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 .
Election/Restrictions
Applicant’s election without traverse of Group I, Claims 1-17, in the reply filed on 7/27/2026 is acknowledged.
Claims 18-21 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Group II, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/27/2026.
Claim Objections
Claim 1 is objected to because of the following informalities: Claim 1 recites duplicate lines of “Mn up to 2.0 % by weight.” Appropriate correction is required.
Claim Interpretation
Claims 4-13 each recite a group of ranges, wherein each group consists of a plurality of increasingly narrow ranges of the same value/measurement/property. The narrower ranges are interpreted as optional due to the language “selected from the group consisting of,” and therefore, have not been rejected under 35 U.S.C. 112(b) for indefinite broad and narrow ranges.
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.
Claim 5-17 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.
Claim 5 recites the limitation "the proportion of P and S in the alloy.” There is insufficient antecedent basis for this limitation in the claim. As claim 1, from which the claim depends, does not recite a content of said element(s), it is unclear whether the claim intends to require said element(s) up to the recited amount. The claim should preferably be amended to “a proportion of P and S in the alloy.”
Claim 6 recites the limitation "the proportion of Ti, Ta, Hf and other trace elements in the alloy.” There is insufficient antecedent basis for this limitation in the claim. As claim 1, from which the claim depends, does not recite a content of said element(s), it is unclear whether the claim intends to require said element(s) up to the recited amount.
Claim 7 recites the limitation "the proportion of Al in the alloy.” There is insufficient antecedent basis for this limitation in the claim. As claim 1, from which the claim depends, does not recite a content of said element(s), it is unclear whether the claim intends to require said element(s) up to the recited amount.
Claim 8 recites the limitation "the proportion of B in the alloy.” There is insufficient antecedent basis for this limitation in the claim. As claim 1, from which the claim depends, does not recite a content of said element(s), it is unclear whether the claim intends to require said element(s) up to the recited amount.
Claim 9 recites the term “the melting range.” It is unclear if the limitation is drawn to a range of melting temperatures (e.g. range of liquidus temperatures) or some other measurement. As a melting temperature of an alloy is intrinsic to the composition, the claim is not specifically rejected for lack of antecedent basis.
Claim 10 recites the limitation "the proportion Laves phases in the alloy.” There is insufficient antecedent basis for this limitation in the claim.
Claim 11 recites the limitation "the hardness.” There is insufficient antecedent basis for this limitation in the claim. Further, the claim does not specify if the hardness is drawn to the alloy.
Claim 12 recites the limitation "the coefficient of friction.” There is insufficient antecedent basis for this limitation in the claim.
Claim 13 recites the limitation "the density.” There is insufficient antecedent basis for this limitation in the claim.
Claims 14-17 each recite “wherein the proportion of Laves phases, the hardness, the coefficient of friction and/or the density is achieved by a casting production process without further heat treatment.” There is insufficient antecedent basis for at least one of the recited value limitations in the claims. For example, while claim 10, from which claim 14 depends, recites a proportion of Laves phase, it does not recite a coefficient of friction, nor density and therefore, the latter values lack antecedent basis. Claims 15-17 lack antecedent basis for the same reason, respectively.
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) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Yao et al. (US 2024/0018630).
With respect to Claims 1-3, Yao teaches an alloy for the production of components comprising, Ni, Co, Cr, Fe, and Mo, thus, constituting a “Ni-Co-Cr-Fe-Mo” alloy, the alloy having a composition, in weight%, as follows (para. 13):
Claim 1
Claim 2
Claim 3
Yao
Mo
10-60
22-38
26-28
24-35
Cr
10-30
13-17
14-16
14-20
Si
0.5-5.0
1.5-4.5
2.5-3.5
0.5-5.5
Fe
10-30
13-17
14-16
0-15
Co
10-40
17-23
18-22
Balance
Ni
10-40
17-23
18-22
0-40
Mn
≤ 2.0
≤ 0.8
≤ 0.7
0-1.5
C
-
≤ 1.4
≤ 0.1
0.01-0.1
Other
≤ 4
≤ 3
≤ 2.2
-
Compositional ranges including zero (e.g. the ranges of Mn and of further constituents of claim 1) are interpreted as optional elements. Thus, Yao teaches a Ni-Co-Cr-Fe-Mo alloy with compositional ranges overlapping each of the instantly claimed ranges. 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.
Finally, with respect to the preamble recitation “for the production of components, coatings and substrates, which in a high temperature range exhibits characteristics of low wear, corrosion, resistance, oxidation resistance and minimized friction,” the recitation includes an intended use of the alloy and properties having no material scope to the value or measurements thereof. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, as the prior art teaches an alloy having a substantially overlapping composition, and the claim requires no additional specific structure, the alloy of the prior is deemed to meet the instant preamble limitation and exhibit and/or be capable of the claimed preamble limitations. See also MPEP 2112.01.
