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 statements (IDS) submitted on 09/26/2023 and 03/19/2025 have been considered by the examiner.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
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 § 112/101
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.
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 13 is a “use” claim (MPEP 2173.05 q) and is alternatively rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, and/or 35 U.S.C. 101. Claim 13 attempts to claim a process without setting forth any steps involved in the process and is therefore indefinite under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. Alternatively, claim 13 is an improper definition of a process under 35 U.S.C. 101.
To be clear, the claimed use of a composition does not constitute a proper process claim and/or set forth the steps required to accomplish a process of using the composition. In the interest of the clarity of the record, while the preamble of claim 13 is “a method of using a composition…”, it is notable that no positive steps to accomplish this method are provided and the last three lines of the claim expressly list various applications for the use of the composition (see at least “…comprises using the composition for a purpose selected from the group consisting of…”).
Claims 14 and 15 depend from rejected claim 13 and do not resolve the 112/101 issue in claim 13. Thus, claims 14 and 15 are rejected for the same reasons in view of their dependency from claim 13.
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.
Claims 1-16, 19, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama et al. (U.S. 6,458,318).
Regarding claims 1 and/or 16, Nishiyama teaches a heat resistant nickel base alloy (Title) having a composition as follows:
Element
Claimed
Nishiyama
Citation
Shared
Cr
About 16 to about 21
10 to 25
Col. 4 lines 44-58
About 16 to about 21
Al
About 3.5 to about 6.0
2.1-4.5
Col. 4 lines 65-67
About 3.5 to about 4.5
Fe
About 0.5 to about 1.95
0.1-10
Col. 6 lines 20-27
About 0.5 to about 1.95
Co
About 9 to about 12
0-10
Col. 6 lines 62-67
About 9 to about 10
Mo
About 0.5 to about 1.5
0-15
Col. 5 lines 40-42
About 0.5 to about 1.5
C
About 0.03 to about 0.18
Up to 0.1
Col. 4 lines 1-10
About 0.03 to about 0.1
Ti
About 0.5 to about 2.5
Up to 3
Col. 6 lines 1-5
About 0.5 to about 2.5
W
About 0.5 to about 2.5
0-15
Col. 5 lines 40-42
About 0.5 to about 2.5
Nb
About 1.0 to about 3.5
0-1
Col. 6 lines 29-38
About 1.0
Hf
Less than about 0.25
Up to 0.8
Col. 5 lines 28-30
Less than about 0.25
Ni
Balance
Balance
Abstract, Col. 5 lines 53-57
Lies Within
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 2, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition comprises 2.1-4.5 Al which overlaps the claimed range of about 4.0 to about 5.0 (Col. 4 lines 65-67).
Regarding claim 3, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition comprises 0.1-10 Fe which overlaps the claimed range of about 1.0 to about 1.75 Fe (Col. 6 lines 20-27).
Regarding claim 4, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition comprises 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38). Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
Regarding claim 5, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition comprises 2.1-4.5% Al which overlaps the claimed range of about 4.0 to about 5.0% Al (Col. 4 lines 65-67), 0.1-10 Fe which overlaps the claimed range of about 1.0 to about 1.75 Fe (Col. 6 lines 20-27), and 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38).
Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
Regarding claim 6, Nishiyama teaches the composition as applied to claim 1 above and further teaches:
Element
Claimed
Nishiyama
Citation
Shared
Cr
About 17 to about 19
10 to 25
Col. 4 lines 44-58
About 17 to about 19
Al
About 4.0 to about 5.0
2.1-4.5
Col. 4 lines 65-67
About 4.0 to about 4.5
Fe
About 1.00 to about 1.75
0.1-10
Col. 6 lines 20-27
About 1.00 to about 1.75
Co
About 10 to about 11
0-10
Col. 6 lines 62-67
About 10
Mo
About 0.5 to about 1.0
0-15
Col. 5 lines 40-42
About 0.5 to about 1.0
C
About 0.5 to about 0.10
Up to 0.1
Col. 4 lines 1-10
About 0.5 to about 0.1
Ti
About 0.5 to about 1.0
Up to 3
Col. 6 lines 1-5
About 0.5 to about 1.0
W
About 1.0 to about 2.0
0-15
Col. 5 lines 40-42
About 1.0 to about 2.0
Nb
About 1.5 to about 2.5
0-1
Col. 6 lines 29-38
Reasonably close
Hf
Less than about 0.25
Up to 0.8
Col. 5 lines 28-30
Less than about 0.25
Ni
Balance
Balance
Abstract, Col. 5 lines 53-57
Lies Within
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).
