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 .
Response to Amendment
Applicant’s amendment has been entered. Claims 11-21 are pending of which claims 15-20 remain withdrawn from consideration. Claims 1-10 are canceled. Changes in the replacement specification have overcome the objections to the specification for minor informalities. Deleting “low high-temperature durability anisotropy” has improved uncertainty regarding the scope encompassed by a low high-temperature durability anisotropy.
Applicant has filed a terminal disclaimer in the file for application 18/001,530, which names the present application. The terminal disclaimer filed in application 18/001,530 has been approved. In view of the terminal disclaimer in the copending patent application, the provisional rejection of the present claims on the grounds of nonstatutory double patenting over claims of application 18/001,530 is withdrawn.
Claim Interpretation
Claiming a difference in high-temperature durability instead of anisotropy has rendered moot the previously set forth interpretation of anisotropy.
Changing “is composed of” to “consists of” has rendered moot the previously set forth interpretation of “composed of”.
The present specification states “the high-temperature durability property refers to the durability of the part at a temperature>500°C” (page 6 lines 8-9); therefore, the claimed high-temperature durability will be interpreted as a durability of the part at some temperature >500°C.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11-14 and 21 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. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Independent claim 11 has been amended to recite “an absolute value of a difference between a longitudinal high- temperature durability lifetime and a transverse high-temperature durability lifetime of the forming part is between 0.7 h and 2.3 h”. Claim 11 claims a forming powder which consists of chemical components in terms of mass percentage (wt-%), with amounts of individual elements expressed as ranges. Dependent claim 21 depends on claim 11 and further claims “the absolute value of the difference between the longitudinal high-temperature durability lifetime and the transverse high-temperature durability lifetime is substantially 0.7 h”. The specification is not written in such a way to reasonably convey to one of ordinary skill in the art that an inventor or joint inventor was in possession of forming powder for a forming part wherein the forming powder consists of chemical components in amounts over the claimed ranges, and the forming part has a high temperature durability difference between 0.7 and 2.3 h (claim 11) or substantially 0.7 h (claim 21). The basis for the claimed range of high temperature durability difference appears to be the four individual examples of the part manufacturing with forming powder of the present disclosure. Specifically, example 1 yields a part with a high temperature durability difference of 1.4 h; example 2 yields a part with a high temperature durability difference 0.7 h; example 3 yields a part with a high temperature durability difference of 1.4 h, and example 4 yields a part with a high temperature durability difference of 2.3 h (pages 10-11; Fig. 3). Each of examples 1-4 has a single, specific composition.
In providing guidance on narrowing claim amendments which may result in written description issues, MPEP 2163.05(II) notes an example wherein “[a]pplicant was not entitled to the benefit of a parent filing date [for which benefit is determined by adherence to the written description requirement of 35 USC 112(a)] when the claim was directed to a subgenus (a specified range of molecular weight ratios) where the parent application contained a generic disclosure and a specific example that fell within the recited range because the court held that subgenus range was not described in the parent application”. MPEP 2163.05(III) in discussing support for range limitations states “[w]ith respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure” and “even if the specification may be read to convert each disclosed value into a range, there is insufficient written description for the entire claimed range where the disclosed range minimally overlaps with the claimed range”.
As filed, numerical values of a high-temperature durability difference are only disclosed for inventive and comparative examples, and are not disclosed for the invention as a whole. The present disclosure as filed does not indicate a range of high temperature durability differences which the inventors consider to be inventive but rather notes that such high temperature durability differences are less than those of comparative (contrast) examples. The range of between 0.7 and 2.3 h appears derived entirely from the four specific examples of the inventive powder, each of which is only one point within the range of claimed compositions recited in claim 11, and only one example appears to exhibit a high-temperature durability difference within the range recited in claim 21. Further, in claiming “substantially 0.7 h” claim 21 appears to recite a range beyond that for which examples could define endpoints.
The four inventive examples, each example having a single chemical composition and yielding a single high-temperature durability difference, are not sufficient to reasonably convey to one of ordinary skill in the art that an inventor or joint inventor was in possession of forming powder for a forming part wherein the forming powder consists of chemical components in amounts over the claimed ranges, and the forming part has a high temperature durability difference between 0.7 and 2.3 h (claim 11) or substantially 0.7 h (claim 21).
Claims 12-14 and 21 are rejected under 35 USC 112(a) because they depend on claim 11 and inherit the unsupported limitation(s) of claim 11.
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 21 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.
