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 .
Election/Restrictions
Applicant’s election of species A, claim 8 in the reply filed on 5/15/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9 and 10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 5/15/2026.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 and 11-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Instant claim 1 recites the limitations “A cobalt-niobium intermetallic alloy comprising…. balance up to 1.5 wt.% total other elements. This limitation is indefinite because transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03 [R-9]), yet the limitation “balance up to 1.5 wt.% total other elements,” appears to be attempting to limit unrecited elements to no more than 1.5 wt.%. If applicant is attempting to limit unrecited elements to no more than 1.5 wt.% total other elements, the transitional phrase “consisting of” should be used instead of “comprising.” If applicant is attempting to limit specific other elements to be less than 1.5 wt%, then the specific elements should be specified in the claims. For the purposes of search and examination, the claim will be treated as permitting unrecited elements in an amounts greater than 1.5 wt% due to the transitional phrase “comprising” and the limitation “balance up to 1.5 wt.% total other elements” will be treated as indefinite limitation. Instant claims 2-8 and 11-20 depend on instant claim 1 and are indefinite for at least the same reasons.
Additionally, regarding claim 18, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim Rejections - 35 USC § 112(d)
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 2 and 3 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.
Instant claim 2 recites the limitation “wherein the alloy includes at least 5 wt.% Cr, at least 0.1 wt.% Fe, at least 0.01 wt.% Ni and/or at least 0.5 wt.% Si,” and instant claim 3 recites the limitation “wherein the alloy includes at least 5 wt.% Cr, at least 0.1 wt.% Fe, at least 0.01 wt.% Ni and at least 0.5 wt.% Si.” These limitations fail to include all the limitations of claim 1 from which they depend because they allow for amounts of Cr, Fe, Ni and Si greater than the upper limits specified in instant claim 1.
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.
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.
Claim(s) 1, 2, 4, 7, 18 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Isothermal sections of the Co-Nb-Ni phase diagram at 1200 and 1375 K by Shaipov et al (cited by applicant in IDS).
Regarding claim 1, Shaipov discloses a specific example of a cobalt-niobium intermetallic alloy comprising the following composition which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Shaipov 16 at%
Shaipov 16 wt%*
Lies within?
Co
35-80
67.5
60.6
Yes
Nb
10-45
19.8
28.0
Yes
Co+Nb
≥70
87.3
88.6
Yes
Cr+Fe+Ni+Si
5-30
12.7
11.4
Yes
Cr
0-10
≤impurity
≤impurity
Yes
Fe
0-10
≤impurity
≤impurity
Yes
Ni
0-12
12.7
11.4
Yes
Si
0-3
≤impurity
≤impurity
Yes
*calculated from Shaipov 16 at%
(Shaipov, abstract, “3. Experimental,” Table 2, alloy 16)
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the alloy of Shaipov contains no additional elements.
Shaipov anticipates instant claim 1 because Shaipov discloses an alloy lying wholly within the scope of instant claim 1.
Regarding claims 2 and 4, Shaipov 16 lies within the instantly claimed ranges.
Regarding claim 7, Shaipov 16 comprises NbCu2 intermetallic phase (Shaipov, Tables 1 and 2, alloy 16).
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Shaipov does not possess.
Regarding claim 19, the alloy of Shaipov has been melted and cast (Shaipov, “3. Experimental”)
Claim(s) 1, 2, 4, 18 and 19 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Experimental Investigation of Phase Equilibria in the Co-Cr-Nb System at 1000, 1100, and 1200 °C” by Zhang et al (cited by applicant in IDS).
Regarding claim 1, Zhang discloses a specific example of a cobalt-niobium intermetallic alloy comprising the following composition which lies within the instantly claimed composition as follows:
Element
Claimed wt%
Zhang Co80Cr10Nb10 wt%*
Lies within?
