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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5/5/25 has been entered.
Status of Claims
Claims 1-6, 8, and 16-17 are examined in this office action as claims 9-15 are withdrawn as directed to a nonelected invention, claim 7 is cancelled, and claims 1, 3-4, 6, and 8 were amended in the reply dated 4/7/25.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3-4 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 3 and 4 have been amended to recite “particles made of the inclusions” in lines 2 and 3 of claim 3 and line 2 of claim 4. There is no explicit recitation in the specification of the particles being “made of” the inclusions. Also, applicant does not point to any particular support for these amendments. While paragraph [0031] of the specification notes that the powder material contains inclusions which are composed of metal oxides and carbonitrides and that the “inclusions are contained in the powder material so as to be included inside particles of the Ni-based alloy”, the specification does not state that the particles are made of the inclusions. The mere incorporation of inclusions in the powder (i.e. that the powder contains inclusions) as disclosed in the specification does not support that the particles are “made of” the inclusions.
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 1-6, 8 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over "The structure and properties of Inconel 718 superalloy powder prepared by vacuum induction melting gas atomization for laser direct metal deposition." of Fanmin in view of US 2018/0223395 A1 of Mourer..
As to claim 1, Fanmin discloses a gas atomized powder using argon as the atomization gas (Fanmin, pg. 2, last paragraph), with the composition in comparison to the claimed composition as shown in Table A below.
Table A
Element
Claim 1 limitations (mass %)
Fanmin composition (wt%, Table 1, pg. 3)
Ni
50%≤Ni≤60%
50.3%
Cr
15%≤Cr≤25%
16.9%
Mo
0%≤Mo≤5%
2.82%
Ti
0.1%≤Ti≤1.5%
0.966%
Al
0.1%≤Al≤1.5%
0.788%
Zr
0.5%≤Zr≤3%
Nb
0%≤Nb≤6%
4.78%
N
0.005%≤Ni≤0.05%
0.007% (pg. 3, section 3.1)
C
≤0.08%
0.005%
O
≤0.02%
0.01% (pg. 3, section 3.1)
S
≤0.03%
0.002%
At least one selected from Si and Mn
0%≤Si≤0.5% and 0%≤Mn≤5%
Si: 0.24% & Mn: 0.28%
Fe
Balance
balance
Thus, Fanmin discloses an example where Ni, Cr, Mo, Ti, Al, Nb, N, C, O, S, Si, Mn and Fe all fall within the claim limitations. However, Fanmin is silent concerning the inclusion of Zr.
Mourer relates to the same field of endeavor of nickel-base superalloys (Mourer, paragraph [0001]). Mourer teaches adding about 0.15 wt % to about 1.3 wt % Zr to Ni-based superalloys (Mourer, paragraph [0035]), overlapping the claimed range of 0.5-3% for Zr. 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. Mourer teaches that Zr concentrates at the grain boundary and fills grain boundary micro-cavities, this reduces grain boundary stress concentrations, retarding crack initiation and propagation, and increasing the rupture life and elongation (Mourer, paragraph [0034]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select within the overlapping range and add 0.5 wt % to about 1.3 wt % Zr as taught by Mourer into the Ni-based superalloy disclosed in Fanmin thereby reduces grain boundary stress concentrations, retarding crack initiation and propagation, and increasing the rupture life and elongation (Mourer, paragraph [0034]).
Also, Fanmin is silent concerning the powder containing inclusions wherein a number of particles of the contained inclusions is 100 particles or less per 10,000 particles of the atomized powder
Nevertheless, as noted above, Fanmin in combination with Mourer discloses a patentably indistinct composition and applicant notes in paragraph [0023] of the specification that “where the Ni-based alloy has the aforementioned component composition, the content of inclusions containing metal oxide or carbonitride can be easily suppressed to be small”. Thus as Fanmin and Mourer discloses a patentably indistinct composition, “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Thus, Fanmin and Mourer by disclosing an patentably indistinct chemical composition is disclosing an identical number of particles of contained inclusions.
