Detailed Office Action
Notice of Pre-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 Amendments
The amendment filed on 06/03/26 has been entered. The amendment finds support in the specification and original claim set. Claims 1 – 13 and 16 – 20 remain pending and under examination.
The amendment to claim 1 has overcome the previous rejection of claims 7 – 8 under 112(b) and 112(d).
Claim Rejections – U.S.C. § 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 – 13 and 19 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.
Regarding claims 1 – 13, the phrase “optionally” in claim 1 in combination with other ranges such as the range of carbon, is indefinite. To clarify, the broadest reasonable interpretation of “less than about 0.25 wt% carbon” would include 0%. However, multiple other elements include the word “optional” next to them (which clearly includes 0%). As such, it is not clear whether the absence of “optionally” with the ranges of carbon and titanium is meant to indicate that they are required to be present down ~0%, or whether they are still optional elements. For purposes of examination, the latter interpretation is taken.
Regarding claim 19, the claim is rejected on the basis that it contains an improper Markush grouping of alternatives. See In re Harnisch, 631 F.2d 716, 721-22 (CCPA 1980) and Ex parte Hozumi, 3
USPQ2d 1059, 1060 (Bd. Pat. App. & Int. 1984). A Markush grouping is proper if the alternatives defined by the Markush group (i.e., alternatives from which a selection is to be made in the context of a combination or process, or alternative chemical compounds as a whole) share a "single structural similarity" and a common use. A Markush grouping meets these requirements in two situations.
First, a Markush grouping is proper if the alternatives are all members of the same recognized physical or chemical class or the same art-recognized class, and are disclosed in the specification or known in the art to be functionally equivalent and have a common use.
Second, where a Markush grouping describes alternative chemical compounds, whether by words or chemical formulas, and the alternatives do not belong to a recognized class as set forth above, the members of the Markush grouping may be considered to share a "single structural similarity" and common use where the alternatives share both a substantial structural feature and a common use that flows from the substantial structural feature. (MPEP § 2117)
To this, the Markush grouping of "techniques selected from the group consisting of welding,
additive manufacturing, metal casting, coating, repairing, powder metallurgy, and combinations
thereof" is improper because the alternatives defined by the Markush grouping do not share
both a single structural similarity and a common use. Specifically, a structural similarity.
Additionally, the usage of both product-by-process language in combination with Markush language is indefinite because it fails to clearly set forth the metes and bounds of the structure of the article required. That is, it is not clear where the metes and bounds of the article (which is not limited to specific method steps but structure derived therefrom) are set because of using a markush grouping that does not share a single structural similarity.
To overcome this rejection, Applicant may set forth each alternative (or grouping of patentably indistinct alternatives) within an improper Markush grouping in a series of independent or dependent claims and/or present convincing arguments that the group members recited in the alternative within a single claim in fact share a single structural similarity as well as a common use.
Claim Rejections – U.S.C. §103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 4 – 5, 7, 9 – 11, 13, 16 – 19 are rejected under 35 U.S.C. 103 as being unpatentable over Cui (US 10,640,849, cited with the IDS of 11/05/25)
Regarding claims 1 and 4 – 5, Cui teaches a nickel-based superalloy composition and articles therefrom [Title]. The composition is [Table 1, abstract]:
Element
Claimed Invention (wt%)
US 10,640,849 (wt%)
Relationship
Chromium (Cr)
About 17 – about 20%
About 16 – about 20%
Overlaps
Aluminum (Al)
About 4% - about 10%
About 4% - about 6% (claim 4)
About 4% - about 5.9% (claim 5)
Greater than 6 – about 10%
Falls within
Overlaps
Overlaps
(endpoints)
Iron (Fe)
About 1.95% - about 2.5%
About 2 – about 10%
Overlaps
Yttrium (Y)
Less than about 0.03%
Less than about 0.04%
Overlaps
Cobalt (Co)
About 10% - about 14%
Less than about 12%
Overlaps
Manganese (Mn)
Less than about 0.5%
Less than about 1%
Overlaps
Molybdenum (Mo)
About 1% - about 7%
Less than about 1%
Overlaps (endpoints)
Silicon (Si)
Less than about 0.3%
Less than about 1%
Overlaps
Carbon (C)
Less than about 0.25%
Less than about 0.25%
Falls within
Boron (B)
About 0.015%
Less than about 0.03%
Overlaps
Tungsten (W)
Less than about 0.5%
Less than about 1.0%
Overlaps
Tantalum (Ta)
Less than about 0.35%
Less than about 1.0%
Overlaps
Titanium (Ti)
Less than about 0.6%
Less than about 0.5%
Overlaps
Zirconium (Zr)
Less than about 0.7%
Not required/present
Meets
Niobium (Nb)
Less than about 0.85%
Not required/present
Meets
Nickel (Ni)
Balance
Balance
Meets
*shaded indicates optional
* Cui does not require any element that is not listed in composition of claim 1.
