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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 10, 2026 has been entered.
Response to Amendments and Status of Claims
Applicant’s amendments to the claims, filed March 10, 2026, are acknowledged. Claim 1 is amended. Claim 16 is cancelled. No new matter has been added.
Claims 11-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, Group II, directed to a method of manufacturing, there being no allowable generic or linking claim. Applicant timely elected without traverse in the reply filed on April 22, 2022.
Claims 1, 5 and 11-15 are pending, and Claims 1 and 5 are currently being considered in this office action.
Claim Interpretation
Regarding Claim 1, the preamble cites “a cobalt-based alloy having self-healing property”. Applicant discloses wherein the “self-healing property can be exhibited by defining alloy composition…and adding healing solute elements enabling selective diffusion into defect sites of the alloys” (Pg. 6, lines 16-22). Examiner interprets wherein a cobalt-based alloy with the claimed composition, and therefore healing solute element additions of at least one of O, P and S, would be a cobalt-based alloy with self-healing property and one which behaves as claimed during subsequent deformation.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 recites wherein y’ phase is 1um or less; however, Claim 1 from which Claim 5 depends from, also recites wherein secondary precipitates of y’ phase, which reads on the y’ phase referred to in Claim 5, comprises a size of 10-100nm, which is a broader range than the recited 1um or less. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Choi2019 (“Development of gamma' precipitation strengthened W free Co base superalloys for gas turbine applications”) in view of Hentrich (US 20230106938 A1), Gehrmann (US 20220243306 A1) and Makineni (previously cited, US 20170037498 A).
Regarding Claim 1, Choi2019 discloses a cobalt-based alloy comprising a y-y’ structure formed through aging and compositions of Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr (Pg. 7, Sect. 2.1; Fig. 6; Pg. 3, Experimental, para. 1, aging to form y/y’ microstructure), which according to the formula below, comprise values of a=84 (4at%Cr), a=86 (2at%Cr), b=12 and c=4, which read on the claimed ranges of 80≤a≤86.5 at.%, 11≤b≤16 at.%, a+b<100, and 0<c≤0.5b at.%, and wherein S is strengthening solute element consisting of Mo.
[[Co(a)Ti(b)Cr(100-a-b)](1-0.01c)Sc]
Choi2019 does not disclose wherein the composition is further defined by a healing solute element H, such that
[[Co(a)Ti(b)Cr(100-a-b)](1-0.01c)Sc](1-0.01d)Hd
wherein H is at least one selected from the group consisting of O, P and S, and 0.2≤d≤0.5 at.%.
Hentrich teaches a cobalt-chromium alloy comprising 0.0001% to less than 0.1% O in order to balance cost with mechanical property impairment (para. [0174]). One of ordinary skill in the art would appreciate allowing an oxygen amount at the maximum of the range in order to minimize cost.
Gehrmann similarly teaches a nickel-cobalt based alloy comprising 0.0001-0.10wt% O in order to balance manufacturability and usability of the alloy with cost (para. [0091]). One of ordinary skill in the art would appreciate comprising O as high as 0.10wt% in order to minimize cost.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included up to about 0.10wt% O, as taught by Hentrich and Gehrmann, for the invention disclosed by Choi2019, in order to minimize cost while balancing for mechanical property impairment and manufacturability and usability of the alloy (see teachings above). The inclusion of up to about 0.1wt% O to the alloy of Choi2019 overlaps the claimed range 0.2≤d≤0.5 at.%. For example, 0.10wt% O in a composition comprising Co-12Ti-4Mo-4Cr (at%) or Co-12Ti-4Mo-2Cr (at%) would equate to a d value of about 0.36-0.37at%, which reads on the claimed 0.2-0.5at% range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Hentrich and Gerhmann fail to disclose wherein O is a self-healing solute element comprising self-healing properties wherein upon the deformation of the alloy, the healing solute element is diffused and segregated into defect sites to strengthen the deformed portion thereby delaying crack formation and propagation and leading to the implementation as self-healing.
Further, Choi2019 fails to disclose wherein the y’ phase is less than 50% by volume, and wherein the y’ phase includes secondary y’ phase dynamically formed during cooling.
However, Choi2019, Hentrich and Gerhmann disclose the claimed composition and Choi2019 discloses a homogenization treatment (solution treatment) at 1150C for 24-120 hours followed by aging at 800C for 24 hours, which is the same as the instant invention (Pg. 35, lines 5-10, solution treating at 1050-4000C for 1-1000 hours and aging at 700-1000C for 1-1000 hours).
