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 examined in this office action of which claims 1, 4, 7, and 11 were amended in the reply dated 9/14/26.
Claim Interpretation
Claims 1, 8-11 all use the term “about” in conjunction with compositional amounts of chromium, cobalt, tungsten, and aluminum. In paragraph [0039], applicant defines “about” as meaning ±10% of the value. As such, this definition will be used to interpret the amounts of the claimed elements below.
Duplicate Claim Warning
Applicant is advised that should claim 4 be found allowable, claim 5 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m). While claim 4 recites that hafnium does not exceed 4.0 wt%, as this claim depends from claim 1 which recites a hafnium range of 2.0 to 6.0 wt%, this means that the claimed range is 2.0 to 4.0 wt% in claim 4 and this is identical to the claimed range in claim 5 for hafnium.
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 1-5, 7-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over JP 2019-044209 A and its English translation of Kuze..
As to claims 1-5, 7-10 and 12-15, Kuze discloses a Ni-based superalloy powder (Kuze, claim 1) with the composition in comparison to the claims in Table A below.
Table A
Element
Claim limitation
Kuze (claim 1) (mass%)
Kuze Ex 14 (Table 1) (mass%)
Carbon
Claim 1: less than 0.03 wt%
Claim 2: less than 0.02 wt%
Claim 3: less than 0.015 wt%
Claim 7: less than 0.02 wt%
0.001 to 0.3%
0.01%
Hafnium
Claim 1: 2.0 to 6.0 %
Claim 4: does not exceed 4.0 wt%
Claim 5: 2.0 to 4.0 wt%
Claim 6: about 2.5 to 3.0 wt% (so 2.25 to 3.0 wt%)
Claim 7: 2.0 to 3.0 wt%
Claim 11: 2.5 to 3.0 wt%
0.1 to 2.0%
1.6%
Chromium
Claim 8: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
9.0 to 25.0%
19.1%
Cobalt
Claim 9: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
W, Co, and Ta in a total amount of 0.1 to 40.0%
Tungsten
Claim 10: about 6.0 to 10.0 wt% (so 5.4 to 10 wt%)
W, Co, and Ta in a total amount of 0.1 to 40.0%
Aluminum
Claim 1: 3.0 to about 6.0 wt% (so 3.0 to 6.6 wt%)
Ti + Al: 1.0 to 10.0%
Ti+Al=1.0%
Titanium
Claim 12: 0.5 to 2.0 wt%
Ti + Al: 1.0 to 10.0%
Ti+Al=1.0%
Tantalum
Claim 13: 0.5 to 4.0 wt%
W, Co, and Ta in a total amount of 0.1 to 40.0%
Molybdenum
Claim 14: 5.0 or less wt%
0.1 to 10.0%
3.6%
Boron
Claim 15: less than 0.03 wt%
Zirconium
Claim 15: less than 0.03 wt%
0.1 to 2.0%
0.06%
Niobium
Claim 15: less than 2.0 wt%
0.1 to 7.0%
5.9%
Rhenium
Claim 15: less than 3.0 wt%
Oxygen
Claim 16: less than 4000 ppm
Nickel
“comprising nickel” so some amount of Ni must be present
balance
Ni-based superalloy powder (paragraph [0001 ]) so balance
Kuze discloses overlapping ranges for carbon, chromium, cobalt, tungsten, aluminum, titanium, tantalum, and molybdenum, see Table A above. As the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed composition over the prior art disclosure since the prior art teaches the composition produces a sintered body with good high temperature properties (Kuze, paragraph [0008]) throughout the disclosed ranges. 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.
As to claim 16, as Kuze does not disclose the presence of oxygen, this meets the claim limitation of being less than 4000ppm. In the alternative, if oxygen is present in the Kuze alloy, it would be present as an impurity and therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an amount for oxygen of less than 4000 ppm as it is obvious to lower the amounts of impurities as by definition they are undesired components of the composition.
As to claims 17-18, Kuze discloses where the Ni-based superalloy powder is for additive manufacturing (Kuze, paragraph [0001]), meeting the limitations of where the composition is suitable for additive manufacturing and where the composition is a powder.
As to claims 19 and 20, Kuze discloses where the raw material powders according to the invention are fabricated into test materials using a 3D additive manufacturing system EOS-M280 which is a direct metal laser sintering system (Kuze, paragraph [0029]), meeting the limitation where an article is manufactured using the alloy composition of claim 1 and additive manufacturing using laser powder bed fusion as direct metal laser sintering is a form of powder bed fusion.
Claims 1-19 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0377987 A1 of Han.
As to claims 1-14,Han discloses the alloy in comparison to the claims in Table C below.
