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 1-20 are pending and presented for examination on the merits.
Information Disclosure Statement
One (1) information disclosure statement (IDS) was submitted on 07/12/2024. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Claim Interpretation
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 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 Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the instant claims are drawn to a product. Claims 9-11, 13, and 17 recite an ultimate tensile strength after various specific process conditions (e.g. quenching, tempering, and/or thermally soaking), claim 14 recites a thermal diffusivity in a “quenched and tempered condition”, and claims 18-19 recite an oxidation mass change after specific process conditions (i.e. a cyclic oxidation testing with specific times, cycles, temperatures, and atmosphere). Prior art with a steel with the claimed composition will be interpreted as reading on the instant claims regardless of whether the processing of the prior art includes quenching, tempering, thermally soaking, and/or cyclic oxidation.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 7 of U.S. Patent No. 7520942 B2.
US 7520942 B2 claims a steel alloy consisting essentially of 8.8% to 15% Cr, up to 3% Mo, up to 4% W, 0.05-1% V, up to 2% Si, up to 3% Mn, up to 10% Co, up to 3% Cu, up to 5% Ni, up to 0.3% C, 0.02-0.3% N, balance iron, wherein the percentages are by total weight of the composition. Although the claims at issue are not identical, they are not patentably distinct from each other because US 7520942 B2 and the instant claims are drawn to a steel alloy with overlapping compositions, as shown in List A below. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. See MPEP § 2144.05 I.
List A
Instant claim 1 (wt%)
US7520942B2 (wt%)
C
0.022 to 0.257
Up to 0.3
N
0.01 to 0.085
0.02-0.3
Ni
0.0 to 1.5
Up to 5
Mn
0.1 to 0.7
Up to 3
Cu
2.52 to 5.05
Up to 3
Cr
8.67 to 14
8.8-15
Si
0.1 to 0.96
Up to 2
V
0.1 to 0.47
0.05-1
Mo
0.4 to 2
Up to 3
W
0 to 1.1
Up to 4
Nb
0.0 to 0.5
0.01-0.4 (claim 7)
S
0.0 to 0.03
-
P
0.0 to 0.03
-
Co
0.0 to 2
Up to 10
Fe
Balance
Balance
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.
Claims 1-2 and 4-20 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.
Claims 1 and 2 recite “a steel alloy, comprising:” and a number of claimed ranges for various chemical elements. However, the claim does not recite units for the claimed ranges. The lack of units renders the claims indefinite since it is unclear whether the numbers represent a weight fraction, mass fraction, molar fraction, or something different. Claim 3 resolves this issue by reciting “comprising in weight %”.
Claims 4-20 do not resolve the aforementioned issues, and are thereby also indefinite.
Similarly, claims 4-8,12, 15-16, and 20 recite formulas with numbers and no units. The lack of units and lack of explanation regarding what the elemental symbols represent render these claims indefinite. It is unclear whether the elements recited in the formula are compositions of each element in weight fraction, mass fraction, molar fraction, or something different.
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 7520942 B2 of Klueh.
Regarding claims 1-20, Klueh teaches ferritic and martensitic steels (reads on claimed steel alloy).
List 1
Instant claims (wt%)
Klueh –
9Cr-MoNiVN (wt%)
Klueh (wt%)
C
0.022 to 0.257 (claim 1)
0.05 to 0.17 (claim 2)
0.068 to 0.13 (claim 3)
0.02 (equivalent to 0.022 when rounding to significant figures)
Up to 0.3
N
0.01 to 0.085 (claims 1-3)
0.12
0.02-0.3
Ni
0.0 to 1.5 (claim 1)
0.28 to 1.25 (claim 2)
0.28 to 1.002 (claim 3)
0.99
Up to 5
Mn
0.1 to 0.7 (claim 1)
0.2 to 0.6 (claim 2)
0.2 to 0.5 (claim 3)
0.44
Up to 3
Cu
2.52 to 5.05 (claim 1)
2.52 to 4.02 (claims 2-3)
-
Up to 3
Cr
8.67 to 14 (claim 1)
9.28 to 13 (claim 2)
10.7-11.88 (claim 3)
8.88
8.8-15
Si
0.1 to 0.96 (claim 1)
0.1 to 0.5 (claim 2)
0.2 to 0.5 (claim 3)
-
Up to 2
V
0.1 to 0.47 (claims 1, 2)
0.2 to 0.4 (claim 3)
0.30
0.05-1
Mo
0.4 to 2 (claim 1)
0.4 to 1 (claim 2)
0.4 to 0.8 (claim 3)
0.51
Up to 3
W
0 to 1.1 (claims 1-3)