While Choi2019 fails to disclose furnace cooling after aging (see pg. 36-37 of instant specification wherein secondary precipitates are formed specifically by furnace cooling), Makineni teaches a y-y’ cobalt-based superalloy wherein alloys without Ni are furnace cooled after aging in order to avoid the transformation of fcc matrix to hcp phase (para. [0042]; one of ordinary skill in the art would appreciate that Makineni intends to recite y-Co, which is the fcc phase of Co, and a-Co, which is the hcp phase of Co; see also para. [0005]-[0007], wherein Co matrix phase is FCC y).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used furnace cooling after aging, as taught by Makineni, for the invention disclosed by Choi2019, Hentrich and Gerhmann, in order to avoid FCC y matrix phase transforming to hcp phase (see teaching above).
Thus, one of ordinary skill in the art would appreciate that the invention of Choi2019, Hentrich, Gerhmann and Makineni would comprise the claimed self-healing properties and the y’ precipitate features (volume fraction of y’ phase and secondary precipitate y’ phase size) because the composition of Choi2019, Hentrich and Gerhmann (Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr comprising up to 0.37at% O - up to about 0.10wt% O), and the method of Choi2019 and Makineni (solution treatment and aging, followed by furnace cooling), are the same as claimed.
When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding the limitations “the y’ phase being formed during aging treatment” and “secondary y’ phase dynamically formed during cooling”, these are product-by-process limitations. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
In the instant case, Choi2019, Hentrich, Gerhmann and Makineni disclose the claimed composition, forming the y’ phase through aging, and furnace cooling after aging, and it would be expected that secondary y’ phase precipitates would dynamically form during cooling as claimed because the same cooling process after aging as the instant invention (furnace cooling) is used (see teaching by Makineni above; See MPEP 2112.01).
Regarding Claim 5, Choi2019 discloses wherein size of the y’ phase is less than 1um (see Fig. 6, cuboidal y’ grains which appear to be around the length of the 100nm scale bar; see Fig. 14, see y’ sizes and 50nm scale bar).
Additionally, one of ordinary skill in the art would appreciate that the invention of Choi2019, Hentrich, Gerhmann and Makineni would comprise the claimed y’ precipitate sizes because the composition of Choi2019, Hentrich and Gerhmann (Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr comprising up to 0.37at% O - up to about 0.10wt% O), and the method of Choi2019 and Makineni (solution treatment and aging, followed by furnace cooling), are the same as claimed.
When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Claims 1 and 5 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Choi2019 (“Development of gamma' precipitation strengthened W free Co base superalloys for gas turbine applications”) in view of Park (KR 20190109008 A, English Machine Translation provided) and Makineni (previously cited, US 20170037498 A).
Regarding Claim 1, Choi2019 discloses a cobalt-based alloy comprising a y-y’ structure formed through aging and compositions of Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr (Pg. 7, Sect. 2.1; Fig. 6; Pg. 3, Experimental, para. 1, aging to form y/y’ microstructure), which according to the formula below, comprise values of a=84 (4at%Cr), a=86 (2at%Cr), b=12 and c=4, which read on the claimed ranges of 80≤a≤86.5 at.%, 11≤b≤16 at.%, a+b<100, and 0<c≤0.5b at.%, and wherein S is strengthening solute element consisting of Mo.
[[Co(a)Ti(b)Cr(100-a-b)](1-0.01c)Sc]
Choi2019 does not disclose wherein the composition is further defined by a healing solute element H, such that
[[Co(a)Ti(b)Cr(100-a-b)](1-0.01c)Sc](1-0.01d)Hd
wherein H is at least one selected from the group consisting of O, P and S, and 0.2≤d≤0.5 at.%.
Park teaches a cobalt-based CoCrTiMo alloy comprising a y-y’ structure and comprising self-healing properties by the inclusion of one or more self-healing alloying elements selected from the group comprising interstitial solid-solution atoms B, C, O and N in an amount of 0-2at%, such as including O at 0.5at% (para. [0012]; cobalt alloy of (Co100-a/100 Cra/100)100-b-c-dTibMocId, wherein I represents one or more alloying elements selected from the group comprising interstitial solid-solution atoms B, C, O and N, and wherein 0≤d≤2.0at.%; see example 15 in Table 3 comprising 0.5% O as the interstitial self-healing element).
