching is relevant to the nickel alloys of Bayer and Harada.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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