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 .
DETAILED ACTION
The Applicant has elected Invention | with species 1 (claims 1-8, 11, 12, and 15) for the further prosecution as filed in the response dated 1/2/2026. Claims 9-10, 13-14, and 16 have been withdrawn as non-elected claims; Claims 1-8, 11, 12, and 15 remain for Examination, wherein claim 1 is an independent claim. It is acknowledged of the receipt of the Applicant’s “132 Declaration” filed on 4/29/2026.
Previous Claim Objections/Rejections
Previous objection of claims 1-2 because of informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/29/2026.
Previous rejection of Claim 6 under 35 U.S.C. 103(a) as being unpatentable over Hashimoto et al (US-PG-pub 2019/0345592 A1, listed in IDS filed on 2/28/2025, updated as US 11,136,655 B2, thereafter PG’592) in view of Tatsumori et al (JP S5943851 A, with on-line translation, thereafter JP’851) has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/29/2026 and the Applicant’s “132 Declaration” filed on 4/29/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 4/29/2026, newly recorded reference(s), and reconsideration, new ground rejection has been listed as following:
Allowance Subject matter
Claim 6 includes allowable subject matter.
Claim 6 is still objected to as depending from rejected independent claim(s), but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims in view of the Applicant’s “132 Declaration” filed on 4/29/2026.
Notes: claim 6 is still 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 as listed in the following.
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 1-8, 11, 12, and 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. In the instant claims the limitation of “a high-aluminum austenitic alloy or a high-aluminum austenitic centrifugal casting pipe” (cl.1); and/or the limitation of “the high-aluminum austenitic alloy or the high-aluminum austenitic centrifugal casting pipe” (cl.2-6 and 11-12) include a broad range or limitation together with a narrow range or limitation. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 1-6 and 11-12 recites the broad recitation “high-aluminum austenitic alloy”, and the claim also recites “high-aluminum austenitic centrifugal casting pipe” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. Claims 7-8 and 15 depend on claim 1, they are also rejected. Proper amendments are necessary.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claims 1-5 and 11-12 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hashimoto et al (US-PG-pub 2019/0345592 A1, listed in IDS filed on 2/28/2025, updated as US 11,136,655 B2, thereafter PG’592) in view of Tatsumori et al (JP S5943851 A, with on-line translation, thereafter JP’851).
Regarding claims 1-5 and 11-12, PG’592 teaches a heat-resistant austenite alloy and a reaction tube having excellent oxidation resistance, excellent mechanical properties such as tensile ductility, and weldability (Abstract, par.[0003], and claims of PG’592) manufactured by centrifugally casting (par.[0035] of PG’592). Which reads on the austenitic alloy or austenitic centrifugal casting pipe as claimed in the instant claims. The comparison between the alloy composition ranges disclosed PG’592 (claims and par.[0010]-[0033], [0060]-[0090] of PG’592) and those disclosed in the instant claims are listed in the following table. All of the essential alloy composition ranges disclosed in PG’592 overlap the claimed ranges as recited in the instant claims, which creates prima facie case of obviousness. MEPE 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges including C, Si, Mn, Cr, Ni, Al, Ti, Nb, Mo, W, Re, and Fe and impurities from the disclosure of PG’592 since PG’592 teaches the same austenitic alloy or austenitic centrifugal casting pipe as claimed throughout whole disclosing range. It is noted that PG’592 does not specify the amount ranges of Ta, Zr, N (cl.1-2), and optional elements (cl.3-4). JP’851 teaches a high-strength cast alloy consisting of prescribed percentages of C, Cr, Ni, W, Mo, Ti and Al and the balance Fe with inevitable impurities (Abstract of JP’851). All of the essential alloy composition ranges disclosed by JP’851 (Abstract and claims of JP’851) overlap the claimed alloy composition ranges. MPEP 2144 05 I. JP’851 provides alloy composition with adjustable alloy composition ranges (claims and form (a) on page 298 to (l) on page 300 of JP’851) and specify to add proper amount of Zr, Ta, N, and B in order to improve the alloy properties, which overlaps the claimed ranges of Ta, Zr, N (cl.1-2), and optional elements (including B cl.3-4). MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to add proper amount of Zr, Ta, N, and B as claimed form the disclosure of JP’851 in the alloy of PG’592 since both PG’592 and JP’851 teach the same austenitic casting alloy throughout whole disclosing range and JP’851 specify to add proper amount of Zr, Ta, N, and B in order to improve the alloy properties (claims and form (a) on page 298 to (l) on page 300 of JP’851).
