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 and 5 are amended.
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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “comprising each of Co, Cr, Fe and Ni in a range of 5 at% to 40 at%”, and the claim also recites “wherein Co is in a range of 25 at% to 38 at%, the Cr is in a range of 16 at% to 23 at%, the Fe is in a range of 12 at% to 20 at%, the Ni is in a range of 17 at% to 28 at%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “Mo is in a range of more than 0 at% and 8 at% or less”, and the claim also recites “the Mo is in a range of 1 at% to 7 at%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation “Ti in a range of 1 at% to 10 at%”, and the claim also recites “the Ti is in a range of 2 at% to 9 at%” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Examiner Interpretation
The Examiner has interpreted the scope of claim 1 to have the broadest reasonable interpretation, which is the broader ranges for the purpose of examination.
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.
Claims 1-4 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 33.25 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.
Still regarding claim 4, the atomic percentage of titanium and niobium of the Example set forth above would sum to 4.25 atomic percent, which would be within the range of 3 to 10 atomic percent as claimed.
Claims 1 and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Semba et al. (US 2014/0234155).
In regard to claim 1, Semba et al. (‘155) discloses nickel-chromium-iron alloys containing 15 to 28 weight percent chromium, 0 to 15 weight percent iron, 0.2 to 3 weight percent titanium, 0.2 to 2 weight percent aluminum, 3 to 15 weight percent molybdenum, 0 to 0.01 weight percent boron, 0 to 0.15 weight percent carbon, up to 2 weight percent silicon, up to 3 weight percent manganese, more than 5 to 25 weight percent cobalt, up to 3 weight percent niobium, balance essentially nickel (abstract and [0030-0101]). Thus, the scope of Semba et al. (‘155) would include an alloy having the composition having 37.5 weight percent nickel, 6 weight percent molybdenum, 15 weight percent chromium, 15 weight percent iron, 3 weight percent titanium, 2 weight percent aluminum, 1 weight percent columbium (niobium), 16.34 weight percent cobalt, 1 weight percent silicon, 3 weight percent manganese, 0.15 weight percent carbon and 0.01 weight percent boron. Converting these weight percentages into atomic percent, the scope of Semba et al. (‘155) would include an alloy having 35.75 atomic percent nickel, 3.5 atomic percent molybdenum, 16.1 atomic percent chromium, 15 atomic percent iron, 3.5 atomic percent titanium, 4.1 atomic percent aluminum, 0.6 atomic percent niobium, 15.5 atomic percent cobalt, 2 atomic percent silicon, 3 atomic percent manganese, 0.7 atomic percent carbon and 0.05 atomic percent boron. Thus, the Examiner notes that the amounts of nickel, molybdenum, chromium, iron, titanium, niobium, cobalt, silicon, manganese, carbon and boron disclosed by Semba et al. (‘155) overlap the amounts of the instant invention would be close enough to the amounts of the instant invention to establish 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, silicon, manganese, carbon and boron from the amounts disclosed by Semba et al. (‘155) because Semba et al. (‘155) discloses the same utility throughout the disclosed ranges.
In regard to claim 5, Semba et al. (155) discloses up to 15 weight percent iron and the alloys would include alloys that have 15 atomic percent iron as set forth above (abstract and [0030-0101]).
Claims 6-8 are 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).
Response to Arguments
Applicant's arguments filed June 10, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that claim 1 has been amended to incorporate the subject matter of claim 5 in order to advance prosecution to allowance and claim 5 is amended to recite an iron range of 12 to 17 atomic percent.
In response, the Examiner notes that Applicant’s amendment to claim 1 raises a 112 issue as set forth above and due to the amendments in claim 1 and claim 5 a new reference to Semba et al. (‘155) has been introduced.
Second, the Applicant primarily argues that Doherty et al. (‘463) suggests using an iron content outside the claimed range or in the range of 12 to 20 atomic percent. The Applicant further argues that the 7 weight percent to 10 weight percent would provide balance in the gamma prime phase formation, mechanical properties, etc. and a skilled artisan would not recognized that incorporating a high iron content as claimed would render the alloys of Doherty et al. (‘463) unsatisfactory for the intended purpose.
In response, the Examiner notes that based on the amendment to claim 1, it is unclear if the claim is requiring a range of 5 to 40 atomic percent for iron or if the claim is requiring a range of 12 to 20 atomic percent for iron. The Examiner has raised a 112 issue as set forth above to address this issue and provided an examiner interpretation based on this issue. To address the amended iron contents, the Examiner introduced a new reference to Semba et al. (‘155).
Third, the Applicant primarily argues that Chouhury fails to provide sufficient guidance on the high iron content.
In response, the Examiner notes that the intention of the Choudhury reference was not to address any iron content but rather uses of nickel base superalloys.
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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