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 .
Response to Amendment
The Amendment filed 27 February 2026 has been entered. Claims 1-17 remain pending in the application. Applicant's amendments to the claims have overcome the 112(b) rejections previously set forth in the Non-Final Rejection mailed 28 November 2025.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-17 are rejected under 35 U.S.C 103 as being unpatentable over US 2012301347 A1 of Brady.
Brady discloses an austenitic stainless steel in comparison to the claimed composition as shown in Table A below.
Table A
Element
Claim 1, 16, 17 Limitation (wt%)
Brady (wt%) Claim 1
Carbon
0.4-0.6
0.15-0.5
Chromium
16-18
10-25
Nickel
18-23
8-37
Aluminum
3.5-5.5
2.5-5
Boron
0.005-0.15
0-0.15
Molybdenum
0-1.5
0-3
Cobalt
0-2
0-3
Tungsten
0-1
0-1
Copper
0-3
0-3
Manganese
0-4
0-1.5
Silicon
0-2
0-2
Titanium + Vanadium
0-0.5
0-0.3
Nitrogen
0-0.06
0-0.3
Y, La, Ce, Hf, Zr
0-1
0-1
Iron
Balance
Balance
Phosphorus
0-0.05
Niobium + Tantalum
0.4-0.59
0.6-2.5
Brady discloses overlapping ranges for C, Cr, Ni, Al, B, Mo, Co, W, Cu, Mn, Si, Ti + V, N, (Y, La, Ce, Hf, Zr), and Fe. While the instant application is silent on the inclusion of P, Brady discloses a range of 0-0.05% P, which means it is an optional limitation. As noted above, it is not clear what is meant by the claim phrase pertaining to “Nb + Ta”, see the 112(b) rejection above. For the purposes of applying prior art this will be interpreted as encompassing the combined wt% of Niobium and Tantalum. While Brady does not disclose a range of 0.4-0.59% for the combined wt% of Niobium and Tantalum, Brady discloses a range of 0.6-2.5% and it would be obvious to select an amount within that range, such as 0.6, and this amount would be considered to be so close that one of ordinary skill would expect 0.59% and 0.6% to have the same or very similar properties. This is shown in Brady which notes that additions of Nb or Ta are necessary for alumina-scale formation, and that too much Nb or Ta will negatively affect creep properties by promoting δ-Fe and brittle second phases. (Brady, Para. [0074]) Similarly, the instant application also discloses that additions of Nb or Ta are necessary for alumina-scale formation, and that too much Nb or Ta will negatively affect creep properties by promoting δ-Fe and brittle second phases. Para. [0084]. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.38% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."), see MPEP § 2144.05(I). Claims 2-15 are also rejected as they depend on Claim 1.
Claims 2-15 all depend on claim 1 and they do not further limit the composition of the alloy. All limitations not inherent from claim 1 involve physical properties. For example, creep rupture life (claim 2), yield strength (claims 3,4), ultimate tensile strength (claims 5,6), mass gain (claims 7,8), atomic ratio (claims 9,10), equilibrium mole % of carbides (claims 11,12,13), change in mole % of carbides (claims 14,15). While brady does not mention these properties, one of ordinary skill would expect a material of the same composition to result in a product with the same physical properties. “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.” ln re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I).
Claim 16 and 17 differ from claim 1 in that they use the transitional phrases “consists essentially of” and “consists of” instead of “comprising”. “Consists essentially of” limits the scope of the claim to the specified materials or steps “and those that do not materially affect the basic and novel characteristics” of the claimed invention. “Consists of” excludes any element, step, or ingredient not specified in the claim, see MPEP § 2111.03. The prior art reference, US 2012301347 A1 of Brady, discloses overlapping ranges or prima facia obvious ranges for all of the limitations cited in claim 16 and 17, see Table A above. While the instant application is silent on the inclusion of P, Brady discloses a range of 0-0.05% P, which makes it an optional limitation. Additionally, claims 16 and 17 of the instant application recite microstructure limitations, “and wherein said alloy forms an external continuous scale comprising alumina to at least 900 °C in air with 10% H20, and a stable essentially single-phase FCC austenitic matrix microstructure, said austenitic matrix being essentially delta-ferrite free and essentially BCC- phase-free, with creep rupture life in excess of 500 h at 900 °C and 50 MPa.” Brady discloses the same microstructural limitations, “and wherein said alloy forms an external continuous scale comprising alumina, and a stable essentially single-phase FCC austenitic matrix microstructure, said austenitic matrix being essentially delta-ferrite free and essentially BCC-phase-free”. While Brady is silent on the temperature, humidity and creep rupture life specified in the instant application, one of ordinary skill would expect a material of the same composition to result in a product with the same microstructural properties. “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.” ln re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (emphasis added), see MPEP § 2112.01(I). Thus, the prior art reads on all limitations of the claims.
