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 1-19) in the reply filed on 07/27/2026 is acknowledged. Claims 20-21 are withdrawn. Claims 1-19 are examined herin.
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.
Claims 1-19 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.
The terms “low coefficient” and “high strength” in claim 1 are relative terms which renders the claim indefinite. The terms “low coefficient” and “high strength” are not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Appropriate correction is required.
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.
Claims 1-14 are rejected under 35 U.S.C. 103 as being unpatentable over US’930 (US 2025/0236930).
Regarding claims 1-4, 6-7, and 10, US’930 discloses (Abstract; [0029] to [0053]) a Ni-based alloys with a composition that overlaps with the instant claimed composition and therefore it would have been obvious to one of ordinary skill in the art to have selected amounts of each elements from the ranges disclosed in US’930 to produce a Ni-based alloy that meets the recited composition in claims 1-4 and 6-7. See MPEP 2144.05 I. US’930 discloses ([0006]; Table 16) that the nickel-base alloy exhibits a low mean coefficient of linear thermal expansion from 70° F. (21° C.) to 1400° F. (760° C.) that is no greater than 8.5 μin/in-° F (i.e. <8.5x10-6 inch/inch ºF) and that the nickel-base alloy exhibits a high yield strength at 1400° F of at least 70 ksi ([0129]; Table 13), which meets the low coefficient of thermal expansion and high strength limitation recited in claim 1.
Element
Claim 1
(mass %)
US’930
(mass %)
Overlap
(mass %)
Cr
7-10
3.5-10
7-10
Mo
20-25
8-24
20-24
W
4-7
0-12
4-7
Al
0.5-2
0-2
0.5-2
Ti
0.5-2
0-4
0.5-2
B
0.005-0.05
0-0.1
0.005-0.05
Nb
0-3.9
0-3
0-3
Ta
0-3.9
0-5
0-3.9
V
0.1-4
2-10
2-4
Si
<0.5
0-2
<0.5
Zr
<0.5
0-1
<0.5
Hf
<0.5
0-1
<0.5
Y
<0.5
0-1
<0.5
Cu
<0.5
0-5
<0.5
Mn
<0.1
0-5
<0.1
P
<0.1
0-0.1
<0.1
S
<0.1
0-0.1
<0.1
Fe
<5
0-10
<5
Co
≤15
0-15
0-15
Ni + Impurities
Balance
Balance
Balance
US’930 discloses that the amount of Nb is 0-2 wt%, the amount of Ta is 0-5 wt%, and the amount of V is 2-10 wt% ([0096] to [0101]), thus the total amount of Nb+Ta+V is 2-17 wt. %, which overlaps the recited amount of Nb+Ta+V in claim 1.
US’930 discloses that the amount of Al is 0-2 wt% and the amount of Ti is 0-4 wt% ([0105] to [0107]), thus the total amount of Al+Ti is 0-6 wt. %, which overlaps the recited amount of Al+Ti in claims 1 and 10.
US’930 discloses that the amount of Co is 0-15 wt% and the amount of Ni is 40-82 wt.% ([0109]; [0123]), thus the total amount of Co+Ni is 40-97 wt. %, which overlaps the recited amount of Co+Ni in claim 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). See MPEP 2144.05 I. Thus, claims 1-4, 6-7, and 10 are obvious over US’930.
Regarding claim 5, US’930 discloses that the amount of V is 2-10 wt.% and the amount of Ti is 0-4 wt.% ([0096]; [0101]), thus the total amount of V+Ti is 2-14 wt. %, which overlaps the recited amount of V+Ti in claim 5. 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). See MPEP 2144.05 I. Thus, claim 5 is obvious over US’930.
Regarding claims 8 and 9, US’930 discloses that the amount of Mo is 8-24 wt% and the amount of W is 0-12 wt% (Abstract), thus the amount of Mo+W/2 is 8-30 wt. %, which overlaps the recited amount of Mo+W/2 in claim 8. 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). See MPEP 2144.05 I. Thus, claim 8 is obvious over US’930.
US’930 discloses an example containing 21.79 wt. % Mo, 5.93 wt.% W (Table 1, Example X-B). Mo+W/2=24.755 wt.% and Mo/W=3.675, which meets the recited limitations in claims 8 and 9.
Regarding claim 11, US’930 discloses that the Ti amount can be 1-4 wt.% and the Al amount can be 0.05-2 wt.% ([0105] to [0107]). Ti/Al is greater than 0.5 and meets the recited limitation in claim 11.
Regarding claim 12, US’930 discloses that the carbon content is 0-0.5 wt.% ([0101]), which overlaps the recited carbon content in claim 12. 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). See MPEP 2144.05 I. Thus, claim 12 is obvious over US’930.
Regarding claim 13, US’930 discloses ([0006]; Table 16) that the nickel-base alloy exhibits a mean coefficient of linear thermal expansion from 70° F. (21° C.) to 1400° F. (760° C.) that is no greater than 8.5 μin/in-° F (i.e. <8.5x10-6 inch/inch ºF), which overlaps the recited coefficient in claim 13. 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). See MPEP 2144.05 I. Thus, claim 13 is obvious over US’930.
Regarding claim 14, US’930 discloses that the nickel-base alloy exhibits a yield strength at 1400° F of at least 70 ksi ([0129]; Table 13), which overlaps the recited coefficient in claim 14. 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). See MPEP 2144.05 I. Thus, claim 14 is obvious over US’930.
Claims 15-19 are rejected under 35 U.S.C. 103 as being unpatentable over US’930 (US 2025/0236930), as applied to claim 1 above, and further in view of US’400 (US 7,160,400).
Regarding claims 15-19, US’930 is silent on the tensile strength at 1400 ºF and the structure limitations as recited in claims 16-19. However, these property and structure limitations depend on the alloy composition and the method of making the nickel alloy.
US’930 teaches a method of making the alloy, comprising: remelting the alloy and homogenizing the alloy, hot working the alloy, solution annealing, and aging for 48 hours at 1400° F followed by second aging for 48 hours at 1200F ([0140]). The difference between the method of US’930 and the method disclosed in instant Specification is that US’930 does not explicitly disclose that the annealing is a solution annealing. However, performing solution heat treatment prior to aging heat treatment in making Ni-based alloy is well-known as evidenced by US’400. US’400 teaches a method of making a Ni-based alloy having major composition overlapping the composition disclosed by US’930 (Abstract; Col 2, Ln 65 to Col 5, Ln 10). US’400 discloses that the low thermal expansion Ni-base superalloy can be prepared by conventional methods for preparing Ni-base superalloys, wherein the method is as follows: after solid solution treatment not less than 950 ºC, a two-step aging is performed: first step (y' precipitation) at 650 to 850 ºC and second step (A2B precipitation) at 550 to 700 ºC (Col 5, Ln 11-24). Thus, it would be obvious to one of ordinary skill in the art to perform solution heat treatment prior to the two-step aging heat treatment as taught by US’400 in the process of US’930 in order to make a low thermal expansion Ni-based alloy as disclosed by US’400.
In view of the fact that US’930 in view of US’400 teaches an alloy that meets the recited composition in claim 1 and a method of making the alloy that meets the processing conditions disclosed in instant Specification (Page 14), one of ordinary skill in the art would expect that the Ni-based alloy disclosed by US’930 in view of US’400 to meet the recited property and structure limitations in claims 15-19. “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.
Conclusion
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/XIAOWEI SU/Primary Examiner, Art Unit 1733
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