Table C
Element
Claim limitation
Han claim 15 (mass%)
Han Alloy B (Table 4) (mass%)
Carbon
Claim 1: less than 0.03 wt%
Claim 2: less than 0.02 wt%
Claim 3: less than 0.015 wt%
Claim 7: less than 0.02 wt%
0 to 0.25%
0.015%
Hafnium
Claim 1: 2.0 to 6.0 %
Claim 4: does not exceed 4.0 wt%
Claim 5: 2.0 to 4.0 wt%
Claim 6: about 2.5 to 3.0 wt% (so 2.25 to 3.0 wt%)
Claim 7: 2.0 to 3.0 wt%
Claim 11: 2.5 to 3.0 wt%
0 to 3.0%
1.37%
Chromium
Claim 8: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
8.0 to 25.0%
7.96%
Cobalt
Claim 9: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
0 to 28.0%
10.07%
Tungsten
Claim 10: about 6.0 to 10.0 wt% (so 5.4 to 10 wt%)
0 to 15.0%
9.94%
Aluminum
Claim 1: 3.0 to about 6.0 wt% (so 3.0 to 6.6 wt%)
0.5 to 8.0%
5.40%
Titanium
Claim 12: 0.5 to 2.0 wt%
0.4 to 7.0%
0.98%
Tantalum
Claim 13: 0.5 to 4.0 wt%
0 to 5.0%
2.98%
Molybdenum
Claim 14: 5.0 or less wt%
0 to 8%
0.61%
Boron
Claim 15: less than 0.03 wt%
0 to 0.300%
0.01%
Zirconium
Claim 15: less than 0.03 wt%
0 to 0.300%
0.04%
Niobium
Claim 15: less than 2.0 wt%
0 to 4.0%
0.01%
Rhenium
Claim 15: less than 3.0 wt%
Oxygen
Claim 16: less than 4000 ppm
Nickel
“comprising nickel” so some amount of Ni must be present
balance
Balance
Thus, in alloy B, Han discloses an example which anticipates carbon, chromium, cobalt, tungsten, aluminum, titanium, tantalum, and molybdenum for claims 1-14 and is close to the claimed ranges in claims 1, 4-7, and 11 for hafnium. Further, as the claimed ranges in claims 1, 4-7, and 11 for hafnium overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed hafnium composition over the prior art disclosure since the prior art teaches that hafnium improves oxidation resistance (Han, paragraph [0069]) throughout the disclosed ranges. 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.
As to claim 15, Han discloses in Alloy B 0.01% Nb which anticipates the claimed range and 0.04% Zr which is close to the claimed range. Further, as the claimed ranges overlap or lie inside ranges for Zr disclosed by the prior art, a prima facie case of obviousness is established as it 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 to select the claimed Zr composition over the prior art disclosure since the prior art teaches that this increases grain boundary strength (Han, paragraph [0071]) throughout the disclosed ranges. 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.
As to claim 16, as Han does not disclose the presence of oxygen, this meets the claim limitation of being less than 4000ppm. In the alternative, if oxygen is present in the Han alloy, it would be present as an impurity and therefore it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select an amount for oxygen of less than 4000 ppm as it is obvious to lower the amounts of impurities as by definition they are undesired components of the composition.
As to claim 17, as Han discloses a composition which meets the claim limitations, it is capable of being used in additive manufacturing methods meeting the claim limitations. “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).
As to claim 18, Han discloses where the alloy can be produced as a powder (Han, paragraph [0074]), meeting the claim limitation of the composition being a powder.
As to claim 19, applicant is claiming a product in a product-by-process manner. 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. The structure implied by the process steps should be considered when assessing the patentability of product-by-process claims over the prior art, especially where the product can only be defined by the process steps by which the product is made, or where the manufacturing process steps would be expected to impart distinctive structural characteristics to the final product, see MPEP § 2113(I). In the instant case, the manufacture of an article by additive manufacturing does not impart any structure beyond the composition as claimed in claim 1. Thus, as Han discloses an ingot of Alloy B (see Table C above) (Han, paragraph [0074]), Han meets the claim limitation of an article manufactured using the composition of claim 1.
Claim 20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2020/0377987 A1 of Han in view of JP 2019-044209 A and its English translation of Kuze.
