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 the Claims
Claims 1-20 are pending wherein claims 1, 8, 10-11, 13-15 and 18 are amended.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 2-3, 11 and 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for a nickel base alloy having a gamma phase and a gamma prime phase, does not reasonably provide enablement for obtaining a nickel base alloy that is “substantially devoid of Eta phase such that the Eta phase is less than 1%” or a “volume fraction of gamma prime is greater than 62%”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims. The specification does not sufficiently guide one of ordinary skill of in the art how to process and/or heat treat the nickel base alloy in order to avoid or substantially avoid the presence of the eta phase such that it would be less than 1%. The specification also does not sufficiently guide one of skill in the art as to the temperature and time of heat treatment that would provide the claimed level of gamma prime phase as the gamma prime phase not only relies on composition, but also at least time, temperature and perhaps even the treatment pressure.
The Scope/Breadth of the Claims:
The claims at issue recite that the nickel base alloys and a method of making nickel base alloys that are substantially devoid of eta phase (i.e. having less than about 1% eta phase as set forth in [0015-0017] of the specification and that the gamma prime phase is greater than 62%.
The Nature of the Invention:
Nickel base alloys and a method of making nickel base alloys that are substantially devoid of eta phase such that the eta phase is less than 1% and having more than 62% gamma prime phase, which can involve a particular combination of alloy composition in addition to particular heat treatment settings (time, temperature, pressure). In re Fisher, 427 F.2d 833, 838-39, 166 USPQ 1823-1824 (CCPA 1970) (“In cases involving unpredictable factors, such as most chemical reactions and physiological activity, the scope of enablement varies inversely with the degree of unpredictability of the factors involved.”) and In re Bowen, 492 F.2d 859, 861-864, 181 USPQ 48, 50-52 (CCPA 1974) (section 112 requires that the scope of the claims must bear a reasonable correlation to the scope of enablement provided by the specification to persons of ordinary skill in the art).
The State of the Art:
Methods of producing nickel base alloys with γ with γ’ and/or γ” phase are known, but as evidenced by Goodfellow et al. (Gamma Prime Precipitate Evolution During Aging of a Model Nickel-Based Superalloy) which pertains to the heat treatment of a nickel base alloy having 6 weight percent aluminum, 5 weight percent titanium, 15 weight percent chromium and 5 weight percent molybdenum (Table 1), a volume fraction of γ’ increased from 37%±1% after 1 hour of aging to 46%±3% after 1000 hours of aging (page 720 right column) and in Shingledecker et al. (The Role of Eta Phase Formation on the Creep Strength and Ductility of Inconel Alloy 740 at 1023 K (750°C), the eta phase began to form after 1020.2 hours of heat treating at 750°C (page 1905, left column and Figure 5) and the specification provides no guidance as to the time/temperature/pressure needed to provide the claimed γ’ phase or the time needed to avoid substantial presence of the eta phase such that it would be less than 1%.
The Relative Skill in the Art:
Those in the nickel base alloy making art.
The Amount of Direction or Guidance Present:
Discloses the general manufacturing steps for metals and alloys including additive manufacturing, welding, coating, machining or the like and manufacturing may entail any time, temperature and pressure [0036] in combination with polishing, peening, cladding, coating or the like [0037]. There are no examples present that provide the time, temperature and pressure conditions associated with a nickel base alloy that is substantially devoid of eta phase and more than 62% γ’ phase.
The Predictability or Unpredictability of the Art:
Could be predictable or unpredictable.
The Presence or Absence of Working Examples:
No Working Examples are present.
The Quantity of Experimentation Needed:
Could be “undue”. The presence of a number of variables (i.e. what alloy, what time, temperature and pressure are associated with the avoiding substantial formation of an eta phase and providing more than 60% γ’ phase which is not enough to create a heightened requirement of disclosure to satisfy the enablement requirement of section 112. See In re Fisher, 427 F.2d 833, 839 (166 USPQ 18) (CCPA 1970). One must inquire whether one of skill in the art would be to conduct undue experimentation.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Yoshinari et al. (EP 0 637 476 A1).
In regard to claims 1 and 10, Yoshinari et al. (EP ‘476) discloses nickel base alloys that would be used to make gas turbine blades (hot gas path components) having compositions relative to that of the instant invention as set forth below (page 4).
