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(s) (IDS) submitted on 12/11/23 and 3/12/24 have been considered by the examiner.
Election/Restrictions
Applicant’s election without traverse of claims 1-13 and 17-21 in the reply filed on 1/26/26 is acknowledged.
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 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.
Language from the reference(s) is shown in quotations. Limitations from the claims are shown in quotations within parentheses. Examiner explanations are shown in italics.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7-8, and 17 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tanaka et al. (WO 2020009095 A1), as machine translated.
Regarding claims 1, 7-8, and 17, Tanaka teaches that “the "Ni-based alloy according to the present invention contains one or more elements RE selected from the group consisting of La, Ce, Pr, Nd, Pm, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm, Yb and Lu” (which reads upon “a nickel-based alloy, comprising”, as recited in the instant claim; paragraph [0012]). Tanaka teaches that “the Ni-based alloy according to the present invention preferably further contains one or more elements M1 selected from the group consisting of Ru, Re, W, Mo, and Ta” (which reads upon “and ruthenium”, as recited in the instant claim; paragraph [0015]). Tanaka teaches that “the balance of the alloy other than the RE elements, M1 elements and M2 elements listed in each table is Ni--Fe--Co and unavoidable impurities” (paragraph [0046]). Tanaka Table 1, No. 4 teaches an alloy with 3% Nd, 15% Ru, 1% Si and Ni:Fe:Co in the ration of 70:20:10 as the balance, all by atomic % (which reads upon “nickel at about 48 to about 71 wt% of the alloy ruthenium at about 17 to about 45 wt% of the alloy; and at least one ternary or higher addition at greater than zero to about 20 wt% of the alloy, the at least one ternary or higher addition comprising gold, cobalt, chromium, copper, iridium, molybdenum, niobium, palladium, platinum, rhenium, rhodium, tantalum, vanadium, tungsten, or any combination thereof”, as recited in the instant claim; Table 1). 3+15+1=19, leaving the balance as 81%. 70*0.81=56.7 at% Ni; 20*0.81=16.2 at% Fe; 10*0.81=8.1 at% Co. Converted to wt %, Tanaka Table 1, No. 4 is 49.77% Ni, 22.67% Ru, and 7.14% Co (cobalt), which meeting the limitations of claims 1, 7-8, and 17. Tanaka teaches that “30 g of raw materials weighed to give the compositions shown in Tables 1-5 below were placed in a water-cooled copper mold having a diameter of 10 mm and a length of 40 mm” (paragraph [0045]). Tanaka teaches that “the mold was depressurized and arc-melted in an argon gas atmosphere to obtain a molten base material” (which reads upon “a method of producing a nickel-ruthenium-based alloy, the method comprising forming the alloy”, as recited in instant claim 17; paragraph [0045]).
Claims 1, 3-5, 7-8, and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Tsuru et al. (JP H0474884 A), as machine translated.
Regarding claims 1, 3-5, 7-8, and 17, Tsuru teaches “a ruthenium-nickel-molybdenum alloy plating method” (which reads upon “a nickel and ruthenium-based alloy, comprising”, as recited in instant claim 1; which reads upon “a method of producing a nickel-ruthenium-based alloy, the method comprising forming the alloy, the alloy comprising”, as recited in instant claim 17; paragraph [0001]). Tsuru teaches that “analysis of the alloy composition of the ruthenium alloy plating film revealed that it was 40% by weight of ruthenium, 50% by weight of nickel, and 10% by weight of molybdenum” (which reads upon “nickel at about 48 to about 71 wt% of the alloy; ruthenium at about 17 to about 45 wt% of the alloy; and at least one ternary or higher addition at greater than zero to about 20 wt% of the alloy, the at least one ternary or higher addition comprising gold, cobalt, chromium, copper, iridium, molybdenum, niobium, palladium, platinum, rhenium, rhodium, tantalum, vanadium, tungsten, or any combination thereof”, as recited in the instant claim; which reads on claims 3-5 and 7-8; Example 1).
Claim Rejections - 35 USC § 103
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin et al. (US 20170184534 A1).
