Detailed Office Action
Notice of Pre-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
Response to Amendments
The amendment filed on 01/28/2026 has been entered. Claims 1 – 3, 6 – 8, and 10 – 16 remain pending. Claims 10 – 15 remain withdrawn.
Claim Rejections – U.S.C. §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.
Claim 3 is 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.
Regarding claim 3, the claimed content range of boron is 0.1 – 0.014% which is indefinite because it is not clear whether the range is meant to be 0.01 – 0.014% (wherein the lower limit of boron is claim 1 is 0.01%) or whether the phrase is meant to be 0.014 – 0.1% (which would improperly broaden the range of boron limited in claim 1). For purposes of examination, the former interpretation is taken.
Examiner’s Note
A telephone call was made to applicant’s representative April Capati (Reg. 54,298) on 03/11/2026 to request an examiner’s amendment but a reply was not received.
Response to Arguments
Applicant’s amendments have overcome the previous rejections of claims 1 – 3, 6 – 8 and 16 under 35 U.S.C. 103 as being unpatentable over Etter (US2018/0015566) in view of Bauer (“Microstructure and mechanical characterization of SLM processed Haynes 230, 2015).
Applicant’s amendments have overcome the previous rejection and as such, applicant’s arguments are moot. However, for clarity of the record, the examiner notes that while the remarks provide additional examples and an assertion of criticality and unexpected results.
“Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Examples of statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.” (MPEP 716.01(c)). That is, the evidence of the unexpected results is not supported by an appropriate declaration or affidavit.
Reasons for Allowance
Claims 1 – 2, 6 – 8, and 16 are allowed. The following is an examiner’s statement of reasons for allowance:
The prior art does not anticipate or reasonably render obvious the cumulative limitations of claim 1, with particular attention to the combination of the composition and microstructure of the claimed product. The closest prior art is Etter (US2018/0015566) in view of Bauer (“Microstructure and mechanical characterization of SLM processed Haynes 230, 2015). In particular, Etter and Bauer disclose a content of carbon of up to 0.15 wt%, which is outside the claimed range. While the upper bound of Etter in view of Bauer and the lower bound of the claimed range are close, they are different enough such that an ordinarily skilled artisan would have expected some differences in properties between the compositions (See MPEP 2144.05 I). Moreover, Etter in view of Bauer does not expressly disclose the microstructure formed including the properties of carbides. Given that carbon content would affect carbide formation, the differences in carbon content between Etter in view of Bauer and the claimed range are enough such that there would not have been a reasonable expectation to an ordinarily skilled artisan that the different carbon contents would necessarily result in the same carbide properties that are limited in claim 1. As such, the prior art of Etter in view of Bauer does not anticipate or reasonably render obvious the cumulative limitations of claim 1. Moreover, Etter notes that higher contents of carbon result in excessive carbide precipitates which significantly impacts tensile ductility at elevated temperatures and as such, an ordinarily skilled artisan would not have found it obvious to have modified Etter (alone, or in view of Bauer) to use a higher carbon content than 0.15%.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Restriction/Election
Claims 1 – 2, 6 – 8, and 16 are allowable. The restriction requirement as set forth in the Office action mailed on 01/28/2026, has been reconsidered in view of the allowability of claims to the elected invention pursuant to MPEP § 821.04(a). The restriction requirement is maintained because the nonelected claims do not require all the limitations of an allowable claim. To clarify, the limitations of the process of claim 10 state preparing a nickel-based superalloy using the raw materials of the nickel-based superalloy according to claim 1. However, the limitations do not require that the nickel-based superalloy of claim 1 is attained. Therefore, claim 10 and claim 1 would share the limitation(s)/composition of the raw materials of claim 1 but claim 10 does not include/require all the limitations of claim 1.
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 Austin M Pollock whose telephone number is (571)272-5602. The examiner can normally be reached M - F (11 - 8 ET).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738