With respect to Claim 4, Yao teaches compositional ranges of Mo and Si overlapping the claimed relationship. (see rejection of claims 1-3 above). Yao also teaches a number of examples having Mo/Si ratio falling within the claimed range. (see Table 1). It would have been obvious to one of ordinary skill in the art to select from the overlapping portion of the ranges, in particular as Yao teaches examples falling within the claimed range. MPEP 2144.05. Additionally, regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 5, the recited ranges of P and S include zero and therefore, are interpreted as optional elements. Yao does not teach any required content of said elements, and therefore, is deemed to meet the instant claim.
With respect to Claim 6, the recited element ranges each include zero and therefore, are interpreted as optional elements. Yao does not teach any required content of said elements, and therefore, is deemed to meet the instant claim.
With respect to Claim 7, the recited Al ranges each include zero and therefore, are interpreted as optional elements. Yao does not teach any required content of said element, and therefore, is deemed to meet the instant claim.
With respect to Claim 8, the recited B ranges each include zero and therefore, are interpreted as optional elements. Yao does not teach any required content of said element, and therefore, is deemed to meet the instant claim.
With respect to Claim 9, the melting temperature (i.e. liquidus temperature) is determined by the composition of the alloy. As Yao teaches an alloy with a composition substantially overlapping the instantly claimed ranges, it is deemed to teach a “melting range,” overlapping the instantly claimed 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; see also MPEP 2112.01.
With respect to Claim 10, Yao teaches wherein the alloy comprises an intermetallic precipitate phase present up to 50 vol%, wherein the intermetallic precipitate phase may comprise a Laves phase. (para. 4, 6, 19-20; Fig. 1). Thus, Yao is deemed to teach a volume% of Laves phase overlapping the instantly claimed range. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05; see also MPEP 2112.01.
With respect to Claim 11, Yao teaches that the alloy may exhibit a hardness of 55 HRC. (para. 22). The range is deemed sufficiently close to the claimed range to establish a prima facie case of obviousness. See MPEP 2144.05. (“Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of ‘having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium’ as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. ‘The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties.’”).
With respect to Claim 12, Yao is silent as to a coefficient of friction measurement; however, the reference teaches that alloy is drawn to improved sliding performance (see, e.g., Fig. 4) and thus, drawn to minimizing the coefficient of friction. It would have been obvious to one of ordinary skill in the art to select an alloy from the overlapping portions of the ranges with a minimized coefficient of friction to improve the sliding performance of the alloy. MPEP 2144.05. Additionally, as the alloy of Yao has substantially the same composition, it would necessarily be expected to result in the same properties as the instantly claimed alloy.
"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.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 13, the claim does not recite how the claimed density is calculated and therefore, the term may be interpreted as the density of the alloy composition, rather than, for example, an apparent density. As the density (i.e. theoretical density) of the alloy depends solely on its composition, the alloy of Yao is deemed to teach an alloy having a density meeting or overlapping the instantly claimed range. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05; see also MPEP 2112.01.
With respect to Claims 14-17, the claims each recite “wherein the proportion of Laves phases, the hardness, the coefficient of friction and/or the density is achieved by a casting production process without further heat treatment.” The claims each recite one or more properties not present in the claim from which it depends, and therefore, any value would be deemed to meet the instant claim. Additionally, the claims are drawn to defining the product by the method in which it was made and therefore, constitute product-by-process claims. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process 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.” Here, so long as the prior art exhibits the claimed structure/property (with or without heat treatment) it would meet the claimed limitations because the lack of a process step does not introduce or further limit the structure of the product. As Yao teaches an alloy meeting claims 1-13 (see rejections above), it is deemed to meet claims 13-17.
Moreover, Yao teaches wherein the alloy is cast and does not require any further heat treatment, and therefore, separately meets the instant claims. (see para. 5-6, 19, 21, 25; Fig. 1A-C).
Claim(s) 1-17 are rejected under 35 U.S.C. 103 as being unpatentable over Qiao et al. (US 2021/0010113).
With respect to Claims 1-3, Qiao teaches an alloy for the production of components comprising, Ni, Co, Cr, Fe, and Mo, thus, constituting a “Ni-Co-Cr-Fe-Mo” alloy, the alloy having a composition, in weight%, as follows (para. 1-6):
Claim 1
Claim 2
Claim 3
Qiao
Mo
10-60
22-38
26-28
10-30
Cr
10-30
13-17
14-16
10-20
Si
0.5-5.0
1.5-4.5
2.5-3.5
3-5
Fe
10-30
13-17
14-16
5-32
Co
10-40
17-23
18-22
20-40
Ni
10-40
17-23
18-22
≤ 20
Mn
≤ 2.0
≤ 0.8
≤ 0.7
0.1-1.5
C
-
≤ 1.4
≤ 0.1
0.1-0.8
Other
≤ 4
≤ 3
≤ 2.2
W: 0.5-4
V: 0-6
Nb: 0-3
P: 0-0.035
S: 0-0.015
N: 0-0.25
Compositional ranges including zero (e.g. the ranges of Mn and of further constituents of claim 1) are interpreted as optional elements. Thus, Qiao teaches a Ni-Co-Cr-Fe-Mo alloy with compositional ranges overlapping each of the instantly claimed ranges. 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.