With regard to the claimed Nb range, Nishiyama teaches 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38). Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
Regarding claim 7, Nishiyama teaches the composition as applied to claim 1 above and further teaches:
Element
Claimed
Nishiyama
Citation
Shared
Cr
About 17 to about 19
10 to 25
Col. 4 lines 44-58
About 17 to about 19
Al
About 4.0 to about 5.0
2.1-4.5
Col. 4 lines 65-67
About 4.0 to about 4.5
Fe
About 1.00 to about 1.75
0.1-10
Col. 6 lines 20-27
About 1.00 to about 1.75
Co
About 10 to about 11
0-10
Col. 6 lines 62-67
About 10
Mo
About 0.5 to about 1.0
0-15
Col. 5 lines 40-42
About 0.5 to about 1.0
C
About 0.5 to about 0.10
Up to 0.1
Col. 4 lines 1-10
About 0.5 to about 0.1
Ti
About 0.5 to about 1.0
Up to 3
Col. 6 lines 1-5
About 0.5 to about 1.0
W
About 1.0 to about 2.0
0-15
Col. 5 lines 40-42
About 1.0 to about 2.0
Nb
About 1.5 to about 2.5
0-1
Col. 6 lines 29-38
Reasonably close
Hf
Less than about 0.25
Up to 0.8
Col. 5 lines 28-30
Less than about 0.25
Ni
Balance
Balance
Abstract, Col. 5 lines 53-57
Lies Within
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).
With regard to the claimed Nb range, Nishiyama teaches 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38). Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
With regard to the instant claim’s closed transitional phrase ‘consisting of’, Nishiyama does teach the presence of additional elements. However, it would be well within the routine skill in the art to select an appropriate combination of components/elements such that a desirable composition embodying improved properties is achieved.
In KSR, the Supreme Court particularly emphasized “the need for caution in granting a patent based on the combination of elements found in the prior art” and reaffirmed principles based on precedent that “the combination of familiar elements according to known method is likely to be obvious when it does no more than yield predictable results” (MPEP 2141.I.).
In the instant case, the combination of elements has not been demonstrated to have achieved unexpected results.
Regarding claims 8-11, Nishiyama teaches the composition as applied to claim 1 above but is silent to the gamma prima solvus temperature being from about 1700 to about 2100F or from about 1800 to about 2000F and/or that the composition has a gamma prime volume fraction of from about 40 to about 75% or from about 45 to about 70%.
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).
In the instant case, Nishiyama discloses a substantially similar composition to that claimed by Applicant and so there is sufficient prima facie basis to presume that the Nishiyama composition would possess the same properties as claimed, i.e. that the composition has a gamma prime solvus temperature of from about 1700 to about 2100 and a gamma prime volume fraction of from about 40 to about 75% absent evidence to the contrary.
It has been held 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).
Additionally, the USPTO does not possess the capabilities to procure or manufacture compositions of the prior art and make physical comparisons therewith.
Regarding claim 12, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition is obtained by melting, refining processing, and then casting such that it is formed into products such as tubes by way of various processing steps such as forging, hot working, and cold working (Col. 7 lines 58-65). Thus, the composition qualifies as, at least, a metal casting composition as claimed.
Regarding claim 13, Nishiyama teaches the composition as applied to claim 1 above and further teaches that the composition is obtained by melting, refining processing, and then casting such that it is formed into products such as tubes by way of various processing steps such as forging, hot working, and cold working (Col. 7 lines 58-65). Thus, Nishiyama teaches that the composition is used for at least metal casting as claimed.