The term “substantially 0.7 h” in the last line of claim 21 is a relative term which renders the claim indefinite. The term “substantially 0.7 h” 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. It is not clear from the disclosure as filed how near 0.7 h a difference in high-temperature durability must be in order to be considered substantially 0.7 h. This uncertainty is compounded when considering claim 11, on which claim 21 depends claims an absolute value of a difference between a longitudinal high- temperature durability lifetime and a transverse high-temperature durability lifetime of the forming part is between 0.7 h and 2.3 h, which appears to exclude high-temperature durability differences less than or equal to 0.7 h, raising questions as to how a high-temperature durability difference can be both substantially 0.7 h and between 0.7 h and 2.3 h.
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.
Claim(s) 11-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Etter (US20170021415). Etter is cited in the office action mailed April 28, 2025.
Regarding claims 11 and 21, Etter discloses a forming powder for forming a part by additive manufacturing [0021]. Etter discloses that the powder consists of [emphasis added] Cr, Fe, Mo, Co, W, C, Si, Mn, B, Ni and impurities [0022]. In disclosing a powder which consists of disclosed elements [0022], Etter discloses excluding elements which are not recited from the powder composition. Chemical components of the powder disclosed by Etter are compared with the presently claimed alloy, with amounts given in wt%.
Alloying Element/Quantity
Etter [0022]
Present Invention (claim 11)
C
0.04-0.10
0.03-0.09
Cr
20.5-23.0
20.50-23.00
Co
0.50-2.50
0.50-2.50
Mo
8.0-10.0
8.00-10.00
W
0.20-1.00
0.20-1.00
Fe
17.0-20.0
17.00-20.00
B
0-0.008
0-0.002
Mn
0-0.5
0-1.00
Si
0-0.5
0.0375-0.15
O
0 [by “consisting of” language]
0-0.02
N
0 [by “consisting of” language]
0-0.015
Ni and inevitable impurities
Balance
The rest
C/Si
≥
0.08 (calculated)
0.25-1.0
Amounts of Cr, Co, Mo, W, Fe, Mn, O, N, Ni, and impurities disclosed by Etter [0022] meet the ranges recited in claim 11. Amounts of C, B, and Si disclosed by Etter [0022] and the range of C/Si calculated from amounts of C and Si disclosed by Etter [0022] overlap those recited in present claim 11. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
The statement “for a forming part with a low high-temperature durability anisotropy by additive manufacturing” in the preamble of claim 11 is a statement of intended use of the claimed powder. As the absolute value of a difference between a longitudinal high- temperature durability lifetime and a transverse high-temperature durability lifetime of a part is determined by steps of processing the powder and part intermediates (uniform powder mixing, isostatic pressing, heat treatments see the stress relief annealing and hot isostatic pressing paragraphs on pages 8-9 of the specification), and considering the present disclosure indicates that the chemical composition of the powder is the structure of the powder which results in a part formed with low high-temperature durability anisotropy (see the paragraph on page 4 of the present specification which begins “the forming powder” and the page 7 which begins “The forming powder”), Etter establishes a sound basis for believing that the powder disclosed by Etter [0021-22] is structurally capable of forming a part with an absolute value of a difference between a longitudinal high- temperature durability lifetime and a transverse high-temperature durability lifetime of the forming part is between 0.7 h and 2.3 h, as recited in claim 11 or substantially 0.7 h, as recited in claim 21, under at least some conditions. See MPEP 2111.02(II) for further discussion on claim interpretation for preamble statements of intended use.
Regarding claim 12, the ranges of 0.04≦C≦0.1 wt.-%, and 0≦Si≦0.5 wt-% disclosed by Etter [0022] overlap the ranges recited in claim 12 and calculate to C/Si
≥
0.08 which encompasses the range recited in claim 12. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Regarding claim 14, Etter discloses that the particle size of the powder is between 10 and 100 μm [0022], which overlaps the claimed range of 15 μm to 150 μm. When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05(I).
