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 .
Status of the Claims
Claims 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26-29, 36-37, 40, 43-44, 47-51, 53-58 and 60-61 are pending wherein claims 1 and 47 are amended and claims 3, 7, 10, 13, 15-17, 20-25, 30-35, 38-39, 41-42, 45-46, 52 and 59 are canceled.
Status of Previous Rejections
The previous rejection of claims 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26-29, 36-37, 39-40, 43-44, 47-51, 53-58 and 60-61 under 35 U.S.C. 103 as being unpatentable over Erickson (US 5,476,555) is withdrawn in view of the Applicant’s amendment to claims 1 and 47.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26-29, 36-37, 39-40, 43-44, 47-51, 53-58 and 60-61 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to the recitation “wherein the nickel-base alloy does not comprise a hexagonal close-packed (HCP) phase” in claims 1 and 47, the specification as drafted does not provide support adequate support for this recitation.
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.
Claims 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26, 28-29, 36-37, 39-40, 43-44 and 61 are rejected under 35 U.S.C. 103 as being unpatentable over Crudden et al. (US 2020/0172998).
In regard to claim 1, Crudden et al. (‘998) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0005]).
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
Cr
11 – 18
10.8 – 20.6
11 – 18
Co
22 – 28
8.9 – 30
22 – 28
Mo
1.5 – 6
0 – 4
1.5 – 4
Nb
0 – 1
0 – 6
0 – 1
Al
1 – 2.5
1 – 3.5
1 – 2.5
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
Ti
2 – 6
0 – 3
2 – 3
Fe
greater than 0 – 4
0 – 6
greater than 0 – 4
Hf
0 – 0.5
0 – 0.5
0 – 0.5
C
0.01 – 0.2
0.02 – 0.35
0.02 – 0.2
B
0.001 – 0.02
0.001 – 0.2
0.001 – 0.02
Zr
0.001 – 0.1
0.001 – 0.5
0.001 – 0.1
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium for the nickel base alloys disclosed by Crudden et al. (‘998) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing of the instant invention to have selected the claimed amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium from the amounts disclosed by Crudden et al. (‘998) because Crudden et al. (‘998) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the nickel-base alloy does not comprise a hexagonal close-packed (HCP) phase” in claim 1, Crudden et al. (‘998) does not require the HCP phase or platelets and therefore would read on the claim.
In regard to claim 2, Crudden et al. (‘998) discloses an aluminum equivalent number that ranges from 1 to 6.98, which encompasses the claimed range (abstract and [0005]).
In regard to claim 4, Crudden et al. (‘998) discloses 1 to 6.8 weight percent of aluminum plus titanium, which overlaps the range of the instant invention (abstract and [0005]). MPEP 2144.05 I.
In regard to claim 5, Crudden et al. (‘998) discloses 10.8 to 20.6 weight percent chromium, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 6, Crudden et al. (‘998) discloses 0.001 to 0.2 weight percent boron, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 8, Crudden et al. (‘998) discloses 8.9 to 30 weight percent cobalt, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 9, Crudden et al. (‘998) discloses 0 to 3 weight percent titanium, which overlaps the range of the instant invention (abstract and [0005]). 2144.05 I.
In regard to claim 11, Crudden et al. (‘998) does not require the presence of magnesium and therefore reads on the claim (abstract and [0005]).
In regard to claim 12, Crudden et al. (‘998) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0005]).
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
Cr
13 – 17
10.8 – 20.6
13 – 17
Co
22 – 25
8.9 – 30
22 – 25
Mo
1.5 – 6
0 – 4
1.5 – 4
Nb
0 – 1
0 – 6
0 – 1
Al
1 – 2.5
1 – 3.5
1 – 2.5
Ti
3 – 6
0 – 3
3
Fe
greater than 0 – 4
0 – 6
greater than 0 – 4
Hf
0 – 0.5
0 – 0.5
0 – 0.5
C
0.01 – 0.2
0.02 – 0.35
0.02 – 0.2
B
0.001 – 0.015
0.001 – 0.2
0.001 – 0.015
Zr
0.001 – 0.1
0.001 – 0.5
0.001 – 0.1
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium for the nickel base alloys disclosed by Crudden et al. (‘998) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing of the instant invention to have selected the claimed amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium from the amounts disclosed by Crudden et al. (‘998) because Crudden et al. (‘998) discloses the same utility throughout the disclosed ranges.
In regard to claim 14, Crudden et al. (‘998) discloses an aluminum equivalent number that ranges from 1 to 6.98, which encompasses the claimed range (abstract and [0005]).
In regard to claim 18, Crudden et al. (‘998) discloses 0 to 4 weight percent molybdenum, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 19, Crudden et al. (‘998) discloses 0 to 4 weight percent molybdenum, which enoverlaps the range of the instant invention (abstract and [0005]). MPEP 2144.05 I.
In regard to claim 26, Crudden et al. (‘998) discloses 0 to 3 weight percent titanium, which overlaps the range of the instant invention (abstract and [0005]). MPEP 2144.05 I.