Regarding claim 14, Nishiyama teaches the method as applied to claim 13 above and further teaches that the composition comprises 2.1-4.5% Al which overlaps the claimed range of about 4.0 to about 5.0% Al (Col. 4 lines 65-67), 0.1-10 Fe which overlaps the claimed range of about 1.0 to about 1.75 Fe (Col. 6 lines 20-27), and 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38).
Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
Regarding claim 15, Nishiyama teaches the method as applied to claim 13 above but is silent to the gamma prima solvus temperature being from about 1700 to about 2100F.
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).
In the instant case, Nishiyama discloses a substantially similar composition to that claimed by Applicant and so there is sufficient prima facie basis to presume that the Nishiyama composition would possess the same properties as claimed, i.e. that the composition has a gamma prime solvus temperature of from about 1700 to about 2100 absent evidence to the contrary.
It has been held 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).
Additionally, the USPTO does not possess the capabilities to procure or manufacture compositions of the prior art and make physical comparisons therewith.
Regarding claim 19, it is noted that this is a product by process claim (MPEP 2113). Notably, the claim is directed to a product produced by a technique.
“[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) (MPEP 2113).
In the instant case, Nishiyama teaches that the alloy/article of claim 16 is obtained by melting, refining processing, and then casting such that it is formed into products such as tubes by way of various processing steps such as forging, hot working, and cold working (Col. 7 lines 58-65). Additionally, Nishiyama teaches that the alloys are formed into plate materials (Col. 8 lines 5-10). Thus, the article qualifies as, at least, having been made by a metal casting technique as claimed.
Regarding claim 20, Nishiyama teaches the article as applied to claim 16 above and further teaches that the composition comprises 2.1-4.5% Al which overlaps the claimed range of about 4.0 to about 5.0% Al (Col. 4 lines 65-67), 0.1-10 Fe which overlaps the claimed range of about 1.0 to about 1.75 Fe (Col. 6 lines 20-27), and 0-1 Nb which is reasonably close to the claimed range of about 1.5 to about 2.5 (Col. 6 lines 29-38).
Notably, the modifier ‘about’ would embrace values below the expressed bound of ‘1.5’ such that lower values nearing 1 would be considered ‘reasonably close’ and that the properties would be expected to be the same absent evidence to the contrary.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nishiyama as applied to claim 16 above, and further in view of Cui et al. (U.S. 10,640,849; Cited in IDS of 09/26/2023).
Regarding claims 17 and 18, Nishiyama teaches the article as applied to claim 16 above but is silent to the article being the blade of a gas turbine or a squealer tip of a blade of a gas turbine.
Cui et al. (hereinafter “Cui”) teaches a nickel-based superalloy and articles (Title) and that the alloy may be used in super-alloy articles, such as a blade, nozzle, a shroud, a splash plate, a squealer tip of the blade, and a combustor of a gas turbine engine (Col. 2 lines 58-62).
Additionally, Cui teaches generally that nickel-based superalloys are used extensively throughout the turbomachines in turbine blade, nozzle, and shroud applications and demand improved creep resistance and high temperature capability (Col. 1 lines 9-15).
It would be obvious to use the alloy/article of Nishiyama for a blade of a gas turbine or a squealer tip of a blade of a gas turbine in view that it is a nickel-based alloy having high temperature performance and improved creep resistance (see Col. 2 lines 35-37 and Col. 10 lines 15-28 of Nishiyama) as noted by Cui.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1, 2, 8-13, and 15-19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4, 5, 7-14, and 16-19 of copending Application No. 18/303,254 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant claims and reference claims share overlapping compositions such that there would be an unjust extension of the right to exclude if both should issue. To be clear, both references would serve as art over the other and vice versa.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Malley (U.S. 5,938,863) directed to a low cycle fatigue strength nickel base superalloy; Patrick (U.S. 2010/0008778) directed to monolithic and bi-metallic turbine blade dampers formed of a nickel or cobalt base superalloy; Andryszak et al. (EP 196513) directed to a nickel-chromium alloy having a dispersed phase to be used as an industrial gas turbine structure including gamma prime hardening precipitate and an oxidic yttrium dispersed phase in addition to 19-24% Cr, 1-3.4$ Al, 1.75-5% Ti and balanced amounts of Co, W, Ta, B, and Zr.
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