Claim 13 is written in product-by-process format which limits the claimed powder by the structure implied by process step and does not limit the claimed powder by manipulation of the recited process steps. See MPEP 2113. The present disclosure indicates that gas atomization or rotary electrode atomization results in the structure of spherical powder with smooth surface (first full paragraph on page 8). Etter discloses that the powder is spherical [0022] and that the powder itself is crack-free [0023]. Considering Etter discloses spherical, crack-free powder [0022-23], with a particle size as applied to claim 14 above, and a chemical composition as applied to claims 11 and 12 above, Etter discloses a range of powder structures [0022-23] which either meet or overlap the structure implied by product-by-process limitations recited in claim 13.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Regarding rejection of claim 11 under 35 USC 103 over Etter (US20170021415), applicant’s argument that “Etter [0022] specifies that the lower limit of B content (wt-%) is 0 (meaning B is a non-essential component) and the upper limit is 0.008,” whereas, “Claim 11 specifies that the lower limit of B content (wt-%) is not 0 (meaning B is an essential component) and the upper limit is 0.002 (only one-fourth of the upper limit in Etter)” is not persuasive because a range of 0-0.008% B disclosed by Etter [0022] encompasses a range of “0%<B<0.002%” recited in claim 11. Similarly, applicant’s argument that “Etter [0022] specifies that the lower limit of Si content (wt-%) is 0 (meaning Si is a non-essential component) and the upper limit is 0.5; whereas Claim 11 specifies that the lower limit of Si content (wt-%) is 0.0375 (meaning Si is an essential component) and the upper limit is 0.15 (only 30% of the upper limit in Etter)” is not persuasive because a range of 0-0.5% Si disclosed by Etter [0022] encompasses the “0.0375%<Si<0.15%” recited in claim 11. Further arguments that “”claim 11 further recites
0.2
≤
C/Si
≤
1.0
, which means C and Si are essentialcomponents. However, Etter does not expressly or implicitly disclose that such a C/Si ratio requirement must exist; on the contrary, it expressly indicates that Si is a non-essential component” are not persuasive because Etter discloses 0.04-0.10% and 0-0.5% Si [0022] and the amounts of Si and C disclosed by Etter define a ratio C/Si of
≥
0.08, which encompasses a range of
0.2
≤
C
/
S
i
≤
1.0
. The structure defined by the claimed C/Si ratio is the content of Si and C of the chemical composition of the powder. Applicant’s argument that Etter provides no teachings regarding the contents (wt-%) of oxygen (O) and nitrogen (N) not to exceed 0.02 and 0.015, respectively are not persuasive because Etter discloses a composition “consisting of”/”consists of” recited elements, and the list of elements recited by Etter does not include N or O (abstract, [0022], claim 1). As “consists of”/”consisting of” language excludes elements which are not recited (MPEP 2111.03(II)), Etter discloses compositions (abstract, [0022], claim 1), which exclude N and O. A composition which excludes N and O directly meets contents (wt-%) of oxygen (O) and nitrogen (N) not to exceed 0.02 and 0.015, respectively.
In all of the above points of arguments, When claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists, and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. See MPEP 2144.05(I-II). As discussed in MPEP 2144.05 with several supporting examples, the concept of obviousness over overlapping/encompassing ranges, especially with respect to chemical composition is very well established. Applicant does not support arguments of differences in compositions with evidence sufficient to show that the particularly claimed composition ranges yield results which are nonobvious over those disclosed by Etter to a statistical and practical significance commensurate in scope with the claimed ranges. See MPEP 716.02 and subsections for further discussions on evidence of nonobvious results.
Applicant’s arguments that a “person skilled in the art cannot ascertain the correlation between the powder disclosed in Etter and the high-temperature durability properties of formed parts from Etter's teachings” are not persuasive because Etter discloses “[i]t is an object of the present invention to provide a solid-solution strengthened Nickel-base superalloy powder for use of additive manufacturing (SLM, EBM) of three-dimensional articles with a reduced hot cracking tendency and sufficient high temperature ductility” [0021]. High-temperature durability is by definition a measurement of a part’s ability to withstand high-temperature conditions. Even though, claim 11 is directed to a powder and not the part manufactured therefore, considering reduced hot cracking tendency indicates improved structural integrity at high temperatures and high- temperature durability is a metric of a material’s ability to deform without fracture, and the chemical composition of the powder disclosed by Etter [0022], Etter more than sufficiently establishes a sound basis for believing that the powder disclosed by Etter would be structurally capable of forming a part which has a difference in high-temperature durability within the claimed range when additively manufactured by at least some process.
Applicant acknowledges the previously set forth rejections of dependent claims over Etter. Applicant does not separately argue limitations recited specifically in dependent claims over the prior art.
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 SEAN P O'KEEFE whose telephone number is (571)272-7647. The examiner can normally be reached MR 8:00-6:30.
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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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/SEAN P. O'KEEFE/ Examiner, Art Unit 1738
/SALLY A MERKLING/ SPE, Art Unit 1738