Regarding claim 7, Cui teaches the invention as applied in claim 1. Cui teaches that the boron content is less than about 0.03wt% [Table 1, Abstract], which overlaps with the claimed range of claim 7.
“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)” (MPEP 2144.05 I).
Regarding claims 9 – 11, Cui teaches the invention as applied in claim 1. Cui teaches that the gamma prime solvus temperature is about 2000°F or higher [Col 4, line 4 – 7], which overlaps with claimed ranges of claims 9 – 10. Cui teaches that the gamma prime volume fraction is about 76 – 90% [Col 8, line 8 – 9], wherein “about 76” is interpreted to meet/overlap with the claimed upper bound of “about 75%” of claim 11.
“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)” (MPEP 2144.05 I).
Regarding claim 13, Cui teaches the invention as applied in claim 1. Cui teaches that the material can be welded onto a body [Col 3, line 40 – 42], meeting the claimed limitation of a welding compositon.
Regarding 16, Cui teaches a nickel-based superalloy composition and articles therefrom [Title]. The composition is [Table 1, abstract]:
Element
Claimed Invention (wt%)
Cui (wt%)
Relationship
Chromium (Cr)
About 17 – about 20%
About 16 – about 20%
Overlaps
Aluminum (Al)
About 4% - about 10%
Greater than 6 – about 10%
Falls within
Iron (Fe)
About 1.95% - about 2.5%
About 2 – about 10%
Overlaps
Cobalt (Co)
About 10% - about 14%
0 – 12%
Overlaps
Molybdenum (Mo)
About 1% - about 7%
0 – 1%
Overlaps
(endpoints)
Carbon (C)
Less than about 0.25%
0 – 0.25%
Falls within
Titanium (Ti)
Less than about 0.6%
0 – 0.5%
Falls within
Nickel (Ni)
Balance
Balance
Meets
*Shaded indicates optional
*Cui does not require any element that is not listed in composition of claim 16.
Regarding claims 17 – 18, Cui teaches the invention as applied in claim 16. Cui teaches that the nickel-based alloy can be formed into an article including a nozzle or squealer tip of a gas turbine [Col 2, line 60 – 62], meeting the claimed limitation.
Regarding claim 19, Cui teaches the invention as applied in claim 16. Cui teaches that the material can be welded onto a body [Col 3, line 40 – 42], meeting the claimed limitation.
Claims 1 – 13, 16, and 19 – 20 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsumi (WO2020195049, using espacenet translation).
Regarding claims 1 – 6, Tatsumi teaches a nickel-based superalloy composition and methods of forming it [0001]. The composition is:
Element
Claimed Invention (wt%)
Tatsumi (mass%)
Reference
Relationship
Chromium (Cr)
About 17 – about 20%
8 – 25%
[0028]
Overlaps
Aluminum (Al)
About 4% - about 10%
About 4% - about 6% (claim 4)
About 4% - about 5.9% (claim 5, 6)
4.0 – 6.0%
[0030]
Falls within
Falls within
Overlaps
Iron (Fe)
About 1.95% - about 2.5%
0 – 8%
[0037]
Overlaps
Yttrium (Y)
Less than about 0.03%
Not required/present
-
Meets
Cobalt (Co)
About 10% - about 14%
8 – 16%
[0033]
Overlaps
Manganese (Mn)
Less than about 0.5%
Not required/present
-
Meets
Molybdenum (Mo)
About 1% - about 7%
About 2.0 – about 6% (claim 2)
About 3.5% - about 5.5% (claim 3, 6)
2 – 7%
[0029]
Falls within
Overlaps
Overlaps
Silicon (Si)
Less than about 0.3%
Not required/present
-
Meets
Carbon (C)
Less than about 0.25%
0.25% or less
[0027]
Falls within
Boron (B)
About 0.015%
0 – 0.3%
[0040]
Overlaps
Tungsten (W)
Less than about 0.5%
0 – 15%
[0034]
Overlaps
Tantalum (Ta)
Less than about 0.35%
0 – 4.0%
[0036]
Overlaps
Titanium (Ti)
Less than about 0.6%
0.4 – 7%
[0031]
Overlaps
Zirconium (Zr)
Less than about 0.7%
0 – 0.3%
[0041]
Falls within
Niobium (Nb)
Less than about 0.85%
0 – 4.0%
[0035]
Overlaps
Nickel (Ni)
Balance
Balance
-
Meets
*shaded indicates optional
*Tatsumi does not require any element that is not listed in composition of claim 1.
