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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 31, 2026 has been entered.
Status of the Claims
Claims 1-8 are pending wherein claims 6 and 8 are amended.
Status of Previous Rejections
The previous rejection of claim 8 under 35 U.S.C. 103 as being unpatentable over Murphy (US 2004/0229072) is withdrawn.
Claim Rejections - 35 USC § 103
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 2011/0076180).
In regard to claim 1, Suzuki et al. (‘180) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below [0006].
Element
Instant Claim
(weight percent)
Suzuki et al. (‘180)
(weight percent)
Overlap
Al
4 – 5.2
about 4 – 6.5
4 – 5.2
Co
1 – 10
about 4 – 10
about 4 – 10
Cr
5 – 8
about 4 – 10
5 – 8
Mo
0.5 – 2
about 0.5 – 2.5
0.5 – 2
Ta
7 – 10
about 5 – 10
7 – 10
Ti
greater than 0 – 1.5
about 0 – 1
greater than 0 – 1
W
7 – 10.5
about 5 – 10
7 – about 10
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium and tungsten for the nickel base alloys disclosed by Suzuki et al. (‘180) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing the invention to select the claimed amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium and tungsten from the amounts disclosed by Suzuki et al. (‘180) because Suzuki et al. (‘180) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of” in claim 1, Suzuki et al. (‘180) does not require the presence of elements in addition to aluminum, cobalt, chromium, molybdenum, tantalum, titanium, and tungsten and therefore reads on the claim.
With respect to the recitation “heat-resistant” in claim 1, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, heat resistance would be expected. MPEP 2112.01 I.
With respect to the alloy “not containing rhenium” in claim 1, Suzuki et al. (‘180) indicates that the alloy would be rhenium-free ([0016] and claims).
With respect to the recitation “wherein the heat-resistant alloy has a creep resistance sustainability of 60% or greater.[…]” In claim 1, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the stable creep resistance time according to Equation 1 is 150 hours or more” in claim 2, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
In regard to claim 3, Suzuki et al. (‘180) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below [0006].
Element
Instant Claim
(weight percent)
Suzuki et al. (‘180)
(weight percent)
Overlap
Al
4 – 5.2
about 4 – 6.5
4 – 5.2
Co
1 – 10
about 4 – 10
about 4 – 10
Cr
5 – 8
about 4 – 10
5 – 8
Mo
0.5 – 2
about 0.5 – 2.5
0.5 – 2
Ta
7 – 10
about 5 – 10
7 – 10
Ti
greater than 0 – 1.5
about 0 – 1
greater than 0 – 1
W
7 – 10.5
about 5 – 10
7 – about 10
Hf
greater than 0 – 1.5
about 0 – 1.5
greater than 0 – 1.5
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and hafnium for the nickel base alloys disclosed by Suzuki et al. (‘180) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing the invention to select the claimed amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and hafnium from the amounts disclosed by Suzuki et al. (‘180) because Suzuki et al. (‘180) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of” in claim 3, Suzuki et al. (‘180) does not require the presence of elements in addition to aluminum, cobalt, chromium, molybdenum, tantalum, titanium, and tungsten and therefore reads on the claim.
With respect to the recitation “heat resistant” in claim 3, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, super heat resistance would be expected. MPEP 2112.01 I.
With respect to the alloy “being free of rhenium” in claim 3, Suzuki et al. (‘180) indicates that the alloy would be rhenium-free ([0016] and claims).
With respect to the recitation “wherein a creep resistance sustainability of the super-heat-resistant alloy according to Equation 1 and 2 below is greater than or equal to 60%.[…]” In claim 3, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the stable creep resistance time according to Equation 1 is 150 hours or more” in claim 4, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the heat-resistant alloy is free of iron (Fe)” in claim 5, Suzuki et al. (‘180) does not require the presence of iron and therefore reads on the claim [0006].
