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 09/18/2025 has been considered by the examiner.
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 § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 6, 7, 9, 11-18, and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamada et al. (U.S. 2012/0160376).
Regarding claims 1 and 16, Yamada et al. (hereinafter “Yamada”) teaches a composition (Example TS57 of Table 1 and Paragraph 0083) that maps to the claimed invention as follows:
Elements
Claimed
Example TS57
Analysis
Cr
About 10 to about 11
10.3
Lies Within
Al
No more than about 0.030
-
Lies Within
C
About 0.08 to about 0.20
0.12
Lies Within
Si
About 0.10 to about 0.60
0.11
Lies Within
V
About 0.05 to about 0.40
0.21
Lies Within
Ti
About 0.01 to about 0.10
0.02
Lies Within
Sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co
No more than about 5
5.908
Meets ‘about 5’
Fe
Balance and residual impurities
Balance and unavoidable impurities
Lies Within
With regard to the claim feature requiring the sum of Mn, P, S, Mo, W, Ni, Nb, N, Cu, B, Zr, As, Sn, Sb, Pb, H, and Co to be ‘no more than about 5 wt%’, the Example TS57 of Yamada is taken to anticipate this feature because of the claimed word ‘about’.
Regarding claim 2, Yamada teaches the composition as applied to claim 1 above and TS57 teaches 10.3 wt% Cr which anticipates the claimed range of about 10.25 wt% to about 11 wt%.
Regarding claim 3, Yamada teaches the composition as applied to claim 1 above and TS57 is silent to the presence of Al, thus, it is taken as 0% which anticipates the claimed range of ‘no more than 0.015 wt%’.
Regarding claim 4, Yamada teaches the composition as applied to claim 1 above and TS57 teaches 0.12% C which anticipates the claimed range of about 0.12 wt% to about 0.18 wt%.
Regarding claim 6, Yamada teaches the composition as applied to claim 1 above and TS57 teaches 0.21% V which anticipates the claimed range of about 0.10 wt% to about 0.30 wt%.
Regarding claim 7, Yamada teaches the composition as applied to claim 1 above and TS57 teaches 0.02% Ti which anticipates the claimed range of about 0.015 wt% to about 0.060 wt%.
Regarding claim 9, Yamada teaches the composition as applied to claim 1 above and TS57 teaches 0.4% Mn which anticipates the claimed range of about 0.10 wt% to about 1.0 wt%.
Regarding claims 11-14, Yamada teaches the composition as applied to claim 1 above. Yamada is silent to the composition expressly possessing the properties of 1) a freezing range less than about 200F, 2) a freezing range less than about 175F, 3) a martensite start temperature in a range of from about 450F to about 550F, and/or 4) a martensite 90% temperature in a range of from about 250F to about 350F.
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) and 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).
In the instant case, the anticipatory composition of Yamada would be expected to possess and/or otherwise be capable of possessing the claimed properties absent evidence to the contrary.
Further, 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).
Regarding claim 15, Yamada teaches the composition as applied to claim 1 above and further teaches that the composition is a cast composition (Abstract, Paragraphs 0007, 0011, 0016, 0052, and/or 0053).
Regarding claims 17 and 18, Yamada teaches the composition as applied to claim 16 above and further teaches that the article is a cast part of a steam turbine (meeting claimed ‘component of a turbing’) such as a turbine casing (meeting claimed elements requiring at least ‘casing’), valve casing, nozzle boxes (meeting claimed nozzle), and the like (Paragraphs 0052, 0053, and 0059).
Regarding claim 20, Yamada teaches the composition as applied to claim 16 above and TS57 further teaches 0.4 wt% Mn which anticipates the claimed range of about 0.10 wt% to about 1.0 wt%.
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.
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 5, 8, 10 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Yamada as applied to claims 1 and/or 16 above.
Regarding claim 5, Yamada teaches the composition as applied to claim 1 above and TS57 further teaches the inclusion of 0.11 wt% Si which is reasonably close to the claimed range of about 0.20 to about 0.40 wt% Si. It is a difference of about 0.09 wt% from the value taught by Yamada and the lower bound of the claimed range.
Moreover, Paragraph 0022 teaches that the Si can be in a range of 0.03 to 0.2% which would overlap with the claimed range of ‘about 0.20 to about 0.40 wt%’.
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 8, Yamada teaches the composition as applied to claim 1 above which anticipates all the claimed ranges except for the Si content.
However, TS57’s inclusion of 0.11 wt% Si is reasonably close to the claimed range of about 0.20 to about 0.40 wt% Si. It is a difference of about 0.09 wt% from the value taught by Yamada and the lower bound of the claimed range.
Nevertheless, Paragraph 0022 teaches that the Si can be in a range of 0.03 to 0.2% which would overlap with the claimed range of ‘about 0.20 to about 0.40 wt%’.
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 10, Yamada teaches the composition as applied to claim 1 above and TS57 teaches the inclusion of 0.4 wt% Mn which is reasonably close to the claimed range of ‘about 0.5 wt% to about 1.0 wt%’ manganese. It is a difference of about 0.1 wt% from the value taught by Yamada and the lower bound of the claimed range.
Moreover, Paragraph 0024 teaches that the Mn can be in a range of from 0.1 to 1.5% which would overlap the claimed range of about 0.5 wt% to about 1.0 wt%.
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 19, Yamada teaches the composition as applied to claim 16 above which anticipates all the claimed ranges except for the Si content.
However, TS57’s inclusion of 0.11 wt% Si is reasonably close to the claimed range of about 0.20 to about 0.40 wt% Si. It is a difference of about 0.09 wt% from the value taught by Yamada and the lower bound of the claimed range.
Nevertheless, Paragraph 0022 teaches that the Si can be in a range of 0.03 to 0.2% which would overlap with the claimed range of ‘about 0.20 to about 0.40 wt%’.
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).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Sorrentino et al. (U.S. 2021/0086315) disclosing a high Cr creep resistant weld metal for arc welding of thick walled steel members with a similar composition to that instantly claimed.
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
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