<0.01
Up to 4
Nb
0.0 to 0.5 (claim 1)
0.15 to 0.4 (claim 2)
0.21 to 0.4 (claim 3)
<0.01
0.01-0.4 (claim 7)
S
0.0 to 0.03 (claims 1-3)
-
-
P
0.0 to 0.03 (claims 1-3)
-
-
Co
0.0 to 2 (claims 1-3)
-
Up to 10
Fe
Balance
Balance (implied)
Balance
Cr + Cu
11.65-17 (claim 4)
12.0-17 (claim 5)
13.3-15.9 (claim 15)
8.8 (calculated)
8.8-18.0 (calculated)
Cu/(Ni+Mn)
1.6-14.7 (claim 6)
1.6-8.3 (claim 12)
1.9-7.02 (claim 16)
0 (calculated)
(implied)
Ni + Mn
0.1-1.8 (claim 7)
1.43 (calculated)
0-8.0 (calculated)
0.64Cu-0.75Cr-1.0Ni-4.2Si-1.1W-1.3Nb+4.9C-5.3Mn-2.7V
-14.5 to -6 (claim 8)
-10.72 (calculated)
-44.8 to -6.75 (calculated)
0.251Cr-9.74C
1.7-2.85 (claim 20)
2.03 (calculated)
0.84-2.21 (calculated)
Ultimate tensile strength (UTS)
> 360 MPa (claim 9, “at 650°C after quenching and tempering”)
> 435 MPa (claim 10, “at 650°C after quenching and tempering”)
> 250 MPa (claim 11, “at 650°C after thermally soaking at 650°C for 500 h”)
> 305 MPa (claim 13, “at 650°C after quenching, tempering, and thermally soaking at 650°C for 500 h”)
> 320 MPa (claim 17, “at 650°C after quenching, tempering, and thermally soaking at 650°C for 500 h”)
(implied)
(implied)
Thermal diffusivity
≥ 4.4 mm2 s-1 (claim 14, “at 600°C, in the quenched and tempered condition”)
(implied)
(implied)
Oxidation mass change after 1000h cyclic oxidation testing (1h cycles) at 700°C in an atmosphere of air + 10% water vapor
-2 mg cm-2 to 2 mg cm-2 (claim 18)
-1 mg cm-2 to 1 mg cm-2 (claim 19)
(implied)
(implied)
Regarding the chemical composition of claims 1-3, Klueh teaches a steel with a chemical composition (claims 1, 7-11, and 14; “Summary of the Invention” section, col. 6, lines 42-64 and examples of Tables I and III) overlapping with the claimed steel and an inventive example (9Cr-MoNiVN from Table I) with a composition lying within the claimed ranges with the exception of N, Cu, Si, and Co for claims 1-3 and C, Cr and Co for claims 2-3, as shown in List 1. Regarding the elements from inventive example 9Cr-MoNiVN outside the claimed ranges, one of ordinary skill in the art would have reasonably modified the compositions using the broader disclosure of Klueh, such as within claimed ranges, to achieve steels with desirable properties at temperatures above 620°C (col. 2, lines 26-34), as taught by Klueh. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 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 I.
Klueh therefore reads on the limitations of claims 1-3.
Regarding the formula ranges of claims 4-8,12, 15-16, and 20, while Klueh does not explicitly disclose values for the claimed formulas, performing the calculations using the composition of Klueh results in values overlapping with the claimed ranges as shown in List 1. In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 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 I.
The Examiner notes that values for Cu/(Ni+Mn) were not calculated since using the lower and upper limits of the Cu, Ni, and Mn contents does not result in a representative range given the formula entails dividing by a sum of Ni and Mn contents. Specifically, the upper limit of Klueh’s Cu, Ni and Mn results in a value of 0.38 which is outside the claimed range, but selecting, for example, a 3 wt% Cu, 1 wt% Ni, and 0.5 wt% Mn content, which are within the composition ranges taught by Klueh, results in a value of 2.00, which is within the claimed range. Therefore, the overlap of compositions of the instant claims and Klueh is expected to result in overlapping Cu/(Ni+Mn) values and the overlap is prima facie obvious. See MPEP 2144.05(I).
Klueh therefore reads on the limitations of claims 4-8,12, 15-16, and 20.
Regarding the ultimate tensile strength of claims 9-11, 13, and 17, the thermal diffusivity of claim 14, and the oxidation mass change of claims 18-19, Klueh teaches ultimate tensile strengths for various compositions and processing conditions at temperatures ranging from 0 to 800°C (Fig. 16b, 24b, 26b, 28b, and relevant text in columns 4, 5, 12, and 15). As seen in Fig. 16b, for example, Klueh teaches a 9CrMoVNiN HR 750°C and temper alloy has an ultimate tensile strength of around 400 MPa.