In regard to claim 28, Crudden et al. (‘998) discloses 10.8 to 20.6 weight percent chromium, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 29, Crudden et al. (‘998) discloses 0 to 6 weight percent niobium, which encompasses the range of the instant invention (abstract and [0005]).
In regard to claim 36, Crudden et al. (‘998) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0005]).
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
Cr
13 – 17
10.8 – 20.6
13 – 17
Co
22 – 28
8.9 – 30
22 – 28
Mo
1.5 – 6
0 – 4
1.5 – 4
Nb
0 – 1
0 – 6
0 – 1
Al
1 – 2.5
1 – 3.5
1 – 2.5
Ti
3 – 6
0 – 3
3
Fe
greater than 0 – 3
0 – 6
greater than 0 – 3
Hf
0 – 0.5
0 – 0.5
0 – 0.5
C
0.01 – 0.2
0.02 – 0.35
0.02 – 0.2
B
0.001 – 0.015
0.001 – 0.2
0.001 – 0.015
Zr
0.001 – 0.1
0.001 – 0.5
0.001 – 0.1
Ni
at least 46
Balance
at least 46
The Examiner notes that the amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium for the nickel base alloys disclosed by Crudden et al. (‘998) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing of the instant invention to have selected the claimed amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium from the amounts disclosed by Crudden et al. (‘998) because Crudden et al. (‘998) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein an aluminum equivalent (Aleq) of the nickel-base alloy is in a range of 3.6 to 4.5” in claim 36, Crudden et al. (‘998) discloses an aluminum equivalent number that ranges from 1 to 6.98, which encompasses the claimed range (abstract and [0005]).
With respect to the recitation “wherein a combined concentration of aluminum, niobium, and titanium is 5.0 to 7.0 weight percent, based on total alloy weight” in claim 36, Crudden et al. (‘998) discloses 1 to 12.5 weight percent of aluminum plus niobium plus titanium, which encompasses the range of the instant invention.
In regard to claim 37, Crudden et al. (‘998) discloses nickel base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0005]).
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
Cr
14 – 17
10.8 – 20.6
14 – 17
Co
22 – 25
8.9 – 30
22 – 25
Mo
2 – 4
0 – 4
2 – 4
Nb
0 – 0.8
0 – 6
0 – 0.8
Al
1 – 2.5
1 – 3.5
1 – 2.5
Ti
3 – 6
0 – 3
3
Fe
greater than 0 – 3
0 – 6
greater than 0 – 3
Hf
0 – 0.5
0 – 0.5
0 – 0.5
C
0.01 – 0.2
0.02 – 0.35
0.02 – 0.2
Element
Instant Claim
(weight percent)
Crudden et al. (‘998)
(weight percent)
Overlap
B
0.001 – 0.015
0.001 – 0.2
0.001 – 0.015
Zr
0.001 – 0.1
0.001 – 0.5
0.001 – 0.1
Ni
at least 46
Balance
at least 46
The Examiner notes that the amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium for the nickel base alloys disclosed by Crudden et al. (‘998) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to filing of the instant invention to have selected the claimed amounts of chromium, cobalt, molybdenum, niobium, aluminum, titanium, iron, hafnium, carbon, boron and zirconium from the amounts disclosed by Crudden et al. (‘998) because Crudden et al. (‘998) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein an aluminum equivalent (Aleq) of the nickel-base alloy is in a range of 3.6 to 4.5” in claim 37, Crudden et al. (‘998) discloses an aluminum equivalent number that ranges from 1 to 6.98, which encompasses the claimed range (abstract and [0005]).
With respect to the recitation “wherein a combined concentration of aluminum, niobium, and titanium is 5.0 to 7.0 weight percent, based on total alloy weight” in claim 37, Crudden et al. (‘998) discloses 1 to 12.5 weight percent of aluminum plus niobium plus titanium, which encompasses the range of the instant invention.
In regard to claim 39, Crudden et al. (‘998) discloses selective laser bed melting, which is a type of additive manufacturing ([0001] and [0090]).
In regard to claim 40, Crudden et al. (‘998) discloses making components for chemical processing equipment [0004].
In regard to claims 43-44, these are properties associated with the composition and because Crudden et al. (‘998) discloses a substantially similar composition, these properties would be expected. MPEP 2112.01 I.
In regard to claim 61, Crudden et al. (‘998) discloses 1 to 6.5 weight percent of aluminum plus titanium, which overlaps the range of the instant invention (abstract and [0005]). MPEP 2144.05 I.
Response to Declaration Under 37 CFR §1.132
The Declaration filed under 37 CFR 1.132 filed November 17, 2025 in combination with Applicant’s amendment to claims 1 and 47 is sufficient to overcome the rejection of claims 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26-29, 36-37, 39-40, 43-44, 47-51, 53-58 and 60-61 based upon Erickson (US 5,476,555).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-2, 4-6, 8-9, 11-12, 14, 18-19, 26-29, 36-37, 39-40, 43-44, 47-51, 53-58 and 60-61 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
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 Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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