With respect to the recitation “wherein a lattice misfit δ according to Equation 3 is higher than 0.35% and lower than 0.28%. […]” in claim 6, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed lattice misfit would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein a γ lattice parameter distribution parameter of the super-heat-resistant alloy according to Equation 8 below is greater than 0.12, which is calculated by Equation 8: […]” in claim 7, Suzuki et al. (‘180) discloses a substantially similar composition. Therefore, the claimed γ lattice parameter distribution parameter would be expected. MPEP 2112.01 I.
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Murphy (US 2004/0229072).
In regard to claim 3, Murphy (‘072) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0007].
Element
Instant Claim
(weight percent)
Murphy (‘072)
(weight percent)
Overlap
Al
4 – 5.2
about 5 – 7
about 5 – 5.2
Co
1 – 10
0 – about 15
1 – 10
Cr
5 – 8
about 3 – 12
5 – 8
Mo
0.5 – 2
0 – about 3
0.5 – 2
Ta
7 – 10
about 3 – 12
7 – 10
Ti
greater than 0 – 1.5
0 – about 2
greater than 0 – 1
W
7 – 10.5
about 3 – 10
7 – about 10
Hf
greater than 0 – 1.5
about 0.03 – 0.8
about 0.03 – 0.8
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and hafnium for the nickel base alloys disclosed by Murphy (‘072) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing the invention to select the claimed amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and hafnium from the amounts disclosed by Murphy (‘072) because Murphy (‘072) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of” in claim 3, Murphy (‘072) does not require the presence of elements in addition to aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and hafnium and therefore reads on the claim.
With respect to the recitation “heat resistant” in claim 3, Murphy (‘072) discloses a substantially similar composition. Therefore, super heat resistance would be expected. MPEP 2112.01 I.
With respect to the alloy “being free of rhenium” in claim 3, Murphy (‘072) indicates that the alloy would be rhenium-free ([0016] and claims).
With respect to the recitation “wherein a creep resistance sustainability of the super-heat-resistant alloy according to Equation 1 and 2 below is greater than or equal to 60%.[…]” In claim 3, Murphy (‘072) discloses a substantially similar composition. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “wherein the stable creep resistance time according to Equation 1 is 150 hours or more” in claim 4, Murphy (‘072) discloses substantially similar compositions. Therefore, the claimed property would be expected. MPEP 2112.01 I.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Suzuki et al. (US 2011/0076180) in view of ASM Handbook Volume 2.
In regard to claim 8, Suzuki et al. (‘180) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below [0006].
Element
Instant Claim
(weight percent)
Suzuki et al. (‘180)
(weight percent)
Overlap
Al
4 – 5.2
about 4 – 6.5
4 – 5.2
Co
1 – 10
about 4 – 10
about 4 – 10
Cr
5 – 8
about 4 – 10
5 – 8
Mo
0.5 – 2
about 0.5 – 2.5
0.5 – 2
Ta
7 – 10
about 5 – 10
7 – 10
Ti
greater than 0 – 1.5
about 0 – 1
greater than 0 – 1
W
7 – 10.5
about 5 – 10
7 – about 10
La
greater than 0 – 0.1
-
-
Ce
greater than 0 – 0.1
-
-
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium and tungsten for the nickel base alloys disclosed by Suzuki et al. (‘180) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing the invention to select the claimed amounts of aluminum, cobalt, chromium, molybdenum, tantalum, titanium and tungsten from the amounts disclosed by Suzuki et al. (‘180) because Suzuki et al. (‘180) discloses the same utility throughout the disclosed ranges.
With respect to the claimed amounts of cerium and lanthanum, Suzuki et al. (’180) does not specify the presence of cerium and lanthanum.
The ASM Handbook Volume 2 discloses adding rare earth elements such as lanthanum and cerium in an amount less than 1 weight percent in order to improve high temperature performance (page 727, middle column – page 728, left column and page 730).
Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to add less than 1 weight percent or rare earth elements such as cerium and lanthanum, as disclosed by the ASM Handbook Volume 2, to the nickel base alloys, as disclosed by Suzuki et al. (’180), in order to improve high temperature performance, as disclosed by the ASM Handbook Volume 2 (page 727, middle column – page 728, left column and page 730).
With respect to the recitation “consisting of” in claim 1, Suzuki et al. (‘180) in view of the ASM Handbook Volume 2 does not require the presence of elements in addition to aluminum, cobalt, chromium, molybdenum, tantalum, titanium, and tungsten and therefore reads on the claim.
With respect to the recitation “heat-resistant” in claim 1, Suzuki et al. (‘180) in view of the ASM Handbook Volume 2 discloses substantially similar compositions. Therefore, heat resistance would be expected. MPEP 2112.01 I.
With respect to the alloy “not containing rhenium” in claim 1, Suzuki et al. (‘180) indicates that the alloy would be rhenium-free ([0016] and claims).
With respect to the recitation “wherein the heat-resistant alloy has a creep resistance sustainability of 60% or greater.[…]” In claim 1, Suzuki et al. (‘180) in view of the ASM Handbook Volume 2 discloses substantially similar compositions. Therefore, the claimed properties would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed December 1, 2025 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the alloys of Suzuki et al. ('180) do not render the claims obvious because Suzuki et al. ('180) discloses alloys that "comprise" various elements including hafnium, boron, yttrium and carbon in addition to aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and nickel and in contrast the claimed alloy "consists of" aluminum, cobalt, chromium, molybdenum, tantalum, titanium, tungsten and nickel thereby excluding hafnium, boron, yttrium, carbon and any other elements.
In response, the Examiner notes that Suzuki et al. ('180) discloses from "from about 0 to about 1.5 wt% hafnium (Hf), up to about 0.1 wt% carbon (C), up to about 0.01 wt% boron (B), up to about 0.1 wt% yttrium (Y) [...]" [0021]. The Examiner's interpretation of the scope of "about 0" and "up to" would include the value of 0 and therefore Suzuki et al. ('180) would read on the instant invention since hafnium, carbon, boron and yttrium would not be required elements and thus Suzuki et al. ('180) would read on the instant claims 1-7.
Second, the Applicant primarily argues that Applicant's provided experimental data demonstrating that Alloys 16 and 17 of Suzuki et al. ('180) containing hafnium and boron do not have the claimed creep resistance sustainability and showed an unexpected improvement in creep resistance sustainability compared to Suzuki et al. ('180).
In response, Applicant's comparison does not constitute a comparison of the closest prior art and to demonstrate the criticality Applicant should provide comparison data of one or more claimed ranges inside and outside the claimed ranges. MPEP 716.02(d)(II).
Third, the Applicant primarily argues that Examples 5, 11, 12, 14 and 15 fail to satisfy the claimed parameter ranges to show inferior performance even though their compositions are close to those of the claimed alloys and this proves that the claimed parameters are not inherent to the composition.
In response, the Examiner notes that Example 5 has no cobalt whereas the claim requires at least 1 weight percent cobalt and this could not be used to establish criticality since Applicant would need to show an amount of cobalt present but below 1 weight percent to show the criticality of that lower limit. Example 11 has an amount of cobalt that is within the claimed ranges, but has a molybdenum content of 0.4 weight percent. This possibly could be used to establish the criticality of the lower limit of molybdenum, but none of the other examples have a molybdenum content close to the 2 weight percent upper limit or above that amount to establish criticality of that upper limit. Example 12 has a chromium content of 4 weight percent, which is below the minimum set forth in the claim of 5 weight percent. This could be used to establish the criticality of the lower limit, but there are no Examples with chromium above 8 weight percent, the upper limit in the claim, except for Example 5, which also has no cobalt. Example 14 has no cobalt and Example 15 has no titanium and neither could really be used to establish the criticality of the claimed lower limits of cobalt and titanium according to MPEP 716.02(d)(II).
Fourth, any additional Applicant arguments have been considered, but are moot in view of the new grounds of rejection.
Conclusion
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759