Regarding claim 7, Tatsumi teaches the invention as applied in claim 1. Tatsumi teaches that the boron is content less than about 0.3 mass% [0040], which overlaps with the claimed range of claim 7.
“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)” (MPEP 2144.05 I).
Regarding claim 8, Tatsumi teaches the invention as applied in claim 1. Tatsumi teaches that the boron is content less than about 0.3 mass% [0040], which overlaps with the claimed range, an aluminum content is 4.0 – 6.5 mass% [0030], which overlaps with the claimed range, and a molybdenum content of 2 – 7 mass% [0029], which overlaps with the claimed range.
“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)” (MPEP 2144.05 I).
Regarding claims 9 – 12, Tatsumi teaches the invention as applied in claim 1. Tatsumi does disclose a gamma prime solvus temperature of about 1700 – 2100°F (or narrower, claim 10) or a gamma prime volume fraction of about 45 – 70% (or narrower, claim 12).
However, 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, in this case composition, a prima facie case of obviousness is established (In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (MPEP 2112.01 I)
In the instant application, Tatsumi teaches a substantially overlapping compositon to claimed composition such that there is a reasonable expectation to an ordinarily skilled artisan that the composition of Tatsumi would possess the same properties claimed in claim 9 – 12.
Further still, the USPTO does not possess the capability to test samples of the prior art to determine the properties/microstructure as claimed.
Regarding claim 13, Tatsumi teaches the invention as applied in claim 1. Tatsumi teaches that the material can be formed by casting [0068], meeting the claimed limitation of a casting compositon.
Regarding claims 16 and 20, Tatsumi teaches a nickel-based superalloy article composition and methods of forming it [0001]. The composition is:
Element
Claimed Invention (wt%)
Tatsumi (mass%)
Reference
Relationship
Chromium (Cr)
About 17 – about 20%
8 – 25%
[0028]
Overlaps
Aluminum (Al)
About 4% - about 10%
About 4.0 – about 5.9% (claim 20)
4.0 – 6.5%
[0030]
Falls within
Overlaps
Iron (Fe)
About 1.95% - about 2.5%
0 – 8%
[0037]
Overlaps
Cobalt (Co)
About 10% - about 14%
8 – 16%
[0033]
Overlaps
Molybdenum (Mo)
About 1% - about 7%
About 3.5 – About 5.5
2 – 7%
[0029]
Falls within
Overlaps
Carbon (C)
Less than about 0.25%
0.25% or less
[0027]
Falls within
Titanium (Ti)
Less than about 0.6%
0.4 – 7%
[0031]
Falls within
Nickel (Ni)
Balance
Balance
-
Meets
*shaded indicates optional
*Tatsumi does not require any element that is not listed in composition of claim 16.
Regarding claim 19, Tatsumi teaches the invention as applied in claim 16. Tatsumi teaches that the material can be formed by casting [0068], meeting the claimed limitation of formed by casting.
Claims 17 – 18 are rejected under 35 U.S.C. 103 as being unpatentable over Tatsumi (WO2020195049, using espacenet translation), as applied to claim 16, in further view of Cui (US10,640,849)
Regarding claims 17 – 18, Tatsumi teaches the invention as applied in claim 16. Tatsumi teaches that nickel-based superalloys can be used for gas turbine and their components [0002]. Tatsumi does not expressly teach which components they can be used for.
