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 .
Election/Restrictions & Status of Claims
Claims 1-8 and 16-23 are examined of which claims 1-2, 7 and 16-20 were amended and claims 21-23 were newly added in Applicant’s reply filed 01/12/2026.
Claims 9-15 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected inventions, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 15 April 2025.
Priority
It is noted that instant application claims National Stage entry from a PCT application as 371 of PCT/EP2021/062656 with filing or 371(c) date of 2021-05-12 with foreign priority to Application Number EP 20174269.9 with filing date of 2020-05-12.
However, it is noted that the instant claims recite broader subject matter than disclosed in foreign application EP 20174269.9 for example ranges for Ti, O, Y, Ti/N ratios. Therefore, instant claims are provided with the PCT filing date of 2021-05-12.
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.
List 1
Element
Instant Claims
(mass%)
Prior Art
WO’511
(mass%)
Prior Art
WO’885
(mass%)
Cr
12.00 – 25.00 claim 1, 23
18.0 – 24.0 claim 2, 16, 21
9 – 30
9.0 – 25.0
Al
3.50 – 6.50 claim 1, 23
4.0 – 6.0 claim 3, 16, 21
1 – 10
2.5 – 8.0
Ti
0.20 – 1.10 claim 1, 23
0.24 – 0.49 claim 22
at least one element selected from Zr, Ti, Hf, Re and Y in the total amount of 0-0.50
≤ 1.7
N
0.06 – 0.20 claim 1, 23
0.09 – 0.20 claim 5, 16, 21
0.18 – 0.20 claim 22
0.01 – 0.20
≤ 0.1
Zr
0.05 – 0.20 claim 1, 23
0.07 – 0.10 claim 6, 16, 21
at least one element selected from Zr, Ti, Hf, Re and Y in the total amount of 0-0.50
≤ 3.3
Y
0.02 – 0.15 claim 1, 23
at least one element selected from Zr, Ti, Hf, Re and Y in the total amount of 0-0.50
≤ 3.0
C
≤ 0.050 claim 1, 23
-
≤ 0.1
Si
≤ 0.50 claim 1, 23
0.05 – 1.0
Hf
≤ 0.30 claim 1, 23
at least one element selected from Zr, Ti, Hf, Re and Y in the total amount of 0-0.50
Ta + Hf ≤ 6.5
Ta
≤ 0.30 claim 1, 23
-
Ta + Hf ≤ 6.5
Mn
≤ 0.40 claim 1, 23
-
≤ 1.0
Ni
≤ 0.60 claim 1, 23
-
≤ 1.0
O
≤ 600 ppm claim 1, 23
≤ 60 ppm claim 4
-
≤ 0.2
Fe +
impurities
Balance
Balance
Balance
Claims 1-8 and 16-23 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2013/047511 A1 of Ikeda and its English machine translation (WO’511).
Regarding claims 1-8 and 16-23, WO 2013/047511 A1 of Ikeda and its English machine translation (WO’511) teaches a Fe based ferritic stainless steel powder with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. {WO’511 abstract, claims 1-4, [0002], [0007]-[0019], [0030]-[0036]}. 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 the similar property/utility 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
It is noted that the prior art does not explicitly disclose that its alloy as having the TiN and its properties as well as the particle sizes of as recited in the instant claims. 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). See MPEP § 2112.01 I. “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. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes [instant alloy: instant specification p. 10 lines 1-11; Prior art: [0020] – [0023]. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Claims 1-8, 16-21 and 23 are rejected under 35 U.S.C. 103 as being unpatentable over WO 2021/078885 A1of Cao (WO’885).
Regarding claims 1-8, 16-21 and 23, WO 2021/078885 A1of Cao (WO’885) teaches a
“printable powder material for additive manufacturing” “The printable powder composition is also a gas atomized ferritic iron-chromium-aluminum (FeCrAl) powder composition meaning that the powder has been obtained by a gas atomizing process” with a composition wherein the claimed ranges of the constituent elements of the instant alloy of the instant claims overlap or lie inside the ranges of various elements of the alloy of the prior art as shown in the List 1 above. {WO’885 abstract, claims 1-13, page 1:4 – page 3:14, page 3:23 – page 11:8}. 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 the similar property/utility 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the particle sizes of the powder recited in the instant claims, the prior art teaches that it has a powder size distribution between 4 and 200 microns thereby meeting the instant claimed recitations {page 4:15-21}.
It is noted that the prior art does not explicitly disclose that its alloy as having the TiN and its properties as well as the particle sizes of as recited in the instant claims. 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). See MPEP § 2112.01 I. “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. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in structure or composition (see compositional analysis above) and b) the claimed and prior art products are produced by identical or substantially identical processes [instant alloy: instant specification p. 10 lines 1-11; Prior art: page 2:16-21]. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Response to Arguments
The rejection, “Claims 1-8 and 16-20 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” has been withdrawn in view of the amendments to the instant claim.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
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/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
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