DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on February 10, 2026 was received. Claims 4 and 8 were amended. No claim was added. Claims 5, 9-10 and 12 were canceled. Claims 1-3 and 7 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued November 12, 2025.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on March 12, 2026 has been entered.
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 4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20040057863) in view of Yoshida (JPS60141861A) and Uda (JPH0975832A).
Regarding claim 4, It is noted that the instant claim comprises product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the patentability of the structure with a coating formed by a thermal spraying method does not depend of the thermal spraying method. Nevertheless, the prior art teaches the coating is formed by thermal spraying method (see below).
Wu teaches a corrosion and wear resistance coating formed on a gas turbine component that operates in high temperature environment (component used in a high temperature corrosive environment) (paragraph 0002). Wu teaches the coating is resistant to corrosion environment including sulfur group element (pargraph 0022). Wu teaches the coating is formed on a surface of the component (paragraphs 0002 and 0024). Wu teaches the coating material comprises 48 to 62 wt% Co, 20 to 30 wt% Mo, 13 to 16wt% Cr and 2.2 to 3.2 wt% Si (paragraphs 0012-0014 and 0017). Wu teaches Ni might be present as trance element in the coating and is not intentionally added (paragraph 0018), which reads on the limitation of “only with Ni as an inevitable impurity”. Wu teaches the coating is corrosion resistant to reducing and oxidizing acids (paragraphs 0022 and 0033) and applied by thermal spraying (paragraph 0024). Instant claim is not limited by the claim language of “high-temperature environment is an environment with a temperature of at least 700ºC". The limitation is intended use of the in-furnace structure comprising the claimed coating. The recitation of purpose or intended use must be evaluated to determine whether the recited purpose results in a structural difference between the claimed invention and the prior art. (see MPEP 2111.02, II). In the instant claims, Wu further teaches the coating alloy is formed on the gas turbine component that operates in high temperature environment (paragraph 0002) and the coating alloy is tested at the 760ºC environment (paragraph 0021 and 0027), thus indicating the component and coating are intended to be used at high temperature including 760ºC, which overlaps with the claimed range of at least 700ºC. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. In addition, Wu’s coating has the similar composition as the claimed coating (see above), which further indicate the component with the coating is capable to be used in the claimed high-temperature environment.
Wu does not explicitly teach the component is in-furnace structure. However, Yoshida teaches a method of forming a coating by thermal spraying on a furnace hearth roll that is used in an oxidizing or reducing atmosphere (field of industrial application), and the coating material is Co based. Yoshida further teaches the furnace hearth roll is used at the atmosphere heated to 600 to 1300ºC (field of industrial application), which also overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the Co based coating of Wu on a hearth roll of the furnace (in-furnace structure) as suggested by Yoshida, because Yoshida teaches the hearth roll in the furnace requires a coating that is wear and corrosion resistance, particularly against oxidizing and reducing atmosphere (field of industrial application), which is provided by Wu’s coating material, with additional enhanced ductility (paragraph 0004).
Wu in view of Yoshida does not explicitly teach the inorganic sealer. However, Uda teaches a thermal and corrosive resistant Cr alloy coating on a substrate, wherein the corrosive environment including sulfur containing gases (paragraphs 0002 and 0008). Uda teaches a inorganic sealing agent is applied on the thermal sprayed coating to reduce the porosity (paragraphs 0009-0010, 0013) (pores in the coating are sealed with an inorganic sealer). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply an inorganic sealant to the thermal sprayed corrosive resistant coating as suggested by Uda in the in-furnace structure as disclosed by Wu in view of Yoshida because Uda teaches the sealant densifies the structure of the coating (paragraphs 0004) and improves durability, corrosion resistance and abrasion resistance of the sprayed coating (paragraph 0001).
Regarding claim 6, Yoshida teaches the in-furnace structure is a roll inside an annealing furnace (field of industrial application).
Claims 8 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20040057863) in view of Yoshida (JPS60141861A), Torigoe (US20100104440) and Uda (JPH0975832A).
Regarding claim 8, It is noted that the instant claim comprises product-by-process limitation. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the patentability of the structure with a coating formed by a thermal spraying method does not depend of the thermal spraying method. Nevertheless, the prior art teaches the coating is formed by thermal spraying method (see below).
Wu teaches a corrosion and wear resistance coating formed on a gas turbine component that operates in high temperature environment (component used in a high temperature corrosive environment). Wu teaches the coating is resistant to corrosion environment including sulfur group element (pargraph 0022). Wu teaches the coating is formed on a surface of the component (paragraphs 0002 and 0024). Wu teaches the coating material comprises 48 to 62 wt% Co, 20 to 30 wt% Mo, 13 to 16wt% Cr and 2.2 to 3.2 wt% Si (paragraphs 0012-0014 and 0017). Wu teaches Ni might be present as trance element in the coating and is not intentionally added (paragraph 0018), which reads on the limitation of “only with Ni as an inevitable impurity”. Wu teaches the coating is corrosion resistant to reducing and oxidizing acids (paragraphs 0022 and 0033) and applied by thermal spraying (paragraph 0024). Instant claim is not limited by the claim language of “high-temperature environment is an environment with a temperature of at least 700ºC". The limitation is intended use of the in-furnace structure comprising the claimed coating. The recitation of purpose or intended use must be evaluated to determine whether the recited purpose results in a structural difference between the claimed invention and the prior art. (see MPEP 2111.02, II). In the instant claims, Wu further teaches the coating alloy is formed on the gas turbine component that operates in high temperature environment (paragraph 0002) and the coating alloy is tested at the 760ºC environment (paragraph 0021 and 0027), thus indicating the component and coating are intended to be used at high temperature including 760ºC, which overlaps with the claimed range of at least 700ºC. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. In addition, Wu’s coating has the similar composition as the claimed coating (see above), which further indicate the component with the coating is capable to be used in the claimed high-temperature environment.