Element
Instant Claim
(weight percent)
Yoshinari et al. (EP ‘476)
(weight percent)
Overlap
Cr
13.7 – 14.3
5 – 14
13.7 – 14
Co
9 – 9.9
0 – 10
9 – 9.9
Al
4 – 5.5
4 – 7
4 – 5.5
Ti
0.5 – 3
0.5 – 5
0.5 – 3
W
3.5 – 5
2 – 15
3.5 – 5
Mo
1.4 – 4
0 – 6
1.4 – 4
Nb
3.25 – 4.2
0 – 3
-
C
0.08 – 0.12
0 – 0.2
0.08 – 0.12
Zr
0.005 – 0.04
0 – 0.035
0.005 – 0.035
B
0.01 – 0.014
0 – 0.035
0.01 – 0.014
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron for the nickel base alloys disclosed by Yoshinari et al. (EP ‘476) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron from the amounts disclosed by Yoshinari et al. (EP ‘476) because Yoshinari et al. (EP ‘476) discloses the same utility throughout the disclosed ranges.
With respect to the claimed range of niobium in claim 1, 3 weight percent niobium as disclosed by Yoshinari et al. (EP ‘476) would be close enough to 3.25 weight percent as claimed to establish prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “has a microstructure substantially devoid of Eta phase such that the Eta phase is less than 1%” in claim 2 and “wherein the gas turbine components has a microstructure substantially devoid of Eta phase” in claim 11, Yoshinari et al. (EP ‘476) does not disclose or suggest forming the eta phase and discloses a substantially similar composition. Therefore, a lack of the eta phase would be expected.
With respect to the recitation “wherein a volume fraction of gamma prime is greater than 62%” in claim 3, Yoshinari et al. (EP ‘476) discloses a substantially similar composition in addition to aging to precipitate the gamma prime phase (page 7). Therefore a volume fraction of gamma prime greater than 62% would be expected. MPEP 2112.01 I.
In regard to claim 4, Yoshinari et al. (EP ‘476) discloses 4 to 7 weight percent aluminum, which encompasses the range of the instant invention (page 4).
In regard to claim 5, Yoshinari et al. (EP ‘476) discloses 0.5 to 5 weight percent titanium, which encompasses the range of the instant invention (page 4).
In regard to claim 6, Yoshinari et al. (EP ‘476) discloses 2 to 15 weight percent tungsten, which encompasses the range of the instant invention (page 4).
In regard to claim 7, Yoshinari et al. (EP ‘476) discloses 0 to 3 weight percent niobium, which overlaps the range of the instant invention (page 4). MPEP 2144.05 I.
In regard to claim 8, Yoshinari et al. (EP ‘476) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (page 4).
Element
Instant Claim
(weight percent)
Yoshinari et al. (EP ‘476)
(weight percent)
Overlap
Cr
13.9 – 14.1
5 – 14
13.9 – 14
Co
9.25 – 9.75
0 – 10
9.25 – 9.75
Al
4.25 – 5.3
4 – 7
4.25 – 5.3
Ti
1 – 2
0.5 – 5
1 – 2
W
3.75 – 4.9
2 – 15
3.75 – 4.9
Mo
1.5 – 3
0 – 6
1.5 – 3
Nb
3.25 – 4
0 – 3
-
C
0.09 – 0.11
0 – 0.2
0.09 – 0.11
Zr
0.01 – 0.03
0 – 0.035
0.01 – 0.03
B
0.011 – 0.013
0 – 0.035
0.011 – 0.013
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron for the nickel base alloys disclosed by Yoshinari et al. (EP ‘476) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron from the amounts disclosed by Yoshinari et al. (EP ‘476) because Yoshinari et al. (EP ‘476) discloses the same utility throughout the disclosed ranges.
With respect to the claimed range of niobium in claim 8, 3 weight percent niobium as disclosed by Yoshinari et al. (EP ‘476) would be close enough to 3.25 weight percent as claimed to establish prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “wherein a weight percent of aluminum (Al) with respect to a weight percent of titanium (Ti) is Al = -0.5*Ti +5.5±0.05” in claims 9 and 12, since Yoshinari et al. (EP ‘476) discloses alloys such as those containing 1 weight percent titanium and 5 weight percent aluminum, Yoshinari et al. (EP ‘476) would read on the claim.
In regard to claims 13 and 20, Yoshinari et al. (EP ‘476) discloses a method of forming nickel base alloys that would be used to make gas turbine blades (hot gas path components) including casting and heat treating having compositions relative to that of the instant invention as set forth below (page 4 and page 7).
