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 .
Priority
Applicant’s claim to foreign priority in application no. JP2021-070003, filed April 16, 2021, and application no. JP2022-008171, filed January 21, 2022, is acknowledged.
Claim Objections
Applicant is advised that should Claim 6 be found allowable, Claim 10 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. Similarly, Applicant is advised that should Claim 7 be found allowable, Claim 11 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).
Claims 1-12 are objected to because of the following informalities: instances of the language of “in a range of from” should be “in a range from”. Appropriate correction is required.
Claim 13 is objected to because of the following informalities: “the heating at the temperature of 850C to 1000C” should be “the heating at the temperature in the range from 850C to 1000C”. Appropriate correction is required.
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 1-12 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over Janscheck (US 20170081751 A1).
Regarding Claim 1, Janscheck disclose a TiAl alloy suitable for forging (Abstract), comprising:
42-46 at% Al, 2-6.5at% Nb, 0.4-5at% beta stabilizer, further 0.8-1.2at% beta stabilizer, wherein the beta stabilizer may be Cu, and a balance of Ti and impurities (para. [0038]-[0042]; para. [0030]), which reads on the claimed composition comprising 42-43.6a% Al, 0.5-2.0at% Cu, 3-7at% Nb and balance of Ti and impurities.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 2, Janscheck disclose a TiAl alloy suitable for forging (Abstract), comprising:
42-46 at% Al, 2-6.5at% Nb, 0.4-5at% beta stabilizer, further 0.8-1.2at% beta stabilizer, wherein the beta stabilizer may be Cu, and a balance of Ti and impurities (para. [0038]-[0042]; para. [0030]), which reads on the claimed composition comprising 42-43.6a% Al, 0.5-2.0at% Cu, 3-7at% Nb and balance of Ti and impurities.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Janscheck fails to disclose the area ratio of a beta phase; however, Janscheck discloses the claimed composition and the claimed method.
Specifically, Janscheck discloses forging the claimed composition (see above and para. [0038]-[0042]; para. [0030]), heating the forged material first at a temperature in a range from 1230-1270C, and subsequently at a temperature in a range from 850-950C (Abstract; para. [0055]-[0056]), which reads on the instant invention (see Claim 3 steps and heating temperature ranges (first) 1200-1350C and (subsequently) 850-1000C).
Therefore, one of ordinary skill in the art would have appreciated the invention of Janscheck to have comprised the claimed amount of 0.5-15vol% beta phase because Janscheck discloses the claimed composition and the claimed method. When 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). See MPEP 2112.01.
Regarding Claim 3, Janscheck discloses a method or manufacturing a TiAl alloy material (Abstract), the method comprising:
forging a TiAl alloy suitable for forging to obtain a forged material (Abstract), the TiAl alloy comprising 42-46 at% Al, 2-6.5at% Nb, 0.4-5at% beta stabilizer, further 0.8-1.2at% beta stabilizer, wherein the beta stabilizer may be Cu, and a balance of Ti and impurities (para. [0038]-[0042]; para. [0030]), which reads on the claimed composition comprising 42-43.6a% Al, 0.5-2.0at% Cu, 3-7at% Nb and Ti and impurities; and
heating the forged material first at a temperature in a range from 1230-1270C, and subsequently at a temperature in a range from 850-950C (Abstract; para. [0055]-[0056]), which reads on the claimed heating temperature ranges (first) 1200-1350C and (subsequently) 850-1000C).
