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 .
Status of Claims
Claims 1-2, 4, 7-8, and 13-14 are examined in this office action of which claims 1, 4, 7, and 13 were amended and claims 3, 5-6, 9-12, and 15 were canceled in the preliminary amendment dated 4/21/23.
Drawings
The drawings are objected to because the application only includes one figure, but nonetheless numbers this “FIG. 1”. 37 C.F.R 1.84(u)(1) requires that where “only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear”, see MPEP § 608.02(V). Therefore, the drawing must be corrected to state merely “Figure”. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 8 is objected to because of the following informalities: Claim 8 recites “-4.4 %~4.6 % of Ti”. As there cannot be a negative amount of titanium in the composition, this “-“ symbol appears to be an errant typo and should be removed.
Appropriate correction is required.
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, 4, 7-8, and 13-14 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 “low stacking fault energy” in claims 1-2, 4, 7-8, and 13 is a relative term which renders the claim indefinite. The term “low stacking fault energy” 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. While stacking fault energy is discussed in the specification, there is no disclosure of what makes the stacking fault energy “low” and therefore the scope of the claim is unclear. Claim 14 is also rejected as it depends from claim 13 and does not solve the above issue.
Claim 1 recites the limitation “the Al element” in the 3rd from last line of the claim. There is insufficient antecedent basis for this limitation in the claim. While there is a previous recitation of “Al” in the composition, there is no previous recitation of an Al element and therefore it is unclear whether this is referring back to the Al in the composition, whether it is referring to some other “Al element” or some other meaning. Claims 2, 4, 7-8, and 13-14 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim 13 recites the limitation “wherein the structural member is made by the superalloy with low stacking fault energy according to claim 1” in lines 1-2. It is not clear how a structural member can be “made by” a composition. An alloy composition is a statement of the percentages of elements that compose the alloy, however this composition does not “make” anything. Claim 14 is also rejected as it depends from claim 13 and does not solve the above issue.
Claim 13 recites the limitation “wherein the structural member comprises any one of a forging member, a casting member, and an additively manufactured structural member”. As there not a tense agreement between the recited members – where forging and casting are in present tense while additively manufactured is in past tense – it is not clear if these members are being described by how they are made (i.e. by being forged, cast, and additively manufactured), whether they are describing an intended use (i.e. a structural member for forging, casting or additive manufacturing), or some other meaning. Claim 14 is also rejected as it depends from claim 13 and does not solve the above issue.
Claim 14 recites the limitation “the structural member” in line 1. As claim 13 from which it depends recites both “a structural member” as well as “an additively manufactured structural member”, it is not clear which of these structural members is referred back to by this later recitation.
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 1-2, 4, 7-8, and 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0023176 A1 of Han.
Table A
Element
Claim limitation (mass %)
Han claim 7 (mass %)
C
0.01-0.09%
0.01-0.04% (claim 8)
0.001 to 0.250%
Co
23.5-27.5%
23.5-26.5% (claim 2)
24-26% (claim 8)
not more than 28.0%
Cr
12-15%
12-14% (claim 8)
8.0 to 22.0%
W
0.1-1.8%
1-1.8% (claim 4)
1-1.5% (claim 8)
not more than 6.0%
Al
2.2-2.6%
2.3-2.5% (claim 8)
2.0 to 8.0%
Ti
3.5-5.5%
-4.4-4.6% (claim 8)
0.5 to 7.0%
Nb
0-2%
0.5-1.5% (claim 8)
not more than 4.0%
Ta
0-2%
0.1-2.0% (claim 8)
not more than 3.0%
Nb + Ta
≥ 0.8%
0-7%
Mo
2.1-3.5%
2.1-3.0% (claim 4)
2.0 to 7.0%
Sum of W and Mo (claim 4)
≥ 3%
2.0 to 13.0%
B
0.0001-0.05%
0.001-0.03% (claim 8)
0.001 to 0.300%
Zr
0.0001-0.05%
0.001-0.03% (claim 8)
0.001 to 0.300%
Fe
0-2.5%
not more than 10.0%
Mg
0-0.04%
Sum of Al, Ti, Nb, and Ta (claim 7)
≥ 7%
2.5 to 22.0%
Ni
balance
balance
As to claims 1-2, 4, and 7-8, Han discloses a Ni-based heat-resistant super alloy with the composition in comparison to the claim limitations as shown in Table A above. Thus, Han discloses a composition in claim 7 that overlaps the compositional ranges in claims 1, 2, 4, and 7-8. 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 produces an alloy which is easy to hot work (Han, paragraph [0017[) 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) . See MPEP § 2144.05 I.
As Han discloses where a sum of Nb and Ta is 0-7% (Han, claim 7), Han is disclosing where the ratio of a sum of Nb and Ta to a mass fraction of Al is from 0.31 to 3.18 overlapping the claimed range of ≥ 0.4. Also, the ratio in Han of the mass fraction of Ti to Al is 0.0625 to 3.5 overlapping the claimed range of ≤2.1. “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(I).
Finally, Han discloses where the Ni-based super alloy has a γ′ molar ratio of not less than 40% (Han, paragraph [0017]), meeting the claim limitation of where the volume fraction of γ′ strengthening phase is above 30 %.
While it is not clear what is meant by “low stacking fault energy”, see 112(b) rejection above, for the purposes of applying prior art this will be interpreted as requiring some stacking fault energy in the superalloy. While Han does not explicitly disclose the stacking fault energy of its composition, as Han discloses a patentably indistinct composition, this composition would necessarily have a stacking fault energy meeting the claim limitations. 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).
As to claim 13, it is not clear what is meant by being “made by the superalloy” nor what is meant by the use of “forging”, “casting”, and “additively manufactured”, see 112(b) rejections above. For the purposes of applying prior art, this will be interpreted as the structural member comprising the superalloy of claim 1 and where it is formed using casting, forging, or additive manufacturing. Han discloses where ingots of the superalloy is cast and forging is performed (Han, paragraphs [0034]-[0035]), meeting the limitations.
As to claim 14, Han discloses where the superalloy is used in the production of a turbine disk (Han, paragraph [0017]), meeting the limitation of a turbine disc.
Conclusion
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733