Element
Instant Claim
(weight percent)
Yoshinari et al. (EP ‘476)
(weight percent)
Overlap
Cr
13.7 – 14.3
5 – 14
13.7 – 14
Co
9 – 9.9
0 – 10
9 – 9.9
Al
4 – 5.5
4 – 7
4 – 5.5
Ti
0.5 – 3
0.5 – 5
0.5 – 3
W
3.5 – 5
2 – 15
3.5 – 5
Mo
1.4 – 4
0 – 6
1.4 – 4
Nb
3.25 – 4.2
0 – 3
-
C
0.08 – 0.12
0 – 0.2
0.08 – 0.12
Zr
0.005 – 0.04
0 – 0.035
0.005 – 0.035
B
0.01 – 0.014
0 – 0.035
0.01 – 0.014
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron for the nickel base alloys disclosed by Yoshinari et al. (EP ‘476) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron from the amounts disclosed by Yoshinari et al. (EP ‘476) because Yoshinari et al. (EP ‘476) discloses the same utility throughout the disclosed ranges.
With respect to the claimed range of niobium in claim 13, 3 weight percent niobium as disclosed by Yoshinari et al. (EP ‘476) would be close enough to 3.25 weight percent as claimed to establish prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “wherein the composition has a structure substantially devoid of Eta phase such that the Eta phase is less than about 1%” in claim 14, Yoshinari et al. (EP ‘476) does not disclose or suggest forming the eta phase and discloses a substantially similar composition. Therefore, a lack of the eta phase would be expected.
With respect to the recitation “wherein a volume fraction of gamma prime is greater than 62%” in claim 15, Yoshinari et al. (EP ‘476) discloses a substantially similar composition in addition to aging to precipitate the gamma prime phase (page 7). Therefore, a volume fraction of gamma prime greater than 60% would be expected. MPEP 2112.01 I.
In regard to claim 16, Yoshinari et al. (EP ‘476) discloses 4 to 7 weight percent aluminum, which encompasses the range of the instant invention (page 4).
In regard to claim 17, Yoshinari et al. (EP ‘476) discloses 0.5 to 5 weight percent titanium, which encompasses the range of the instant invention (page 4).
In regard to claim 18, Yoshinari et al. (EP ‘476) discloses a method of forming nickel base alloys that would be used to make gas turbine blades (hot gas path components) including casting and heat treating having compositions relative to that of the instant invention as set forth below (page 4 and page 7).
Element
Instant Claim
(weight percent)
Yoshinari et al. (EP ‘476)
(weight percent)
Overlap
Cr
13.9 – 14.1
5 – 14
13.9 – 14
Co
9.25 – 9.75
0 – 10
9.25 – 9.75
Al
4.25 – 5.3
4 – 7
4.25 – 5.3
Ti
1 – 2
0.5 – 5
1 – 2
W
3.75 – 4.9
2 – 15
3.75 – 4.9
Mo
1.5 – 3
0 – 6
1.5 – 3
Nb
3.25 – 4
0 – 3
-
C
0.09 – 0.11
0 – 0.2
0.09 – 0.11
Zr
0.01 – 0.03
0 – 0.035
0.01 – 0.03
B
0.011 – 0.013
0 – 0.035
0.011 – 0.013
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron for the nickel base alloys disclosed by Yoshinari et al. (EP ‘476) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, carbon, zirconium and boron from the amounts disclosed by Yoshinari et al. (EP ‘476) because Yoshinari et al. (EP ‘476) discloses the same utility throughout the disclosed ranges.
With respect to the claimed range of niobium in claim 18, 3 weight percent niobium as disclosed by Yoshinari et al. (EP ‘476) would be close enough to 3.25 weight percent as claimed to establish prima facie evidence of obviousness. MPEP 2144.05 I.
With respect to the recitation “wherein a weight percent of aluminum (Al) with respect to a weight percent of titanium (Ti) is Al = 0.5*Ti +5.5±0.05” in claim 19, since Yoshinari et al. (EP ‘476) discloses alloys such as those containing 1 weight percent titanium and 5 weight percent aluminum, Yoshinari et al. (EP ‘476) would read on the claim.
Claims 1-2, 4-8, 10-11, 13-14, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Barker et al. (US 3,576,681).