Response to Arguments
Applicant's arguments filed 27 February 2026 have been fully considered but they are not persuasive. In support of the patentability of Applicant’s claims, Applicant has submitted the declaration of Michael P. Brady who is also an inventor of the claimed invention.
Brady argues that (remarks, pages 2-7) a prima facie case of obviousness has not been established between the claimed invention and US2012/0301347 (also labeled as “Brady” but should be labeled as “Muralidharan,” and so hereafter will be referred to as “Muralidharan”). Brady asserts that the combined weight of Nb + Ta falls below that of Muralidharan and because claim 1 of the instant application recites that said alloy forms an external continuous scale comprising alumina to at least 900 -°C with creep rupture life in excess of 500 h at 900 °C and 50 MPa, the instant invention would not be found obvious in view of Muralidharan, as Muralidharan claims scale formation but not specifically above 900 °C.
This is not found persuasive as external scale formation and creep rupture life are physical properties of the AFA alloy, and in paragraph 13 of the declaration, Brady states that one of ordinary skill in the art may expect (correctly) similar properties for an AFA alloy containing 0.59 wt% vs 0.6 wt% Nb if all other alloy constituent levels are the same. Since all other alloy constituent levels are obvious in view Muralidharan, and Brady admits that the alloys containing 0.59 wt% and 0.6 wt% Nb would have similar properties, scale formation and oxidation resistance would necessarily be expected to be be present in both the claimed invention and that of Muralidharan regardless of the temperature claimed. 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, see MPEP 2112.01.
Brady also argues that (remarks, page 7) the instant invention would not be obvious in view of Muralidharan because one of ordinary skill in that art would recognize that AFA composition ranges are necessary but not sufficient to achieve an inventive alloy and that further balancing of multiple alloying element levels must also be done to achieve alumina scale formation and oxidation resistance. This is not found persuasive because Muralidharan discloses overlapping ranges for all alloying elements of the claimed invention other than Nb, and a bordering range for Nb. Muralidharan discloses that Additions of Nb or Ta are necessary for alumina-scale formation. Too much Nb or Ta will negatively affect creep properties by promoting δ-Fe and brittle second phases, Para[0074]. In paragraph 0084 of the instant specifications, applicant also discloses that Additions of Nb or Ta are necessary for alumina-scale formation. Too much Nb or Ta will negatively affect creep properties by promoting 5-Fe and brittle second phases. Therefore, the range of Nb + Ta taught by Muralidharan would be expected to produce the same properties as the claimed range for Nb + Ta. This means that any further balancing of multiple alloying elements within the claimed ranges would be encompassed by the compositional ranges disclosed in Muralidharan.
Brady argues that (remarks, page 7) one of ordinary skill would not expect that lower cost AFA compositions with less than 1 wt% Nb, and certainly not at 0.6 wt% down to 0.4 wt% Nb, as well as with less than 25 wt% Ni, would be able to form protective alumina and exhibit oxidation resistance at 900-1000°C. Examiner asserts that Muralidharan teaches that the alloy forms an external continuous scale when exposed to oxidizing conditions from about 500-1000° C, Para[0151]. This overlaps with the claimed range of at least 900°C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Therefore, one of ordinary skill in the art would expect external continuous scale formation above the claimed temperature of 900°C.
Examiner’s Note
As a courtesy to applicant, the examiner notes that US patent 8,431,072 was recently viewed and the instant claims would be subject to the appropriate double patenting rejections.
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 JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733
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