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Claims 1-6, 8, and 16-18 are examined in this office action as claims 9-15 are withdrawn as directed to a nonelected invention, claims 3-4 were amended, and claim 18 was new in the reply dated 8/29/25.
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 16-18 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..
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
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 above.
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.
As to claim 18, the claimed range for Cr is 17 mass% or more and 21 mass% or less which is a retreated range from the originally disclosed Cr range of 15 to 25 mass%. Fanmin discloses a gas atomized powder with a Cr composition of 16.9 wt% (Fanmin, Table 1, pg. 3), which is so mathematically close to the instant claimed range of 17 mass% or more and 21 mass% or less that one of ordinary skill in the art would expect the alloy to have the same or patentably indistinct properties from the alloy with the claimed range. Further MPEP § 2144.05(I) provides that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties." See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0). See also In re Brandt, 886 F.3d 1171, 1177, 126 USPQ2d 1079, 1082 (Fed. Cir. 2018)(the court found a prima facie case of obviousness had been made in a predictable art wherein the claimed range of "less than 6 pounds per cubic feet" and the prior art range of "between 6 lbs./ft3 and 25 lbs./ft3" were so mathematically close that the difference between the claimed ranges was virtually negligible absent any showing of unexpected results or criticality.).In the instant case, there is no showing that the claimed range of 17 mass% or more and 21 mass% or less exhibits unexpected results nor criticality for this range. As such, the Cr composition of 16.9 wt% (Fanmin, Table 1, pg. 3) creates a prima facie case of obviousness that is not rebutted by the evidence on record.
Response to Arguments
With respect to the 112(a) rejection of claims 3-4, it is agreed that applicant’s amendments have support in Table 5 and cure the previous issues concerning lack of written support. Therefore the rejections are withdrawn.
With respect to the 103 rejection over Fanmin in view of Mourer, applicant argues that as Fanmin composition has 0.966% of Ti and 0.788% of Al, whereas the Mourer reference discloses about 2 to about 6 wt% of both Ti and Al and therefore a person of ordinary skill would not combine the teachings of the references (Applicant’s remarks, pg. 8, 1st two paragraphs).
Thus, applicant appears to be arguing that Fanmin and Mourer are not analogous art and in response to applicant's argument that Mourer is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, while there are slight differences in the composition between the references, both Fanmin and Mourer both relate to nickel-base superalloys containing similar, significant alloying amounts of chromium. As Fanmin and Mourer both relate to the same field of endeavor of Ni-based superalloys containing large amounts of Cr, the teachings of Mourer would be relevant to one of ordinary skill in the art when reviewing Fanmin. Thus, applicant's argument is not persuasive and the rejection is maintained..
Applicant also points to paragraph [0006] of Mourer that discusses adding B and Zr together at about 0.01% each and Zr being a “bad actor” and therefore being limited in the field of gas turbine components and therefore a person of ordinary skill, even if looking to Mourer would not add above 0.01 wt% Zr (Applicant’s remarks, pg. 8, last three paragraphs).
However, the cited section of Mourer is in the “Background” section of the reference and this passage is discussing the prior art up to the submission of Mourer. A person of ordinary skill would understand that the common belief concerning adding B and Zr together at about 0.01% each does not apply to the teachings of the Mourer reference. Notably claim 12 of Mourer discloses adding 0.25 to 1.3 wt%, clearly showing a break from the prior art teachings concerning Zr. Thus a person of ordinary skill reading the Mourer reference would not limit Zr additions to 0.01 wt% and instead would add 0.25 to 1.3 wt% as taught by the embodiments in the reference. Thus applicant’s arguments are not persuasive and the rejection is maintained.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
Prosecution Insights