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 Claims
Claims 8-11 are newly added. Claims 1-11 are pending where claims 1, 4, 5 and 7 have been amended.
Status of Previous Rejections
The previous 35 USC § 112 rejections of the claims have been withdrawn in view of amendments to the claims.
The previous 35 USC § 102/103 rejections of the claims have been maintained.
Claim Rejections - 35 USC § 112(b)
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 1-11 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.
Instant claim 1 recites the limitation “A low thermal expansion alloy comprising… the balance of Co and impurities of 0.30% or less.” The instant claims recite the transitional phrase “comprising.” The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. However, in the remarks filed 8/11/2026, applicant argues that the limitation “the balance of Co and impurities of 0.30% or less excludes any unrecited elements in a total amount of greater than 0.30%. However, the limitation as written appear to only exclude “impurity” elements in amounts greater than 0.30% while the recitation of “comprising” appears to allow unrestricted amounts of additional, unrecited intentionally added elements, which renders the claims indefinite in that there is no way to test a product to determine which elements are intentionally added and which elements are unintentional impurities. For the purposes of search and examination, the claim will be given the broadest reasonable interpretation of the term “comprising” and as such will be interpreted not to exclude additional unrecited intentionally added elements which are present in a total amount of greater than 0.30%. If applicant intends for the claim to be exclude any additional unrecited elements in a total amount of greater than 0.30%, the transitional phrase “consisting of” should be used in place of “comprising.”
Instant claims 2-11 depend on instant claim 1 and are indefinite for at least the same reasons.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1-7 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over JP 2004115905 A to Inoue et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes).
Regarding claim 1, Inoue discloses examples alloys 1-7 lying within the instantly claimed composition ranges (alloy 1 shown below) which lies within the instantly claimed composition as follows (Inoue, abstract, Examples, para [0020-0023], Table 1):
Element
Claimed wt%
Inoue 1 wt%
Lies within?
Fe
20-60
Balance (~39.72)
Yes
Ni
20-35
25.0
Yes
Cr
0-30
≤impurity
Yes
Impurties
0-0.30
≤impurity
Yes
Co
Balance
34.7
Yes
Regarding the limitation “comprising… balance of Co and impurities of 0.30% or less,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. The additional elements recited in Inoue in non-trace amounts are intentionally added to the alloy of Inoue and are thus not impurities and are permitted by the recitation of the instantly claimed recitation “comprising.”
Regarding the limitation “wherein an average coefficient of thermal expansion at room temperature to 800 °C is 11.0×10-6/°C or less, and an average coefficient of thermal expansion at 400 to 600 °C is 14.0×10-6/°C or less,” Inoue explicitly refers to the alloy of Inoue as a “low thermal expansion alloy.” When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Inoue would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Inoue has the same or substantially the same composition and microstructure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 2, the alloy of Inoue contains 99% or more single phase austenite structure (Inoue, para [0021]), lying within the instantly claimed range of 90% or more.
Regarding claims 3-7, the alloy of Inoue lies wholly within the instantly claimed ranges.
Claim(s) 1-11 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over EP 0533059 to Sato et al (cited by applicant in IDS, the English language machine translation provided by applicant has been relied upon for examination purposes).
Regarding claim 1, Sato discloses examples alloys 1-8 and comparative alloys 9-13 lying within the instantly claimed composition ranges (Sato alloy 1 shown below) which lies within the instantly claimed composition as follows (Sato, abstract, Examples, page 5 line 20-page 8 line 15, Table 1):
Element
Claimed wt%
Sato 1 wt%
Lies within?
Fe
20-60
Balance (~40.067)
Yes
Ni
20-35
28.8
Yes
Cr
0-30
2.33
Yes
Impurties
0-0.30
≤impurity
Yes
Co
Balance
22.3
Yes
Regarding the limitation “comprising… balance of Co and impurities of 0.30% or less,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. The additional elements recited in Sato in non-trace amounts are intentionally added to the alloy of Sato and are thus not impurities and are permitted by the recitation of the instantly claimed recitation “comprising.”
Regarding the limitation “wherein an average coefficient of thermal expansion at room temperature to 800 °C is 11.0×10-6/°C or less, and an average coefficient of thermal expansion at 400 to 600 °C is 14.0×10-6/°C or less,” Sato explicitly refers to the alloy of Inoue as a “low thermal expansion alloy.” When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. Where 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Sato would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Sato has the same or substantially the same composition and microstructure. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Regarding claim 2, the alloy of Sato appears to be a wholly austenitic alloy (Sato, page 2 lines 11-17, page 5 lines 7-13), lying within the instantly claimed range of 90% or more.
Regarding claims 3-9, alloy 1 of Sato (Sato, Table 1) lies wholly within the instantly claimed ranges.
Regarding claims 10-11, comparative alloy 12 of Sato (Sato, Table 1) lies wholly within the instantly claimed ranges.
Response to Arguments
Applicant's arguments filed 8/11/2026 have been fully considered but they are not persuasive.
Applicant argues that Inoue teaches additional unrecited elements such as Mn and Al in an amount of more than 0.30%, and thus does not disclose the instantly claimed limitation of “impurities of 0.30% or less.” This is not found persuasive because regarding the limitation “comprising… balance of Co and impurities of 0.30% or less,” this limitation is indefinite as set forth in the above 35 USC 112 rejection. Regardless, the transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See MPEP 2111.03 I. The additional elements recited in Inoue in non-trace amounts are intentionally added to the alloy of Inoue and are thus not impurities and are permitted by the recitation of the instantly claimed recitation “comprising.”
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 BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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/BRIAN D WALCK/ Primary Examiner, Art Unit 1738
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