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 .
Ongoing Duty to Disclose
Applicant is reminded of the continuing obligation under 37 CFR 1.178(b) to timely apprise the Office of any prior or concurrent proceeding(s) in which U.S. Patent No. 10,640,849 is or was involved in. These proceedings would include interferences, reissues, reexaminations, and litigation. Applicant is further reminded of the continuing obligation under 37 CFR 1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in this reissue application.
The obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01, and 1442.04.
Status of Claims
Claims 1-20 are pending. Claims 1 and 10 are amended.
Information Disclosure Statement
The information disclosure statement (IDS) filed on 23 April 2024 have been considered by the Examiner.
Oath/Declaration
On 27 February 2024 the Patent Owner filed a reissue oath/declaration which indicated that the original patent was believed to be wholly or partly inoperative or invalid by reason of a typographical error. Specifically, the Patent Owner indicates that in certain sections of the original patent, the phrase “0.4 wt % lanthanide elements” is a typographical error and the correct phrase is “0.04 wt % lanthanide elements”. It is noted that in order to correct the asserted error, the Patent Owner has amended claims 1 and 10 of the original patent by replacing the phrase “0.4 wt % lanthanide elements” with the phrase “0.04 wt % lanthanide elements”. In doing so, the Patent Owner has changed the scope of the claims and thus the asserted error is not merely typographical in nature, but is substantive. In fact, the amendment made to the claims is a broadening amendment since the scope of the amended claims encompasses products which would not have infringed on the original patent. See MPEP 1412.03 I.
In light of the above analysis, it is evident that the reissue oath/declaration is defective because it does not indicate that the original patent is wholly or partly defective by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
Objection under 37 CFR 1.173(b)(2)
The amendment to the claims filed 27 February 2024 does not comply with 37 CFR 1.173(b)(2):
Changes shown by markings. Any changes relative to the patent being reissued which are made to the specification, including the claims, upon filing, or by an amendment paper in the reissue application, must include the following markings:
The matter being omitted by reissue must be enclosed in brackets; and
The matter being added must be underlined.
Regarding claims 1 and 10, the omitted limitation of “0.4” must be enclosed in brackets in accordance with 37 CFR 1.173(b)(2).
Claim Rejection – 35 USC 251
Claims 1-20 are rejected under 35 USC 251 as being broadened in a reissue application filed outside the two year statutory period.
Claims 1 and 10 are broader than issued independent claims 1 and 10 of the original patent because these claims do not require the presence of about 0.4 wt% of lanthanide elements. The same applies to dependent claims 2-9 and 11-20. A claim is broader in scope than the original claim if it contains within its scope any conceivable product or process which would not have infringed the original patent.
It is noted that the original patent was issued on 5 May 2020 and that the instant broadening reissue application was filed 27 February 2024. As such, the instant broadening reissue application was filed outside of the two year statutory period set forth in 35 U.S.C. 251 (d).
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.
Claims 1, 2, 6, 7, 10, 13, 14, 16, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Herchenroader, US 4,460,542 (“Herchenroader”).
Regarding claims 1 and 10, Herchenroader discloses a composition of matter and articles formed therefrom (abstract, col 1 lines 1-54, col. 2 lines 49-54). The disclosed composition of matter is summarized below (col. 1 lines 1-54):
Claimed
Proportion (wt%)
Element
Herchenroader’s Proportion
(wt%)
~16 to ~20
Cr
14 to 18
>6 to ~10
Al
4 to 6
~2 to ~10
Fe
1.5 to 8
0 to ~0.04
Yt
<0.04
0 to ~12
Co
0 to12
0 to ~1.0
Mn
0 to 1
0 to ~1.0
Mo
0 to 1
0 to ~1.0
Si
0 to 1
0 to ~0.25
C
0 to 0.25
~0.03
B
0 to 0.03
0 to ~1.0
W
0 to 1
0 to ~1.0
Ta
0 to 1
0 to ~0.5
Ti
0 to 0.5
0 to ~0.5
Hf
0 to 0.5
0 to ~0.5
Rh
0 to 0.5
~0.04
La
0 to 0.04
Balance
Ni
Balance
The ranges of amounts of chromium, iron, yttrium, cobalt, manganese, silicon, carbon, boron, tungsten, tantalum, titanium, hafnium, rhenium, and lanthanide elements overlap, and therefore render obvious, the claimed ranges of amounts of the claimed elements. See MPEP 2144.05. While the range of amounts of aluminum disclosed by Herchenroader (i.e., from 4 to 6 wt%) abuts the claimed range (i.e., greater than 6 to about 10 wt%) it is noted that a prima facie case of obviousness exist where the claimed ranges or amounts do not overlap with the prior art but are merely close. See MPEP 2144.05 and Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claims 2 and 13, the claimed ranges of amounts of iron and aluminum of the composition disclosed by Herchenroader meet the limitations of claims 2 and 13.
