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 .
Status of the Claims
Claims 31-50 are pending and are currently under examination wherein claims 1-30 have been preliminarily canceled and claims 31-50 have been preliminarily added.
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.
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Claims 31- 50 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 of U.S. Patent No. 11,859,267. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 31, claim 1 of U.S. Patent No. 11,859,267 discloses nickel base alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,859,267
(weight percent)
Overlap
Al
4.0 – 6.9
4.8 – 6.9
4.8 – 6.9
Co
0 – 23.4
0 – 17
0 – 17
Cr
9.1 – 11.9
10.1 – 11.9
10.1 – 11.9
Mo
0.1 – 4.0
0.1 – 2.5
0.1 – 2.5
Nb
0.6 – 3.7
1.5 – 3.7
1.5 – 3.7
Ta
0 – 1
0 – 0.5
0 – 0.5
Ti
0 – 3
0 – 3
0 – 3
W
0 – 10.9
2.9 – 10.9
2.9 – 10.9
C
0.02 – 0.35
0.02 – 0.35
0.02 – 0.35
B
0.001 – 0.2
0.001 – 0.2
0.001 – 0.2
Zr
0.001 – 0.5
0.001 – 0.5
0.001 – 0.5
Si
0 – 0.5
0 – 0.5
0 – 0.5
Y
0 – 0.1
0 – 0.1
0 – 0.1
La
0 – 0.1
0 – 0.1
0 – 0.1
Ce
0 – 0.1
0 – 0.1
0 – 0.1
S
0 – 0.003
0 – 0.003
0 – 0.003
Mn
0 – 0.25
0 – 0.25
0 – 0.25
Cu
0 – 0.5
0 – 0.5
0 – 0.5
Hf
0 – 0.5
0 – 0.5
0 – 0.5
V
0 – 0.5
0 – 0.5
0 – 0.5
Fe
0 – 10
0 – 10
0 – 10
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, molybdenum, niobium, tantalum, titanium, tungsten, carbon, boron, zirconium, silicon, yttrium, lanthanum, cerium, sulfur, manganese, copper, hafnium, vanadium and iron disclosed in claim 1 of U.S. Patent No. 11,859,267 overlap the amounts of instant claim 1, which is prima facie evidence of obviousness. MPEP 2144.05 I.
In regard to instant claim 32, both instant claim 32 and claim 2 of U.S. Patent No. 11,859,267 disclose the relationship “19 ≤ (WNb +WTa + WTi) + 3.2WAl ≤ 24.5”.
In regard to instant claim 33, both instant claim 33 and claim 3 of U.S. Patent No. 11,859,267 recite wherein the chromium content is 10.1 to 11 weight percent.
In regard to instant claim 34, both instant claim 34 and claim 4 of U.S. Patent No. 11,859,267 recite wherein the molybdenum content is 0.3 to 2.5 weight percent.
In regard to instant claim 35, both instant claim 35 and claim 5 of U.S. Patent No. 11,859,267 recite wherein the titanium content is 0 to 2.5 weight percent.
In regard to instant claim 36, both instant claim 36 and claim 6 of U.S. Patent No. 11,859,267 recite wherein the cobalt content is 0 to 15 weight percent.
In regard to instant claim 37, both instant claim 37 and claim 7 of U.S. Patent No. 11,859,267 recite wherein the hafnium content is 0 to 0.2 weight percent.
In regard to instant claim 38, both instant claim 38 and claim 8 of U.S. Patent No. 11,859,267 recite wherein the tantalum content is less than 0.5 weight percent.
In regard to instant claim 39, both instant claim 39 and claim 9 of U.S. Patent No. 11,859,267 disclose wherein the combined content of cobalt, tungsten and molybdenum is 26.6% or less.
In regard to instant claim 40, both instant claim 40 and claim 10 of U.S. Patent No. 11,859,267 disclose wherein the iron content is 0 to 8 weight percent.
In regard to instant claim 41, both instant claim 41 and claim 11 of U.S. Patent No. 11,859,767 disclose wherein the sum of the molybdenum and tungsten content is 3.2 to 10.6 weight percent.
