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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/26/2025 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “a temperature transition phase”. The meaning of temperature transition phase is unclear. Appropriate correction is required.
Claim Rejections - 35 USC § 103
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.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Larsen (US 5,350,466), and further in view of Kelly (US 6,231,699).
Regarding claim 8, Larsen discloses a bar made from titanium aluminide alloy for making blade of a low-pressure turbine and the alloy has a lamellar microstructure containing predominantly gamma phase and 2-12 volume% alpha-two phase (Col 4, Ln 5-68), which overlaps the recited structure ratio in claim 8. 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). Thus, the recited structure is obvious over Larsen.
Larsen teaches a method for heat treating a bar made from titanium aluminide alloy, comprising: hot isostatic pressing of the bar at 2100-2400 ºF (1149-1316 ºC) and 10-25 ksi (689-1724 bar) for 1-4 hours, subsequent to hot isostatic pressing and after a temperature transition phase, heat treating the bar at a temperature 1650-2400 ºF (i.e. 899-1316 C) for 1-50 hours. The processing temperature, pressure and time disclosed by Larsen overlap the recited temperature, pressure and time in claim 1.
Larsen does not explicitly disclose cooling the bar in a controlled manner to a given temperature. Kelly teaches a method for heat treating titanium aluminide alloy (Abstract). Kelley discloses that after heat treatment, the alloy is cooled at 100-150 ºF/minute (i.e. 38-66 ºC/minute) to room temperature to make an alloy having fine structure without causing cracking (Col 5, Ln 10-25). Thus, it would be obvious to one of ordinary skill in the art to cooling the alloy at a cooling rate of 100-150 ºF/minute (i.e. 38-66 ºC/minute) as taught by Kelly in the process of Larsen in order to make an alloy having fine structure as disclosed by Kelly. The cooling rate disclosed by Kelly overlaps the recited cooling rate in claim 1 and thus a prima facie case of obviousness has been established over Larsen in view of Kelly. See MPEP 2144.05 I.
Larsen in view of Kelly does not teach that the heat treatment is performed at a pressure of at least 1300 bar. However, this limitation is recognized as a process limitation in the product-by-process claim. “Even 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 [R-9]. Since Larsen teaches an alloy that meet the recited structure in claim 8, claim 8 is obvious over Larsen in view of Kelly.
Response to Arguments
Applicant's arguments filed 11/26/2025 have been fully considered but they are not persuasive.
First, the applicants argued that the range of Larsen, namely between 1650-2400 °F (i.e. 899-1316 °C), is considerably larger than the claimed range of 1130-1170 °C on both the upper and the lower limit. Thus, the range of claim 1 and the range of Larsen do not overlap, but the claimed range is considerably more restricted in order to obtain the required result. The process of claim 1 would not be operational in a broad temperature range such as disclosed by Larsen.
In response, Larsen discloses a temperature range of 1650-2400 °F (i.e. 899-1316 °C), which encompasses the claimed temperature. It would be obvious to one of ordinary skill in the art to select a temperature based on the range disclosed by Larsen to make an alloy that meets the recited alloy in claim 8.
Second, the applicants argued that Kelly teaches to replace quenching by gas fan cooling in order to avoid thermal cracking and to transform the alpha phase into a duplex lamellar alpha - plus gamma structure intermixed with gamma phase grains. (see column 5 lines 20 to 22). Such an intermixed structure corresponds to portions presenting an alpha-type structure in the gamma phase. There is no motivation to combine Larsen with this type of cooling process, as according to Kelly it would not lead to the desired grain structure and therefore is in contradiction with the aim of the invention to avoid precipitates within the single-phase gamma grains. Even if the cooling rate of Kelly overlaps with the rate of claim 1, it is not used to consolidate the same grain structure as the single phase gamma grains of claim 1 and, as the alloy structure before the cooling step is different, there is no reasonable expectation to obtain the claimed grain structure by the cooling step of Kelly.
In response, Kelly discloses that the alloy has a structure containing 10-90 volume gamma phase and lamellar alpha+gamma phase (Abstract; Col 5, Ln 10-22). Thus, Kelly covers a scope that the alloy contains 90 vol% gamma phase and 10 vol.% lamellar alpha+gamma phase, which meets the recited structure in claim 8. See MPEP 2144.05 I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733