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Claims 1-8 are examined in this office action as claims 9-20 are withdrawn as directed to a nonelected invention.
Examiner’s Note on Claim Amendment and Interpretation
Claim 1 has been amended to recite “wherein said composition is configured for manufacture of components by additive manufacturing followed by heat treatment” in the last two lines of the claim. While applicant does not point to any particular portion of the specification as support for this amendment and “intended for” as originally recited in claim 1 is not coextensive in meaning with “configured for”, as all compositions are capable of use in additive manufacturing followed by heat treatment applicant has support for this amendment. Further, as claim 1 lays out a composition that is capable of use in additive manufacturing, compositions meeting claim 1 will be interpreted as the composition being configured for manufacture of components by additive manufacturing followed by heat treatment.
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.
Claims 1-5 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0063240 A1 of Muhamad.
As to claims 1-4, Muhamad discloses a nickel-base alloy wire (Muhamad, paragraph [0001]) in comparison to the claimed composition as shown in Table A below.
Table A
Element
Claim 1 Limitation (wt%) (other claims recited when differing from claim 1 range)
Muhamad Claim 11 (mass %)
Chromium
15.5-16.5
8.0 to 22.0%
Cobalt
7.7-11
Claim 2: 7.7-9
0 to 28.0%
Molybdenum + Tungsten
5.5-7.5
Claim 2: 6.2-7.5
Claim 3: Mo content is 2.5-3.5
Claim 4: W content is 3-4
2.0 to 7.0% of Mo
0 to 6.0% of W
So Mo+W= 2 to 13%
Aluminum
2.9-4.3
Claim 2: 3-4
2.0 to 8.0%
Titanium
2.6-3.2
Claim 2: 2.6-3.1
0.4 to 7.0%
Tantalum
1.5-2.2
0 to 3.0%
Niobium
0.3-1.1
Claim 2: 0.3-0.5
0 to 4.0%
Carbon
0.01-0.13
Claim 2: 0.01-0.07
0 to 0.2%
Boron
0.0005-0.15
Claim 2: 0.0005-0.005
0 to 0.300%
Zirconium
≤0.004
Claim 2: ≤0.004
0 to 0.300%
Hafnium
0.0001-0.5
Claim 2: 0.0001-0.2
0 to 1.0%
Silicon
≤0.06
Claim 2: ≤0.03
Nickel
Balance and unavoidable impurities
Balance and impurities
So Muhamad discloses overlapping ranges for Cr, Co, Mo + W, Mo and W individually, Al, Ti, Ta, Nb, C, B, Zr, Hf, and Ni. By disclosing no inclusion of Si, this meets the claim limitation of ≤0.06 %. Also, by disclosing “impurities”, Muhamad is disclosing where there are unavoidable impurities present, thereby meeting the claim limitations which requires presence of some amount of unavoidable impurities. Since Muhamad discloses overlapping ranges for Cr, Co, Mo + W, Mo and W individually, Al, Ti, Ta, Nb, C, B, Zr, Hf, and Ni, it would be obvious to select within these overlapping ranges to reach the claimed invention. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches this produces a heat-resistant product (Muhamad, paragraph [0002]) throughout the disclosed ranges. 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.
Claim 1 also recites “wherein said composition is configured for manufacture of components by additive manufacturing followed by heat treatment”. Muhamad discloses where its wire is used for forming by additive manufacturing (Muhamad, paragraph [0003]). As Muhamad discloses a composition that overlaps the claimed ranges, it is thereby disclosing a composition configured for manufacture of components by additive manufacturing followed by heat treatment, meeting the claim limitations.
As to claim 5, Muhamad discloses when Fe is not intentionally added (i.e., it is impurity in a raw material), a lower limit of Fe may be 0 mass % (Muhamad, paragraph [0068]).
As to claim 8, Muhamad discloses a nickel-base alloy wire (Muhamad, paragraph [0001]), meeting the claim limitation of where the composition is in the form of a wire.
Claims 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over 2020/0063240 A1 of Muhamad as applied to claim 1 above, and further in view of US 2019/0055627 A1 of Nagatomi.
As to claim 5, Muhamad discloses when Fe is not intentionally added (i.e., it is impurity in a raw material), a lower limit of Fe may be 0 mass % (Muhamad, paragraph [0068]).However, Muhamad does not explicitly disclose where the impurities are others selected from the group consisting of nitrogen, oxygen, hydrogen, lead, sulfur, phosphorus, manganese, copper, silver, bismuth, platinum, selenium, tin, magnesium, and mixtures thereof.
Nagatomi relates to the same field of endeavor of Ni-based superalloy powders for use in additive manufacturing (Nagatomi, abstract) and Nagatomi discloses a composition which overlaps claim 1 (Nagatomi, claim 1). Nagatomi teaches where impurities include 0.002% or less S and/or 0.10% or less N (Nagatomi, paragraph [0009]). Nagatomi also teaches where O is included at 0.02% or less and Nagatomi teaches that this amount of oxygen increases the strength and ductility of the alloy (Nagatomi, paragraph [0041]). Nagatomi teaches that this level of impurities for S and N inhibits the creation of cracks (Nagatomi, paragraph [0009]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include S and N at 0.002% or less and/or 0.10% or less respectively as well as 0.02% or less of O as taught by Nagatomi into the composition disclosed by Muhamad, thereby increasing the strength and ductility of the alloy (Nagatomi, paragraph [0041]) and inhibiting the creation of cracks (Nagatomi, paragraph [0009]).