Regarding claims 1-5 and 8, Goodwin teaches “a metal alloy, such as a nickel-based alloy” (which reads upon “a nickel-based alloy, comprising”, as recited in the instant claim; paragraph [0008]). Goodwin teaches that “the additional alloying element(s) are, in particular embodiments, selected from the group consisting of aluminum, gold, chromium, copper, molybdenum, palladium, ruthenium, tantalum, and titanium” (which reads upon “and ruthenium”, as recited in the instant claim; paragraph [0010]). Goodwin teaches that “the alloy is a ternary alloy and consists essentially of about 65 at % to about 85 at % nickel; the first alloying element; and a second alloying element; wherein the first alloying element and the second alloying element are each selected from the group consisting of aluminum, gold, chromium, copper, molybdenum, palladium, ruthenium, tantalum, and titanium, and together the first alloying element and the second alloying element comprise from about 15 at % to about 35 at % of the alloy” (which reads upon “nickel at about 48 to about 71 wt% of the alloy ruthenium at about 17 to about 45 wt% of the alloy; and at least one ternary or higher addition at greater than zero to about 20 wt% of the alloy, the at least one ternary or higher addition comprising gold, cobalt, chromium, copper, iridium, molybdenum, niobium, palladium, platinum, rhenium, rhodium, tantalum, vanadium, tungsten, or any combination thereof”, as recited in the instant claim; which reads upon claims 2-5 and 8; paragraph [0012]; selecting ruthenium as the first alloying element and palladium as the second alloying element, for example). Goodwin teaches that “when the nickel-based alloy is a ternary alloy, the weight ratio of the first alloying element to the second alloying element may be from about 1:1: to about 2:1” (paragraph [0010]). We can convert the at% to wt% as follows: 70 at% Ni, 20 at% Ru, 10 at% Pd converts to 57.11 wt% Ni, 28.10 wt% Ru, 14.79 wt% Pd, see attached Excel sheet.
Regarding claims 1, 6-7, and 9, Goodwin teaches “a metal alloy, such as a nickel-based alloy” (which reads upon “a nickel-based alloy, comprising”, as recited in the instant claim; paragraph [0008]). Goodwin teaches that “the additional alloying element(s) are, in particular embodiments, selected from the group consisting of aluminum, gold, chromium, copper, molybdenum, palladium, ruthenium, tantalum, and titanium” (which reads upon “and ruthenium”, as recited in the instant claim; paragraph [0010]). Goodwin teaches that “the alloy is a ternary alloy and consists essentially of about 65 at % to about 85 at % nickel; the first alloying element; and a second alloying element; wherein the first alloying element and the second alloying element are each selected from the group consisting of aluminum, gold, chromium, copper, molybdenum, palladium, ruthenium, tantalum, and titanium, and together the first alloying element and the second alloying element comprise from about 15 at % to about 35 at % of the alloy” (which reads upon “nickel at about 48 to about 71 wt% of the alloy ruthenium at about 17 to about 45 wt% of the alloy; and at least one ternary or higher addition at greater than zero to about 20 wt% of the alloy, the at least one ternary or higher addition comprising gold, cobalt, chromium, copper, iridium, molybdenum, niobium, palladium, platinum, rhenium, rhodium, tantalum, vanadium, tungsten, or any combination thereof”, as recited in the instant claim; which reads upon claims 6-7 and 9; paragraph [0012]; selecting ruthenium as the first alloying element and gold as the second alloying element, for example). We can convert the at% to wt% as follows: 80 at% Ni, 18 at% Ru, 2 at% Au converts to 67.96 wt% Ni, 26.33 wt% Ru, 5.70 wt% Au, see attached Excel sheet.
Claims 10-13 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tsuru et al. (JP H0474884 A), as machine translated, as applied to claims 1 and 17 above, and further in view of Total Materia, Heat Treating of Nickel and Nickel Alloys, https://www.totalmateria.com/en-us/articles/heat-treating-of-nickel-and-nickel-alloys, December 2001.
Regarding claims 10, 19, and 21, Tsuru teaches the alloy of claim 1 and the method of claim 17 as stated above.
Tsuru is silent regarding age hardening.
Total Materia is similarly concerned with nickel alloys (Title). Total Materia teaches that “nickel and nickel alloys may be subjected to one or more of five principal types of heat treatment, depending on chemical composition, fabrication requirements and intended service” (page 1). Total Materia teaches that “age hardening (precipitation hardening) is a treatment performed at intermediate temperatures (425 to 870°C) on certain alloys in order to develop maximum strength by precipitation of a dispersed phase throughout the matrix” (which reads upon “wherein the alloy is age hardened”, as recited in instant claim 10; which reads upon “age hardening the alloy at a temperature between about 600 and about 1,300°C”, as recited in instant claim 19; which reads upon “age hardening the alloy at a temperature between about 700 and about 850°C”, as recited in instant claim 21; page 2). Total Materia teaches that for nickel the age hardening process includes “heat to 730°C, hold 8h” (which reads upon “wherein the alloy is age hardened”, as recited in instant claim 10; which reads upon “age hardening the alloy at a temperature between about 600 and about 1,300°C”, as recited in instant claim 19; which reads upon “age hardening the alloy at a temperature between about 700 and about 850°C”, as recited in instant claim 21; page 9, Table 3, second to last entry).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the alloy/method of Tsuru to add age hardening, as taught by Total Materia to develop maximum strength by precipitation of a dispersed phase throughout the matrix. It would be obvious to use a temperature close to that for pure nickel, 730 °C, because nickel is the main component of the alloy. Alternatively, it has been held that 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05 (I). Here, the claimed range of between about 600 and about 1,300°C / between about 700 and about 850°C overlaps/lies inside the range disclosed by the prior art of 425 to 870°C. Accordingly, the prior art renders the claim obvious.