Park teaches wherein including these interstitial elements allows self-healing, and crack repairing and crack impeding characteristics during cracking (deformation) at high temperatures by forming oxide compounds around the cracks through high temperature preferential diffusion (Abstract, para. [0001]; para. [0009]; para. [0028]; [0050]-[0051], precipitation of y’ for y-y’ composite structure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included up to 0-2at% of the self-healing element of O, such as 0.5at% O, thereby obtaining self-healing properties wherein upon the deformation of the alloy (cracking at high temperatures), the healing solute elements are diffused and segregated into defect sites to strengthen the deformed portion (by forming oxides and preferential diffusion) and thereby delaying crack formation and propagation and leading to the implementation as self-healing, as claimed, as taught by Park, for the invention disclosed by Choi2019. One would be motivated to include the self-healing element of O in order to obtain the self-healing properties, repair cracks and reduce crack propagation at high temperatures, and thereby improve creep resistance (see teachings above; see also para. [0005]; para. [0011]).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Choi2019 fails to disclose wherein the y’ phase is less than 50% by volume, and wherein the y’ phase includes secondary y’ phase dynamically formed during cooling.
However, Choi2019 and Park disclose the claimed composition and Choi discloses a homogenization treatment (solution treatment) at 1150C for 24-120 hours followed by aging at 800C for 24 hours, which is the same as the instant invention (Pg. 35, lines 5-10, solution treating at 1050-4000C for 1-1000 hours and aging at 700-1000C for 1-1000 hours).
While Choi2019 fails to disclose furnace cooling after aging (see pg. 36-37 of instant specification wherein secondary precipitates are formed specifically by furnace cooling), Makineni teaches a y-y’ cobalt-based superalloy wherein alloys without Ni are furnace cooled after aging in order to avoid the transformation of fcc matrix to hcp phase (para. [0042]; one of ordinary skill in the art would appreciate that Makineni intends to recite y-Co, which is the fcc phase of Co, and a-Co, which is the hcp phase of Co; see also para. [0005]-[0007], wherein Co matrix phase is FCC y).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used furnace cooling after aging, as taught by Makineni, for the invention disclosed by Choi2019 and Park, in order to avoid FCC y matrix phase transforming to hcp phase (see teaching above).
Thus, one of ordinary skill in the art would appreciate that the invention of Choi2019, Park and Makineni would comprise the claimed y’ precipitate features (volume fraction of y’ phase and secondary precipitate y’ phase size) because the composition of Choi2019 and Park (Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr comprising 0-2at% O, such as 0.5at% O), and the method of Choi2019 and Makineni (solution treatment and aging, followed by furnace cooling), are the same as claimed.
When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Regarding the limitations “the y’ phase being formed during aging treatment” and “secondary y’ phase dynamically formed during cooling”, these are product-by-process limitations. [E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113.
In the instant case, Choi2019, Park and Makineni disclose the claimed composition, forming the y’ phase through aging, and furnace cooling after aging, and it would be expected that secondary y’ phase precipitates would dynamically form during cooling as claimed because the same cooling process after aging as the instant invention (furnace cooling) is used (see teaching by Makineni above; See MPEP 2112.01).
Regarding Claim 5, Choi2019 discloses wherein size of the y’ phase is less than 1um (see Fig. 6, cuboidal y’ grains which appear to be around the length of the 100nm scale bar; see Fig. 14, see y’ sizes and 50nm scale bar).
Additionally, one of ordinary skill in the art would appreciate that the invention of Choi2019, Park and Makineni would comprise the claimed y’ precipitate sizes because the composition of Choi2019 and Park (Co-12Ti-4Mo-2Cr and Co-12Ti-4Mo-4Cr comprising 0-2at% O, such as 0.5at% O), and the method of Choi2019 and Makineni (solution treatment and aging, followed by furnace cooling), are the same as claimed.
When 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01.
