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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/24/2023 has been considered by the examiner.
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.
Claim 18 is 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.
Claim 18 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 “structural properties that are selected from the group consisting of yield strength, true peak stress and true fracture stress” 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: the recited alternatives are properties that are not a recognized physical, chemical, and/or art-based class.
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.
Further, claim 18 requires the component to ‘exhibit increases in their respective figures of merit over a niobium-molybdenum-titanium alloy that comprises nitrogen in an amount greater or less than the percent recited herein’ which renders the metes and bounds of the claim indefinite because the claim utilizes the open-ended language “comprising” and attempts to embrace all manner of ‘improvements’ in the performance of the alloy that is attributable to the claimed nitrogen content. The public would not be reasonably apprised of when infringement of such a claim would begin because the subjective determination of ‘increases in their respective figures of merit’ over any alloy having a differing N content is unclear. Notably, the component’s properties would not be solely determined by the composition itself but also the processing conditions to which the component is subjected.
In the interest of furthering prosecution, it is suggested that Applicant amend the claim to require the particular structural properties and/or performance that Applicant believes is the enhancement (noted: suggested in view of preamble language “enhanced” presented in claim 19).
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over McNutt et al. (U.S. 3,230,119).
Regarding claim 1, McNutt et al. (hereinafter “McNutt”) teaches a columbium-base alloy as follows (Col. 1 lines 61-72 and Claim 2):
Element
Claimed
Prior Art Alloy
Analysis
Mo
About 10 to about 34
Up to 25%
Overlaps
Ti
About 2 to about 20
Up to 10%
Lies Within
Hf
Up to about 30
-
-
Al
Up to about 10
-
-
Cr
Up to about 20
-
-
Ta
Up to about 15
Up to 25%
Lies Within
W
Up to about 15
Up to 35%
Lies Within
Zr
Up to about 10
About 0.5 to 12%
Lies Within
N
About 0.1 to about 3.0
About 0.02 to about 0.5
Overlaps
C and/or O
At least one
About 0.02 to about 0.5
Lies Within
Nb/Cb
Balance
Balance
Lies Within
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).
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claim 2, McNutt teaches the alloy as applied to claim 1 above and further teaches that the Mo is “up to 25%” which overlaps the claimed range of ‘about 14 to about 34 percent’.
Regarding claim 3, McNutt teaches the alloy as applied to claim 1 above and further teaches that the Ti is ‘up to 10%’ which overlaps the claimed range of ‘about 2.7 to about 14.4 percent’.
Regarding claims 4-6, McNutt teaches the alloy as applied to claim 1 above and is silent to the presence of Hf, Al, and/or Cr which meets the claimed range of ‘about 0 percent’ which embraces the value of ‘0 percent’.
Regarding claim 7, McNutt teaches the alloy as applied to claim 1 above and further teaches that the Ta is ‘up to 25%’ which overlaps the claimed range of ‘about 0 percent and about 0.1 percent’.
Regarding claim 8, McNutt teaches the alloy as applied to claim 1 above and further teaches that W is ‘up to 35%’ which overlaps the claimed range of ‘about 0 to about 6.1 percent’.
Regarding claim 9, McNutt teaches the alloy as applied to claim 1 above and further teaches that the Zr is ‘about 0.5% to about 12%’ which overlaps the claimed range of ‘about 0 to about 5 percent’.
Regarding claim 10, McNutt teaches the alloy as applied to claim 1 above and further teaches that at least one interstitial element from the group oxygen, carbon, and nitrogen, which can be present either singly or in combination and in total amount ranging from about 0.02% to about 0.5% (Col. 1 lines 64-67) which would overlap the claimed nitrogen range of ‘about 0.3 to about 1.4 percent’.
Regarding claim 11, McNutt teaches the alloy as applied to claim 10 above and further teaches that at least one interstitial element from the group oxygen, carbon, and nitrogen, which can be present either singly or in combination and in total amount ranging from about 0.02% to about 0.5% (Col. 1 lines 64-67) which would overlap the claimed nitrogen range of ‘about 0.5 to about 1.2 percent’.
Regarding claims 12-14, McNutt teaches the alloy as applied to claim 11 above and further teaches that at least one interstitial element from the group oxygen, carbon, and nitrogen, which can be present either singly or in combination and in total amount ranging from about 0.02% to about 0.5% (Col. 1 lines 64-67) which is reasonably close to the claimed nitrogen ranges of ‘about 0.6 to about 1.3 percent’, ‘about 0.7 to about 1.2 percent’, and/or ‘about 0.8 to about 1.1 percent’.
It has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claim 15, McNutt teaches the alloy as applied to claim 1 above and further includes “up to 10%” Ti.
However, McNutt is silent that ‘at least a portion of the titanium is present as a titanium nitride-based secondary phase precipitate.
