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 below.
Claim Objections
Claim 7 is objected to because of the following informalities: Claim 7 recites the “alloy composition of claim 1, less than 0.02 wt% carbon”. As all other claims to the composition use “comprising” or “further comprising” as appropriate, claim 7 should also use the appropriate transitional phrase. Appropriate correction is required.
Claim Interpretation
Claims 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.
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 1-3 and 8-20 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.
Claim 1 recites the limitation “1.5 to 6.0% hafnium” in line 2. As this recitation merely includes a percentage, it is not clear if this recitation is with respect to atomic percent, mass or weight percent, volume percent, or some other meaning. For the purposes of applying prior art, this will be interpreted as wt% as all other percentages in the claim are wt%. Claims 2-3 and 8-20 are also rejected as they depend from claim 1 and do not solve the above issue.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4 and 17-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 2019-044209 A and its English translation of Kuze.
As to claims 1-4, 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: 1.5 to 6.0 %
Claim 4: 1.5 to 4.0 wt%
Claim 5: 2.0 to 4.0 wt%
Claim 6: 2.5 to 3.0 wt%
Claim 7: 2.0 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 11: about 3.0 to about 6.0 wt% (so 2.7 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
As Kuze discloses a powder which in example 14 has a composition which is within the claimed range for the composition in claims 1-4, Kuze anticipates the claimed composition. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
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 1-3 and 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP H01-255632 A and its English translation of Wakita.
As to claims 1-3, Wakita discloses a Ti-Al intermetallic compound alloy (Wakita, paragraph [0001]) with the composition in comparison to the claims in Table B below.
Table B
Element
Claim limitation
Ex 48 (Table 1) (wt%)
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%
-
Hafnium
Claim 1: 1.5 to 6.0 %
Claim 4: 1.5 to 4.0 wt%
Claim 5: 2.0 to 4.0 wt%
Claim 6: 2.5 to 3.0 wt%
Claim 7: 2.0 to 3.0 wt%
1.5%
Chromium
Claim 8: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
Cobalt
Claim 9: about 7 to about 12 wt% (so 6.3 to 13.2 wt%)
Tungsten
Claim 10: about 6.0 to 10.0 wt% (so 5.4 to 10 wt%)
0.7%
Aluminum
Claim 11: about 3.0 to about 6.0 wt% (so 2.7 to 6.6 wt%)
34.0%
Titanium
Claim 12: 0.5 to 2.0 wt%
Tantalum
Claim 13: 0.5 to 4.0 wt%
Molybdenum
Claim 14: 5.0 or less wt%
Boron
Claim 15: less than 0.03 wt%
Zirconium
Claim 15: less than 0.03 wt%
Niobium
Claim 15: less than 2.0 wt%
Rhenium
Claim 15: less than 3.0 wt%
0.19%
Oxygen
Claim 16: less than 4000 ppm
Nickel
“comprising nickel” so some amount of Ni must be present
0.2%
As Wakita discloses an alloy in example 48 with no carbon, 1.5 wt% hafnium, and 0.2 wt% nickel, this example anticipates the claim limitation as the claim merely requires nickel to be present rather than nickel to be the balance of the alloy. "[W]hen, as by a recitation of ranges or otherwise, a claim covers several compositions, the claim is ‘anticipated’ if one of them is in the prior art." Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985), see MPEP § 2131.03(I).
As to claim 17, as Wakita 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).
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 5 and 7-16 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 5 and 7-15, 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.
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: 1.5 to 6.0 %
Claim 4: 1.5 to 4.0 wt%
Claim 5: 2.0 to 4.0 wt%
Claim 6: 2.5 to 3.0 wt%
Claim 7: 2.0 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 11: about 3.0 to about 6.0 wt% (so 2.7 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 and 4-7 for hafnium. Further, as the claimed ranges in claims 1 and 4-7 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]).
Conclusion
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
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