Priority
Applicant cannot rely upon the certified copy of the foreign priority application to overcome the alternative rejection including reliance over the reference Park (see recitation above) because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Response to Arguments
Applicant’s arguments, filed March 10, 2026, with respect to Claim 1, and dependent claims thereof, respectively, rejected under 35 U.S.C. 103 over Yoo in view of Obara, Makineni, Choi810, Ota, Ishida and Imano, are fully considered, and are persuasive in view of the amendments to the claims further limiting the healing solute elements H to exclude N and further limiting the compositional range of healing solute elements to 0.2-0.5at%. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) or rejection is made over Choi2019 in view of Hentrich, Gehrmann and Makineni, and alternatively over Choi2019 in view of Park and Makineni, as detailed above.
Arguments directed to Yoo, Obara, Choi810, Ota, Ishida and Imano, and the teaching by Makineni to exclude W in place of Mo as previously relied upon, are moot in view of the new ground(s) of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Im (previously cited, “Elemental partitioning and site-occupancy in γ/γ′ forming Co-Ti-Mo and Co-Ti-Cr alloys”): discloses a cobalt-based alloy having composition of [Co(a)Ti(b)Cr(100-a-b)], wherein 80≤a≤86.5 at.%, 11≤b≤16 at.%, and a+b<100 (see abstract wherein a is 84 and b is 12).
Cui (previously cited, US 20180236612 A1): teaches wherein volume fractions of y’ for cobalt-based superalloys should be less than 30% in order to produce an easy-to-weld alloy (see para. [0028]).
Yoo (previously cited, “On the microstructural evolution and partitioning behavior of L12-structured y’-based Co-Ti-W alloys upon Cr and Al alloying”): teaches a cobalt-based alloy comprising a y-y’ structure formed by aging and the compositions Co-13Ti-3W-2Cr and Co-13Ti-5W-4Cr, and wherein the size of the y’ phase is less than 1um (see Section 2, Experimental and Table 1; see Section 3.1, Microstructure and lattice misfit, Para. 1; see Fig. 2(a)-(b); lighter contrast phase (y’) is less than the scale bar which is 1um; see also Fig. 4(d) and 4(f) showing y’ phase within the nm range).
Obara (previously cited, JP 07216484 A, English Translation provided): teaches a similar Co-based alloy (comprising overlapping values of Ti and Cr) wherein Mo has substantially the same effect as W, with an added increase of elasticity (para. [0011]).
Makineni (previously cited and cited above, US 20170037498 A1, further teachings): teaches a W-free y-y’ cobalt based alloy with up to 15% Mo, wherein W additions are not desirable due to high density and a high melting point, which causes difficulties with homogenization (Abstract; para. [0010]).
Choi810 (previously cited as ‘Choi’, KR 20200065810 A, English Translation provided): teaches wherein the y’ phase may be formed with an alloy consisting of Co, Ti and Mo (see para. [0016]-[0018]).
Ishida (previously cited, US 20080185078 A1): teaches wherein the volume fraction of the y’ phase is 40-85% in order to balance strength and ductility (see para. [0026] and para. [0044]). Ishida teaches wherein the volume fraction may be tailored by performing the aging treatment gradually in a predetermined temperature range (para. [0044]).
Ishida further teaches wherein y’ precipitates for a cobalt-based alloy should be at least 10nm, and preferably about 50nm, in order to successfully realize the precipitation-strengthening effect (see para. [0044]). One of ordinary skill in the art would appreciate that the phases referred to in para. [0044] are the y’ phase (see para. [0043]). Ishida teaches wherein the aging may be repeated at least once or more, such that one of ordinary skill in the art would appreciate the precipitates to be secondary precipitates (para. [0010]).
Ishida further teaches wherein 0.001-0.5wt% B is added to a Co-based alloy in order to increase high temperature strength while balancing for processability and toughness (see para. [0032]). B is excluded from the amended and currently claimed composition.
Imano (previously cited, US 20190076926 A1): teaches wherein cooling of additively manufactured cobalt alloys after aging is not particularly limited, and that furnace cooling may be implemented (para. [0100]).
Ota (previously cited, US 20210381084 A1): teaches including 0.04-0.2wt% N in order to form MN type nitride phases with Ti, thereby obtaining sufficient mechanical properties through dispersed precipitation (para. [0049]-[0051]). N is excluded from the amended and currently claimed composition.
Nakamura (US 4789412 A): teaches furnace cooling after aging at a rate of 100-300C/min, which equates to about 1.7-5K/min, in order to produce a cobalt alloy comprising high precision with no significant strain while maintaining high strength and toughness (Col. 6, line 58-Col. 7, line 2).
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735