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).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Thus, in view of the substantially similar composition of the McNutt alloy to the instantly claimed alloy, there is sufficient prima facie basis to believe that at least a portion of the Ti would be present as a titanium nitride-based secondary phase precipitate absent evidence to the contrary.
Regarding claim 16, McNutt teaches the alloy as applied to claim 1 above and, notably, hafnium is not positively required (i.e. ‘up to about 30 percent’ which embraces the value of zero). Thus, claim 16 is considered met without an implicit or express recitation that the ‘hafnium is present as a hafnium nitride-based secondary phase precipitate’ because hafnium is not positively required by claim 1.
Regarding claim 17, McNutt teaches the alloy as applied to claim 1 above and further includes “up to 10%” Ti.
However, McNutt is silent that ‘at least a portion of the titanium is present as a titanium nitride-based secondary phase precipitate.
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).
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Thus, in view of the substantially similar composition of the McNutt alloy to the instantly claimed alloy, there is sufficient prima facie basis to believe that at least a portion of the Ti would be present as a titanium nitride-based secondary phase precipitate absent evidence to the contrary.
With regard to the feature requiring “at least a portion of the hafnium is present as a hafnium nitride-based secondary phase precipitate”, it is noted that hafnium is not positively required (i.e. ‘up to about 30 percent’ which embraces the value of zero). Thus, this feature of claim 17 is considered met without an implicit or express recitation that the ‘hafnium is present as a hafnium nitride-based secondary phase precipitate’ because hafnium is not positively required by claim 1.
Regarding claim 18, McNutt teaches a columbium-base alloy (meeting BRI of claimed preamble ‘component’) as follows (Col. 1 lines 61-72 and Claim 2):
Element
Claimed
Prior Art Alloy
Analysis
Mo
About 10 to about 34
Up to 25%
Overlaps
Ti
About 2 to about 20
Up to 10%
Lies Within
Hf
Up to about 30
-
-
Al
Up to about 10
-
-
Cr
Up to about 20
-
-
Ta
Up to about 15
Up to 25%
Lies Within
W
Up to about 15
Up to 35%
Lies Within
Zr
Up to about 10
About 0.5 to 12%
Lies Within
N
About 0.1 to about 3.0
About 0.02 to about 0.5
Overlaps
C and/or O
At least one
About 0.02 to about 0.5
Lies Within
Nb/Cb
Balance
Balance
Lies Within
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).
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
McNutt further teaches that the alloy has desirable combinations of improved strength and ductility characteristics so that their usefulness in service under relatively high temperature conditions becomes desirably enhanced (Col. 1 lines 12-21; meeting claimed preamble requiring ‘enhanced structural properties’).
However, McNutt is silent regarding at least one of yield strength, true peak stress and true fracture stress exhibiting increases in their respective figures of merit over a niobium-molybdenum-titanium alloy that comprises nitrogen in an amount greater or less than the percent recited herein.
It has been held that ‘when the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not’. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) and it’s fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products See In re Brown, 459 F.2d 531, 59 CCPA 1036, 173 USPQ 685 (1972).
Thus, in view of the substantially similar composition of the McNutt alloy to the instantly claimed alloy, there is sufficient prima facie basis to believe that the structural properties of the McNutt alloy would exhibit increases in their respective figures of merit in comparison to a NbMoTi alloy that does not contain N in the claimed amount absent evidence to the contrary.
Claims 19 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over McNutt et al. (U.S. 3,230,119), and further in view of Argyriades et al. (U.S. 3,184,292).
Regarding claims 19 and 20, McNutt teaches a columbium-base alloy as follows (Col. 1 lines 61-72 and Claim 2):
Element
Claimed
Prior Art Alloy
Analysis
Mo
About 10 to about 34
Up to 25%
Overlaps
Ti
About 2 to about 20
Up to 10%
Lies Within
Hf
Up to about 30
-
-
Al
Up to about 10
-
-
Cr
Up to about 20
-
-
Ta
Up to about 15
Up to 25%
Lies Within
W
Up to about 15
Up to 35%
Lies Within
Zr
Up to about 10
About 0.5 to 12%
Lies Within
N
About 0.1 to about 3.0
About 0.02 to about 0.5
Overlaps
C and/or O
At least one
About 0.02 to about 0.5
Lies Within
Nb/Cb
Balance
Balance
Lies Within
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).
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
McNutt further teaches that the alloy has desirable combinations of improved strength and ductility characteristics so that their usefulness in service under relatively high temperature conditions becomes desirably enhanced (Col. 1 lines 12-21).
However, McNutt is silent to a gas turbine engine component comprising a substrate comprising the alloy as well as a coating disposed over at least a portion of the substrate.
Argyriades et al. (hereinafter “Argyriades”) teaches that alloys based on refractory metals, e.g., nickel, cobalt, niobium, molybdenum, tungsten, tantalum, and to a lesser extent, vanadium are used in a variety of applications where high temperatures are encountered. Specifically, turbine blades and buckets, furnace heating elements, jet and internal combustion engine parts of these metals and alloys thereof… However,… it is necessary to…protect the metal surfaces with oxidation resistant coatings” (Col. 1 lines 20-33).
