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 .
DETAILED ACTION
Status of Claims
Specification and Claims 1, 3, and 6 have been amended; Claims 5-15 are added as a new claims; Claims 1-15 remain for examination, wherein claims 1 and 3 are independent claims.
Previous Objection/rejection of claims
Previous objection of Claim 6 because informalities has been withdrawn in view of the Applicant’s “Arguments/Remarks with amendments” filed on 4/22/2026.
Allowance Subject matter
Claims 9 and 13 include allowable subject matter.
Claims 9 and 13 are still objected to as depending from rejected independent claim(s), but would be allowed if rewritten in independent form including all of the limitations of the base claim and any intervening claims since the cited prior art(s) does not specify the claimed Cu range in the Ni based alloy as claimed in the instant claims 9 and 13 .
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 6-7 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 6-7 depended on claim 5, while claim 5 depends on claim 1. Therefore the limitation of “obtaining the Ni-based alloy according to claim 3” has contrary the dependency of the claim 5. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Since claims 6-7 need further clarification and amendment, these claims do not include in the following examination.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
Claim(s) 1-5, 8, 10-12, and 14-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rokutanda et al (US-PG-pub 2008/0121319 A1, thereafter PG’319) in view of Sasaki et al (CN 1093122 A, with on-line translation, thereafter CN’122).
.PG’319 in view of CN’122 is applied to the instant claims 1-5 for the same reason as stated in the previous office action dated 1/22/2026.
Regarding the amended features in the instant claims 1 and 3, PG’319 does not specify the M23C6 type carbide as claimed in the instant claims 1 and 3, forming M23C6 type carbide in a Ni-based alloy is well-known as demonstrated by CN’122. CN’122 teaches Ni-based alloy including matrix metal phase crystallization and/or carbide precipitation carbide with less than 5m (4th paragraph of CN’122) and CN’122 teaches including (Fe, Cr, V, W)23C6 in the Ni based alloy. (1st paragraph on page 9 of CN’122), which reads on the M23C6 type carbide and overlaps the claimed particle size range as claimed in the instant claims. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the precipitates M23C6 type carbide size range as demonstrated by CN’122 in the Ni-based alloy of PG’319 in order to obtain excellent corrosion resistance and wear resistance (abstract and claims of CN’122). Since amount of Cr in the precipitates M23C6 type carbide fully depends on the alloy composition and manufacturing process. PG’319 in view of CN’122 teaches the similar alloy composition treated by the similar melting and casting (par.[0075] of PG’319), forging, solution treatment (par.[0076] of PG’319), hot working and solid solution treatment (par.[0066] of PG’319), and further aging treatment (par.[0067]-[0070] of PG’319), the claimed amount of Cr (90 mass% or more) in the M of the precipitates M23C6 type carbide would be highly expected in the alloy of PG’319 in view of CN’122. MPEP 2112 01 and 2145 II.
Regarding newly added claims 8 and 12, The Example on par.[0086] of PG’319 specify including 0.001 mass% Mg and CN’122 teaches including 0.008 mass% B (Example 3 of CN’122). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the amount of Mg and B as demonstrated by PG’319 in view of CN’122 in the Ni-based alloy in order to obtain excellent corrosion resistance and wear resistance (abstract and claims of CN’122).
Regarding claims 10-11 and 14-15, PG’319 teaches adjusting alloy elements including 25-60 wt% Cr and 1-10 wt% Al (par.[0048] of PG’319), which overlap the claimed range of 30.0-38.0 mass% Cr (Cl.10 and 14) and range of 2.00-3.7 mass% Al range (Cl.11 and 15). Overlapping in Cr and Al range creates a prima facie case of obviousness. MPEP 2144 05 I. . Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges including Cr and Al from the disclosure of PG’319 since PG’319 teaches the same Ni based alloy as claimed throughout whole disclosing range.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-15 have been considered but they are not persuasive. Regarding the amended features as claimed in the instant claims, the Examiner’s position has been stated above.
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 JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan J Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIE YANG/Primary Examiner, Art Unit 1734
Prosecution Insights