Co
35-80
76.5
Yes
Nb
10-45
15
Yes
Co+Nb
≥70
91.5
Yes
Cr+Fe+Ni+Si
5-30
8.5
Yes
Cr
0-10
8.5
Yes
Fe
0-10
≤impurity
Yes
Ni
0-12
≤impurity
Yes
Si
0-3
≤impurity
Yes
*calculated from Co80Cr10Nb10 at%
(Zhang, abstract, “2. Experimental Procedure,” Table 2, Co80Cr10Nb10)
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the alloy of Zhang contains no additional elements.
Zhang anticipates instant claim 1 because Zhang discloses an alloy lying wholly within the scope of instant claim 1.
Regarding claims 2 and 4, Zhang Co80Cr10Nb10 lies within the instantly claimed ranges.
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Zhang does not possess.
Regarding claim 19, the alloy of Zhang has been melted and cast (Zhang, “2. Experimental Procedure”)
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.
Claim(s) 1, 2, 4, 5, 13, 14 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 08176754 to Murakami et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 4, Murakami discloses a cobalt-niobium intermetallic alloy comprising the following composition which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Murakami wt%
Overlaps?
Co
35-80
15-70
Yes
Nb
10-45
0-10
Yes
Co+Nb
≥70
15-80
Yes
Cr+Fe+Ni+Si
5-30
1-85
Yes
Cr
0-10
1-35
Yes
Fe
0-10
Balance
Yes
Ni
0-12
≤impurity
Yes
Si
0-3
0-10
Yes
C
0-0.25
0-1
Yes
Mn
0-0.1
0-10
Yes
Mo
0-0.2
0-10
Yes
P
0-0.1
≤impurity
Yes
S
0-0.1
≤impurity
Yes
N
0-0.15
≤impurity
Yes
V
0-0.1
0-10
Yes
Ti
0-0.1
0-10
Yes
Al
0-0.1
0-10
Yes
Hf
0-0.1
0-10
Yes
Zr
0-0.1
0-5
Yes
Ta
0-0.1
0-10
Yes
W
0-0.1
0-10
Yes
B
0-0.05
0-1
Yes
(Murakami, abstract, para [0015])
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the additional elements recited in Murakami are optional and overlap the instantly claimed range.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Murakami including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 2, 5, 13, 14, 17 the alloy of Murakami overlaps the instantly claimed ranges.
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Murakami does not possess.
Regarding claim 19, the alloy of Murakami has been melted and cast (Murakami, para [0018]).
Claim(s) 1, 2, 4, 5, 7, 8, 12, 14, 16, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2001152277 to Yamaguchi et al (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 4, Yamaguchi discloses a cobalt-niobium intermetallic alloy comprising the following composition which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Yamaguchi wt%
Overlaps?
Co
35-80
Balance (0-90)
Yes
Nb
10-45
W+Mo+Nb+Ta: 0-30
Yes
Co+Nb
≥70
0-90
Yes
Cr+Fe+Ni+Si
5-30
10-71
Yes
Cr
0-10
10-30
Yes
Fe
0-10
≤impurity
Yes
Ni
0-12
0-40
Yes
Si
0-3
0-1.0
Yes
C
0-0.25
0-0.3
Yes
Mn
0-0.1
0-2.0
Yes
Mo
0-0.2
≤impurity
Yes
P
0-0.1
≤impurity
Yes
S
0-0.1
≤impurity
Yes
N
0-0.15
≤impurity
Yes
V
0-0.1
≤impurity
Yes
Ti
0-0.1
0-1
Yes
Al
0-0.1
0-1
Yes
Hf
0-0.1
≤impurity
Yes
Zr
0-0.1
0-0.5
Yes
Ta
0-0.1
≤impurity
Yes
W
0-0.1
≤impurity
Yes
B
0-0.05
0-0.05
Yes
(Yamaguchi, abstract, para [0018-0021])
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the additional elements recited in Yamaguchi are optional and overlap the instantly claimed range.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Yamaguchi including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 2, 5, 12, 14 and 16 the alloy of Yamaguchi overlaps the instantly claimed ranges.