Finally, with respect to the preamble recitation “for the production of components, coatings and substrates, which in a high temperature range exhibits characteristics of low wear, corrosion, resistance, oxidation resistance and minimized friction,” the recitation includes an intended use of the alloy and properties having no material scope to the value or measurements thereof. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Here, as the prior art teaches an alloy having a substantially overlapping composition, and the claim requires no additional specific structure, the alloy of the prior is deemed to meet the instant preamble limitation and exhibit and/or be capable of the claimed preamble limitations. See also MPEP 2112.01.
With respect to Claim 4, Qiao teaches compositional ranges of Mo and Si overlapping the claimed relationship. (see rejection of claims 1-3 above). Qiao also teaches a number of examples having Mo/Si ratio falling within the claimed range. (see Tables 1, 9). It would have been obvious to one of ordinary skill in the art to select from the overlapping portion of the ranges, in particular as Qiao teaches examples falling within the claimed range. MPEP 2144.05. Additionally, regarding the composition-based formula(s) in the instant claim, the instantly claimed formula(s) fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 5, the recited ranges of P and S include zero and therefore, are interpreted as optional elements. Qiao teaches compositional ranges of P and S overlapping the instantly claimed ranges. (see rejection of claims 1-3 above). 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 Claim 6, the recited element ranges each include zero and therefore, are interpreted as optional elements. Qiao does not teach any required content of said elements, and therefore, is deemed to meet the instant claim.
With respect to Claim 7, the recited Al ranges each include zero and therefore, are interpreted as optional elements. Qiao does not teach any required content of said element, and therefore, is deemed to meet the instant claim.
With respect to Claim 8, the recited B ranges each include zero and therefore, are interpreted as optional elements. Qiao does not teach any required content of said element, and therefore, is deemed to meet the instant claim.
With respect to Claim 9, the melting temperature (i.e. liquidus temperature) is determined by the composition of the alloy. As Qiao teaches an alloy with a composition substantially overlapping the instantly claimed ranges, it is deemed to teach a “melting range,” overlapping the instantly claimed 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; see also MPEP 2112.01.
With respect to Claim 10, Qiao teaches wherein the alloy comprises a Laves phase, in particular, the reference teaches casting the alloy to obtain an alloy product having 40-60 vol% of a Laves phase. (see claim 8 of Qiao). Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05; see also MPEP 2112.01.
With respect to Claim 11, Qiao teaches that the alloy may exhibit a preferable hardness of 50-65 HRC, including examples falling within the range of 49-54 HRC. (para. 29; Tables 2 and 10). It would have been obvious to one of ordinary skill in the art to select an alloy having a hardness 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 Claim 12, Qiao is silent as to a coefficient of friction measurement; however, as the alloy of Qiao has substantially similar composition and structure (e.g. 40-60 vol% Laves phase), it would necessarily be expected to result in the same properties as the instantly claimed alloy.
"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.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
With respect to Claim 13, the claim does not recite how the claimed density is calculated and therefore, the term may be interpreted as the density of the alloy composition, rather than, for example, an apparent density. As the density (i.e. theoretical density) of the alloy depends solely on its composition, the alloy of Qiao is deemed to teach an alloy having a density meeting or overlapping the instantly claimed range. Overlapping ranges, in particular, where the ranges of a claim overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05; see also MPEP 2112.01.
With respect to Claims 14-17, the claims each recite “wherein the proportion of Laves phases, the hardness, the coefficient of friction and/or the density is achieved by a casting production process without further heat treatment.” The claims each recite one or more properties not present in the claim from which it depends, and therefore, any value would be deemed to meet the instant claim. Additionally, the claims are drawn to defining the product by the method in which it was made and therefore, constitute product-by-process claims. According to MPEP § 2113, "Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process 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.” Here, so long as the prior art exhibits the claimed structure/property (with or without heat treatment) it would meet the claimed limitations because the lack of a process step does not introduce or further limit the structure of the product. As Qao teaches an alloy meeting claims 1-13 (see rejections above), it is deemed to meet claims 13-17.
Moreover, Qiao teaches examples wherein the alloy is cast and not heated or cast and tempered at room temperature and thus, deemed to lack heat treatment. (see, e.g., Table 3; claims 18-19).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Zheng (US 2014/0271319) drawn to an alloy having overlapping compositional ranges with the instant claims, but silent as Laves phase microstructure.
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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