Cui teaches a nickel-based superalloy and articles [Title] and that the alloy may be used in super-alloy articles, such as a blade, nozzle, a shroud, a splash plate, a squealer tip of the blade, and a combustor of a gas turbine engine [Col 2, lines 58 – 62]. Cui teaches generally that nickel-based superalloys are used extensively throughout the turbomachines in turbine blade, nozzle, and shroud applications and demand improved creep resistance and high temperature capability [Col 1, lines 9 – 15], meeting claims 17 and 18.
It would have been obvious to one of ordinary skill in the art before the effective filing date to have used the alloy/article of Tatsumi for a blade of a gas turbine or a squealer tip of a blade of a gas turbine to achieve predictable results. Both Cui and Tatsumi are directed to nickel-based superalloys (same field of endeavor) and state that the alloy can be used in gas turbines and as such, an ordinarily skilled would have a reasonable expectation of success in achieving predictable results.
Double Patenting Rejections
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1 – 2, 4 – 5, and 9 – 13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 8 – 12 of copending Application No. 18/474,645 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because Application ‘645 claims a nickel-based superalloy with a composition of [Claim 1]
Element
Claimed Invention (wt%)
App. 18/474,645
Relationship
Chromium (Cr)
About 17 – about 20%
16 – 21%
Overlaps
Aluminum (Al)
About 4% - about 10%
About 4.0 – About 6.0% (claim 4)
About 4.0 – About 5.9% (claim 5)
3.5 – 6.0%
Overlaps
Iron (Fe)
About 1.95% - about 2.5%
0.5 – 1.95%
Overlaps
Yttrium (Y)
Less than about 0.03%
Not required/present
Meets
Cobalt (Co)
About 10% - about 14%
9 – 12%
Overlaps
Manganese (Mn)
Less than about 0.5%
Not required/present
Meets
Molybdenum (Mo)
About 1% - about 7%
About 2 – about 6.0% (claim 2)
0.5 – 1.5%
Overlaps
(endpoints)
Silicon (Si)
Less than about 0.3%
Not required/present
Overlaps
Carbon (C)
Less than about 0.25%
0.03 – 0.18%
Falls within
Boron (B)
About 0.015%
Not required/present
Meets
Tungsten (W)
Less than about 0.5%
0.5 – 2.5%
Overlaps
Tantalum (Ta)
Less than about 0.35%
Not required/present
Meets
Titanium (Ti)
Less than about 0.6%
0.5 – 1.5%
Overlaps
Zirconium (Zr)
Less than about 0.7%
Not required/present
Meets
Niobium (Nb)
Less than about 0.85%
1 – 3.5%
Overlaps
Nickel (Ni)
Balance
Balance
Meets
*shaded indicates optional
*The claims do not require elements that are not specifically listed in claim 1.
Regarding claims 9 – 12, Application ‘645 claims the same gamma prima solvus temperature and gamma prima volume fraction [Claims 8 – 11]
Regarding claim 13, Application ‘645 claims the composition is for the same types of processes [Claim 12]
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments with respect to rejection in view of Baranow (GB1259423) has been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Upon further consideration, new rejections are made of:
Claims 1, 4 – 5, 7, 9 – 11, 13, 16 – 19 under 35 U.S.C. 103 as being unpatentable over Cui (US 10,640,849)
Claims 1 – 13, 16, and 19 – 20 under 35 U.S.C. 103 as being unpatentable over Tatsumi (WO2020195049).
Claims 17 – 18 under 35 U.S.C. 103 as being unpatentable over Tatsumi (WO2020195049), as applied to claim 16, in further view of Cui (US 10,640,849)
The examiner notes that the provisional nonstatutory double patenting rejection over application 18/474,645 has been reconsidered.
Applicant’s arguments regarding the duplicate claim warning have been considered but are moot because of the amendments to claim 1.
Applicant’s arguments regarding the improper Markush grouping have been considered but are not persuasive. In particular, while the different processes share a common use of making a product they do not all share a single structural similarity. As such, the grouping is improper.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US2020/0172998 – Overlapping compositon with disclosure of controlling gamma prime solvus temperature to 1100°C or less for additive manufacturing processibility
US2011/0143164 – Nickel substrate overlay with overlapping composition and gamma prime volume fraction
WO2024/008499 – Overlapping composition for additive manufacturing
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN POLLOCK whose telephone number is (571)272-5602. The examiner can normally be reached M - F (8 - 5).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached on (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AUSTIN POLLOCK/Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738
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