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 1-8 are pending wherein claims 1-7 have been preliminarily amended and claim 8 has been preliminarily added. 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. Claim s 1- 5 are rejected under 35 U.S.C. 103 as being unpatentable over Doherty et al. (US 5,169,463). In regard to claim 1, Doherty et al. (‘463) discloses alloys having compositions comprising 18 to 30 weight percent nickel, 6 to 12 weight percent molybdenum, 18 to 22 weight percent chromium, 7 to 10 weight percent iron, 2 to 4 weight percent titanium, 0.1 to 0.7 weight percent aluminum, 0.1 to 1 weight percent columbium, 23 to 58 weight percent cobalt, 0 to 0.03 weight percent carbon and 0 to 0.03 weight percent boron (column 7) . Thus, the scope of Doherty et al. (‘463) would include an alloy having the composition 3 3.2 5 weight percent nickel, 8 weight percent molybdenum, 18 weight percent chromium, 10 weight percent iron, 3 weight percent titanium, 0.7 weight percent aluminum, 1 weight percent columbium (niobium), 26 weight percent cobalt, 0.03 weight percent carbon and 0.02 weight percent boron. Converting these weight percentages into atomic percent, the scope of Doherty et al. (‘463) would include an alloy having 32.95 atomic percent nickel, 4.85 atomic percent molybdenum, 20.12 atomic percent chromium, 10.41 atomic percent iron, 3.64 atomic percent titanium, 1.50 atomic percent aluminum, 0.63 atomic percent niobium, 25.65 atomic percent cobalt, 0.15 atomic percent carbon and 0.10 atomic percent boron. Thus, the Examiner notes that the amounts of nickel, molybdenum, chromium, iron, titanium, niobium, cobalt, and boron disclosed by Doherty et al. (‘463) overlap the amounts of the instant invention, thereby establishing prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of nickel, molybdenum, chromium, iron, titanium, niobium, cobalt, and boron from the amounts disclosed by Doherty et al. (‘463) because Doherty et al. (‘463) discloses the same utility throughout the disclosed ranges. In regard to claim 4, the atomic percentage of titanium and niobium of the Example set forth above would sum to 4.27 atomic percent, which would be within the range of 3 to 10 atomic percent as claimed. In regard to claim 2, Doherty et al. (‘463) discloses alloys having 0 to 0.03 weight percent boron (column 7). The Examiner provided an Example of an alloy that would be within the scope of Doherty et al. (‘463) which would have a weight percent of 0.02 weight percent boron and when converted to atomic percent, this would be 0.10 atomic percent, which would be within the claimed atomic percent range. In regard to claim 3 , Doherty et al. (‘463) discloses alloys having 0 .1 to 1 weight percent columbium (niobium) (column 7). The Examiner provided an Example of an alloy that would be within the scope of Doherty et al. (‘463) which would have a weight percent of 1 weight percent niobium and when converted to atomic percent, this would be 0. 63 atomic percent, which would be within the claimed atomic percent range. In regard to claim 5 , Doherty et al. (‘463) discloses alloys having compositions comprising 18 to 30 weight percent nickel, 6 to 12 weight percent molybdenum, 18 to 22 weight percent chromium, 7 to 10 weight percent iron, 2 to 4 weight percent titanium, 0.1 to 0.7 weight percent aluminum, 0.1 to 1 weight percent columbium, 23 to 58 weight percent cobalt, 0 to 0.03 weight percent carbon and 0 to 0.03 weight percent boron (column 7). Thus, the scope of Doherty et al. (‘463) would include an alloy having the composition 2 3.25 weight percent nickel, 8 weight percent molybdenum, 18 weight percent chromium, 1 9 weight percent iron, 3 weight percent titanium, 0.7 weight percent aluminum, 1 weight percent columbium (niobium), 2 7 weight percent cobalt, 0.03 weight percent carbon and 0.02 weight percent boron. Converting these weight percentages into atomic percent, the scope of Doherty et al. (‘463) would include an alloy having 22.93 atomic percent nickel, 4.8 2 atomic percent molybdenum, 20. 04 atomic percent chromium, 1 9.69 atomic percent iron, 3.6 3 atomic percent titanium, 1.50 atomic percent aluminum, 0.6 2 atomic percent niobium, 2 6.51 atomic percent cobalt, 0.1 4 atomic percent carbon and 0.1 1 atomic percent boron. Thus, the Examiner notes that the amounts of nickel, molybdenum, chromium, iron, titanium, niobium, cobalt, and boron disclosed by Doherty et al. (‘463) overlap the amounts of the instant invention, thereby establishing prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of nickel, molybdenum, chromium, iron, titanium, niobium, cobalt, and boron from the amounts disclosed by Doherty et al. (‘463) because Doherty et al. (‘463) discloses the same utility throughout the disclosed ranges. Still regarding claim 4, the atomic percentage of titanium and niobium of the Example set forth above would sum to 4.2 5 atomic percent, which would be within the range of 3 to 10 atomic percent as claimed. Claim s 6-8 a re rejected under 35 U.S.C. 103 as being unpatentable over Doherty et al. (US 5,169,463) as applied to claim 1, and further in view of Choudhury et al. (Machinability of nickel-base super alloys: a general review). In regard to claims 6-8, Doherty et al. (‘463) discloses alloys where nickel would be the element in the highest proportion as set forth above or the combination of nickel and iron would have the highest proportion as set forth above, but Doherty et al. (‘463) fails to specify wherein the alloys would be used in engines. Choudhury et al. discloses that the primary uses of superalloys would be for aircraft gas turbines, combustion chambers, reciprocating engines, chemical and petrochemical industrial equipment, etc. due to their combination of mechanical strength and resistance to surface degradation (Introduction). Therefore, it would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to apply the alloys, disclosed by Doherty et al. (‘463) in the fields of turbines, combustion chambers, reciprocating engines, chemical and petrochemical industrial equipment, etc. , as disclosed by Choudhury et al., in order to have a combination of mechanical strength and resistance to surface degradation for the devices in these fields, as disclosed by Choudhury et al. (Introduction). Still regarding claim 6, Doherty et al. (‘463) discloses heat treating the alloys at a temperature of 850°C for 2 hours to observe gamma prime phase particles having a size of 10 nanometers and that after 100 hours at 850°C, the gamma prime phase particles would have a size of 100 nanometers (column 5). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT JESSEE RANDALL ROE whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)272-5938 . 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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. /JESSEE R ROE/ Primary Examiner, Art Unit 1759