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 .
Status of Claims
Claim 1 is amended. Claims 11 and 15 are cancelled. Claims 4-10, 12-14 and 16-19 are withdrawn. Claims 1-3 and 20-21 are examined herein.
Status of Previous Rejection
The rejections of Claims 1-3 and 20-21 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, have been withdrawn in view of the amendment.
The rejections of claims 1-3 and 20-21 under 35 U.S.C. 103 as being unpatentable over JP’018 (JP 2020-190018) are maintained.
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.
Claims 1-3 and 20-21 are rejected under 35 U.S.C. 103 as being unpatentable over JP’018 (JP 2020-190018).
Regarding claims 1 and 2, JP’018 discloses ([0025] to [0037]) a Fe-Ni alloy with a composition that overlaps the recited composition and it would be obvious to one of ordinary skill in the art to select an amount of each element based on the ranges disclosed in JP’018 to make a Fe-Ni alloy that meet the recited composition in claims 1 and 2. See MPEP 2144.05 I.
Element
Claim 1
(mass %)
JP’018
(mass %)
Overlap
(mass %)
C
0.04-0.15
0.0-0.1
0.04-0.1
Si
0.1-0.35
0.0-1.0
0.1-0.35
Mn
0.5-1.25
0.0-1.0
0.5-1.0
Cu
0.001-0.85
0.0-0.1
0.001-0.1
Ni
36.5-38.5
35-40
36.5-38.5
Fe + impurities
Balance
Balance
Balance
Regarding claim 3, JP’018 discloses that the alloy contains 0.3 wt% or less Cr, 0.1 wt% or less Co, 0.005 wt. % or less S, 0.025 wt. % or less P, 0.5 wt.% or less Mo, 0.1 wt. % or less O, 0.1 wt. % or less Ca, 0.1 wt. % or less Mg and 0.01 wt. % or less Al ([0025] to [0037]), which overlap the recited amount of impurities in claim 3. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. Thus, claim 3 is obvious over JP’018.
Regarding claims 20 and 21, JP’018 discloses a method of making the Fe-Ni alloy comprising forming a melt comprising the disclosed composition; forming the alloy into billets; hot rolling the billets to obtain a hot-rolled plate ([0045] to [0047]), which meets the limitations recited in claims 20 and 21.
Response to Arguments
Applicant's arguments filed 06/17/2026 have been fully considered but they are not persuasive.
First, the applicants argued the case law concerning overlapping ranges typically involves one or perhaps two ranges. When there are five ranges at issue, then the likelihood of a skilled artisan selecting the combination of five claimed ranges from five different ranges in the prior art, becomes vanishingly small. The compositions described in JP'018 overlap the claimed compositions with only a very low percentage of overlap. Multiplying the overlap percentages calculated for each alloying element by one another yields the overlap percentage between the composition described in JP'018 and the claimed composition. This overlap percentage is only 3%, which is very low. Consequently, the claimed compositions result from multiple selections within the ranges described in JP'018, as to which JP '018 provides no guidance. A person of ordinary skill in the art, following the teaching of JP'018, would have had no apparent reason to focus on the combination of sub-ranges defined in present claim 1.
In response, JP’081 discloses a Fe-Ni alloy containing 0.0-0.1 wt.% C, 0-1 wt.% Si, 0-1 wt.% Mn, 0-0.1 wt.% Cu and 35-40 wt. % Ni ([0025] to [0037]), which overlaps the recited amount of C, SI, Mn, Cu and Ni. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 I. The case law applies to multiple ranges, not limited to one or two ranges.
As shown in MPEP 2144.05 I, “the prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997)”. Thus, a prima facie case of obviousness exists even when the overlapping range is small. Since JP’018 discloses ([0025] to [0037]) a Fe-Ni alloy with a composition that overlaps the recited composition, it would be obvious to one of ordinary skill in the art to select an amount of each element based on the ranges disclosed in JP’018 to make a Fe-Ni alloy that meet the recited composition in claim 1.
Second, the applicants argued that none of the actual compositions shown in Table 1 of JP '018 has a composition as claimed in claim 1. To the contrary, all of the compositions shown in Table 1 of JP '018 have Ni, Mn, Cu and C contents outside the claimed sub-ranges. The claimed composition would not have been seriously considered by the skilled artisan from the disclosure of JP'018, since no such composition was highlighted in JP'018, and nothing in JP '018 would have pointed the skilled artisan toward the claimed alloys.
In response, the rejection is over prior arts’ broad disclosure instead of preferred embodiments. See MPEP 2123. In the instance, JP’018 discloses a Fe-Ni alloy containing 0.0-0.1 wt.% C, 0-1 wt.% Si, 0-1 wt.% Mn, 0-0.1 wt.% Cu and 35-40 wt. % Ni without being limited by the examples. Since the amount of C, Si, Mn, Cu and Ni disclosed by JP’018 overlap the recited ranges of each element, a prima facie case of obviousness is established. See MPEP 2144.05 I.
Third, the applicants argued that the present disclosure teaches the criticality of the claimed ranges. It will be recalled that the present application seeks to provide alloys with good mechanical properties at the temperature of liquid hydrogen (-253°C), in combination with a low average coefficient of thermal expansion between 0°C and -196°C. JP '018, in contrast, nowhere seeks to provide alloys having such properties. All of the compositions exemplified in Table 1 of JP '018 have contents of Ni, Mn and C that are lower than the lower limit of the ranges set forth in claim 1. JP '018 teaches only compositions that would fail to meet the physical characteristics of the claimed alloys, and provides no guidance to make the appropriate combination of selections that would result in alloys as claimed.
In response, mechanical properties at the temperature of liquid hydrogen (-253°C) and average coefficient of thermal expansion between 0°C and -196°C are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II and MPEP 2144.05 III.
Claim 1 recites that the amount of Si is 0.1-0.35 wt. %. However, all the examples in Table 1 contain 0.1 wt.% Si. The applicants have not shown that when the Si amount is greater than 0.1 wt.%, good mechanical properties and low thermal expansion coefficient can be obtained. Since the evidence of nonobviousness is not commensurate in scope with the claims, the criticality of claimed composition has not been established and claims 1-3 and 20-21 are obvious over JP’018.
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 Xiaowei Su whose telephone number is (571)272-3239. The examiner can normally be reached 8:00-5:00.
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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