Regarding the compositional ranges and the heating 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. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 4 and Claim 8, Janscheck disclose wherein the TiAl alloy further comprises 42.5-43.5at% Al (para. [0038], 42-46at% Al).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 5 and Claim 9, Janscheck disclose wherein the TiAl alloy further comprises 0.7-1.2at% Cu (para. [0030], 0.8-1.2% beta stabilizer; para. [0040], wherein beta stabilizer may be Cu).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 6 and Claim 10, Janscheck disclose wherein the TiAl alloy further comprises 4.5-6.0at% Nb (para. [0039], 2-6.5% Nb).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 7 and Claim 11, Janscheck disclose wherein the TiAl alloy further comprises 42.5-43.5at% Al, 0.7-1.2at% Cu and 4.5-6.0at% Nb (para. [0038], 42-46at% Al; para. [0030], 0.8-1.2% beta stabilizer and para. [0040], wherein beta stabilizer may be Cu; para. [0039], 2-6.5% Nb).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 12, Janscheck fails to disclose the area ratio of beta phase; however, Janscheck discloses the claimed composition and the claimed method (see Claim 3 above), and one of ordinary skill in the art would have therefore appreciated the invention of Janscheck to have comprised the claimed amount of 0.5-15vol% beta phase. When 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). See MPEP 2112.01.
Regarding Claim 14 and Claim 15, Janscheck discloses wherein the TiAl consists of the Ti, Al, Cu, Nb and unavoidable impurities (para. [0038]-[0042], B may be 0%, which reads on the claimed language consisting of).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Janscheck (US 20170081751 A1), as applied to Claim 3 above, in further view of Kubushiro (cited by Applicant in IDS filed October 10, 2023, US 20190106778 A1) and Zhu (“Strengthening behavior of beta phase in lamellar microstructure of TiAl alloys”).
Regarding Claim 13, Janscheck discloses wherein the subsequent heating range is 850-950C with a preferable hold time of 300-360 minutes (5-6 hours), but does not disclose a particular reason for the preferred range, and does not disclose a broader range or the claimed heating of 900C at 3 hours or 950C at 1 hour.
Kubushiro teaches similar processing wherein a TiAl alloy is forged, heat treated within the range of 1150-1350C for recrystallization, and then aged by heating within the range of 700-950C, wherein aging is performed for 1-5 hours in order to transform the alpha phase into an equiaxed lamellar grain, to produce a beta phase with a b2 type grain, and in order to form borides (para. [0018]-[0020]).One of ordinary skill in the art would appreciate the aging step of Kubushiro to be equivalent to the relaxation and stabilization heat treatment of Janscheck.
Zhu further teaches wherein aging time is a result effective variable, the effect being creep rupture life (see Fig. 6).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have subsequently heated and aged the TiAl after the first heat treatment at a temperature of 850-950C, as taught by Janscheck, for the broader range of 1-5 hours, as taught by Kubushiro, for the invention disclosed by Janscheck, because Kubushiro teaches wherein this aging time is sufficient to produce an equiaxed lamellar alpha grain and the beta phase with a b2 structure, and sufficient to form borides when B is present in the composition (see para. [0055], wherein Janscheck desires a lamellar alpha structure; see para. [0041] of Janscheck, wherein composition may comprise B).
An aging time of 1-5 hours at temperatures 850-950C reads on the claimed 3 hours at 900C or 1 hour at 950C. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Additionally, the general conditions of the claim are known, and Zhu teaches wherein aging time is a result effective variable, the effect being creep rupture life. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable range involves only routine skill in the art and that discovering an optimum value or workable range of a result effective variable involves only routine skill in the art (see MPEP 2144.05.I-II).
Claims 2, 8-9 and 15 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Janscheck (US 20170081751 A1) in view of Helm (US 20140202601 A1).
Regarding Claim 2, Janscheck disclose a TiAl alloy suitable for forging (Abstract), comprising:
42-46 at% Al, 2-6.5at% Nb, 0.4-5at% beta stabilizer, further 0.8-1.2at% beta stabilizer, wherein the beta stabilizer may be Cu, and a balance of Ti and impurities (para. [0038]-[0042]; para. [0030]), which reads on the claimed composition comprising 42-43.6a% Al, 0.5-2.0at% Cu, 3-7at% Nb and balance of Ti and impurities.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Janscheck fails to disclose the area ratio of a beta phase; however, Janscheck discloses the claimed composition and the claimed method.