In regard to claims 1 and 10, Barker et al. (‘681) discloses nickel base alloys that would be used to make gas turbine components (hot gas path components) having compositions relative to that of the instant invention as set forth below (column 1, lines 20-50 and column 3).
Element
Instant Claim
(weight percent)
Barker et al. (‘681)
(weight percent)
Overlap
Cr
13.7 – 14.3
13 – 16
13.7 – 14.3
Co
9 – 9.9
5 – 16
9 – 9.9
Al
4 – 5.5
3 – 4
4
Ti
0.5 – 3
2 – 3
2 – 3
W
3.5 – 5
3 – 5
3.5 – 5
Mo
1.4 – 4
3 – 5
3 – 4
Nb
3.25 – 4.2
3 – 5
3.25 – 4.2
C
0.08 – 0.12
0.1 – 0.2
0.1 – 0.12
Zr
0.005 – 0.04
0.01 – 0.1
0.01 – 0.04
B
0.01 – 0.014
0.01 – 0.02
0.01 – 0.014
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron for the nickel base alloys disclosed by Barker et al. (‘681) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron from the amounts disclosed by Barker et al. (‘681) because Barker et al. (‘681) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “has a microstructure substantially devoid of Eta phase such that the Eta phase is less than 1%” in claim 2 and “wherein the gas turbine components has a microstructure substantially devoid of Eta phase such that the Eta phase is less than about 1%” in claim 11, Barker et al. (‘681) does not disclose or suggest forming the eta phase and discloses a substantially similar composition. Therefore, a lack of the eta phase would be expected.
In regard to claim 4, Barker et al. (‘681) discloses 3 to 4 weight percent aluminum, which would be close enough to the claimed 4.25 weight percent aluminum to establish prima facie obviousness. MPEP 2144.05 I. Alternatively, Barker et al. (‘681) identifies aluminum and titanium as strengthening elements based on the aluminum concentration as result effective in stabilizing the cubic structure and it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to modify the aluminum content as a result-effective variable in terms of strength and cubic structure stabilization (column 2). MPEP 2144.05 II.
In regard to claim 5, Barker et al. (‘681) discloses 2 to 3 weight percent titanium, which overlaps the ranges of the instant invention (column 3). MPEP 2144.05 I.
In regard to claim 6, Barker et al. (‘681) discloses 3 to 5 weight percent tungsten, which encompasses the range of the instant invention.
In regard to claim 7, Barker et al. (‘681) 3 to 5 weight percent niobium, which overlaps the range of the instant invention (column 3). MPEP 2144.05 I.
In regard to claim 8, Barker et al. (‘681) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (column 1, lines 20-50 and column 3).
Element
Instant Claim
(weight percent)
Barker et al. (‘681)
(weight percent)
Overlap
Cr
13.9 – 14.1
13 – 16
13.9 – 14.1
Co
9.25 – 9.75
5 – 16
9.25 – 9.75
Al
4.25 – 5.3
3 – 4
-
Ti
1 – 2
2 – 3
2
W
3.75 – 4.9
3 – 5
3.75 – 4.9
Mo
1.5 – 3
3 – 5
3
Nb
3.25 – 4
3 – 5
3.25 – 4
C
0.09 – 0.11
0.1 – 0.2
0.1 – 0.11
Zr
0.01 – 0.03
0.01 – 0.1
0.01
B
0.011 – 0.013
0.01 – 0.02
0.011 – 0.013
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, titanium, tungsten, molybdenum, carbon, zirconium and boron for the nickel base alloys disclosed by Barker et al. (‘681) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, titanium, tungsten, molybdenum, carbon, zirconium and boron from the amounts disclosed by Barker et al. (‘681) because Barker et al. (‘681) discloses the same utility throughout the disclosed ranges.
With respect to the claimed range of aluminum in claim 8, Barker et al. (‘681) discloses 3 to 4 weight percent aluminum, which would be close enough to the claimed 4.25 weight percent aluminum to establish prima facie obviousness. MPEP 2144.05 I. Alternatively, Barker et al. (‘681) identifies aluminum and titanium as strengthening elements based on the aluminum concentration as result effective in stabilizing the cubic structure and it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to modify the aluminum content as a result-effective variable in terms of strength and cubic structure stabilization (column 2). MPEP 2144.05 II.
In regard to claims 13 and 20, Barker et al. (‘681) discloses a method of forming nickel base alloys that would be used to make gas turbine components (hot gas path components) including casting and heat treating having compositions relative to that of the instant invention as set forth below (column 1, lines 20-50 and column 3).