As to claim 6, Nagatomi discloses where O is included at 0.02% or less (Nagatomi, paragraph [0041]) and where there is 0.10% or less N (Nagatomi, paragraph [0009]) where this amount of O falls within the claimed range of ≤0.030% and the amount of N overlaps the claimed range of ≤0.030%. As the claimed ranges for N overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the amount of N over the prior art disclosure since the prior art teaches inhibition of the creation of cracks (Nagatomi, paragraph [0009]) throughout the disclosed ranges. 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.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0063240 A1 of Muhamad in view of Metal Powder Additive Manufacturing of Popovich.
As to claim 7, Muhamad discloses the composition of claim 1, see Table A and claim 1 rejection above. However, Muhamad does not disclose where the nickel-based superalloy is in the form of a powder.
Relating to the same field of endeavor of additive manufacturing, Popovich teaches that additive manufacturing uses different types of initial materials including powdered form as well as sheets and wire forms (Popovich, pg. 216, 2nd paragraph). Popovich teaches where powders are formed using metal wires via plasma atomization (Popovich, pg. 218, 2nd paragraph). Popovich teaches that this produces a powder with fine particle distribution, highly spherical particles, and low content of oxygen (Popovich, pg. 218, 2nd paragraph).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add application of a step of forming a powder as taught by Popovich to the wire composition disclosed by Muhamad, as it is known that both wires and powder can be used as raw materials for additive manufacturing and the use of wire to form a powder using plasma atomization produces a powder with fine particle distribution, highly spherical particles, and low content of oxygen (Popovich, pg. 218, 2nd paragraph).
Citation of Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 5707419 A of Tsantrizos discloses a plasma atomization apparatus and shows in FIG. 1 that wire is fed from a coil on a spool into the chamber to be atomized by the plasma torches.
Response to Arguments
With respect to the 103 rejection over Muhammad, applicant argues that Claim 1 requires that the zirconium is less than or equal to 0.004% whereas Muhammad teaches broad ranges for the elements and does not teach or suggest the specific compositional range for zirconium as recited in claim 1 (Applicant’s remarks, pg. 2, 3rd and 4th paragraphs). Applicant argues that while Muhamad discloses a composition of 0-0.3 wt% of zirconium, nothing teaches the claimed upper limit of 0.004 wt% as the specific examples in Muhamad all contain 0.1 wt% of zirconium (Applicant’s remarks, pg. 2, 5th paragraph).
With respect to the argument that Muhamad does not disclose an exact upper limit of 0.004 wt% for zirconium, “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.” A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including non-preferred embodiments, see MPEP § 2123(I). In this case, as applicant agrees, Muhamad teaches a composition comprising 0-0.3 wt% of zirconium which overlaps the claimed range. Thus, by disclosing this range, Muhamad is disclosing all the points within this 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.”, see MPEP § 2144.05(I). Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or non-preferred embodiments. A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use, see MPEP § 2124.
Applicant then argues that the claimed range of less than or equal to 0.004 wt% of zirconium is critical as it reduces liquation cracking and hot cracking that occurs during additive manufacturing as shown in examples 2 and 3 in the specification (Applicant’s remarks, pg. 2, last paragraph – pg. 3 2nd paragraph).
However, it is noted in Table 4 on pg. 28 of the specification that cited examples 2 and 3 also involve differences in the amounts of Si, S, P, Nb, C, Mo, and W. This can be seen in Table 2 that examples 2 and 3 have lower Nb, lower C, lower B, and lower Hf as well as differences in major elements such as Cr, Co, Mo, W, Al, Ti, and Ta. Thus there is no evidence that the reduction in cracking is a result of the control of Zr to be less than or equal to 0.004 wt%, nor that this result is unexpected. As eleven different elements in the composition are changing between the examples, there is no showing that the differences in cracking are a result of the zirconium being less than or equal to 0.004 wt%. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
With respect to the rejection of claims 5-6 (Applicant’s remarks, pg. 3 last paragraph), as the patentability is not separately argued, these rejections are maintained for the same reasons as stated above.
Finally with respect to the 103 rejection of claim 7 of Muhamad in view of Popovich, applicant argues that as Muhamad teaches a heat resistant Ni-based alloy wire with improved bending workability for specific bending into coil shape that allows for continuous feeding of the wire for welding or 3D forming and therefore modifying this wire by turning it into powder as taught by Popovich would be contrary to Muhamad’s purpose in achieving a wire that is coilable for efficient continuous feeding of the wire (Applicant’s remarks, pg. 4, last paragraph).
However, it is known in the art that plasma atomization for forming powders often involves a coiled wire being fed into a plasma torch. This is shown in FIG 1 of Tsantrizos where the wire 1 is reeled from a spool 11 and directed into the chamber where it is atomized by a plurality of plasma torches (Tsantrizos, claim 1 and FIG 1). Thus, as a coiled wire is a needed starting material for forming a plasma atomized powder, this would make the wire in Muhamad perfectly suited to a plasma atomization process as disclosed in Popovich. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733