Regarding claims 6, 7, 16, and 17, Herchenroader is silent regarding the composition having the claimed gamma prime solvus temperature. However, it is noted that the teachings of Herchenroader encompasses composition which are substantially identical to the composition claimed and disclosed in the original patent. Additionally, the original patent indicates that the gamma prime solvus temperature is dependent on the amount of cobalt present in the composition (see col. 5 lines 18-25 of the original patent). Given that the composition disclosed by Herchenroader is substantially identical to the composition claimed and disclosed in the original patent particularly in terms of the proportion of cobalt there is a reasonable expectation the disclosure of Herchenroader encompasses embodiments which inherently have the claimed gamma prime solvus temperature (see MPEP 2112 V).
Claims 1-10 and 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Sawaragi et al., JPH0533092A (“Sawaragi”)(machine translation provided herewith) in view of Yoshinari et al., US 2004/0177901 (“Yoshinari”).
Regarding claims 1 and 10, Sawaragi discloses a nickel-based alloy composition and an article formed therefrom [0001, 0010-0014, 0024, 0029, 0045]. The teachings of Sawaragi encompass compositions summarized in the table below [0010-0014, 0023-0025]:
Claimed
Proportion (wt%)
Element
Sawaragi’s Proportion
(wt%)
~16 to ~20
Cr
5 to 18
>6 to ~10
Al
4.5 to 12
~2 to ~10
Fe
0 to 5.0
0 to ~0.04
Yt
0
0 to ~12
Co
0
0 to ~1.0
Mn
0 to 0.2
0 to ~1.0
Mo
0.5 to 5
0 to ~1.0
Si
>1.0 to 5.0
0 to ~0.25
C
0 to 0.1
~0.03
B
0.001 to 0.03
0 to ~1.0
W
1.0 to 10
0 to ~1.0
Ta
1.0-10
0 to ~0.5
Ti
0.05 to 1.0
0 to ~0.5
Hf
0.05 to 1.0
0 to ~0.5
Rh
0
~0.04
La
0.01 to 0.25
Balance
Ni
Balance
The ranges of amounts of each of the elements overlap or encompass, and therefore renders obvious, the ranges of amounts of each of the elements in the claimed composition with the exception of rhenium. Sawaragi is silent regarding the composition comprising the claimed proportions of rhenium (i.e., about 0.5 wt%).
Yoshinari discloses a nickel-based alloy composition comprising chromium, cobalt, and aluminum [abstract]. Yoshinari teaches that the addition of from 0 to 0.5 wt% of rhenium to the composition improves creep rupture strength and corrosion resistance [0047].
Sawaragi and Yoshinari are both directed towards nickel-based alloy compositions comprising chromium, cobalt, and aluminum. In light of the disclosure of Yoshinari, it would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have incorporated from 0 to 0.5 wt% of rhenium to the composition of Sawaragi with the expectation of improving the creep rupture and corrosion resistance of the composition. The range of amounts of rhenium that would have been present in the composition of modified Sawaragi would have encompassed, and therefore rendered obvious, the claimed range of amount of rhenium.
Regarding claims 2 and 13, the claimed ranges of amounts of iron and aluminum of the composition disclosed by modified Sawaragi meets the limitation of claims 2 and 13.
Regarding claims 3-5 and 14-16, as is described above Sawaragi teaches that the amount of aluminum in the composition ranges from 4.5 to 12 wt% of aluminum.
Regarding claims 6, 7, 17, and 18, modified Sawaragi is silent regarding the composition having a specific gamma prime solvus temperature. However, Sawaragi teaches that the composition comprises gamma prime phase [0017, 0023, 0025, 0038]. Additionally, the original patent discloses that the solvus temperature of the disclosed composition is dependent on the cobalt component (col. 5 lines 18-25). As such, given that modified Sawaragi teaches a composition which is identical to or substantially identical to the composition claimed and disclosed in the original patent including the amounts of cobalt, there is a reasonable expectation that the teachings of modified Sawaragi encompass a composition which inherently have the claimed gamma prime solvus temperature (see MPEP 2112V).
