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 & Status of Claims
Claims 1-15 are examined in the office action.
Terminal Disclaimer
The terminal disclaimer filed on 10/31/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. US 10,174,397 has been reviewed and is accepted. The terminal disclaimer has been recorded.
The terminal disclaimer filed on 10/31/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. US 12,152,290 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 1-15 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.
Regarding claims 1-15, claim 1 recites “using the processed alloy for buildup welding using an arc or laser process, for joint welding for base metals, superaustenitic steels and/or nickel- base alloys, for plasma powder welding, for additive manufacturing printing for manufacture of structural parts, or for electroslag and/or submerged arc welding for buildup welding or for joint welding, or using the processed alloy in a thermal spraying process or as a coated rod electrode or a cored wire electrode”.
It is unclear what is meant by ““using the processed alloy for buildup welding using an arc or laser process, for joint welding for base metals, superaustenitic steels and/or nickel- base alloys, for plasma powder welding, for additive manufacturing printing for manufacture of structural parts, or for electroslag and/or submerged arc welding for buildup welding or for joint welding, or using the processed alloy in a thermal spraying process” as there exists no process steps for the using thereby making it unclear what the term “using” would entail.
Regarding claim 7, instant claim recites “The method according to claim 1, wherein the alloy is processed using additive manufacturing process by an arc welding process, a laser welding process, or an electron beam welding process using a welding wire.” It is unclear whether the instant limitation modifies the “processing the alloy via a molten phase” of claim 1 and it is requiring an additional processing step. In addition, it is unclear how the alloy which is in the form of an alloyed solid selected from the group consisting of a wire, a strip, a rod and a powder becomes a welding wire as recited in the instant claim.
Claims 4-6 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 1 requires that processing the alloy via a molten phase to form an alloyed solid selected from the group consisting of a wire, a strip, a rod and a powder. However, instant claims require processed alloy be wire-shaped or rod-shaped whereas the independent claim requires it to be wire or rod not shaped like them.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
List 1
Element
Instant Claims
(mass%)
Prior Art
PV 662
(mass%)
Prior Art
(mass%)
C
max 0.02
max 0.015 claim 2
max 0.010 claim 3
0.0066
C max. 0.02%
S
max 0.01
max 0.005 claims 2, 3
0.0011
S max. 0.01%
N
max 0.03
max 0.02 claims 2, 3
0.0016
N max. 0.03%
Cr
20.0 – 23.0
21.0 – < 23.0 claim 2
22.0 – < 23.0 claim 3
22.9
Cr 20.0-23.0%
Ni
39.0 – 44.0
> 39.0 – < 43.0 claims 2, 3
39.7
Ni 39.0-44.0%
Mn
0.4 - < 1.0
0.5 – 0.9 claim 2
0.55 – 0.9 claim 3
0.75
Mn 0.4-<1.0%
Si
0.1 - < 0.5
0.2 – < 0.5 claims 2, 3
0.26
Si 0.1-<0.5%
Mo
> 4.0 – < 7.0
> 4.5 – 6.5 claim 2
> 5.0 – 6.5 claim 3
5.86
Mo >4.0-<7.0%
Nb
max 0.15 claims 1, 2, 3
< 0.002
Nb max. 0.15%
Cu
> 0.15 – < 2.5
> 1.6 – < 2.3 claim 2
> 1.6 – < 2.2 claim 3
1.80
Cu >1.5-<2.5%
Al
0.05 – < 0.3
0.06 – < 0.25 claim 2
0.06 – < 0.20 claim 3
0.142
Al 0.05-<0.3%
Co
max 0.5 claims 1, 2, 3
0.009
Co max. 0.5%
B
0.001 – < 0.005
0.002 – 0.004 claims 2, 3
0.003
B 0.001-<0.005%
Mg
0.005 – < 0.015
0.006 – < 0.015 claims 2, 3
0.01
Mg 0.005-<0.015%
Ti
max 0.10 claim 3
0.002
Ti free
P
max 0.025 claim 3
0.0011
0.005 in Table 6
W
max 0.50 claim 3
-
0.10 in Table 6
Fe +
impurities
Balance
Fe: min 22 claim 3
28.4
Balance
Fe > 22% [0022]
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 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over US 2017/0002437 A1 of Rosenberg (US’437).
