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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Notably, the foreign priority claim has not been perfected and so the EFD of the claimed invention is the date of the PCT application filed 09/01/2021 (rather than the date of the FP document filed 10/23/2020).
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/18/2023, 10/21/2024, 03/24/2025, and 05/21/2025 have been considered by the examiner.
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 1-20 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 includes multiple instances of ‘preferably’, ‘very preferably’, and ‘more particularly’ in addition to various broad and narrow ranges. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Additionally, claim 1 utilizes the open-ended transitional phrase “comprising” in addition to the closed transitional phrase “more particularly consisting of these elements” which renders the metes and bounds of the claim indefinite.
In the interest of making the record clear, the claims have been treated under the BRI such that the claims have been interpreted to permit the presence of additional elements.
Claims 2 and 3 also include the phrase “more particularly consisting of this alloy” and/or “more particularly consisting of an alloy as claimed in claim 1”.
Claims 7, 8, and 15 also include broad and narrow ranges that render the metes and bounds of the claim indefinite.
Examiner has attempted to identify all instances within the presented claim set but there are numerous issues such that Applicant’s assistance is respectfully requested to thoroughly review the claim set to ensure that the scope of the claims is clear such that the public is informed of the boundaries of what constitutes infringement of the patent and a clear measure of what the inventor regards as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 US 112(a) with respect to the claimed invention (MPEP 2173 3rd paragraph).
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Neddemeyer et al. (U.S. 2020/0208245; cited in IDS 03/24/2025).
NOTE: Neddemeyer et al. (hereinafter “Neddemeyer”) shares the same inventorship and assignee with the instant application. However, Applicant’s claim for foreign priority has not been perfected; as such, the grace period is one year before 09/01/2021 (filing date of PCT/EP2021/074098). Neddemeyer is available as 102(a)1 art because it is published outside of the grace period (07/02/2020). Additionally, Neddemeyer is available as 102(a)(2) art due to the application(s) having a prior filing date. In the interest of compact prosecution, the 102(b)(2) exception(s) may be necessary to disqualify the reference.
Regarding claim 1, Neddemeyer teaches a martensitic steel having a z-phase, powder and component (Title) having a composition as follows (Paragraphs 0012-0044):
Element
Claimed
Neddemeyer
Analysis
C
0.16-0.24
0.15-0.25
Shares 0.16-0.24
Si
0.0-0.08
0.0-0.08
Shares 0.0-0.08
Mn
0.04-0.16
0.03-0.20
Shares 0.04-0.16
Cr
10.6-11.5
9.5-10.5
Reasonably Close
Mo
0.5-0.9
0.4-1.0
Shares 0.5-0.9
W
2.2-2.6
1.6-2.4
Shares 2.2-2.4
Co
3.0-3.6
2.5-3.5
Shares 3.0-3.5
Ni
0.09-0.19
0.0-0.40
Shares 0.09-0.19
B
0.0035-0.01
0.003-0.02
Shares 0.0035-0.01
N
0.001-0.025
0.0-0.40
Shares 0.001-0.025
Ti
0.015-0.035
0.02-0.10
Shares 0.02-0.035
Cu
1.30-2.00
1.20-2.10
Shares 1.30-2.00
V
0.10-0.30
0.01-0.30
Shares 0.1-0.30
Nb
0.02-0.08
0.02-0.08
Shares 0.02-0.08
Al
0.003-0.06
0.003-0.06
Shares 0.003-0.06
Fe
Balance
Balance
Balance
In the interest of the clarity of the record, the V, Nb, and Al textboxes above have a gray shading applied to the cells to indicate that these claim elements are optional.
With regard to the Cr amount, the upper bound of Neddemeyer (10.5) is reasonably close to the lower bound of the claimed range (10.6) such that there is a reasonable presumption that they would possess the same or substantially the same properties.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claim 2, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the alloy can be in the form of a powder (Title and Paragraph 0009).
Regarding claim 3, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the alloy can be used to form gas turbine compressor blades, steam turbine blade or as steam turbine forged part (Paragraph 0064). Notably, the production of a steam turbine forged part from the disclosed alloy would necessarily have required the alloy to have been subjected to forging such that the alloy will have been ‘forged’ as required by the claim.
Regarding claim 4, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that C is included from 0.15-0.25% (Paragraph 0013) which embraces the claimed value of 0.2% C.
Regarding claim 5, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that Si is included from 0.0-0.08% (Paragraph 0015) which embraces the claimed range of 0.02-0.06% Si.
Regarding claim 6, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that Mn is included from 0.03-0.20% (Paragraph 0017) which embraces the claimed value of 0.10% Mn.
Regarding claim 7, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Cr is from 9.5-10.5% (Paragraph 0019) which is reasonably close to the claimed range of 10.6-11.0%.
With regard to the Cr amount, the upper bound of Neddemeyer (10.5) is reasonably close to the lower bound of the claimed range (10.6) such that there is a reasonable presumption that they would possess the same or substantially the same properties.
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claim 8, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Cr is from 9.5-10.5% (Paragraph 0019) which is reasonably close to the claimed range of 11.0-11.4%.
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
In the instant case, the differences in the ranges is less than 1.0 wt% and no evidence of criticality has been presented to demonstrate that the difference would be a difference in kind rather than in degree.
Regarding claim 9, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Mo is from 0.4-1.0% (Paragraph 0021) which embraces the claimed value of 0.70% Mo.
Regarding claim 10, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the W is from 1.6-2.4% (Paragraph 0023) which embraces the claimed value of 2.40% W.
Regarding claim 11, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Co is from 2.5-3.5% (Paragraph 0025) which embraces the claimed value of 3.3% Co.
Regarding claim 12, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Ni is from 0.0-0.40% (Paragraph 0027) which embraces the claimed value of 0.15% Ni.
Regarding claim 13, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the B is from 0.003-0.02% (Paragraph 0029) which embraces the claimed value of 0.005% B.
Regarding claim 14, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the N is from 0.0-0.40% (Paragraph 0031) which embraces the claimed value of 0.013% N.
Regarding claim 15, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Ti is from 0.02-0.10% (Paragraph 0033) which embraces the claimed range of 0.020-0.026% Ti.
Regarding claim 16, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the V is from 0.10-0.30% (Paragraph 0035) which embraces the claimed value of 0.20% V.
Regarding claim 17, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Nb is from 0.02-0.08% (Paragraph 0037) which embraces the claimed value of 0.05% Nb.
Regarding claim 18, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Cu is from 1.2-2.10% (Paragraph 0039) which embraces the claimed value of 1.75% Cu.
Regarding claim 19, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Al is from 0.003-0.06% (Paragraph 0041) which embraces the claimed value of 0.02% Al.
Regarding claim 20, Neddemeyer teaches the alloy as applied to claim 1 above and further teaches that the Ti is from 0.02-0.10% (Paragraph 0033) and the N is from 0.0-0.40% (Paragraph 0031). Neddemeyer is silent to the Ti/N ratio of from 1.5 to 2 but the disclosed ranges of Neddemeyer nevertheless possess values that would satisfy the claimed relationship (e.g., 0.1% Ti and 0.05% N such that 0.1/0.05 = 2).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Hackett (U.S. 2017/0292179) directed to a high-temperature, radiation-resistant, ferritic-martensitic steel including thermodynamic calculations regarding the Laves and Z phase.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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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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/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738
ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738