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
Applicant’s election of species A, claims 1, 2, 5 and 6 in the reply filed on 9/26/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 3, 4, 7 and 8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 9/26/2025.
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, 2, 5 and 6 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.
The term “high gamma prime (γ’)” in claims 1, 2, 5 and 6 is a relative term which renders the claim indefinite. The term “high gamma prime (γ’)” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. This renders the amount of gamma prime phase present in the alloy indefinite which renders the scope of the claims indefinite.
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.
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0048451 A1 to Ota et al.
Regarding claim 1, Ota ‘451 discloses a nickel based material comprising the following composition (Ota ‘451, para [0016], claim 2) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Ota ‘451 wt%
Overlaps?
Cr
9.0-11.0
5-25
Yes
Co
16.0-24.0
>0-30
Yes
Mo
1.0-1.4
0-10
Yes
W
5.0-5.8
0-8
Yes
Ta
1.5-1.9
Ti+Nb+Ta: 1-10
Yes
Al
4.5-5.5
1-8
Yes
Re
1.5-2.5
0-5
Yes
Fe
0.2-0.8
0-10
Yes
Hf
0.1-0.3
0-2
Yes
B
0.005-0.02
0-0.1
Yes
C
0.05-0.12
0-0.2
Yes
Ni
Balance
Balance
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Ota ‘451 including the instantly claimed because Ota ‘451 discloses the same utility throughout the disclosed ranges.
Regarding the limitation “high gamma prime (γ’),” the term “high gamma prime (γ’)” is indefinite as set forth in the above 35 USC 112 rejection. Regardless, Ota ‘451 discloses a γ’ phase of at least 30 volume % (Ota ‘451, para [0023], claim 15) which appears to either meet or overlap the term “high gamma prime (γ’)” absent a precise definition of the term “high gamma prime (γ’).”
Regarding the limitation “welding material for repair and 3D additive manufacturing of turbine engine component,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the nickel alloy of Ota ‘451 is capable of being used as “welding material for repair and 3D additive manufacturing of turbine engine component.”
Regarding claim 2, the alloy of Ota ‘451 overlaps the instantly claimed composition ranges (Ota ‘451, para [0016], claim 2).
Regarding claims 5 and 6, the alloy of Ota ‘451 is in the form of a powder (Ota ‘451, para [0039], claim 1). Regarding the limitation “welding powder,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the nickel alloy powder of Ota ‘451 is capable of being used as “welding powder.”
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0331239 A1 to Izumi et al.
Regarding claim 1, Izumi discloses a nickel based material comprising the following composition (Izumi, abstract, para [0036], claim 5) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Izumi wt%
Overlaps?
Cr
9.0-11.0
5-25
Yes
Co
16.0-24.0
>0-30
Yes
Mo
1.0-1.4
0-10
Yes
W
5.0-5.8
0-8
Yes
Ta
1.5-1.9
Ti+Nb+Ta: 1-10
Yes
Al
4.5-5.5
1-8
Yes
Re
1.5-2.5
0-5
Yes
Fe
0.2-0.8
0-10
Yes
Hf
0.1-0.3
0-2
Yes
B
0.005-0.02
0-0.1
Yes
C
0.05-0.12
0-0.2
Yes
Ni
Balance
Balance
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Izumi including the instantly claimed because Izumi discloses the same utility throughout the disclosed ranges.
Regarding the limitation “high gamma prime (γ’),” the term “high gamma prime (γ’)” is indefinite as set forth in the above 35 USC 112 rejection. Regardless, Izumi discloses a γ’ phase of at least 30 volume % (Izumi, para [0023]) which appears to either meet or overlap the term “high gamma prime (γ’)” absent a precise definition of the term “high gamma prime (γ’).”
Regarding the limitation “welding material for repair and 3D additive manufacturing of turbine engine component,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the nickel alloy of Izumi is used for repair of turbine engine component (Izumi, abstract, para [0002]).
Regarding claim 2, the alloy of Izumi overlaps the instantly claimed composition ranges (Izumi, abstract, para [0036], claim 5).
Regarding claims 5 and 6, the alloy of Izumi is in the form of a repair section of a turbine engine component (Izumi, abstract, para [0002]).
Claim(s) 1, 2, 5 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2021/0340644 to Ota et al.
Regarding claim 1, Ota ‘644 discloses a nickel based material comprising the following composition (Ota ‘644, abstract, para [0022], claim 2) which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Ota ‘644 wt%
Overlaps?
Cr
9.0-11.0
5-25
Yes
Co
16.0-24.0
>0-30
Yes
Mo
1.0-1.4
0-10
Yes
W
5.0-5.8
0-8
Yes
Ta
1.5-1.9
Ti+Nb+Ta: 1-10
Yes
Al
4.5-5.5
1-8
Yes
Re
1.5-2.5
0-5
Yes
Fe
0.2-0.8
0-10
Yes
Hf
0.1-0.3
0-2
Yes
B
0.005-0.02
0-0.1
Yes
C
0.05-0.12
0-0.2
Yes
Ni
Balance
Balance
Yes
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Ota ‘644 including the instantly claimed because Ota ‘644 discloses the same utility throughout the disclosed ranges.
Regarding the limitation “high gamma prime (γ’),” the term “high gamma prime (γ’)” is indefinite as set forth in the above 35 USC 112 rejection. Regardless, Ota ‘644 discloses a γ’ phase of at least 30 volume % (Ota ‘644, para [0057]) which appears to either meet or overlap the term “high gamma prime (γ’)” absent a precise definition of the term “high gamma prime (γ’).”
Regarding the limitation “welding material for repair and 3D additive manufacturing of turbine engine component,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the nickel alloy of Ota ‘644 is capable of being used as “welding material for repair and 3D additive manufacturing of turbine engine component.”
Regarding claim 2, the alloy of Ota ‘644 overlaps the instantly claimed composition ranges (Izumi, abstract, para [0036], claim 5).
Regarding claims 5 and 6, the alloy of Ota ‘644 is in the form of a powder (Ota ‘644, abstract, para [0001]). Regarding the limitation “welding powder,” a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the nickel alloy powder of Ota ‘644 is capable of being used as “welding powder.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2021/0388467 A1 to Shibayama et al discloses a nickel based alloy overlapping the instantly claimed composition ranges (Shibayama, para [0022]).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738