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 with traverse of group I, claims 1-8 and species Cr in the reply filed on 05/13/2026 is acknowledged. The traversal is on the ground(s) that the action does not identify how each alleged superalloy composition has "acquired a separate status in the art," has a "recognized divergent subject matter," or even which classes/subclasses or searches would be required to find relevant art.
In regards to the species election (i.e. the election of Cr), upon review of the applicant’s arguments and the prior art, the examiner withdraws the species election requirement.
However, in regards to the restriction requirement (i.e. the election of claims 1-8), the applicant’s argument was not found to be persuasive because the applicant fails to give a reason as to why the restriction between Groups I and II are improper. Additionally, the examiner has clearly outlined how groups I and II are independent and distinct inventions and that there would be a serious search burden if a restriction was not required. To elaborate, as stated previously, groups I and II are independent or distinct each from the other because they are related as process of making and product made. The inventions are distinct if either or both of the following can be shown: (1) that the process as claimed can be used to make another and materially different product or (2) that the product as claimed can be made by another and materially different process (MPEP § 806.05(f)). In the instant case the product as claimed can be made by a materially different process such as hot pressing. Furthermore, the examiner previously has shown that group I (drawn to a Ni-based superalloy target) is classified in C22C 19/03 and group II (drawn to a method of making a superalloy target via spark plasma sintering) is classified in B22F 3/105. Therefore, the examiner has shown a serious search/examination burden between the two groups because it has been shown the inventions have a separate status in the art in view of their different classifications.
The restriction requirement is still deemed proper and is therefore made FINAL.
Claims 9-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 05/13/2026.
Claim Rejections - 35 USC § 112
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 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.
Claim 1 recites the limitation "The average grain size" in the second bullet point. There is insufficient antecedent basis for this limitation in the claim.
Claim 1 also recites the limitation "the porosity" in the third bullet point. There is insufficient antecedent basis for this limitation in the claim.
Claims 2-8 are also rejected due to their dependency on claim 1
Claim 2, “with regard to crystallographic coherence and epitaxy” and “predominantly the same crystal structure”, renders the claim indefinite. The clause “with regard to crystallographic coherence and epitaxy” seems to be directed toward a substrate, as per the specification. However, claim 1 is only directed to a superalloy target and there is no mention of a substrate within the claim. It is therefore unclear as to how the clause is meant to limit the superalloy target in question. For the purpose of examination, the clause will not be interpreted to limit the claim and the superalloy target will be interpreted as requiring “predominantly the same crystal structure”.
Furthermore, the term “predominantly” is a relative term that does not sufficiently set a range for the limitation set forth in claim 2.
Claim 3, “similar lattice constants”, renders the term indefinite. Particularly, the term “similar” is a is a relative term that does not sufficiently set a range for the limitation set forth in the claim. It is unclear how similar or different any two intermetallic compound (IMC) phases must be in order to fulfill the recited claim. Additionally, there no indication as to what metes and bounds the term “similar lattice constants” encompasses in the specification (e.g. percent difference, maximum differential, etc.). For the purpose of examination, claim 3 will be interpreted as requiring the superalloy target to comprise more than one IMC phase.
Claim 7, “consists mainly of”, renders the claim indefinite. To elaborate, the term “consisting” is closed-ended language that implies that the precipitates are composed of Ta and Ti, to the exclusion of other elements. However, this conflicts with claim 5, which claim 7 is ultimately a dependent of. If the precipitates comprise γ’ and carbide precipitates as stated in claim 5, then they also include Ni and C, respectively (See Donachie). On the other hand, the term “mainly” suggests that the term should be interpreted as open-ended comprising language. However, claim 6, in which claim 7 is dependent on, utilizes open-ended comprising language. If “consists mainly of” is interpreted as “comprising”, then claim 7 fails to further limit on claim 6. For the purpose of examination, the phrase “consists mainly of” is interpreted as “comprising”.
Claim 8, “show a similar fcc phase”, renders the claim indefinite. The term “similar” is a is a relative term that does not sufficiently set a range for the limitation set forth in the claim. It is unclear how similar or different any two XRD patterns must be in order to fulfill the recited claim. Additionally, there no indication as to what metes and bounds the term “similar fcc cubic phase” encompasses in the specification (e.g. percent difference, maximum differential, etc.).
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 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.
It is unclear how the crystal structure limitation in claim 2 further limits the limitations found in claim 1. Under a broadest reasonable interpretation claim 2 limits the claimed superalloy target to predominantly having the same crystal structure (e.g. fcc, bcc, bct, hcp, etc.). Claim 1 limits it to just an fcc structure. For the purpose of examination, since the limitations claim 1 is narrower than that of claim 2, if the prior teaches the crystal structure limitations of claim 1, then it is determined to also fulfill the limitations of claim 2.
As discussed above, claim 7 has issues regarding the use of the phrase “consists mainly of”. Under a broadest reasonable interpretation, the phrase “consists mainly of”, is interpreted as open-ended comprising language. However, claim 6, in which claim 7 is dependent on, utilizes open-ended comprising language. Therefore, claim 7 fails to further limits the metes and bounds set forth by claim 6. For the purpose of examination, if the prior teaches the limitations of claim 6, then it is determined to also fulfill the limitations of claim 7.
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 § 103
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.
Claims 1-8 are rejected under 35 U.S.C. 103 as being unpatentable over Hardy (US 20170088919 A1) in view of Park (“Formation of Nanostructures in Ni-22Cr-11Fe-1X (X = Y2O3, TiO2) Alloys by High-Energy Ball-Milling”) and as evidenced by Donachie (“Superalloys”, Metals Handbook Desk Edition 2nd Edition, ASM International)
Regarding claim 1, Hardy teaches a nickel-based superalloy made via powder metallurgy technology [0096] with a composition comprising the following elements as shown in Table 1 (Clm. 1).