Further, as Fanmin in combination with Mourer discloses a patentably indistinct composition and applies the identical method of making the powder, namely gas atomization using the noble gas argon (see paragraphs [0041-0042] of the instant specification as well as claims 16-17) the same method applied to the same starting material would produce the same results of powder containing inclusions wherein a number of particles of the contained inclusions is 100 particles or less per 10,000 particles of the atomized powder. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 2, Fanmin discloses where the Ni-based alloy comprises Al, Ti, and Nb (Fanmin, Table 1, pg. 3), meeting the limitation of where one additive element is selected from Al, TI, and Nb. However, Fanmin does not explicitly disclose where the inclusions comprise at least one of oxide and carbonitride of the additive element.
Nevertheless, as noted above, Fanmin in combination with Mourer discloses a patentably indistinct composition and applicant notes in paragraph [0023] of the specification that “where the Ni-based alloy has the aforementioned component composition, the content of inclusions containing metal oxide or carbonitride can be easily suppressed to be small”. Thus as Fanmin and Mourer discloses a patentably indistinct composition, “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Thus, Fanmin and Mourer by disclosing an identical chemical composition is disclosing where the inclusions comprise at least one of oxide and carbonitride of the additive element.
Further, as Fanmin in combination with Mourer discloses a patentably indistinct composition and applies the identical method of making the powder, namely gas atomization using the noble gas argon (see paragraphs [0041-0042] of the instant specification as well as claims 16-17) the same method applied to the same starting material would produce the same results of powder containing inclusions where the inclusions comprise at least one of oxide and carbonitride of the additive element. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claims 3-6,Fanmin does not explicitly disclose wherein the number of particles made of the inclusions containing the carbonitride of the additive element is smaller than the number of particles made of the inclusions containing the oxide of the additive element, wherein the number of particles made of the inclusions containing the carbonitride of the additive element is 10 particles or less per 10,000 particles of the atomized powder, wherein the inclusions have a particle size of 30 µm or less, nor wherein the articles of the atomized powder have a circularity of 0.90 or more in average particle size.
Nevertheless, as noted above, Fanmin in combination with Mourer discloses a patentably indistinct composition and applicant notes in paragraph [0023] of the specification that “where the Ni-based alloy has the aforementioned component composition, the content of inclusions containing metal oxide or carbonitride can be easily suppressed to be small”. Thus as Fanmin and Mourer discloses a patentably indistinct composition, “Products of identical chemical composition can not have mutually exclusive properties." A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990)), see MPEP § 2112.01(II). Thus, Fanmin and Mourer by disclosing an identical chemical composition is disclosing the number of particles made of the inclusions containing the carbonitride of the additive element is smaller than the number of particles made of the inclusions containing the oxide of the additive element, wherein the number of particles made of the inclusions containing the carbonitride of the additive element is 10 particles or less per 10,000 particles of the atomized powder, wherein the inclusions have a particle size of 30 µm or less, nor wherein the articles of the atomized powder have a circularity of 0.90 or more in average particle size.
Further, as Fanmin in combination with Mourer discloses a patentably indistinct composition and applies the identical method of making the powder, namely gas atomization using the noble gas argon (see paragraphs [0041-0042] of the instant specification as well as claims 16-17) the same method applied to the same starting material would produce the same results the number of particles made of the inclusions containing the carbonitride of the additive element is smaller than the number of particles made of the inclusions containing the oxide of the additive element, wherein the number of particles made of the inclusions containing the carbonitride of the additive element is 10 particles or less per 10,000 particles of the atomized powder, wherein the inclusions have a particle size of 30 µm or less, nor wherein the articles of the atomized powder have a circularity of 0.90 or more in average particle size. “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.” In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
As to claim 8, Fanmin discloses where the powder contains 0.935 wt% Co (Fanmin, Table 1, pg. 3), meeting the claim limitation of 0%≤Co≤2%.
As to claims 16 and 17, Fanmin teaches that argon is used as the atomization gas in the gas atomization process (Helmer, section 2, pg. 2, last paragraph), meeting the claim limitation of forming the Ni-based alloy powder material by gas atomization using inert gas where the inert gas is a noble gas.
Response to Arguments
With respect to the 112(b) rejections, applicant’s amendments have cured the indefiniteness issues. Therefore the rejections are withdrawn. However, see new 112(a) rejections concerning support for “made of” above.
Applicant’s arguments, see pg. 8, last paragraph and pg. 9, 1st through 3rd paragraphs, filed 4/7/25, with respect to the rejection(s) of claim(s) 1-6, 8 and 16-17 under 35 USC 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Fanmin and Mourer.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733