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 the Claims
Claims 15-21 are pending wherein claim 15 is amended and claims 1-14 are canceled.
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 15-21 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.
With respect to the recitations “precipitation hardenable alloy” and “age-hardened at between 1300°F-1365°F for 5.5-8 hours” in claim 15, it is unclear if the alloy being claimed is merely capable of being hardened or has already been hardened.
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 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Smith Jr. et al. (US 4,358,511).
In regard to claim 15, Smith, Jr. et al. (‘511) discloses nickel base age (precipitation) hardenable alloys having compositions relative to that of the instant invention as set forth below (column 3).
Element
Instant Claim
(weight percent)
Smith, Jr. et al. (‘511)
(weight percent)
Overlap
Cr
about 18 – 23
19.5 – 23.5
19.5 – 23
Fe
about 15 - 21
Balance (16 – 37.5)
16 – 21
Mo
about 3 – 4.5
about 2.5 – 3.5
about 3 – 3.5
Nb
about 3.2 – 5.2
0 – about 3.5
about 3.2 – 3.5
Ti
about 0.5 – 1.3
about 1 – 3
about 1 – 1.3
Al
0 – about 0.4
0 – about 1.5
0 – about 0.4
Cu
about 0.5 – 3.0
about 1.5 – 3
about 1.5 – 3
Ni
Balance (about 41.6 – 59.8)
about 38 – 46
about 41.6 – 46
The Examiner notes that the amounts of chromium, iron, molybdenum, niobium, titanium and aluminum for the nickel base alloys disclosed by Smith, Jr. et al. (‘511) 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 at the time the invention was filed to select the claimed amounts of chromium, iron, molybdenum, niobium, titanium and aluminum from the amounts disclosed by Smith, Jr. et al. (‘511) because Smith, Jr. et al. (‘511) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “consisting of” in claim 15, Smith, Jr. et al. (‘511) does not require the presence of elements beyond nickel, chromium, aluminum, titanium, molybdenum, copper, columbium (niobium) and iron and therefore would read on claim 15 (column 3).
With respect to the recitation “a yield strength (0.2% offset) greater than or equal to about 140 ksi (965 MPa)” in claim 15, Smith, Jr. et al. (‘511) discloses yield strengths in excess of 140 ksi (Table VI).
With respect to the recitations “a plastic strain ratio greater than or equal to 0.30; and a plastic strain to failure greater than or equal to 8.0%” in claim 15, Smith, Jr. et al. (‘511) discloses a substantially similar composition that would also be age (precipitation) hardenable and therefore the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “is annealed between 1850°F -1900°F, age-hardened at between 1300°F-1365°F for 5.5-8 hours, and cooled at 50°F-100°F per hour to 1150°F with a hold for 5.5-12 hours followed by air cooling to achieve[…]”, the Examiner notes that Smith, Jr. et al. (‘511) teaches the steps of annealing at 1725°F and then reannealing at the same temperature followed by aging at temperatures such as 1300°F (column 4 and Tables). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. Additionally, Smith, Jr. et al. (‘511) discloses substantially similar yield strengths (greater than 140 ksi) as set forth in Tables VI and VII.
In regard to claim 16, Smith, Jr. et al. (‘511) discloses about 1 to 3 weight percent titanium and the implied range of iron would be from 16 to 37.5 weight percent (column 3). Thus, the range of titanium disclosed by Smith, Jr. et al. (‘511) would overlap the claimed range and the range of iron implied by Smith, Jr. et al. (‘511) would encompass the claimed range of iron.
In regard to claim 17, Smith, Jr. et al. (‘511) discloses about 1 to 3 weight percent titanium and the implied range of iron would be from 16 to 37.5 weight percent (column 3). Thus, the range of titanium disclosed by Smith, Jr. et al. (‘511) would overlap the claimed range and the range of iron implied by Smith, Jr. et al. (‘511) would encompass the claimed range of iron.
With respect to the recitation “wherein the titanium is between about 0.5% to about 0.8% and the iron is between about 18% to about 21.0%” in claim 18, Smith, Jr. et al. (‘511) discloses about 1 to 3 weight percent titanium and the implied range of iron would be from 16 to 37.5 weight percent (column 3). Thus, the range of implied iron disclosed by Smith, Jr. et al. (‘511) would encompass the range of the instant invention and since the claim indicates about 0.8% titanium and Smith, Jr. et al. (‘511) discloses about 1 weight percent titanium, the Examiner considers the scope to overlap or be close enough to establish prima facie obviousness. MPEP 2144.05 I.
With respect to the recitation “a yield strength (0.2% offset) is between about 140 ksi (965 MPa) and 170 ksi (1172 MPa)” in claim 19, Smith, Jr. et al. (‘511) discloses yield strengths in excess of 140 ksi (Table VI).
With respect to the recitations “a plastic strain ratio greater than or equal to 0.35; and a plastic strain to failure greater than or equal to 9.0%” in claim 20, Smith, Jr. et al. (‘511) discloses a substantially similar composition that would also be age (precipitation) hardenable and therefore the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitations “a plastic strain ratio greater than or equal to 0.45; and a plastic strain to failure greater than or equal to 10.0%” in claim 21, Smith, Jr. et al. (‘511) discloses a substantially similar composition that would also be age (precipitation) hardenable and therefore the claimed properties would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed November 6, 2025 have been fully considered but they are not persuasive.
First, the applicant primarily argues that processing limitations have been added to achieve the claimed properties and Smith, Jr. et al. (‘511) discloses double annealing at lower temperatures and lacks any age hardening and because Smith, Jr. et al. (‘511) does not disclose the claimed processing limitations or the specific ranges of elements, the claimed properties cannot be achieved.
In response, the Examiner notes that claims are drawn to a product and not a process and the Examiner notes that Smith, Jr. et al. (‘511) teaches the steps of annealing at 1725°F and then reannealing at the same temperature followed by aging at temperatures such as 1300°F (column 4 and Tables). Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113. Additionally, Smith, Jr. et al. (‘511) discloses substantially similar yield strengths (greater than 140 ksi) as set forth in Tables VI and VII.
Second, the Applicant primarily argues that the claimed alloy designates a combined resistance to hydrogen embrittlement with a high yield strength and [0036] states a critical range of titanium sch that the desired HE resistance is provided or exceeded, while a desired level of yield strength is provided or exceeded.
In response, the Examiner notes that Applicant’s argument that there is a demonstration of criticality is not persuasive for a few reasons. First, the maximum content of titanium is “about 1.3”, but C9 has a titanium content above the 1.3% at 1.5%, but appears to have a yield strength, plastic strain ratio and plastic strain to failure that is within the claims. Additionally, the Examiner notes that the alloy consists of nickel, chromium, iron, molybdenum, niobium, titanium, aluminum (at most about 0.4%), and copper. However, the alloys in Table 4 of the instant specification appear to require nickel, iron, molybdenum, niobium, titanium, aluminum (present in every case), copper, carbon, sulfur, boron, cobalt (in almost all cases), silicon, manganese (in some cases) and phosphorus. Therefore, it does not appear that the claims or Applicant’s arguments are commensurate in scope with what is shown in Table 4. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). MPEP 716.02(d)(II).
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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 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, Curt Mayes can be reached at 571-272-1234. 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.
/JESSEE R ROE/Primary Examiner, Art Unit 1759