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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 13, 2026 has been entered.
Status of the Claims
Claims 15-21 are pending wherein claims 15-21 have been amended and claims 1-14 have been canceled.
Status of Previous Rejections
The previous rejection of claims 15-21 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the invention is withdrawn in view of the Applicant’s amendment to the claims.
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 hardened 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
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 recitation “a plastic strain ratio greater than or equal to 0.30” in claim 15, [0017] of the instant specification teaches that the plastic strain ratio = 0.3461 + 0.016572*Fe – 0.2022*Ti. Smith, Jr. et al. (‘511) discloses compositions including 17 weight percent iron and 1.3 weight percent titanium and the plastic strain ratio associated with this would be 0.364, which would be greater than 0.30 as set forth in the claim.
With respect to the recitations “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 hardened 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 recitation “a plastic strain ratio greater than or equal to 0.35” in claim 20, [0017] of the instant specification teaches that the plastic strain ratio = 0.3461 + 0.016572*Fe – 0.2022*Ti. Smith, Jr. et al. (‘511) discloses compositions including 17 weight percent iron and 1.3 weight percent titanium and the plastic strain ratio associated with this would be 0.364, which would be greater than 0.35 as set forth in the claim.
With respect to the recitations “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 hardened and therefore the claimed properties would be expected. MPEP 2112.01 I.
With respect to the recitation “a plastic strain ratio greater than or equal to 0.45” in claim 20, [0017] of the instant specification teaches that the plastic strain ratio = 0.3461 + 0.016572*Fe – 0.2022*Ti. Smith, Jr. et al. (‘511) discloses compositions including 21 weight percent iron and 1 weight percent titanium and the plastic strain ratio associated with this would be 0.49, which would be greater than 0.45 as set forth in the claim.
With respect to the recitations “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 hardened and therefore the claimed properties would be expected. MPEP 2112.01 I.
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the yield strengths in Table VI of Smith, Jr. et al. (‘511) that are greater than 140 ksi correspond to alloys that are outside the ranges of the claimed alloy and the claimed ranges of the alloy are critical in achieving the yield strength which Smith, Jr. et al. (‘511).
In response, the Examiner notes that the reference to Smith, Jr. et al. (‘511) has not been used as a rejection under 35 U.S.C. 102, but rather a rejection under 35 U.S.C. 103 and just because Smith, Jr. et al. (‘511) does not provide a single Example that meets every limitation does not mean that the reference would be inapplicable entirely. Smith, Jr. et al. (‘511) has been used as a reference under 35 U.S.C. 103 and the elements associated with that reference that reads on the claims has been set forth above.
Second, the Applicant primarily argues that the Office Action of November 13, 2025 does not disclose a substantially similar composition nor the specific annealing and hardening limitations that would provide a plastic strain greater than or equal to 0.30; and a plastic strain to failure greater than or equal to 8.0% as in claim 15. The Applicant further argues that Smith, Jr. et al. (‘511) discloses double annealing at lower temperatures and lacks any age hardening and lacks the critical titanium and iron content to produce the HE properties.
In response, with respect to the recitation “a plastic strain ratio greater than or equal to 0.30” in claim 15, [0017] of the instant specification teaches that the plastic strain ratio = 0.3461 + 0.016572*Fe – 0.2022*Ti. Smith, Jr. et al. (‘511) discloses compositions including 17 weight percent iron and 1.3 weight percent titanium and the plastic strain ratio associated with this would be 0.364, which would be greater than 0.30 as set forth in the claim. There are many combinations of iron and titanium disclosed by Smith, Jr. et al. (‘511) that would read on the claimed plastic strain ratio. Smith, Jr. et al. (‘511) discloses yield strengths in excess of 140 ksi (Table VI) and 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. Applicant has not demonstrated a distinctness in the product of the instant invention over the prior art product to Smith, Jr. et al. (‘511). Applicant could demonstrate the criticality of the claimed ranges over the prior art ranges as set forth in MPEP 716.02 (d)(II). However, Applicant is yet to provide such as comparison to demonstrate the criticality.
Conclusion
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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