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 .
Response to Amendment and Status of Claims
Applicant’s amendment, filed 01/28/2026, has been entered. Claims 1, 7, and 11 are amended, claim 2 is cancelled, and no claims are newly added.
Applicant’s amendment has obviated the previous 112 rejection(s).
Applicant’s amendments to the abstract are acceptable.
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 and 3-14 remain rejected under 35 U.S.C. 103 as being unpatentable over CN 105734237 (Cited in IDS of 07/17/2024; Espacenet machine translation attached and relied upon).
Regarding claim 1, CN 105734237 (hereinafter “’237”) teaches a chemical composition of 403Nb heat-resistant blade steel (Paragraph 0024) as follows:
Element
Claimed
‘237
Analysis
C
0.13 to 0.18
0.16
Lies Within
Mn
0.40 to 0.60
0.46
Lies Within
Si
Up to 0.50
0.28
Lies Within
P
Up to 0.025
≤0.016
Lies Within
S
Up to 0.010
≤0.002
Lies Within
Ni
0.30 to 0.60
0.12
Outside but reasonably close
Cr
11.5 to 13.0
11.98
Lies Within
Mo
0.05 to 0.20
0.029
Outside but reasonably close
Nb
0.15 to 0.25
0.22
Lies Within
V
Up to 0.10
0.0128
Lies Within
Fe
Balance
Balance
Lies Within
CNB
5.0 to 7.5
7.22
Lies Within
Examiner has calculated the CNB from the following formula: (Cr + 1.5W + 4Mo +5Nb + 6Si + 9Ti +11V + 12Al) – (40C +30N + 4Ni + 2Mn + Cu).
With regard to the bolded portions in the table above, the values of ‘237 are outside the claimed ranges but are reasonably close. To be clear, the Ni content differs from the lower bound of the claimed range by 0.18% while the Mo content differs from the upper bound of the claimed range by 0.009%.
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.
In the interest of making the record clear, it is noted that “403Cb” as claimed is the same as “403Nb” because Cb is the same as Nb (i.e., Columbium is Niobium).
Additionally, Paragraph 0006 expressly states that the 403Nb heat-resistant blade steel is a martensitic heat-resistant steel.
Regarding claim 3, ‘237 teaches the composition as applied to claim 1 above and further teaches that the weight ratio of the nickel to the molybdenum is larger than 3 (i.e. 0.12/0.029 = 4.14).
Regarding claims 4 and 5, ‘237 teaches the composition as applied to claim 1 above and further teaches at Paragraph 0005 that the tensile strength is no less than 790 MPa and the yield strength is a minimum of 660 MPa which overlaps the claimed ranges.
Regarding claim 6, ‘237 teaches the composition as applied to claim 1 above but is silent to the impact toughness of the composition.
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, the composition is substantially similar to the claimed composition such that there is a reasonable basis to presume that the ‘237 composition would possess an impact toughness over 50 J absent evidence to the contrary.
It has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
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).
Regarding claim 7, ‘237 teaches a chemical composition of 403Nb heat-resistant blade steel (Paragraph 0024) as follows:
Element
Claimed
‘237
Analysis
C
0.13 to 0.18
0.16
Lies Within
Mn
0.40 to 0.60
0.46
Lies Within
Si
Up to 0.50
0.28
Lies Within
P
Up to 0.025
≤0.016
Lies Within
S
Up to 0.010
≤0.002
Lies Within
Ni
0.30 to 0.60
0.12
Outside but reasonably close
Cr
11.5 to 13.0
11.98
Lies Within
Mo
0.05 to 0.20
0.029
Outside but reasonably close
Nb
0.15 to 0.25
0.22
Lies Within
V
Up to 0.10
0.0128
Lies Within
Fe
Balance
Balance
Lies Within
CNB
5.0 to 7.5
7.22
Lies Within
Examiner has calculated the CNB from the following formula: (Cr + 1.5W + 4Mo +5Nb + 6Si + 9Ti +11V + 12Al) – (40C +30N + 4Ni + 2Mn + Cu).
With regard to the bolded portions in the table above, the values of ‘237 are outside the claimed ranges but are reasonably close. To be clear, the Ni content differs from the lower bound of the claimed range by 0.18% while the Mo content differs from the upper bound of the claimed range by 0.009%.
