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 .
Response to amendment and Status of Claims
Applicant’s amendments to the claims, filed April 15, 2026, are acknowledged.
Claims 1-13 are amended and Claims 16-19 are newly added.
Claims 1-19 are pending and currently considered in this office action.
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 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Janscheck (previously cited, US 20170081751 A1).
Regarding Claim 1, Janscheck disclose a TiAl alloy (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 material (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.
Regarding Claim 16, Janscheck discloses wherein the TiAl alloy is suitable for die forging (Fig. 1, depicting die forging). Additionally, the alloy of Janscheck is the same composition as the instant invention, and one of ordinary skill in the art would appreciate therefore that the alloy of Janscheck is suitable for forging. 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 17, Janscheck discloses wherein the forging is die forging (Fig. 1a)-1c), depicting die forging; para. [0066], open-die forging).
Regarding Claim 18, Janscheck discloses wherein the alloy is suitable for forging such as die forging (Fig. 1a)-1c), depicting die forging; para. [0066], open-die forging), therefore the claim limitations have been met. Additionally, the alloy of Janscheck is the same composition as the instant invention, and one of ordinary skill in the art would appreciate therefore that the alloy of Janscheck is suitable for forging such as die forging. 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 the limitation wherein the die forging does not include isothermal forging, this limitation is directed to a manner of use of an apparatus, and is not a feature of the claimed alloy and does not carry patentable weight to the claims directed to a TiAl alloy.
Regarding Claim 19, Janscheck discloses wherein the first forging step is open-die forging, which reads on “wherein the forging is not isothermal forging” (Fig. 1a)-1c); Abstract; para. [0071]-[0072], wherein the blank is first die forged to make an open-die-forged preform prior to isothermal forging at 1070-1250C). Examiner notes the claims do not require a single forging step, and first forging step of ‘not isothermal forging’ and a second step of isothermal forging reads on the claimed limitations as currently written.
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).
Response to Arguments
Applicant's arguments filed April 15, 2026 have been fully considered but they are respectfully not found persuasive.
Regarding Janscheck:
Applicant argues that the claimed Al and Cu ranges produce unexpected results, including superior beta phase ratio values, hot forgeability and creep strength.
Regarding Al, Applicant argues that Janscheck teaches a broad range of 40-48at% Al and 0.1-9at% beta stabilizer, wherein the beta stabilizer may be Cu, and preferred range of 42-46at% Al and 0.4-5at% B, whereas the claimed ranges are 42.0-43.6at% Al and 0.5-2at% B.
Applicant argues that Al concentrations of 43.83 and 43.69% (comp. ex. 6 and comp. ex. 7), outside the claimed range and inside the preferred range of Janscheck, but have reduced hot forgeability as marked by the increase in crack number densities of more than 0.45/cm and reduced creep strength of more than 3.0x10^-7/s, respectively, whereas the inventive examples 1-4 comprise acceptable hot forgeability and creep strength. Applicant therefore argues the Al concentrations of 42-43.6at% is therefore critical.
Regarding Cu, Applicant argues that comparative ex. 10 has a Cu concentration of 2.11at%, which is within the preferred range by Janscheck but comprises a beta phase outside 0.5-15at%, and insufficient creep strength. Applicant argues that 0.5-2at% Cu is therefore critical.
Applicant further argues that Cu is selected to improve creep strength and in order to comprise beta phase in an acceptable range, and that Janscheck does not prefer Cu from the list provided of beta stabilizers.
These arguments are not found persuasive.
Janscheck discloses 42-46% Al, which fully encompasses the claimed range of 42-43.6% Al, and discloses 0.4-5% beta stabilizer of which may be selected to be Cu, which fully encompasses the claimed range of 0.5-2at% Cu; thus, there is a prima facie case of obvious. Further, the features which applicant relies upon (cracks/mm and creep rate) are not currently claimed features and this argument is not commensurate in scope with the claims.
Regarding Al:
While Applicant directs attention to inventive ex. no. 1 and comparative examples no. 6 and 7, the comparable compositions in the instant disclosure are actually ex. 1, 5 and comparative ex. 6 because these examples have substantially similar Nb and Cu values of about 5at% Nb and about 1at% Cu (comparative ex. 7 comprises 4.07at% Nb, which is almost a full 1at% difference from inventive ex. 1).
The data for these examples (1, 5 and 6) show a considerably linear relationship with the amount of Al and the amount of beta phase and crack density (see table below, data displayed by increasing Cu amounts). Therefore, the amounts of Al do not appear to provide unexpected or surprising amounts of beta phase or crack density because one of ordinary skill in the art could predict resulting beta phase and crack density based on the linear trend shown by the data.
Cu
Nb
B
crack/mm
beta phase %
creep rate /s
inv. ex. 5
42.76
4.94
0.97
0.17
2.23
2.48^-7
inv. ex. 1
43.47
4.92
1.02
0.35
1.58
6.96^-8
comp. ex. 6
43.83
4.98
1.05
0.5
1.25
4.59^-8
Further, all three examples, including the example with Al outside the claimed range (comp. ex. 6), comprise beta phase ratios within the claimed amounts of 0.5-15% (see Claim 2), and comprise creep rates less than 3*10^-7. Therefore, the amounts of Al do not appear to be critical to resulting in these features either. Additionally, three data points (two inside and one outside), while close to and inside and outside the claimed range, are too few and not sufficient to providing a showing of unexpected results.
Regarding Cu:
Applicant points to comparative ex. 10 to show the criticality of the Cu range, however, there does not appear to be any inventive examples which are close in composition to comp. ex. 10 for comparison. The closest inventive composition in terms of Al and Nb is inventive example 1, which comprises a full difference of 1at% Cu to that of comparative ex. 10. A sufficient number of data points, close to and inside and outside the claimed range, is required for a showing of criticality and unexpected results. Multiple data points which are close to and inside and outside the claimed range are currently not present because no inventive examples are close and inside the 2at% range end point. A showing of unexpected results therefore has not been demonstrated.
Applicant argues that Janscheck teaches away from ordinary die forging and non-isothermal forging, and therefore Janscheck does not disclose the claimed method. Applicant argues that Janscheck is directed to a low-difficulty and low-productivity process, and does not contemplate crack density for ordinary die forging and would therefore not have arrived at the claimed alloy.
This argument is not found persuasive.
Janscheck teaches a combination of open die forging and isothermal forging, and therefore does not teach away from die forging and die forging is expressly included in the method of Janscheck. In response to applicant's argument that Janscheck does not contemplate the crack density ranges (of which are currently not claimed features) for general die forging, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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 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.
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CATHERINE P. SMITH
Patent Examiner
Art Unit 1735
/CATHERINE P SMITH/ Examiner, Art Unit 1735
/KEITH WALKER/ Supervisory Patent Examiner, Art Unit 1735
Prosecution Insights