As to claim 20, Han discloses ingots of the alloy composition in accordance with claim 1 are made using powder metallurgy processes (Han, paragraph [0074]). However, Han does not disclose a method of manufacturing an article by additive manufacturing, comprising using the composition of claim 1, wherein the additive manufacturing is selected from the group comprising Laser Powder Bed Fusion (LPBF), Directed Energy Deposition (DED), Electron Beam Melting (EBM), and Binder Jet Technique
Kuze discloses where the raw material powders according to the invention are fabricated into test materials using a 3D additive manufacturing system EOS-M280 which is a direct metal laser sintering system (Kuze, paragraph [0029]), meeting the limitation where an article is manufactured using the alloy composition of claim 1 and additive manufacturing using laser powder bed fusion as direct metal laser sintering is a form of powder bed fusion. Kuze teaches that additive manufacturing can produce a sintered body with good high temperature properties (Kuze, paragraph [0008]).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute direct metal laser sintering as taught by Kuze into the method of forming an ingot disclosed in Han, thereby producing a sintered body with good high temperature properties (Kuze, paragraph [0008]).
Response to Arguments
With respect to the objection of claim 7, applicant’s inclusion of “comprising” cures the previous issue and the objection is withdrawn.
With respect to the 112(b) rejections, applicant’s inclusion of wt% with respect to hafnium cures the previous issue and the rejection is withdrawn. However, see duplicate claim warning concerning claims 4 and 5 above.
With respect to the 102 rejections over Kuze and Wakita, it is agreed that the inclusion of aluminum as a required element overcomes these anticipation rejections and therefore they are withdrawn.
With respect to the 103 rejection over Kuze, applicant argues that as Kuze merely discloses a range for Ti+Al this is not equivalent to disclosing a range for Al alone (Applicant’s remarks, pg. 6, 2nd paragraph). Applicant also argues that as the claimed alloy requires greater than the 2.0% Hf allowed for in Kuze a person of ordinary skill would not modify Kuze to arrive at the claimed invention (Applicant’s remarks, pg. 6, 3rd paragraph).
However, the amounts of Al and Ti disclosed in Kuze closely match the claimed amounts in applicant’s invention and it is obvious to select within overlapping ranges to reach the claimed composition, see MPEP § 2144.05 I. Further, with respect to hafnium, the disclosed amount of Hf in Kuze overlaps the composition in all claims other than claims 6 and 11 which are not rejected over Kuze. Applicant does not claim a distinct amount of Hf in claim 1 from the amount of Hf disclosed in Kuze. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
With respect to the 103 over Han, applicant argues that the amount of Hf disclosed in Alloy B of Han is below the claimed range of 2.0 to 6.0 wt% (Applicant’s remarks, pg. 6, last paragraph).
However, Han also teaches an overlapping range of 0-3.0 mass% upon which the rejection relies and it is obvious to modify Alloy B in Han with higher amounts of Hf to achieve improved oxidation resistance (Han, paragraph [0069]).
Applicant also argues with respect to claim 20, that Kuze and Han would not be combined by a skilled artesian as nothing in Han teaches that its composition would be suitable for additive manufacturing and there would have thus been no reasonable expectation of success (Applicant’s remarks, pg. 7, 1st paragraph).
However, as noted in the rejection above, Kuze relates to a similar composition and demonstrates that these type of compositions are useful and can be successfully used in additive manufacturing. Thus, the combination of teachings in Han and Kuze demonstrate that it would be obvious to additively manufacture using the composition disclosed in Han and given the similarity in compositions, there would be an expectation of success. Further, a method of additive manufacturing does not relate to the mere composition as claimed in claim 1.
Applicant also argues that it has demonstrated unexpected results as applicant found that the claimed composition avoided cracking when used in additive manufacturing methods (Applicant’s remarks, pg. 7, last paragraph).
However, claim 1 merely encompasses a composition and the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As this is a composition, the properties must flow from said composition and as Han and Kuze disclose overlapping ranges rendering the composition obvious, these properties concerning cracking would naturally flow from this same composition.
Also, whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "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, see MPEP § 716.02(d). Further, 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), see MPEP § 716.02(d)(II). The data referenced by applicant all relates to alloys where nickel comprises the balance of the alloy. However, the claims merely require where the composition comprises nickel, and therefore the data provided does not encompass the entire scope of the claims which includes Fe-based, Co-based, Cu-based, or many other types of alloys.
Applicant also directly compares the claims to compositions with 0-1.4 wt% Hf which exhibit cracking while the instant invention does not (Applicant’s remarks, pg. 7, last paragraph). However, as noted above, this data is not commensurate in scope with the claims and also both Han and Kuze teach amounts of Hf that overlap the claimed amounts. Since it is obvious to select within these overlapping ranges and there is not a demonstration of criticality over the entire scope of the claims, applicant’s arguments are not persuasive and the rejections are maintained.
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 Joshua S Carpenter whose telephone number is (571)272-2724. The examiner can normally be reached Monday - Friday 8:00 am - 5:30 pm.
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/JOSHUA S CARPENTER/Examiner, Art Unit 1733
/JOPHY S. KOSHY/Primary Examiner, Art Unit 1733