Element
From instant Claims 1-2, (wt.%)
From PG’952 (wt.%)
Overlapping range
(wt.%)
C
0.3-0.7 (cl.1)
0.4-0.65 (cl.2)
0.35-0.7
0.35-0.7 (cl.1)
0.4-0.65 (cl.2)
Mn
0-0.5 (cl.1)
0-0.4 (cl.2)
0-2
0-0.5 (cl.1)
0-0.4 (cl.2)
Si
0-0.5 (cl.1)
0-0.4 (cl.2)
0-1.5
0-0.5 (cl.1)
0-0.4 (cl.2)
Cr
20-26 (cl.1)
22-40
20-26 (cl.1)
Ni
40-50 (cl.1)
25-48.3
40-48.3 (cl.1)
Al
3.5-5 (cl.1)
1.5-4.5
3.5-4.5 (cl.1)
Ti
0.04-0.3 (cl.1)
0.01-0.6
0.04-0.3 (cl.1)
Zr
0.01-0.3 (cl.1)
--
0.001-0.2 (JP’851)
--
0.01-0.2 (JP’851)
Nb
0.1-1 (cl.1)
0.01-2.0
0.1-1 (cl.1)
Ta
0.04-2 (cl.1)
--
0.01-1.5 (JP’851)
--
0.04-1.5 (cl.1) (JP’851)
Mo
0.01-1 (cl.1)
0.2-1 (cl.2)
≤ 0.5
0.01-0.5 (cl.1)
0.2-0.5 (cl.2)
W
0.4-1.9 (cl.1)
≤ 1.0
0.4-1 (cl.1)
N
0.001-0.04 (cl.1)
0.006-0.035 (cl.2)
--
0.005-0.2 (JP’851)
--
0.001-0.04 (cl.1)
0.006-0.035 (cl.2) (JP’851)
Re
0.03-0.3 (cl.1)
0.08-0.3 with Y, Hf, Ce (cl.2)
0.01-0.2 including Hf and Y
0.03-0.2 (cl.1)
0.08-0.2 with Y, Hf, Ce (cl.2)
Fe
Balance + impurities
Balance and impurities
Balance and impurities
From claims 3-4 (wt%)
One or more of
Cu, V, Co, B (cl.3)
Cu: 0.1 or less; (cl.4)
V: 0.0.1 or less; (cl.4)
Co: 0.03 or less; (cl.4)
B: 0.1 or less (cl.4)
B: 0.001-0.20 (JP’851)
Reads on (JP’851)
From claim 5
Impurities including
S, P, O
Impurities
Reads on
From claim 11 (wt%)
Ta
0.4-2
0.01-1.5 (JP’851)
Overlapping:
0.4-1.5 (JP’851)
From claim 12 (wt%)
Impurities
S: 0.005 or less;
P: 0.005 or less;
O: 0.005 or less
Inevitable impurities level less than 0.1 (JP’851)
Overlapping
S: 0.005 or less;
P: 0.005 or less;
O: 0.005 or less
Claims 7-8 and 15 are rejected under 35 U.S.C. 103(a) as being unpatentable over PG’592 in view of JP’851, and further in view of Kunihide et al (JP 2016132019 A, with on-line translation, thereafter JP’019).
Regarding claim 7, PG’592 in view of JP’851 does not specify the pipe dimensions as claimed in the instant claim. JP’019 teaches a welding structure of a heat-resistant pipe capable of suppressing structure embrittlement of a weld peripheral part of a pipe outer surface or intergranular corrosion, and improving oxidation resistance (Abstract of JP’019). The major alloy compositions ranges disclosed by JP’019 (claims of JP’019) overlap the claimed alloy composition ranges. MPEP 2144 05 I. JP’019 specify that the heat-resistant tube 20 has, for example, an outer diameter of 50 mm to 160 mm, a wall thickness of 5 mm to 15 mm (par.[0013] of JP’019), which overlaps the claimed pipe dimensions as claimed in the instant claim. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the pipe dimensions as claimed form the disclosure of JP’019 for the alloy of PG’592 in view of JP’851 since all of PG’592, JP’019, and JP’851 teach the same austenitic casting alloy pipe throughout whole disclosing range.
Regarding claim 8 and 15, the claimed grain features in the instant claims are fully depended on alloy composition and microstructures. Since PG’592 in view of JP’851 and JP’019 teaches the similar alloy compositions with the same austenitic microstructure manufactured by the same centrifugally casting process for the similar dimensions and application, the claimed properties would be highly expected form the alloy of PG’592 in view of JP’851 and JP’019. MPEP 2112 01 and 2145 II.
Notes: Maziasz et al (US-PG-pub 2006/0266439 A1) is cited as reference only.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-8, 11, 12, and 15 have been considered but they are not persuasive. Regarding the amended features as claimed in the instant claims, the Examiner’s position has been stated above.
Regarding the Applicant’s “132 Declaration” filed on 4/29/2026, which has been fully considered it is sufficient to overcome the rejection of claim 6 under 35 U.S.C. 103(a) as being unpatentable over Hashimoto et al (US-PG-pub 2019/0345592 A1, listed in IDS filed on 2/28/2025, updated as US 11,136,655 B2, thereafter PG’592) in view of Tatsumori et al (JP S5943851 A, with on-line translation, thereafter JP’851). However, it is insufficient to overcome the rejections as stated above since the argued properties is not really included in the claims 1-5, 7-8, 11-12, and 15.
The Applicant’s arguments have been summarized as following:
1, the Applicant has shown unexpected result for the claimed alloy composition ranges.
2, The claimed combination of Ti, Ta, and W produces unexpected, non-linear synergistic effects on creep performance with comparison data.
3, Lack of reasonable expectation of success and demonstrated unpredictability.
In response,
Regarding the arguments 1-3, Firstly, it is noted that the argued properties is not really included in the claims 1-5, 7-8, 11-12, and 15. Secondly, regarding the claimed alloy composition ranges in the instant claims 1-5 and 11-12, all of the essential alloy composition ranges disclosed in PG’592 in view of JP’851 overlap the claimed ranges as recited in the instant claims, which creates prima facie case of obviousness. MEPE 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges from the disclosure of PG’592 in view of JP’851 since both PG’592 and JP’851 teach the same austenitic alloy or austenitic steel as claimed throughout whole disclosing range. Finally, Claims 1-8, 11, 12, and 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 as listed above.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIE YANG/Primary Examiner, Art Unit 1734
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