Table 1
Element
Composition (wt%)
Cr
11.5-13.0
Fe
0.8-1.2
Co
14.6-15.9
Mo
2.00-2.40
W
3.30-3.70
Ta
3.50-5.10
Al
2.90-3.30
Ti
2.60-3.10
Zr
0.05-0.11
Nb
1.20-1.80
Hf
0-0.045
Ni
Bal.
The alloy may also include 0.03 wt% C (Clms. 2 &3) and either 0.025 wt% or 0.020 wt% B (Clms. 2 & 3). Hardy’s composition reads on the claimed composition. Additionally, all of the claimed elements are well-known in the art of producing Ni-based superalloys (Donachie Table 1, Col. “Nickel base” and Table 2 “Nickel-base” entries).
Additionally, Hardy ultimately processes their superalloy such that the constituent grains have an average size of 22-32 µm [0096]. Hardy’s taught range is sufficiently close to the claimed range such that a person skilled in the art can adjust Hardy’s range to the claimed range and expect similar superalloy properties. Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (MPEP 2144.05)
While Hardy is silent on whether their taught superalloy is polycrystalline, it would be obvious to person having ordinary skill in the art that Hardy’s alloy would be polycrystalline and have a random grain orientation.
While Hardy is silent on an fcc-crystal structure proportion of their Ni-based superalloy, they do teach that their superalloy microstructure comprises a γ-phase strengthened by γ’-phase precipitates [0033]. It is well-known in the art that both the γ- and γ’-phases have an fcc crystal structure (Donachie pg. 395 § “Phases and Structures of Superalloys”). Additionally, Hardy specifies compositions used to prevent the precipitation of hcp η-phases in their superalloy [0034]. In all, based on based on the teachings of Hardy, a person having ordinary skill in the art would know that Hardy’s Ni-based superalloy has an fcc crystal structure proportion that falls within the claimed proportion ranges.
However, Hardy does not teach a porosity range for their taught superalloy.
Park teaches a method for producing an Ni-based superalloy, wherein a NiCr alloy powder is subjected to spark plasma sintering (SPS) at 1100OC using a compaction pressure of 40 MPa (pg. 6214 §2 “Experimental Procedures”). Park teaches that SPS was utilized because “the consolidation of the alloy powder can be achieved during a very short duration, realizing a near full density.” This is reinforced by Park’s finding that their superalloy samples were almost pore-free and had measured densities greater than 99.4% of the theoretical density (pg. 6216 §3.2 “Hot-Consolidated Alloys”). Taking Park’s taught density percentage as a relative density, the porosity of Park’s taught superalloy would be less than 0.6%, which is within the claimed porosity range of less than 10%.
Therefore, it would be obvious for a person having ordinary skill in the art before the effective filing date of the application to apply Park’s SPS technique to produce Hardy’s base superalloy because the use of SPS, as taught by Park, yields the advantageous benefit near-fully dense superalloys produced in very short time durations. Additionally, Hardy’s superalloy, as produced by Parks’ method, would have the density and porosity as described by Park, which is within the claimed porosity range.
Regarding claim 2, as discussed above, Hardy’s superalloy comprises a fcc γ-phase strengthened by fcc γ’-phase precipitates [0033]. Additionally, Hardy specifies compositions used to prevent the precipitation of hcp η-phases in their superalloy [0034]. In all, based on based on the teachings of Hardy, a person having ordinary skill in the art would know that Hardy’s Ni-based superalloy has a predominantly fcc crystal structure.
Regarding claims 3-7, Hardy teaches the presence of γ’-phase precipitates within the superalloy. The γ’-phase comprises an Ni3X IMCs, where X can be Al, Ti, Ta, and Nb [0031]. Since Hardy teaches all of these elements within their superalloy, their superalloy would comprise 4 different IMC phases.
Regarding claim 8, Park teaches XRD patterns corresponding to their SPS-processed alloy (Fig. 7). Park’s XRD peaks correspond to the XRD peaks for a virgin superalloy target, as per the applicant’s specification. However, Park is silent on XRD analyses of a superalloy after being used as a target in a non-reactive arc process. Additionally, Hardy is silent on XRD analyses of their superalloy.
However, there is substantial overlap between the alloy compositions, SPS parameters, and initial XRD peaks of Hardy in view of Park and the alloy compositions, SPS parameters, and initial XRD peaks of the superalloy target recited by the applicant. To elaborate, Park teaches a method for producing an Ni-based superalloy, wherein a NiCr alloy powder is subjected to spark plasma sintering (SPS) at 1100OC using a compaction pressure of 40 MPa (pg. 6214 §2 “Experimental Procedures”). In contrast, the applicant discloses a superalloy target that is fabricated by SPS at approximately 1200OC and 30 MPa. The applicant also discloses an SPS temperature range of 1100-1300OC in the specification. Park’s SPS temperature (i.e. 1100OC) overlaps with the applicant’s SPS temperature range. Additionally, Park’s SPS pressure is sufficiently close to the applicant’s pressure that a person skilled in the art would know that using Park’s pressure in lieu of the applicant’s pressure would yield a superalloy with similar properties when compared to a superalloy made with the applicant’s pressure. Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (MPEP 2144.05)
Overall, given the overlap in SPS parameters, a person having ordinary skill in the art would know that, after being used as a target in a non-reactive arc process, a superalloy as taught by Hardy and Park would inherently have XRD peaks corresponding to the XRD peaks of the applicant’s superalloy target after being subjected to the same non-reactive arc process. 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 (See MPEP 2112.01)
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER FLORES whose telephone number is 571-272-9130. The examiner can normally be reached Mon-Fri 7:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.F./Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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