DETAILED ACTION
Claims 1-20 are pending and currently under review.
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 .
Response to Amendment
The amendment filed 3/23/2026 has been entered. Claims 1-20 remain(s) pending in the application. Applicant’s amendments to the Claims have overcome each and every 112(b) rejection previously set forth in the Non-Final Office Action mailed 12/22/2025.
Claim Interpretation
The term “refractory” as recited throughout the claims is interpreted to merely refer to an austenitic alloy including Ni, Cr, and Fe as expressly defined in [0003 instant spec.].
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) 1-3, 6-13, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hamaguchi et al. (JP2019130591, machine translation referred to herein).
Regarding claim 1, Hamaguchi et al. discloses an austenitic weld alloy having high temperature properties [0013]; wherein said alloy has a composition as seen in table 1 below [0016, 0066-0088]. The examiner notes that the alloy of Hamaguchi et al. reasonably meets the limitation of a refractory alloy based on the above claim interpretation section. The examiner notes that the overlap between the composition of Hamaguchi et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I). It is noted that Hamaguchi et al. merely requires a sum of Mo and W to be 3 to 13 weight percent, wherein W is not particularly limited or required and can therefore be omitted (ie. 0% W). Although Hamaguchi et al. does not expressly teach the first and second criteria as claimed, the examiner notes that these criteria merely further limit the Al, S, Cr, N, V, Ti, Si, Ni, Nb, Mn, and C amounts, which still overlap with the disclosure of Hamaguchi et al. and is still obvious.
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Hamaguchi et al. (wt.%)
Cr
25 – 32
20 – 38
Ni
50 – 61
40 – 60
Al
1 – 6
0 – 1.5
Nb
0.4 – 1.5
0 – 0.5
C
0.05 – 0.6
0 – 0.18
RE and/or Hf
0.01 – 0.06
0 – 0.1
Si
0 – 0.3
0 – 2
Mn
0 – 0.3
0 – 3
Ti
0 – 0.4
0.01 – 1.5
N
0.015 – 0.2
0 – 0.2
V
0.005 – 1
0 – 0.5
Fe
Balance
Balance
Zr
Not present or 0 – 0.03
0.0001 – 0.5
W
Not present or 0 – 0.01
Not required
P
Not present or 0 – 0.02
0 – 0.04
S
Not present or 0 – 0.006
0 – 0.01
Regarding claims 2-3, 6-13, and 16, Hamaguchi et al. discloses the alloy of claim 1 (see previous). The examiner notes that the V, Al, S, N, Cr, C, and RE of Hamaguchi et al. above further overlaps with the claimed ranges. See MPEP 2144.05(I).
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Adam et al. (WO2019217905) in view of either one of Hamaguchi et al. (JP2019130591, machine translation referred to herein) or Kudo et al. (US 4,400,211).
Regarding claim 1, Adam et al. discloses an austenitic alloy having high temperature properties [p.6, 19, 21, 23]; wherein said alloy has a composition as seen in table 2 below [p.6-8]. The examiner notes that the alloy of Adam et al. reasonably meets the limitation of a refractory alloy based on the above claim interpretation section. The examiner notes that the overlap between the composition of Adam et al. and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Adam et al. does not expressly teach an inclusion of N as claimed. Adam et al. further teaches inclusions of V but does not expressly teach a particular range as claimed [p.6]. However, inclusions of these elements would have been obvious in view of the prior art. Hamaguchi et al. discloses inclusions of up to 0.2 weight percent N for stabilizing austenite and inclusions of up to 0.5 weight percent V for improving strength [0054, 0082]. Therefore, it would have been obvious to one of ordinary skill to modify the alloy of Adam et al. by including the aforementioned inclusions for the aforementioned benefits. Alternatively, Kudo et al. discloses alloys with high strength and corrosion resistance [col.1 ln.5-13]; wherein said alloys include up to 0.3 weight percent N for improving strength and 0.5 to 4 weight percent V preferably included with Nb to provide precipitation hardening [col.6 ln.15-24, 48-67]. Therefore, it would have been obvious to one of ordinary skill to modify the alloy of Adam et al. by including the aforementioned inclusions for the aforementioned benefits. In either situation, the examiner notes that the overlap between the disclosed ranges of N and V of the prior art and that as claimed is prima facie obvious. See MPEP 2144.05(I).
Although the prior art does not expressly teach the first and second criteria as claimed, the examiner notes that these criteria merely further limit the Al, S, Cr, N, V, Ti, Si, Ni, Nb, Mn, and C amounts, which still overlap with the prior art ranges and is therefore still obvious.
Table 2.
Element (wt.%)
Claim 1 (wt.%)
Adam et al. (wt.%)
Cr
25 – 32
20 – 30
Ni
50 – 61
40 – 65
Al
1 – 6
1 – 5
Nb
0.4 – 1.5
1 – 3
C
0.05 – 0.6
0 – 1
RE and/or Hf
0.01 – 0.06
Y: 0 – 0.5
Hf: 0 – 0.05
Si
0 – 0.3
0 – 0.1
Mn
0 – 0.3
0 – 0.1
Ti
0 – 0.4
0 – 5
N
0.015 – 0.2
0 – 0.2 (Hamaguchi et al.)
0 – 0.3 (Kudo et al.)
V
0.005 – 1
0 – 0.5 (Hamaguchi et al.)
0.5 – 4 (Kudo et al.)
Fe
Balance
0 – 15
Zr
Not present or 0 – 0.03
0
W
Not present or 0 – 0.01
0 – 20
P
Not present or 0 – 0.02
0 – 0.001
S
Not present or 0 – 0.006
0 – 0.001
Regarding claims 2-20, the aforementioned prior art discloses the alloy of claim 1 (see previous). The examiner notes that the V, Al, S, N, Cr, C, and RE of the aforementioned prior art above further overlaps with the claimed ranges. See MPEP 2144.05(I).
Response to Arguments
The previous rejections over Kousu et al. have been withdrawn in view of applicant’s amendments. Nonetheless, applicant’s arguments filed 3/23/2026 will still be addressed for a clear record.
Applicant argues that the examples of Kousu et al. do not meet the claimed ranges. In response, the examiner notes that specific examples were never relied upon in the previous rejections. Furthermore, specific examples do not constitute the teaching away from the broader disclosure of the prior art. See MPEP 2123. Therefore, applicant’s arguments are moot.
Applicant further argues that the Kousu et al. does not teach the claimed criteria or effects achieved by said criteria. In response, the examiner again notes that the claimed criteria merely further limit the claimed composition, which still overlaps with the prior art and is prima facie obvious. See MPEP 2144.05(I). If applicant is of the position that the claimed criteria are critical and achieve unexpected results, the examiner cannot concur absent concrete evidence/data to support this determination which has not been presented by applicant. See MPEP 716.02(b-d).
Applicant’s arguments are further moot in view of the new grounds of rejection 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 NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS A WANG/Primary Examiner, Art Unit 1734
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