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 .
Claim Status
No amendment was filed in the response dated 8/18/2026. Claims 1-20 are currently pending.
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.
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.
Claim(s) 1-9, 13, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Chintalapati (US 20160177428)(of record).
With respect to Claim 1, Chintalapati teaches an austenitic stainless steel and turbocharger components made thereof, the steel having a composition, in mass%, as follows (para. 8-10):
Claim 1
Chintalapati
Cr
22.0-23.0
22-28
Ni
4.0-5.0
3.5-6.5
Mn
4.0-5.0
1-6
Mo
0.2-0.4
0.2-0.8
Nb
0.2-0.4
0.2-0.8
Si
0.5-1.5
0.5-2.5
C
0.35-0.45
0.3-0.6
N
0.2-0.28
0.2-0.8
Fe
Balance with impurities, wherein P and S are impurity level
Balance
Other
-
W: 0.5-1.5
Compositional ranges including zero are interpreted as optional elements. Thus, Chintalapati teaches an austenitic stainless steel with compositional ranges overlapping each of the instantly required ranges and that does not require any content of phosphorus or sulfur beyond impurity levels. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 2-9, Chintalapati teaches compositional ranges of Cr, Ni, Mn, Mo, Si, C, N, and Nb overlapping the respectively claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 13 and 17-18, Chintalapati teaches a turbocharger turbine housing component having a composition overlapping the instantly claimed ranges of claim 13 and a vehicle comprising said turbocharger component. (see rejection of claim 1 above; para. 21-22). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 19, Chintalapati teaches a method of making a turbocharger turbine housing component having from an austenitic stainless steel having a composition overlapping the instantly claimed ranges of claim 19. (see rejection of claims 1, 13, and 17-18 above; para. 20; claim 20). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 11, 15 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Chintalapati (US 20160177428) as applied to claim 1 (with respect to claim 11), claim 13 (with respect to claim 15), and claim 19 (with respect to claim 20), in view of Rakowski (US 2009/0162237)(of record).
With respect to Claims 11, 15, and 20, Chintalapati teaches an austenitic stainless steel as in claims 1, 13, and a method of making as in claim 19 (see rejections above); however, the reference is silent as to wherein the stainless steel further comprises copper.
Rakowski teaches an austenitic stainless steel with compositional ranges substantially overlapping those of Chintalapati and the instant claims, the reference further teaching the inclusion of up to 3.0 mass% copper (Cu), as an austenite stabilizer, optionally in place of a portion of nickel content, and also improves corrosion resistance and formability. (para. 12-13, 31-32).
It would have been obvious to one of ordinary skill in the art to modify the austenitic stainless steel and method of making said steel of Chintalapati, to include up to 3.0 mass% of copper, as taught by Rakowski, in order to improve austenite stability, improve corrosion resistance, and/or improve the formability of the stainless steel. Additionally, it would have been obvious to one of ordinary skill in the art to select from the overlapping portion of the ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 1-12 are rejected under 35 U.S.C. 103 as being unpatentable over Talonen (US 2017/0268076)(of record).
With respect to Claim 1, Talonen teaches an austenitic stainless steel, the steel having a composition, in mass%, as follows (para. 11-14, 22-33):
Claim 1
Talonen
Cr
22.0-23.0
10-30
Ni
4.0-5.0
0-4.5
Mn
4.0-5.0
3-20
Mo
0.2-0.4
0-0.5
Nb
0.2-0.4
0-0.5
Si
0.5-1.5
0-3
C
0.35-0.45
0-0.4
N
0.2-0.28
0.05-0.5
Fe
Balance with impurities, wherein P and S are impurity level
Balance with impurities such as P and S
Other
-
Cu: 0-3
Ti: 0-0.5
V: 0-0.5
Compositional ranges including zero are interpreted as optional elements. Thus, Talonen teaches an austenitic stainless steel with compositional ranges overlapping each of the instantly required ranges and that does not require any content of phosphorus or sulfur beyond impurity levels. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claims 2-9, Talonen teaches compositional ranges of Cr, Ni, Mn, Mo, Si, C, N, and Nb overlapping the respectively claimed ranges. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 10, the claim uses the closed transitional phrase “consisting of.” Talonen teaches an austenitic steel with compositional ranges overlapping the instantly claimed ranges of Cr, Ni, Mn, Mo, Nb, Si, C, N, and Fe, excluded P and S except for impurity levels, and that does not require any additional elements and therefore, meets the instant claim. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 11, Talonen teaches a stainless steel that may optionally comprise up to 3 mass% copper, overlapping the instantly claimed range. (see rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
With respect to Claim 12, the claim uses the closed transitional phrase “consisting of.” Talonen teaches an austenitic steel with compositional ranges overlapping the instantly claimed ranges of Cr, Ni, Mn, Mo, Nb, Si, C, N, Cu, and Fe, excluded P and S except for impurity levels, and that does not require any additional elements and therefore, meets the instant claim. (see rejection of claims 1, 10 and 11 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 13-20 are rejected under 35 U.S.C. 103 as being unpatentable over Talonen (US 2017/0268076) in view of Chintalapati (US 20160177428)(of record).