In regard to instant claim 42, both instant claim 42 and claim 12 of U.S. Patent No. 11,859,767 disclose wherein the sum of the aluminum content is 4.8 to 6.8 weight percent.
In regard to instant claim 43, both instant claim 43 and claim 13 of U.S. Patent No. 11,859,267 disclose wherein the combined content of niobium, tantalum and titanium is greater than or equal to 2.6 weight percent.
In regard to instant claim 44, both instant claim 44 and claim 14 of U.S. Patent No. 11,859,267 disclose wherein the ratio of the sum of the elements niobium, tantalum and titanium to aluminum is greater than 0.45.
In regard to instant claim 45, both instant claim 45 and claim 15 of U.S. Patent No. 11,859,267 disclose wherein niobium is present in an amount of 1.5 to 3 weight percent.
In regard to instant claim 46, both instant claim 46 and claim 16 of U.S. Patent No. 11,859,267 disclose wherein tantalum would be less than 0.5 weight percent.
In regard to instant claim 47, both instant claim 47 and claim 17 of U.S. Patent No. 11,859,267 disclose wherein tungsten would be 10.6 weight percent or less.
In regard to instant claim 48, both instant claim 48 and claim 18 of U.S. Patent No. 11,859,267 disclose wherein hafnium would be 0.5 weight percent or less.
In regard to instant claim 49, claim 1 of U.S. Patent No. 11,859,267 discloses wherein the tungsten content would be 2.9 to 10.9 weight percent.
In regard to instant claim 50, claim 1 of U.S. Patent No. 11,859,267 discloses nickel base alloys having compositions relative to that of the instant invention as set forth below.
Element
Instant Claim
(weight percent)
U.S. Patent No. 11,859,267
(weight percent)
Overlap
Al
6 – 6.7
4.8 – 6.9
6 – 6.7
Co
0 – 5.5
0 – 17
0 – 5.5
Cr
10.1 – 11
10.1 – 11.9
10.1 – 11
Mo
1.5 – 2.5
0.1 – 2.5
1.5 – 2.5
Nb
1.5 – 2
1.5 – 3.7
1.5 – 2
Ta
0 – 0.5
0 – 0.5
0 – 0.5
Ti
1.2 – 2
0 – 3
1.2 – 2
W
2.9 – 5
2.9 – 10.9
2.9 – 5
C
0.02 – 0.35
0.02 – 0.35
0.02 – 0.35
B
0.001 – 0.2
0.001 – 0.2
0.001 – 0.2
Zr
0.001 – 0.5
0.001 – 0.5
0.001 – 0.5
Si
0 – 0.5
0 – 0.5
0 – 0.5
Y
0 – 0.1
0 – 0.1
0 – 0.1
La
0 – 0.1
0 – 0.1
0 – 0.1
Ce
0 – 0.1
0 – 0.1
0 – 0.1
S
0 – 0.003
0 – 0.003
0 – 0.003
Mn
0 – 0.25
0 – 0.25
0 – 0.25
Cu
0 – 0.5
0 – 0.5
0 – 0.5
Hf
0 – 0.5
0 – 0.5
0 – 0.5
V
0 – 0.5
0 – 0.5
0 – 0.5
Fe
0 – 10
0 – 10
0 – 10
Ni
Balance
Balance
Balance
The Examiner notes that the amounts of chromium, molybdenum, niobium, tantalum, titanium, tungsten, carbon, boron, zirconium, silicon, yttrium, lanthanum, cerium, sulfur, manganese, copper, hafnium, vanadium and iron disclosed in claim 1 of U.S. Patent No. 11,859,267 overlap the amounts of instant claim 1, which is prima facie evidence of obviousness. MPEP 2144.05 I.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Choudhury, I. A., and M. A. El-Baradie. "Machinability of nickel-base super alloys: a general review." Journal of Materials Processing Technology 77.1-3 (1998): 278-284.
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/JESSEE R ROE/ Primary Examiner, Art Unit 1759
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