Wu does not explicitly teach the component is in-furnace structure. However, Yoshida teaches a method of forming a coating by thermal spraying on a furnace hearth roll that is used in an oxidizing or reducing atmosphere (field of industrial application), and the coating material is Co based. Yoshida further teaches the furnace hearth roll is used at the atmosphere heated to 600 to 1300ºC (field of industrial application), which also overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the Co based coating of Wu on a hearth roll of the furnace (in-furnace structure) as suggested by Yoshida, because Yoshida teaches the hearth roll in the furnace requires a coating that is wear and corrosion resistance, particularly against oxidizing and reducing atmosphere (field of industrial application), which is provided by Wu’s coating material, with additional enhanced ductility (paragraph 0004).
Wu in view of Yoshida does not explicitly teach the addition “at least one element” in the coating material. However, Torigoe teaches a coating material with high abrasion resistance and oxidation resistant at high temperature comprising Mo, Cr, Si and Co (abstract, paragraph 0009) and is formed by thermal spraying on a substrate (paragraphs 0023 and 0025) (similar coating material with Wu in view of Yoshida). Torigeo teaches less than 10% by mass of aluminum is included in the coating material (paragraphs 0009 and 0033), which overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include less than 10wt% of Al in the similar coating material as suggested by Torigoe in the in-furnace structure as disclosed by Wu in view of Yoshida because Torigeo teaches the aluminum enhance the oxidation resistant of the coating (paragraph 0033).
Wu in view of Yoshida and Torigoe teaches all limitations of this claim, except the inorganic sealer. However, Uda teaches a thermal and corrosive resistant Cr alloy coating on a substrate, wherein the corrosive environment including sulfur containing gases (paragraphs 0002 and 0008). Uda teaches an inorganic sealing agent is applied on the thermal sprayed coating to reduce the porosity (paragraphs 0009-0010, 0013) (pores in the coating are sealed with an inorganic sealer). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply an inorganic sealant to the thermal sprayed corrosive resistant coating as suggested by Uda in the in-furnace structure as disclosed by Wu in view of Yoshida because Uda teaches the sealant densifies the structure of the coating (paragraphs 0004) and improves durability, corrosion resistance and abrasion resistance of the sprayed coating (paragraph 0001).
Regarding claim 11, Yoshida teaches the in-furnace structure is a roll inside an annealing furnace (field of industrial application).
Response to Arguments
Applicant's arguments filed on February 10, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Wu teaches high Ni content which is not the same as the claimed range. Wu only teaches to test at temperature at 482ºC.
Large amount of Ni resulted in greatly inferior remnant ratios of coating as demonstrated in at least Examples 7-10.
Uda is silent as improved resistance to a sulfur group element.
In response to Applicant’s arguments, please consider the following comments:
As discussed above, Wu teaches Ni might be present as trance element in the coating and is not intentionally added (paragraph 0018), which reads on the limitation of “only with Ni as an inevitable impurity”. Instant claim is not limited by the claim language of “high-temperature environment is an environment with a temperature of at least 700ºC". The limitation is intended use of the in-furnace structure comprising the claimed coating. The recitation of purpose or intended use must be evaluated to determine whether the recited purpose results in a structural difference between the claimed invention and the prior art. (see MPEP 2111.02, II). In the instant claims, Wu further teaches the coating alloy is formed on the gas turbine component that operates in high temperature environment (paragraph 0002) and the coating alloy is tested at the 760ºC environment (paragraph 0021 and 0027), thus indicating the component and coating are intended to be used at high temperature including 760ºC, which overlaps with the claimed range of at least 700ºC. In addition, Yoshida further teaches the furnace hearth roll is used at the atmosphere heated to 600 to 1300ºC (field of industrial application), which also overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Furthermore, Wu’s coating has the similar composition as the claimed coating (see above), which further indicate the component with the coating is capable to be used in the claimed high-temperature environment. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the unexpected result of the amount of Ni in the coating) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is well settled that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MEPE 716.02(b)). In addition, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (716.02(d) II). Applicant has not established the criticality of the claimed ranges. And Wu’s teaching of trace amount Ni clearly overlaps with the claim’s trace amount as the claim does not actually define what is considered as trace amount of Ni. Since the prior art teaches in-furnace structure with the same coating compositions, there is not appear to have any structurally difference between the claimed structure and the prior art’s disclosure. Applicant further argues the component design is based on not containing Ni, however, the claimed limitations clearly include “Ni as an inevitable impurity”. Thus, the Wu’s teaching of trace amount of Ni does not teach away from the claimed invention or render the claims distinct from the combination of prior arts.
Examples 7-10 provided evidence for Ni at 3.9, 4.2, 4.2 and 8.9 mass%, which is substantially higher than the trace amount of Ni by Wu (up to about 3%, which are not intentionally added, paragraph 0018). Thus, the evidence is not sufficient to show Wu does not teach the claimed coating. In addition, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." (MEPE 716.02(d)). It is well settled that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MEPE 716.02(b)). Furthermore, to establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range (716.02(d) II). Applicant has not established criticality of the claimed ranges.
Uda teaches a thermal and corrosive resistant Cr alloy coating on a substrate, wherein the corrosive environment including sulfur containing gases (paragraphs 0002 and 0008). Thus, it would be clear that Uda’s sealer is intended to be used in high temperature sulfur environment.
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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