Regarding claims 7 and 8, the instant specification at instant para [0027] discloses that Nb6Co7 and NbCo2 are formed at Co to Nb ratios of 0.6 to 1.35. Yamaguchi allows for Co to Nb ratios overlapping the disclosed range of 0.6 to 1.35 and as such would be expected to possess Nb6Co7 and NbCo2 within the overlapping Co to Nb ratios.
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Yamaguchi does not possess.
Regarding claim 19, the alloy of Yamaguchi has been melted and cast (Yamaguchi, para [0028]).
Claim(s) 1, 2, 4, 7, 8, 13, 14 and 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 2010090478 to Tokutomi (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 4, Tokutomi discloses a cobalt-niobium intermetallic alloy comprising the following composition which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Tokutomi wt%
Overlaps?
Co
35-80
Balance (0-72.4)
Yes
Nb
10-45
20.0-40.0
Yes
Co+Nb
≥70
20-92.4
Yes
Cr+Fe+Ni+Si
5-30
7.6-67.3
Yes
Cr
0-10
5-15
Yes
Fe
0-10
0-40
Yes
Ni
0-12
≤impurity
Yes
Si
0-3
2.6-12.7
Yes
C
0-0.25
≤impurity
Yes
Mn
0-0.1
≤impurity
Yes
Mo
0-0.2
≤impurity
Yes
P
0-0.1
≤impurity
Yes
S
0-0.1
≤impurity
Yes
N
0-0.15
≤impurity
Yes
V
0-0.1
≤impurity
Yes
Ti
0-0.1
≤impurity
Yes
Al
0-0.1
≤impurity
Yes
Hf
0-0.1
≤impurity
Yes
Zr
0-0.1
≤impurity
Yes
Ta
0-0.1
≤impurity
Yes
W
0-0.1
≤impurity
Yes
B
0-0.05
≤impurity
Yes
(Tokutomi, abstract, para [0016-0020])
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the additional elements recited in Tokutomi are optional and overlap the instantly claimed range.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Tokutomi including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 2, 13, 14 and 17 the alloy of Tokutomi overlaps the instantly claimed ranges.
Regarding claims 7 and 8, the instant specification at instant para [0027] discloses that Nb6Co7 and NbCo2 are formed at Co to Nb ratios of 0.6 to 1.35. Tokutomi allows for Co to Nb ratios overlapping the disclosed range of 0.6 to 1.35 and as such would be expected to possess Nb6Co7 and NbCo2 within the overlapping Co to Nb ratios.
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Tokutomi does not possess.
Regarding claim 19, the alloy of Tokutomi has been melted and cast (Tokutomi, para [0027]).
Claim(s) 1-5, 7, 8 and 11-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over WO 2014027636 A1 to Hasegawa (an English language machine translation has been relied upon for examination purposes).
Regarding claims 1 and 4, Hasegawa discloses a cobalt-niobium intermetallic alloy comprising the following composition which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Hasegawa at%
Overlaps?
Co
35-80
0-96
Yes
Nb
10-45
Nb+Ta+Mo+W+Cr+V: 4-28
Yes
Co+Nb
≥70
4-100
Yes
Cr+Fe+Ni+Si
5-30
0-100
Yes
Cr
0-10
Nb+Ta+Mo+W+Cr+V: 4-28
Yes
Fe
0-10
0-96
Yes
Ni
0-12
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
Si
0-3
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
C
0-0.25
≤impurity
Yes
Mn
0-0.1
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
Mo
0-0.2
≤impurity
Yes
P
0-0.1
≤impurity
Yes
S
0-0.1
≤impurity
Yes
N
0-0.15
≤impurity
Yes
V
0-0.1
Nb+Ta+Mo+W+Cr+V: 4-28
Yes
Ti
0-0.1
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
Al
0-0.1
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
Hf
0-0.1
≤impurity
Yes
Zr
0-0.1
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
Ta
0-0.1
Nb+Ta+Mo+W+Cr+V: 4-28
Yes
W
0-0.1
Nb+Ta+Mo+W+Cr+V: 4-28
Yes
B
0-0.05
Al+Si+B+Ni+Mn+Cu+Ti+Zr: 0-4
Yes
(Hasegawa, abstract, translation pages 4-6)
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the additional elements recited in Hasegawa are optional and overlap the instantly claimed range.