Specifically, Janscheck discloses forging the claimed composition (see above and para. [0038]-[0042]; para. [0030]), heating the forged material first at a temperature in a range from 1230-1270C, and subsequently at a temperature in a range from 850-950C (Abstract; para. [0055]-[0056]), which reads on the instant invention (see Claim 3 steps and heating temperature ranges (first) 1200-1350C and (subsequently) 850-1000C).
Therefore, one of ordinary skill in the art would have appreciated the invention of Janscheck to have comprised the claimed amount of 0.5-15vol% beta phase because Janscheck discloses the claimed composition and the claimed method. When 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). See MPEP 2112.01.
Further, Helm teaches an overlapping process of forging and heat treating TiAl alloys (Abstract, first heat treatment stage from 900-1300C and second heat treatment stage at 800-950C for 5 hours), which produces preferably 3-15vol% beta phase (B2 phase) in order to comprise sufficient mechanical properties and be usable for applications such as a gas turbine or aircraft turbine (para. [0019]-[0020]; para. [0027]; para. [0010]). One of ordinary skill in the art would appreciate that the B2 body-centered cubic phase is equivalent to the claimed beta phase.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further produced 3-15vol% beta phase, as taught by Helm, for the invention disclosed by Janscheck, in order to comprise sufficient mechanical properties to be usable as a gas or aircraft turbine (see teaching above).
Regarding Claim 8, Janscheck disclose wherein the TiAl alloy further comprises 42.5-43.5at% Al (para. [0038], 42-46at% Al).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 9, Janscheck disclose wherein the TiAl alloy further comprises 0.7-1.2at% Cu (para. [0030], 0.8-1.2% beta stabilizer; para. [0040], wherein beta stabilizer may be Cu).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Regarding Claim 15, Janscheck discloses wherein the TiAl consists of the Ti, Al, Cu, Nb and unavoidable impurities (para. [0038]-[0042], B may be 0%, which reads on the claimed language consisting of).
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP § 2144.05.I.
Claim 12 is alternatively rejected under 35 U.S.C. 103 as being unpatentable over Janscheck (US 20170081751 A1), as applied to Claim 3 above, in further view of Helm (US 20140202601 A1).
Regarding Claim 12, Janscheck fails to disclose the area ratio of a beta phase; however, Janscheck discloses the claimed composition and the claimed method.
Specifically, Janscheck discloses forging the claimed composition (see above and para. [0038]-[0042]; para. [0030]), heating the forged material first at a temperature in a range from 1230-1270C, and subsequently at a temperature in a range from 850-950C (Abstract; para. [0055]-[0056]), which reads on the instant invention (see Claim 3 steps and heating temperature ranges (first) 1200-1350C and (subsequently) 850-1000C).
Therefore, one of ordinary skill in the art would have appreciated the invention of Janscheck to have comprised the claimed amount of 0.5-15vol% beta phase because Janscheck discloses the claimed composition and the claimed method. When 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). See MPEP 2112.01.
Further, Helm teaches an overlapping process of forging and heat treating TiAl alloys (Abstract, first heat treatment stage from 900-1300C and second heat treatment stage at 800-950C for 5 hours), which produces preferably 3-15vol% beta phase (B2 phase) in order to comprise sufficient mechanical properties and be usable for applications such as a gas turbine or aircraft turbine (para. [0019]-[0020]; para. [0027]; para. [0010]). One of ordinary skill in the art would appreciate that the B2 body-centered cubic phase is equivalent to the claimed beta phase.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have further produced 3-15vol% beta phase, as taught by Helm, for the invention disclosed by Janscheck, in order to comprise sufficient mechanical properties to be usable as a gas or aircraft turbine (see teaching above).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CATHERINE P SMITH whose telephone number is (303)297-4428. The examiner can normally be reached Monday - Friday 9:00-4:00 MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735