Regarding claims 1-15, US 2017/0002437 A1 of Rosenberg (US’437) teaches “a titanium-free alloy with high pitting and crevice corrosion resistance as well as high offset yield strength and tensile strength in the cold-worked condition” and “a process for manufacture of the alloy will be presented” having specific compositions wherein a specific example, PV 662 in Table 6, that lies within the claimed compositional range of the instant claims as shown in the List 1 above thereby meeting the claimed ranges of the alloy of the instant claims. A specific example in the prior art which is within a claimed range anticipates the range. “[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art.” Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682, 133 USPQ 275, 280 (CCPA 1962)) See MPEP § 2131.03 I. (US’437 abstract, [0001]-[0041], claims 1-7}.
Regarding the method steps of instant claim 1, the prior art teaches “[0034] The task is also accomplished by a process for the manufacture of an alloy that has a composition according to one of the objective claims, wherein [0035] a) the alloy is melted openly in the continuous or ingot casting, [0036] b) to eliminate the segregations caused by the increased molybdenum content, a homogenizing annealing of the produced blooms/billets is performed at 1150-1250° C. for 15 to 25 h, wherein [0037] c) the homogenising annealing is performed in particular following a first hot forming. [0038] Optionally, the alloy may also be produced by ESR/VAR remelting. [0039] The alloy according to the invention will preferably be used as a structural part in the oil and gas industry. [0040] Product forms suitable for this purpose are sheets, strips, pipes (longitudinally welded and seamless), bars or forgings.” thereby meeting the limitations of smelting and making them to one of a wire, a strip, a rod and a powder of claim 1.
Although the prior art teaches in claim 7 “Use according to claim 6, wherein the structural parts exist in the production forms sheet, strip, pipe (longitudinally welded and seamless), bar or as forging”, the prior art is silent regarding the filler, the powder form, electrodes and the various uses as recited in the instant claims.
MPEP provides that with regard to the shape, merely changing the shape/size/proportion of a prior art product would not be sufficient to distinguish from that prior art product as it has been held that changing the shape/size/proportion would require only ordinary skill in the art and hence are considered routine expedients. See MPEP § 2144.04 (IV). Therefore, making the specific shapes and powder as claimed in the instant claims would require only ordinary skill in the art since the shape modification of alloys using casting is well known in the art.
With respect to the various uses of the alloy as recited in the instant claims, as the prior art teaches a substantially identical product, the prior product would also be capable of performing the various uses recited in the instant claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “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. Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980). In the alternative, 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 take the alloy of the prior art and using the alloys as recited in the claims as the prior art teaches that its alloy has “Use according to claim 6, wherein the structural parts exist in the production forms sheet, strip, pipe (longitudinally welded and seamless), bar or as forging”.
Response to Arguments
The rejection “Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 10,174,397 B2” has been withdrawn in view of the terminal disclaimer filed on 10/31/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. US 10,174,397.
The rejection “Claims 1-13 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. US 12,152,290 B2” has been withdrawn in view of the terminal disclaimer filed on 10/31/2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent No. US 10,174,397.
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
With respect to the various uses, please see how the prior art renders the instant claims obvious.
As noted above, the prior art renders the instant claims obvious. If a prima facie case of obviousness is established, the burden shifts to the applicant to come forward with arguments and/or evidence to rebut the prima facie case. See, e.g., In re Dillon, 919 F.2d 688, 692, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990). Rebuttal evidence and arguments can be presented in the specification, In re Soni, 54 F.3d 746, 750, 34 USPQ2d 1684, 1687 (Fed. Cir. 1995), by counsel, In re Chu, 66 F.3d 292, 299, 36 USPQ2d 1089, 1094-95 (Fed. Cir. 1995), or by way of an affidavit or declaration under 37 CFR 1.132, e.g., Soni, 54 F.3d at 750, 34 USPQ2d at 1687; In re Piasecki, 745 F.2d 1468, 1474, 223 USPQ 785, 789-90 (Fed. Cir. 1984). However, arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP § 2145. Attorney argument is not evidence unless it is an admission, in which case, an examiner may use the admission in making a rejection. See MPEP § 2129 and § 2144.03 for a discussion of admissions as prior art. The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration. See MPEP § 2145 I.
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 JOPHY S. KOSHY whose telephone number is (571)272-0030. The examiner can normally be reached M-F 8:30 AM- 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH HENDRICKS can be reached at (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733