Regarding claims 8, 9, 19, and 20, modified Sawaragi is silent regarding the composition having the claimed gamma prime volume fraction. However, Sawaragi teaches that the composition comprises a gamma prime phase [0017, 0023, 0025, 0038]. Additionally, the original patent discloses that the volume fraction of gamma prime phase by controlling the concentration of aluminum, tantalum, and hafnium (col. 3 lines 16-23, col. 4 lines 54-58). As such, given that modified Sawaragi teaches a composition which is identical to or substantially identical to the composition claimed and disclosed in the original patent including the proportions of aluminum, tantalum, and hafnium, there is a reasonable expectation that the teachings of modified Sawaragi encompass a composition which inherently have the claimed gamma prime volume fraction (see MPEP 2112V).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Kent, US 2,972,182 (“Kent”) in view of Herchenroader.
Regarding claims 10 and 11, Kent discloses a blade for an internal combustion turbine (i.e., a gas turbine) (abstract, col. 1 lines 15-18, col. 2 lines 17-18, Fig. 1). Kent teaches forming the disclosed blade from metals which are resistant to high temperatures such as nickel chrome alloys (col. 1 lines 15-18).
Kent is silent regarding a composition of matter comprising the claimed amounts of the claimed elements.
Herchenroader discloses the nickel chrome alloy described above. Additionally, Herchenroader teaches that the disclosed alloy has improved workability and is characterized by excellent oxidation resistance at very high temperatures (col. 1 lines 33-36).
Kent and Herchenroader are both directed towards applications utilizing nickel chrome alloys. It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have formed the gas turbine blade disclosed by Kent from the alloy taught by Herchenroader in order to take advantage of the alloy’s improved workability and excellent oxidation resistance at high temperatures. The alloy of the resulting turbine blade would have corresponded to the claimed composition of matter wherein the ranges of amounts of the elements would have read on or rendered obvious the claimed ranges of the claimed elements. While the range of amounts of aluminum disclosed by Herchenroader (i.e., from 4 to 6 wt%) abuts the claimed range (i.e., greater than 6 to about 10 wt%) it is noted that a prima facie case of obviousness exist where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05).
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Rice et al., US 6,418,727 (“Rice”) in view of Herchenroader.
Regarding claims 10 and 11, Rice discloses a combustor seal assembly of a gas turbine engine wherein the assembly comprises inner and outer plates formed from a high temperature, oxidation resistant material such as a nickel based alloy (abstract, col. 1 lines 10-16, col. 4 lines 58-60).
Rice is silent regarding a composition of matter comprising the claimed amounts of the claimed elements.
Herchenroader discloses a nickel alloy described above. Additionally, Herchenroader teaches that the disclosed alloy has improved workability and is characterized by excellent oxidation resistance at very high temperatures (col. 1 lines 33-36).
Rice and Herchenroader are both directed towards applications utilizing nickel alloys having high temperature oxidation resistance. It would have been obvious to one of ordinary skill in the art at the time the instant invention was effectively filed to have formed the combustor seal assembly disclosed by Rice from the alloy taught by Herchenroader in order to take advantage of the alloy’s improved workability and excellent oxidation resistance at very high temperatures. The alloy of the resulting combustor seal assembly would have corresponded to the claimed composition of matter wherein the ranges of amounts of chromium, iron, yttrium, cobalt, manganese, silicon, carbon, boron, tungsten, tantalum, titanium, hafnium, rhenium, and lanthanide elements read on or render obvious the claimed ranges of the claimed elements. While the range of amounts of aluminum disclosed by Herchenroader (i.e., from 4 to 6 wt%) abuts the claimed range (i.e., greater than 6 to about 10 wt%) it is noted that a prima facie case of obviousness exist where the claimed ranges or amounts do not overlap with the prior art but are merely close (see MPEP 2144.05).
Future Correspondence
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to LEE E SANDERSON whose telephone number is (571)270-1079. The Examiner can normally be reached M-F: 8:30AM to 6:00PM.
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If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Timothy Speer can be reached on (313) 446-4825. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LEE E SANDERSON/ Reexamination Specialist, Art Unit 3991
Conferees:
/JOSEPH R KOSACK/ Reexamination Specialist, Art Unit 3991
/T.M.S/ Supervisory Patent Examiner, Art Unit 3991