DETAILED ACTION
Claims 1-8 and 10-17 are pending and currently under review.
Claim 9 is cancelled.
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 .
Response to Amendment
The amendment filed 7/17/2026 has been entered. 1-8 and 10-17 remain(s) pending in the application.
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.
Claim(s) 1-8 and 10-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (JP2014208869, machine translation referred to herein).
Regarding claims 1-3, 7-8, and 13-14, Sato et al. discloses a forged, martensitic stainless steel having a composition as seen in table 2 below [0006, 0014]. The examiner notes that the composition of Sato et al. overlaps with and is substantially close to that as claimed which is prima facie obvious. See MPEP 2144.05(I). Specifically, regarding closeness, the examiner notes that the upper limit of 16 weight percent of Sato et al. is substantially close to the claimed Co amount of greater than 16 weight percent such that similar properties are expected such as similar toughness values of 20 J charpy impact energy relative to those achieved in the instant specification [0022].
Sato et al. is silent regarding the presence of any austenite phase, which one of ordinary skill would understand to mean that austenite is not present (ie. the steel is entirely martensite) absent a specific teaching to the contrary. Sato et al. further expressly teaches away from the formation of austenite, which further bolsters the examiner’s above position [0015].
Sato et al. is further silent regarding the presence of any sigma phase, which one of ordinary skill would understand to mean that sigma phases are not present. Furthermore, [0019, 0029 instant spec.] teaches that sigma phase directly influences toughness properties and that an absence of sigma phases achieves a desirable charpy impact toughness of 20 J. Sato et al. also discloses a toughness of 20 J as stated above, which further bolsters the examiner’s above position that the steel of Sato et al. is absent any sigma phases because Sato et al. does not teach the presence of sigma phases and further expressly teaches the same properties achieved by the absence of said sigma phases.
Table 2.
Element (wt.%)
Claim 7 (wt.%)
Sato et al. (wt.%)
Cr
12 – 16
8 – 13
Co
16 – 20
2 – 16
Mo
6 – 8
3.5 – 8
Ni
1 – 3
2 – 8
C
0.02 – 0.04
0.03 – 0.06
Fe & impurities
Balance
Balance
Regarding claims 4-5, 10-11, and 15-16, Sato et al. discloses the steel of claims 1, 7, and 13 (see previous). Sato et al. further teaches that precipitation of delta ferrite avoided (ie. zero percent delta ferrite) [0010-0011]. Sato et al. is silent regarding the presence of any laves and chi phases, which one of ordinary skill would understand to mean that these phases are not present. Furthermore, [0019, 0029 instant spec.] teaches that laves and chi phases directly influence toughness properties and that an absence of laves and chi phases achieves a desirable charpy impact toughness of 20 J. Sato et al. also discloses a toughness of 20 J as stated above, which further bolsters the examiner’s above position that the steel of Sato et al. is absent any laves and chi phases because Sato et al. does not teach the presence of laves and chi phases and further expressly teaches the same properties achieved by the absence of said laves and chi phases.
Regarding claims 6, 12, and 17, Sato et al. discloses the steel of claims 1, 7, and 13 (see previous). Sato et al. further teaches utilizing the steel for turbine blade parts, which would naturally require the shape of a “preform” as claimed [0020].
Response to Arguments
The previous 102 rejections are withdrawn in view of applicant’s amendments.
Applicant's arguments filed 7/17/2026 regarding the 103 rejections have been fully considered but they are not persuasive.
Applicant argues that specific examples of Sato et al. do not achieve a similar toughness property of impact energy such that the determination of obviousness due to closeness of ranges is not proper. The examiner cannot concur. The specific examples of Sato et al. relied upon by applicant were never relied upon in the previous rejections, and specific examples do not constitute a teaching away from the broader disclosure of the prior art. See MPEP 2123. Since Sato et al. broadly teaches a close Co range and broadly teaches a similar, overlapping toughness property of 20 J or more, the examiner cannot concur.
Applicant then argues that Sato et al. performs high temperature aging (500 to 600 degrees C) which is much higher than the aging of the instant application at 600 degrees F and would therefore form undesirable phases. The examiner cannot concur with applicant’s mere conclusory remarks. Specifically, applicant does not provide any evidence or data to support the aforementioned allegation, such that the examiner cannot concur.
Conclusion
THIS ACTION IS MADE FINAL. 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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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