Element
Instant Claim
(weight percent)
Barker et al. (‘681)
(weight percent)
Overlap
Cr
13.7 – 14.3
13 – 16
13.7 – 14
Co
9 – 9.9
5 – 16
9 – 9.9
Al
4 – 5.5
3 – 4
4
Ti
0.5 – 3
2 – 3
2 – 3
W
3.5 – 5
3 – 5
3.5 – 5
Mo
1.4 – 4
3 – 5
3 – 4
Nb
3.25 – 4.2
3 – 5
3.25 – 4.2
Element
Instant Claim
(weight percent)
Barker et al. (‘681)
(weight percent)
Overlap
C
0.08 – 0.12
0.1 – 0.2
0.1 – 0.12
Zr
0.005 – 0.04
0.01 – 0.1
0.01 – 0.04
B
0.01 – 0.014
0.01 – 0.02
0.01 – 0.014
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron for the nickel base alloys disclosed by Barker et al. (‘681) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, aluminum, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron from the amounts disclosed by Barker et al. (‘681) because Barker et al. (‘681) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the composition has a structure substantially devoid of Eta phase such that the Eta phase is less than about 1%” in claim 14, Barker et al. (‘681) does not disclose or suggest forming the eta phase and discloses a substantially similar composition. Therefore, a lack of the eta phase would be expected.
In regard to claim 16, Barker et al. (‘681) discloses 3 to 4 weight percent aluminum, which would be close enough to the claimed 4.25 weight percent aluminum to establish prima facie obviousness. MPEP 2144.05 I. Alternatively, Barker et al. (‘681) identifies aluminum and titanium as strengthening elements based on the aluminum concentration as result effective in stabilizing the cubic structure and it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to modify the aluminum content as a result-effective variable in terms of strength and cubic structure stabilization (column 2). MPEP 2144.05 II.
In regard to claim 17, Barker et al. (‘681) discloses 2 to 3 weight percent titanium, which overlaps the ranges of the instant invention (column 3). MPEP 2144.05 I.
In regard to claims 18 and 20, Barker et al. (‘681) discloses a method of forming nickel base alloys that would be used to make gas turbine components (hot gas path components) including casting and heat treating having compositions relative to that of the instant invention as set forth below (column 1, lines 20-50 and column 3).
Element
Instant Claim
(weight percent)
Barker et al. (‘681)
(weight percent)
Overlap
Cr
13.9 – 14.1
13 – 16
13.9 – 14.1
Co
9.25 – 9.75
5 – 16
9.25 – 9.75
Al
4.25 – 5.3
3 – 4
-
Ti
1 – 2
2 – 3
2
W
3.75 – 4.9
3 – 5
3.75 – 4.9
Mo
1.5 – 3
3 – 5
3
Nb
3.25 – 4
3 – 5
3.25 – 4
C
0.09 – 0.11
0.1 – 0.2
0.10 – 0.11
Zr
0.01 – 0.03
0.01 – 0.1
0.01 – 0.03
B
0.011 – 0.013
0.01 – 0.02
0.011 – 0.013
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron for the nickel base alloys disclosed by Barker et al. (‘681) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of chromium, cobalt, titanium, tungsten, molybdenum, niobium, carbon, zirconium and boron from the amounts disclosed by Barker et al. (‘681) because Barker et al. (‘681) discloses the same utility throughout the disclosed ranges.
Response to Arguments
Applicant's arguments filed March 18, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the resulting composition recited in the independent claims being substantially devoid of Eta phase or having a volume fraction of gamma prime greater than 62% would not require undue experimentation because it is a result of the composition and claims 2-3, 11 and 14-15 meet the enablement requirement and requests the rejection be withdrawn.
In response, the Examiner notes that the specification fails to provide any specific method steps to that would guide one having ordinary skill in the art to provide an Eta phase less than about 1% and/or a volume fraction of greater than 62% and therefore there would not be a sufficient disclosure to provide the claimed alloy.
Second, the Applicant primarily argues that claims 1, 10 and 13 are amended to recite “3.25% to 4.2% niobium (Nb)” and Yoshinari et al. (EP ‘476) only provides for “up to 3% Nb”.
In response, 3 weight percent niobium as disclosed by Yoshinari et al. (EP ‘476) would be close enough to 3.25 weight percent as claimed to establish prima facie evidence of obviousness. MPEP 2144.05 I.
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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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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