Thus, it would be obvious to use the niobium-based refractory alloy of McNutt for a turbine blade as taught by Argyriades because the niobium-based refractory alloy of McNutt has improved strength and ductility characteristics which impart enhanced usefulness in service under high temperature conditions, such as use as a turbine blade as taught by Argyriades. Additionally, Argyriades acknowledges that a protecting coating is required for such products made from refractory alloys.
Therefore, it would be obvious to use the McNutt alloy to form a turbine blade, i.e. a substrate, and dispose a coating over at least a portion of the substrate such that the refractory alloy does not oxidize during service at elevated temperatures (see Argyriades at Col. 1 lines 30 … “prevent the oxidation of these metals at elevated temperatures”).
Claims 1-6 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yeh et al. “Enhanced mechanical properties of HfMoTaTiZr and HfMoNbTaTiZr refractory high-entropy alloys” (2015; Attached).
Regarding claim 1, Yeh et al. (hereinafter “Yeh”) teaches a HfMoNbTaTiZr alloy having a composition as follows (Table 2):
Element
Claimed
Yeh alloy
Analysis
Mo
About 10 to about 34
16.7
Lies Within
Ti
About 2 to about 20
16.7
Lies Within
Hf
Up to about 30
16.7
Lies Within
Al
Up to about 10
-
Not required/not present
Cr
Up to about 20
-
Not required/not present
Ta
Up to about 15
16.7
Reasonably close
W
Up to about 15
-
Not required/not present
Zr
Up to about 10
16.7
Reasonably close
N
About 0.1 to about 3.0
-
*
C and/or O
At least one
-
*
Nb
Balance
16.7
Lies Within
Considering Applicant’s instant specification, particularly at Paragraph 0030, a definition of the word ‘about’ has not been provided. Thus, the word ‘about’ has been given its plain meaning and construed using the broadest reasonable interpretation.
With regard to the Ta range, it is noted that Yeh’s alloy having 16.7% is reasonably close to the claimed upper bound of ‘about 15’. The difference is about 1.7% and would be expected to have the same properties absent evidence to the contrary.
With regard to the Zr range, it is noted that Yeh’s alloy having 16.7% is reasonably close to the claimed upper bound of ‘about 10’. The difference is about 6.7% and would be expected to have the same properties absent evidence to the contrary.
With regard to the asterisks provided in the ‘Analysis’ column in the table above, Examiner notes that N, C, and O would be present in a small amount as an impurity.
Considering the N range, any present impurity amount of N would meet the BRI of the claimed range ‘about 0.1 percent’ in view of the word ‘about’.
As for the C and O feature of the claimed invention, it is noted that the presence of only one of these elements is required in any non-zero amount.
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).
Additionally, it has been held that ‘a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close’. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). In the instant case, the proportion are so close that prima facie one skilled in the art would have expected them to have the same properties.
Regarding claim 2, Yeh teaches the alloy as applied to claim 1 above and further teaches that Mo is included in an amount of 16.7% (Table 2) which lies within the claimed range of about 14 to about 34 percent.
Regarding claim 3, Yeh teaches the alloy as applied to claim 1 above and further teaches that Ti is included in an amount of 16.7% (Table 2) which is reasonably close to the claimed range of ‘about 2.7 and about 14.4 percent’ because it is a difference of about 2.3% and the alloys would be expected to have the same properties absent evidence to the contrary.
Regarding claim 4, Yeh teaches the alloy as applied to claim 1 above and further teaches that Hf is included in an amount of 16.7% (Table 2) which lies within the claimed range of ‘about 0 to about 29 percent’.
Regarding claims 5 and 6, Yeh teaches the alloy as applied to claim 1 above and is silent to the presence of Al and/or Cr (Table 2) which meets the claimed ranges of ‘about 0 percent’ which embraces 0 percent.
Regarding claim 8, Yeh teaches the alloy as applied to claim 1 above and is silent to the present of W (Table 2) which meets the claimed range of ‘about 0 percent’ which embraces 0 percent.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Raush and Van Thyne (U.S. 3,701,655) directed to a Columbium base alloy such as Cb-20Mo-10Ti that is nitrided (Table 1); Bradley et al. (U.S. 3,341,370) directed to a hafnium-containing columbium-base alloy including a disclosure that “it is apparent that useful classes of columbium alloys will demand protective coatings in their normal high-temperature oxidizing environments” (Col. 1 line 70 to Col. 2 line 2); Chaput et al. (U.S. 11,846,008) directed to niobium alloys for high temperature, structural applications having a composition such as Nb85-xMo10Zr5Tix.
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.
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ALEXANDRA M MOORE
Primary Examiner
Art Unit 1738
/ALEXANDRA M MOORE/Primary Examiner, Art Unit 1738