Although the amount of each element of Hasegawa are expressed as at% instead of wt%, the converted ranges would appear to overlap the instantly claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Hasegawa including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 3-5 and 11-17 the alloy of Hasegawa overlaps the instantly claimed ranges.
Regarding claims 7 and 8, the instant specification at instant para [0027] discloses that Nb6Co7 and NbCo2 are formed at Co to Nb ratios of 0.6 to 1.35. Hasegawa allows for Co to Nb ratios overlapping the disclosed range of 0.6 to 1.35 and as such would be expected to possess Nb6Co7 and NbCo2 within the overlapping Co to Nb ratios.
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Hasegawa does not possess.
Claim(s) 1-5, 7, 8, 11-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0034483 A1 to Fukuoka et al.
Regarding claims 1 and 4, Fukuoka discloses a cobalt-niobium intermetallic alloy comprising the following composition which overlaps the instantly claimed composition as follows:
Element
Claimed wt%
Fukuoka at%
Overlaps?
Co
35-80
15-<85
Yes
Nb
10-45
5-15
Yes
Co+Nb
≥70
20-<98
Yes
Cr+Fe+Ni+Si
5-30
>0-88
Yes
Cr
0-10
Mo+Cr+W: 2-20
Yes
Fe
0-10
>0-68
Yes
Ni
0-12
0-1000 ppm by mass
Yes
Si
0-3
B+Si+Al: 0-10
Yes
C
0-0.25
≤impurity
Yes
Mn
0-0.1
≤impurity
Yes
Mo
0-0.2
Mo+Cr+W: 2-20
Yes
P
0-0.1
≤impurity
Yes
S
0-0.1
≤impurity
Yes
N
0-0.15
≤impurity
Yes
V
0-0.1
≤impurity
Yes
Ti
0-0.1
≤impurity
Yes
Al
0-0.1
B+Si+Al: 0-10
Yes
Hf
0-0.1
≤impurity
Yes
Zr
0-0.1
≤impurity
Yes
Ta
0-0.1
0-10
Yes
W
0-0.1
Mo+Cr+W: 2-20
Yes
B
0-0.05
B+Si+Al: 0-10
Yes
(Fukuoka, abstract, para [0033-0044])
Regarding the limitation “comprising… balance up to 1.5 wt. % total other elements,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless the additional elements recited in Fukuoka are optional and overlap the instantly claimed range.
Although the amount of each element of Fukuoka are expressed as at% instead of wt%, the ranges appear to overlap the instantly claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists (see MPEP 2144.05 [R-5]). It would have been obvious to one of ordinary skill in the art at the time the invention was made to select any portion of the disclosed ranges of Fukuoka including the instantly claimed because a prima facie case of obviousness exists in the case of overlapping ranges.
Regarding claims 2-5 and 11-17 the alloy of Fukuoka overlaps the instantly claimed ranges.
Regarding claims 7 and 8, Fukuoka discloses that Co2Nb and Co7Nb6 may be present in the alloy (Fukuoka, para [0050])
Regarding claim 18, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. In the instant case, the recitation of “engine part” is an intended use that does not appear to imply any structural limitations that the alloy of Fukuoka does not possess.
Regarding claim 19, the alloy of Fukuoka has been melted and cast (Fukuoka, para [0057]).
Allowable Subject Matter
Claims 6 and 20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Instant claims 6 and 20 are directed to a cobalt-niobium intermetallic alloy as set forth in the instant claims. None of the prior art of record discloses or suggests the particular composition set forth in instant claims 6 and 20. US 2015/0034483 A1 to Fukuoka et al is seen as the closest prior art of record. Fukuoka discloses an alloy with overlapping amounts of Si, Ni, Cr, Mo, Co, Fe, and Nb. Fukuoka is silent as to the instantly claimed C and Mn content.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. CN 109402335 to Bao discloses an alloy composition relevant to the instantly claimed ranges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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