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.
In the interest of making the record clear, it is noted that “403Cb” as claimed is the same as “403Nb” because Cb is the same as Nb (i.e., Columbium is Niobium).
Additionally, Paragraph 0006 expressly states that the 403Nb heat-resistant blade steel is a martensitic heat-resistant steel.
‘237 is silent to the impact toughness of the composition.
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, the composition is substantially similar to the claimed composition such that there is a reasonable basis to presume that the ‘237 composition would possess an impact toughness over 50 J absent evidence to the contrary.
It has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
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).
Regarding claims 8 and 9 ‘237 teaches the composition as applied to claim 7 above and further teaches at Paragraph 0005 that the tensile strength is no less than 790 MPa and the yield strength is a minimum of 660 MPa which overlaps the claimed ranges.
Regarding claim 10, ‘237 teaches the composition as applied to claim 7 above and further teaches that the weight ratio of the nickel to the molybdenum is larger than 3 (i.e. 0.12/0.029 = 4.14).
Regarding claim 11, ‘237 teaches a chemical composition of 403Nb heat-resistant blade steel (Paragraph 0024) as follows:
Element
Claimed
‘237
Analysis
C
0.13 to 0.18
0.16
Lies Within
Mn
0.40 to 0.60
0.46
Lies Within
Si
Up to 0.50
0.28
Lies Within
P
Up to 0.025
≤0.016
Lies Within
S
Up to 0.010
≤0.002
Lies Within
Ni
0.30 to 0.60
0.12
Outside but reasonably close
Cr
11.5 to 13.0
11.98
Lies Within
Mo
0.05 to 0.20
0.029
Outside but reasonably close
Nb
0.15 to 0.25
0.22
Lies Within
V
Up to 0.10
0.0128
Lies Within
Fe
Balance
Balance
Lies Within
CNB
5.0 to 7.5
7.22
Lies Within
Examiner has calculated the CNB from the following formula: (Cr + 1.5W + 4Mo +5Nb + 6Si + 9Ti +11V + 12Al) – (40C +30N + 4Ni + 2Mn + Cu).
With regard to the bolded portions in the table above, the values of ‘237 are outside the claimed ranges but are reasonably close. To be clear, the Ni content differs from the lower bound of the claimed range by 0.18% while the Mo content differs from the upper bound of the claimed range by 0.009%.
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.
In the interest of making the record clear, it is noted that “403Cb” as claimed is the same as “403Nb” because Cb is the same as Nb (i.e., Columbium is Niobium).
Additionally, Paragraph 0006 expressly states that the 403Nb heat-resistant blade steel is a martensitic heat-resistant steel and is used to manufacture turbine blades (meeting claimed “turbine component’).
Also, ‘237 teaches that the weight ratio of the nickel to the molybdenum is larger than 3 (i.e. 0.12/0.029 = 4.14).
Regarding claim 12, ‘237 teaches the composition as applied to claim 11 above but is silent to the impact toughness of the composition.
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, the composition is substantially similar to the claimed composition such that there is a reasonable basis to presume that the ‘237 composition would possess an impact toughness over 50 J absent evidence to the contrary.
It has been held that ‘when the reference discloses all the limitations of a claim except a property or function, and the examiner cannot determine whether or not the reference inherently possesses properties which anticipate or render obvious the claimed invention but has basis for shifting the burden of proof to applicant as in In re Fitzgerald, 619 F. 2d 67, 205 USPQ 594, (CCPA 1980).
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).
Regarding claims 13 and 14, ‘237 teaches the composition as applied to claim 11 above and further teaches at Paragraph 0005 that the tensile strength is no less than 790 MPa and the yield strength is a minimum of 660 MPa which overlaps the claimed ranges.
Response to Arguments
Applicant's arguments filed 01/28/2026 have been fully considered but they are not persuasive.