Regarding claims 11-12, modified Tsuru teaches the alloy of claim 10 as stated above. Tsuru teaches that “Ruthenium alloy plating films were formed on copper plates using bath compositions similar to those in Example 1, with bath temperatures of 30°C and 50°C and current densities of 20, 40, 60, and 80 mA/cJ, and the hardness of each was measured, with the results shown in the table below” (Example 2; with bath temperature of 50°C and current density of 80 mA/cJ, the hardness was measured at 800 Hv, see Table; 800 Hv is about 816 Knoop (HK)).
Regarding claim 13, Tsuru teaches the alloy of claim 1 as stated above. Modified Tsuru teaches the alloy of claim 1 can be age hardened. Tsuru teaches that “Ruthenium alloy plating films were formed on copper plates using bath compositions similar to those in Example 1, with bath temperatures of 30°C and 50°C and current densities of 20, 40, 60, and 80 mA/cJ, and the hardness of each was measured, with the results shown in the table below” (Example 2; with bath temperature of 50°C and current density of 80 mA/cJ, the hardness was measured at 800 Hv, see Table; 800 Hv is about 816 Knoop (HK)).
Tsuru is silent regarding wherein the alloy exhibits an average lamellar wavelength of about 150 nm or less. The instant specification states that “increasing the amount of ruthenium in the Ni-Ru ternary or higher alloy decreases the average lamellar wavelength and lowers the aging temperature (by increasing decomposition kinetics) of the Ni-Ru ternary or higher alloy and vice versa” (page 7). The instant specification states that “it is noted that the hardness of the Ni-Ru ternary or higher alloy depends, in part, on the average lamellar wavelength (i.e., decreasing the average lamellar wavelength increases the hardness of the Ni-Ru ternary or higher alloy, and vice versa) and, as such, the amount of ruthenium in the Ni-Ru ternary or higher alloy may be selected based on the desired hardness of the Ni-Ru ternary or higher alloy” (page 7).
Given the overlapping chemical composition, hardness, and age hardening of modified Tsuru and the instant invention, one of ordinary skill in the art would reasonably expect the alloy of modified Tsuru to necessarily possess the claimed average lamellar wavelength values of the instant invention.
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). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the alloy of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above), and b) the claimed and prior art products are produced by identical or substantially identical processes (see processing analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
Regarding claim 19, modified Tsuru teaches the method of claim 19 as stated above. Tsuru teaches “the formation of a glossy black ruthenium-nickel-molybdenum alloy plating film with a plating thickness of 12 mm” (Example 1; plating film reads on a desired shape).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Tsuru et al. (JP H0474884 A), as machine translated, as applied to claim 17 above, and further in view of Semiatin et al., Analysis of the homogenization of a nickel-base superalloy, Scripta Materialia 51 (2004) 491–495.
Regarding claim 18, Tsuru teaches the method of claim 17 as stated above.
Tsuru is silent regarding homogenizing the alloy after forming the alloy.
Semiatin is similarly concerned with nickel based alloys (page 491). Semiatin teaches that “during solidification, microsegregation is usually unavoidable” (page 491). Semiatin teaches that “to obtain optimum properties, γ′-strengthened superalloys must be homogenized following casting (or prior to hot working in ingot-metallurgy approaches) at temperatures between the γ′-solvus and the solidus” (page 491). Semiatin teaches that “at these temperatures, the γ′-phase dissolves relatively quickly in the γ matrix, but substantial time (usually many hours) is required to obtain a uniform distribution of alloying elements via diffusional processes” (which reads upon “homogenizing the alloy after forming the alloy”, as recited in the instant claim; page 491). Semiatin teaches that “the kinetics of the homogenization of the observed microsegregation were analyzed in terms of a simple two-dimensional diffusion model originally developed for simpler nickel-base alloys” (page 495).
Accordingly, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the method of Tsuru to add homogenizing the alloy, as taught by Semiatin to obtain optimum properties.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to REBECCA JANSSEN whose telephone number is (571)272-5434. The examiner can normally be reached on Mon-Thurs 10-7 and alternating Fri 10-6.
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/REBECCA JANSSEN/Primary Examiner, Art Unit 1733