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 on 04/10/2026 has been entered. Claim(s) 1-8 is/are pending in the application.
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.
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.
Claim(s) 1-8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Okada et al. (US20220145429A1).
Regarding Claim 1, Okada teaches a Ni-based powder for powder bed fusion additive manufacturing (abstract) comprising in Mass% [0010]:
Element
Claimed Range
Prior Art Range
Cr
10-16
10-16
Al
4-9
4.5-7.5
Mo
1-6
2.8-6.2
Nb
0.5-4
0.8-4
Ti
0-0.5
0.01-2
Zr
0-0.5
0.01-0.3
C
0.06-0.4
0.01-0.3
B
0-0.04
0.001-0.03
Ni
Balance
Balance
120Nb+650Zr+32Ti-385C
150-270
98-623 (calculated)
The claimed composition overlaps with the claimed range, establishing a prima facie case of obviousness for the claimed invention. (See MPEP 2144.05(I)).
Regarding Claim 2, the claimed range of 0.01-2% overlaps with the claimed range of 0.002-0.2%, the claimed composition overlaps with the claimed range, establishing a prima facie case of obviousness for the claimed invention. (See MPEP 2144.05(I)).
Regarding Claims 3-5 and 7-8, the formed part has dendrites with a spacing (element segregation parts) of 3 microns or less [0025] encompassing the claimed range of 200 nm or less; but is silent regarding the dendrite width of 5 microns or less. However, as the prior art invention is made by a similar powder bed fusion scanning method with a laser [0036], one of ordinary skill in the art would have expected the dendrites to have a similar width on the same scale as the dendrite spacing and as claimed under the expectation that products made by similar methods have similar properties. (See MPEP 2112.01(I)), and would have similar concentrations of Cr, Mo, Nb and Zr as claimed in claims 4 and 8.
Regarding Claim 6, the claimed range of 0.01-2% overlaps with the claimed range of 0.002-0.2%, the claimed composition overlaps with the claimed range, establishing a prima facie case of obviousness for the claimed invention. (See MPEP 2144.05(I)).
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive.
Applicant rebuts the prima facie case of obviousness for the overlapping ranges, by arguing that inventive examples Alloys B and H, have an index within the claimed range of 15-270 and exhibit no cracking, where Alloys A, C, and E have an index exceeding 270 and exhibit cracking. This is however not persuasive. The data that applicant relies on, appears to show that an index above 282 forms undesired cracks (See Table 1 below)
PNG
media_image1.png
326
597
media_image1.png
Greyscale
The prior art broadly teaches a composition, with a calculated index range of 98-623; an overlapping range of 98-282 is considered significant; for this critical property which appears to present in around 35% of the prior art range. Since so much of the prior art lies in the alleged critical range, a significant amount of the prior art is also considered to have the alleged unexpected property.
Applicant argues example 1 of Okada teaches away from claimed subject matter of the crack susceptibly index, since the calculated index of example 1 is 303, outside of the claimed range of 150-270; this is not considered persuasive. Prior art is relevant for all that it teaches, preferred embodiments and disclosed examples are not considered to teach away from a broad disclosure in the prior art (See MPEP 2123)
Applicant further argues that inherency cannot be used for the microstructural features of claim 3; as these are distinct physical parameters where the crack susceptibility index is critical for this property, and again points to example 1 of the prior art having a range that lies outside of the claimed range for the crack index. However, since the prior art broadly teaches a similar composition, a similar crack index range, and method of making the product, one of ordinary skill in the art would expect this claimed property to be similar to that of the claimed invention.
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.
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/RICARDO D MORALES/Primary Examiner, Art Unit 1738
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