/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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/09/2026 has been entered.
Response to Amendment and Status of Claims
Applicant’s amendment, filed 03/09/2026, has been entered. Claims 1, 7, 8, and 16 are amended, claims 14 and 15 are or were previously cancelled, and no claims are newly added. Accordingly, claims 1-13 and 16-20 are pending and considered in this Office Action.
Applicant’s amendments to the drawings and specification are acceptable.
The amendments have obviated the previously applied provisional double patenting rejection.
Claim Interpretation
The presence of the word “about” in the claims is noted. A review of the specification does not yield a definition of “about”. Thus, the word is given its plain meaning and treated using the broadest reasonable interpretation.
Duplicate Claim Warning
Applicant is advised that should claim 1 or 16 be found allowable, the other of these two claims will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP 608.01(m).
While court decisions have confirmed applicant’s right to restate (i.e. by plural claiming) the invention in a reasonable number of ways, the instant case’s claims 1 and 16 are so close in content that they both cover the same thing, despite the slight difference in preamble wording (i.e. ‘composition comprising…’ vs. ‘article comprising a composition, the composition comprising…’).
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 7 and 8 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.
Specifically, claims 7 and 8 each depend from independent claim 1. Claim 1 is closed to the presence of additional, non-claimed elements. Claims 7 and 8 introduce additional elements that are precluded by claim 1. Thus, claims 7 and 8 contradict claim 1 such that the metes and bounds of the claims are unclear.
Claim 19 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. See MPEP § 2117.
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 for the following reasons. Moreover, this claims usage of both product by process language and Markush language, on balance, is indefinite. It is recommended that the Markush language, i.e., “selected from the group consisting of” be removed. An option would be: “…wherein the article is produced by welding, additive manufacturing…”.
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.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7 and 8 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claims 7 and 8 each depend from independent claim 1. Claim 1 is closed to the presence of additional, non-claimed elements. Claims 7 and 8 introduce additional elements that are precluded by claim 1. Thus, claims 7 and 8 contradict claim 1 and are not proper dependent claims. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
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.
Claims 1-6, 9-13, 16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Baranow (GB 1 259 423).
Regarding claims 1 and/or 16, Baranow teaches a nickel alloy having a nominal composition as follows:
Element
Claimed
Baranow
Citation
Shared
Cr
About 17 to about 20
5-30
Example C
About 17 to about 20
Al
About 4.0 to about 10.0
Up to 5
Example C
About 4.0 to about 5
Fe
About 1.95 to about 2.5
0-10
Example C
About 1.95 to about 2.5
Co
About 10 to about 14
15-65
Example C
About 14-about 15
Mo
About 1.0 to about 7.0
3-15
Example C
About 3.0 to about 7.0
C
Less than about 0.25
Up to 0.5
Example C
Less than about 0.25
Ti
Less than about 0.60
Up to 3
Example C
Less than 0.60
Ni
Balance
10-80
Example C
Balance
Baranow’s alloy does not include other elements and, thus, is a closed composition meeting the claimed transitional phrase ‘consisting of’.
It has been held that a prima facie case of obviousness exists where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976).
Regarding claim 2, Baranow teaches the composition as applied to claim 1 above and further teaches that the composition comprises 3-15% Mo which overlaps the claimed range of about 2.0 to about 6.0 (Example C).
Regarding claim 3, Baranow teaches the composition as applied to claim 1 above and further teaches that the composition comprises 3-15% Mo which overlaps the claimed range of about 3.5 to about 5.5 (Example C).
Regarding claim 4, Baranow teaches the composition as applied to claim 1 above and further teaches that the composition comprises 3-15% Mo which overlaps the claimed range of about 4.0 to about 6.0 (Example C).
Regarding claim 5, Baranow teaches the composition as applied to claim 1 above and further teaches that the composition comprises up to 5% Al which overlaps the claimed range of about 4.0 to about 5.9% Al (Example C).
Regarding claims 6 and 20, Baranow teaches the composition as applied to claims 1 and/or 16 above and teaches that the composition comprises 3-15% Mo and up to 5% Al (Example C) which overlaps the claimed range of about 3.5 to about 5.5% Mo and about 4.0 to about 5.9% Al, respectively.
Regarding claims 9-12, Baranow teaches the composition as applied to claim 1 above but is silent to the gamma prima solvus temperature being from about 1700 to about 2100F or from about 1800 to about 2000F and/or that the composition has a gamma prime volume fraction of from about 40 to about 75% or from about 45 to about 70%.
However, it has been held that ‘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, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the instant case, Baranow discloses a substantially similar composition to that claimed by Applicant and so there is sufficient prima facie basis to presume that the Baranow composition would possess the same properties as claimed, i.e. that the composition has a gamma prime solvus temperature of from about 1700 to about 2100 and a gamma prime volume fraction of from about 40 to about 75% absent evidence to the contrary.
It has been held that ‘[p]roducts of identical chemical composition cannot have mutually exclusive properties’. In re Spada, 911 F.2d 705, 709, 15 USPQ 2d 1655, 1658 (Fed. Cir. 1998).
Additionally, the USPTO does not possess the capabilities to procure or manufacture compositions of the prior art and make physical comparisons therewith.
Regarding claim 13, Baranow teaches the composition as applied to claim 1 above but is silent to the composition expressly being a “welding composition, an additive manufacturing composition, a metal casting composition, a coating composition, and/or a repair composition”.
However, it would be prima facie obvious to use the Baranow composition in any of the aforementioned fields due to the alloy’s recognition as a superalloy. The person of ordinary skill in the art before the effective filing date of the claimed invention would know that superalloys are commonly used in welding, AM, metal casting, coating, and/or repair endeavors.
It has been held that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945) (MPEP 2144.07).
Regarding claim 19, it is noted that this is a product by process claim (MPEP 2113). Notably, the claim is directed to a product produced by a technique.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
Baranow teaches the composition/article as applied to claim 16 above but is largely concerned with the diffusion coating rather than the superalloy article. However, the person of ordinary skill in the art before the effective filing date of the claimed invention would know that superalloys are produced using methods such as powder metallurgy, welding, additive manufacturing, casting, repairing, etc.
Thus, the production of the article of Baranow by way of techniques such as welding, metal additive manufacturing, casting, and/or powder metallurgy do not distinguish the claimed invention from the prior art.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Baranow as applied to claim 16 above, and further in view of Cui et al. (U.S. 10,640,849; Cited in IDS of 04/19/2023).
Regarding claims 17 and 18, Baranow teaches the article as applied to claim 16 above but is silent to the article being the blade of a gas turbine or a squealer tip of a blade of a gas turbine.
Cui et al. (hereinafter “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).
Additionally, 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).
It would be obvious to use the alloy/article of Baranow for a blade of a gas turbine or a squealer tip of a blade of a gas turbine in view that it is a nickel-based superalloy having high temperature performance and improved creep resistance as noted by Cui.
Response to Arguments
Applicant’s arguments with respect to Nishiyama and/or Nishiyama in view of Cui have 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRA M MOORE whose telephone number is (571)272-8502. The examiner can normally be reached M-F 8am-5pm, EST.
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 at 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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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738