Applicant’s argument that the Ni and Mo ranges are “not even remotely close” is unpersuasive and the attempts to reframe the differences, without even acknowledging the actual differences (i.e. 0.18% and 0.009%, respectively), by providing calculated percentages of the differences in percentages to support Applicant’s argument that the rejection is unreasonable are not responsive to the actual facts of the rejection. Even if the Examiner were somehow convinced by the Table on Page 3 of the Remarks (which contains at least one error because Chen teaches 0.029 not 0.29), there is no apparent support from Applicant’s disclosure that these ranges or percentage differences were considered to be critical or otherwise produce unexpected results. One of ordinary skill in the art would still consider the disclosed 0.12% Ni value of Chen to be reasonably close to Applicant’s claimed range of 0.30 to 0.60% and the disclosed 0.029% Mo is reasonably close to Applicant’s claimed range of 0.05 to 0.20%.
With regard to Applicant’s statement that “assuming, for the sake of argument, that ‘reasonable closeness’ is a relevant standard”, Examiner notes that it is settled case law: Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Applicant’s arguments directed to the Ni and Mo weight ranges being ‘significant as they enhance both the toughness and strength of the inventive 403Cb alloy’, Examiner notes that no combination of such features have been presented in the claim set and Applicant has not provided evidence that demonstrates that the Chen reference would not possess such features.
Further, Examiner notes Applicant’s citation to Paragraph 0028 with the assertion that “the published application at, e.g., paragraph [0028], states that alloys having Chen’s amount of Ni (.12%) will NOT have the increased toughness that results from the inventive 403Cb alloy, and which is important (in addition to strength) in reducing sensitivity to temper brittleness” (Page 4 of Remarks filed 01/28/2026); however, Paragraph 0028 actually does not support Applicant’s argument because Paragraph 0028 states at the portion discussing a 0.12% Ni content, that: “For example, a martensitic stainless steel grade 03Cb alloy with about 0.12 percent of nickel and 0.02 percent of molybdenum can obviously decrease toughness though still has acceptable strength” (emphasis respectfully added for clarity).
With regard to Applicant’s arguments regarding Figs 4A-4C and/or Figures 5A-5C, it is noted that Applicant’s explanation in the Remarks is insufficient because it does not address the confounding issue of the differences in tempering method. It is not persuasive to attribute the brittleness of those samples to the composition alone.
With regard to Applicant’s argument that Chen is directed to an entirely different problem (Page 4 of Remarks filed 01/28/2026), it has been held that the reason or motivation to modify the reference may often suggest what the inventor has done, but for a different purpose or to solve a different problem. It is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by Applicant See, e.g., In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006) (motivation question arises in the context of the general problem confronting the inventor rather than the specific problem solved by the invention); Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323, 76 USPQ2d 1662, 1685 (Fed. Cir. 2005) ("One of ordinary skill in the art need not see the identical problem addressed in a prior art reference to be motivated to apply its teachings."); In re Lintner, 458 F.2d 1013, 173 USPQ 560 (CCPA 1972) (discussed below); In re Dillon, 919 F.2d 688, 16 USPQ2d 1897 (Fed. Cir. 1990), cert. denied, 500 U.S. 904 (1991). Additionally, the court held "it is not necessary in order to establish a prima facie case of obviousness . . . that there be a suggestion or expectation from the prior art that the claimed [invention] will have the same or a similar utility as one newly discovered by applicant," and concluded that here a prima facie case was established because "[t]he art provided the motivation to make the claimed compositions in the expectation that they would have similar properties." 919 F.2d at 693, 16 USPQ2d at 1901 (emphasis in original; In re Dillon. Id.)
Additionally, arguments presented by Applicant cannot take the place of factually supported objective evidence. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965).
If Applicant has evidence that the Ni and Mo ranges are critical and/or produce unexpected results, a declaration may be provided. Additionally, while factual evidence is preferable to opinion testimony, such testimony is entitled to consideration and some weight so long as the opinion is not on the ultimate legal conclusion at issue. If Applicant insists that the differences are not reasonable, then opinion evidence from an expert attesting to that opinion is also an option. (See MPEP 716.01c).
After reconsidering the record and Applicant’s response, the rejection is maintained because the record does not demonstrate that the differences between the Ni and Mo ranges are critical and/or produce unexpected results; thus, they appear to be a difference in degree rather than in kind. ("It is well established that, while a change in the proportions of a combination shown to be old, such as is here involved, may be inventive, such changes must be critical as compared with the proportions used in the prior processes, producing a difference in kind rather than degree."). In re Lilienfeld, 67 F.2d 920, 924 (CCPA 1933).
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.
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