With respect to Claims 13-18, Talonen teaches an austenitic stainless steel with a composition overlapping the respectively required ranges of claims 13-18, wherein the steel does not require any additional elements outside those claimed. (see rejections of claims 1-12 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Talonen teaches that the austenitic stainless steel exhibits a combination of good strength and high isotropy of mechanical properties (para. 1); however, the reference is silent as to using the steel to form a turbocharger component, including a housing thereof, and/or a vehicle comprising such a component.
Chintalapati teaches a turbocharger turbine housing component made from an austenitic stainless steel having a composition substantially overlapping that of Talonen and the instant claims and further teaches a vehicle comprising said turbocharger component. (para. 1, 8-10, 21-22).
It would have been obvious to one of ordinary skill in the art to use the austenitic stainless steel composition of Talonen to form a turbocharger turbine housing component and a vehicle comprising a said turbocharger component, as taught by Chintalapati, in order to obtain a component and/or vehicle comprising a component having improved strength and isotropic mechanical properties. In other words, Chintalapati teaches the utility of austenitic stainless steel materials for forming turbocharger housing components and therefore, it would have been obvious to one of ordinary skill in the art to substitute one material for another in an application known to be suitable for such materials with a predictable result of success.
With respect to Claims 19-20, Talonen teaches a method of making an austenitic stainless steel with a composition overlapping the respectively required ranges of claims 19-20, wherein the steel does not require any additional elements outside those claimed. (see rejections of claims 1-18 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05. Talonen is silent as to a method of making a turbocharger component. (see also rejection of claims 13-18).
Chintalapati teaches a method of making a turbocharger turbine housing component having from an austenitic stainless steel having a composition overlapping the instantly claimed ranges of claim 19. (see rejection of claims 13-18; para. 20; claim 20).
It would have been obvious to one of ordinary skill in the art to use the austenitic stainless steel composition of Talonen in a method to form a turbocharger turbine component, as taught by Chintalapati, in order to obtain a component comprising a component having improved strength and isotropic mechanical properties. In other words, Chintalapati teaches the utility of austenitic stainless steel materials for methods of forming turbocharger components and therefore, it would have been obvious to one of ordinary skill in the art to substitute one material for another in an method and application known to be suitable for such materials with a predictable result of success.
Response to Arguments
Applicant's arguments filed 8/18/2026 have been fully considered but they are not persuasive.
Applicant argues with respect to prior art Chintalapati that the rejection fails to establish a prima facie case of obviousness, that the reference teaches away from the presence of molybdenum and that the instantly claimed ranges establish criticality to rebut a prima facie case of obviousness. (see Remarks, pgs. 7-14). These arguments have been fully considered but are not found persuasive.
Applicant misrepresents the teachings of the prior art and fails to apply the clear standard for establishing obviousness of ranges as set forth in the MPEP. Applicant argues that portions of the prior art teach preferable ranges or examples of compositional elements, such as niobium, outside the claimed ranges and incorrectly uses these examples to conclude that the reference fails to teach the broader disclosed range. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP 2123.
Applicant also incorrectly argues that Chintalapati teaches an example free of molybdenum. Chintalapati (US 2016/0177428) clearly teaches a steel composition with molybdenum expressly included in each embodiment (see, e.g., para. 8-10) and where molybdenum is required by all the recited claims (claims 1-20). Therefore, it appears that Applicant, when making these arguments, was referring to a different reference. Accordingly, Applicant’s arguments with respect to Chintalapati are not found persuasive.