However, Klueh does not explicitly disclose wherein the ultimate tensile strength at 650 oC after quenching and tempering is greater than 360 MPa of claim 9, wherein the ultimate tensile strength at 650 oC after quenching and tempering is greater than 435 MPa of claim 10, wherein the Ultimate Tensile Strength (MPa) at 650 °C after thermally soaking at 650 °C for 500 h is greater than 250 MPa of claim 11, wherein the Ultimate Tensile Strength (MPa) at 650 °C after quenching, tempering, and thermally soaking at 650 °C for 500 h is greater than 305 MPa of claim 13, wherein the thermal diffusivity of the steel at 600 °C is greater than or equal to 4.4 mm2 s-1 in the quenched and tempered condition of claim 14, wherein the Ultimate Tensile Strength (MPa) at 650 °C after quenching, tempering, and thermally soaking at 650 °C for 500 h is greater than 320 MPa of claim 17, wherein the oxidation mass change after 1000h of cyclic oxidation testing (1h cycles) at 700°C in an atmosphere of air + 10% water vapor is less than or equal to 2 mg cm-2 but greater than or equal to -2 mg cm-2 of claim 18, and wherein the oxidation mass change after 1000h of cyclic oxidation testing (1h cycles) at 700°C in an atmosphere of air + 10% water vapor is less than or equal to 1 mg cm-2 but greater than or equal to -1 mg cm-2 of claim 19.
Since Klueh teaches a steel with a chemical composition and formula values overlapping with the claimed steel, one of ordinary skill in the art would reasonably expect the steel of Klueh to necessarily possess the claimed ultimate tensile strength, thermal diffusivity, and oxidation mass change, despite not explicitly disclosing or measuring a yield ratio.
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, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP § 2112.01 I. “Products of identical chemical composition can not have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). See MPEP § 2112.01 II. Therefore, it is expected that the steel of the prior art possesses the properties as claimed in the instant claims since a) the claimed and prior art products are identical or substantially identical in composition (see compositional analysis above). Since the Office does not have a laboratory to test the reference alloy, it is applicant’s burden to show that the reference alloy does not possess the properties as claimed in the instant claims. See In re Best, 195 USPQ 430, 433 (CCPA 1977); In re Marosi, 218 USPQ 289, 292-293 (Fed. Cir. 1983); In re Fitzgerald et al., 205 USPQ 594 (CCPA 1980).
In this case, absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Klueh to possess the claimed ultimate tensile strength, thermal diffusivity, and oxidation mass change. A prima facie case of obviousness has been properly established herein.
As further evidence that one of ordinary skill in the art would reasonably expect the steel of Klueh to necessarily possess the claimed ultimate tensile strengths, thermal diffusivity and oxidation mass changes of the claimed invention, Applicant recites in the instant specification that the C, Cr, Nb, Ni, and Si ranges may result in enhanced ultimate tensile strength at 650°C ([0035]-[0038], emphasis added), alloy compositions with disclosed Cr and Cu ranges and values of Cr+ Cu exhibit relatively low oxidation mass gain during cyclic oxidation testing in air+10% H2O at 700 °C ([0056], [0067]-[0068], [0086], emphasis added), and values of Cu/(Ni+Mn) and 0.64Cu-0.75Cr-1.0Ni-4.2Si-1.1W-1.3Nb+4.9C-5.3Mn-2.7V are proportional to thermal diffusivity at 600°C ([0057]-[0058], emphasis added). One of ordinary skill in the art would reasonably expect a steel with overlapping compositions and values of the claimed formulas with the claimed invention to possess the claimed ultimate tensile strength, thermal diffusivity, and oxidation mass change despite Klueh not explicitly measuring or disclosing these properties.
Klueh therefore reads on all the limitations of claims 9-11, 13-14, and 17-19.
Klueh therefore reads on all the limitations of claims 1-20.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 2019/0119775 A1 of Nakamura teaches a martensitic stainless steel with a chemical composition (Abstract, claims 1-9, steel no. 10 of Table 1; martensitic stainless steel reads on claimed steel alloy) overlapping with the instant claims. The examiner notes that the overlap of compositions of the instant claims and Nakamura is prima facie obvious. See MPEP 2144.05(I). Nakamura teaches a tensile strength of 1300 MPa or more (claims 5 and 10-16), but does not explicitly disclose ultimate tensile strengths after specific processing conditions. Absent any clear and convincing evidence and/or arguments to the contrary, one of ordinary skill in the art would expect the steel of Nakamura to possess the claimed ultimate tensile strength, thermal diffusivity, and oxidation mass change given the chemical composition of Nakamura overlapping with the claimed invention. Nakamura is considered relevant to claims 1-20.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
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/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
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