Furthermore, with respect to criticality of the ranges, Applicant fails to provide sufficient evidence including examples inside and outside of the claimed ranges and commensurate with the scope of the claims, to establish criticality of the ranges and/or unexpected results. “’Objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.’ In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range.” MPEP 716.02(d). 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. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960).
Additionally, it is noted that the features upon which applicant relies (i.e., microstructural phase content, oxidation resistance, and creep performance) 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).
As a result, Applicant fails to rebut the prima facie case of obviousness established by Chintalapati.
With respect to prior art Rakowski, Applicant argues that the reference is directed to a different class of alloy, that the combination requires hindsight reconstruction, and that the combination is not supported by the record. (Remarks, pgs. 16-21). These arguments are not found persuasive.
Rakowski teaches an austenitic stainless steel with compositional ranges substantially overlapping those of Chintalapati and the instant claims, and Applicant’s arguments do not rebut this fact. Rakowski further teaching the inclusion of up to 3.0 mass% copper (Cu), as an austenite stabilizer, optionally in place of a portion of nickel content, and also improves corrosion resistance and formability. (para. 12-13, 31-32).
It would have been obvious to one of ordinary skill in the art to modify the austenitic stainless steel and method of making said steel of Chintalapati, to include up to 3.0 mass% of copper, as taught by Rakowski, in order to improve austenite stability, improve corrosion resistance, and/or improve the formability of the stainless steel. Additionally, it would have been obvious to one of ordinary skill in the art to select from the overlapping portion of the ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
One of ordinary skill in the art would recognize the teachings of Rakowski, with respect to the addition of copper to an austenitic steel composition, to extend beyond the preferred uses of the reference. Furthermore, the fact that Chintalapati teaches the benefit of certain properties and relates such properties to other elements, does not teach away from the combination.
With respect to the 103 rejection over Talonen, Applicant argues that the reference does not teach a specific example anticipating the instant compositional ranges, that the reference teaches away from the claimed nickel content and that the reference is drawn to different articles and applications than the instantly claimed composition. These arguments have been fully considered and are not found persuasive.
Applicant again misrepresents the teachings of the prior art and fails to apply the clear standard for establishing obviousness of ranges as set forth in the MPEP. Furthermore, as discussed above, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). “A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use.” In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994); MPEP 2123. Applicant ignores the clear compositional ranges taught by Talonen which overlap the claimed ranges and are sufficient to establish a prima facie case of obviousness. (see rejection above).
Claims 1-12 do not claim any specific structure with respect to an article or product, nor do the claims even include an intended use statement or product-by-process limitations. Therefore, Applicant’s arguments that Talonen is drawn to a different article and/or application are irrelevant. With respect to claims 13-20, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Additionally, as detailed above, Applicant fails to provide sufficient evidence, commensurate with the scope of the claims, to establish criticality of the ranges nor unexpected results. Therefore, Applicant fails to rebut the prima facie case of obviousness established by the prior art.
Applicant also argues with respect to the combination of Talonen and Chintalapati, that the references are drawn to different compositions and drawn to different products and problems. These arguments have been fully considered but are not found persuasive.
Many of Applicant’s arguments rely on the incorrect statements of the teachings of Chintalapati and the incorrect conclusion that broader compositional ranges or incomplete overlap of ranges constitutes a teaching away. These arguments are not found persuasive. Applicant’s arguments drawn to the purpose of Talonen (see, e.g., Remarks, p. 36) are not relevant to the combination and additionally, the arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); MPEP § 716.01 and § 2145. Applicant’s further arguments have been substantially addressed above and are not found persuasive.
It would have been obvious to one of ordinary skill in the art to use the austenitic stainless steel composition of Talonen to form a turbocharger turbine housing component and a vehicle comprising a said turbocharger component, as taught by Chintalapati, in order to obtain a component and/or vehicle comprising a component having improved strength and isotropic mechanical properties. In other words, Chintalapati teaches the utility of austenitic stainless steel materials for forming turbocharger housing components and therefore, it would have been obvious to one of ordinary skill in the art to substitute one material for another in an application known to be suitable for such materials with a predictable result of success. Applicant’s arguments fail to rebut this conclusion.
Conclusion
THIS ACTION IS MADE FINAL. 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 JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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