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 8-11 and 15-24 are examined in this office action as claims 8-11 and 15-21 were amended and claims 22-24 are new in the reply dated 6/11/26. As claims 15-21 have been amended to recite further limitations of Invention II, these claims are no longer withdrawn and are examined below.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 10-11 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 10 recites the limitation “a device for gas turbines selected from a combustor and an exhaust component for aviation and industrial gas turbine engines, that is a tail tube, a combustion tube, a spray bar, a frame holder, an afterburner, or a tail pipe”. It is not clear if this recitation is creating a list of devices including gas turbines, combustor, exhaust component for aviation and industrial gas turbine engines, tail tube, a combustion tube, a spray bar, a frame holder, an afterburner, or a tail pipe; whether this is requiring the device to be a gas turbine device selected from a combustor and exhaust component for aviation and industrial gas turbine engines and further listing specific items it can be, or some other meaning. If it is the latter of these formulations, this would be an impermissible broader and narrow limitation, see MPEP § 2173.05(c).
Claim 11 recites the limitation “an apparatus for industrial equipment used in” in line 2 and goes on to recite a list of various industrial equipment. A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 11 recites the broad recitation industrial equipment, and the claim also recites “waste incinerators, boilers, high- temperature reaction vessels, rotary calciners, or a production plant or synthesis gas plant of petrochemical products” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
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 8-11 and 15-24 are rejected under 35 U.S.C. 103 as being unpatentable over US 2018/0363115 A1 of Richter in view of US 2012/0067464 A1 of Chiba.
As to claims 8-9, 15-17 and 19-22, Richter discloses a Co-Ni based alloy with the composition as shown in Table A below.
Table A
Element
Claims 8 and 22 limitations unless otherwise stated (mass %)
Richter claim 1 (wt%)
Ni
23 to 32%
25 to 29% (claims 16 and 20)
About 20 to about 50%
Co
37 to 48%
About 10 to about 50%
Mo
8 to 12%
9 to 11% (claims 16 and 20)
About 2 to about 20%
Cr
Remainder and unavoidable impurities
About 10 to about 30%
Cr + Mo
20 to 40%
23 to 38% (claims 16 and 20)
About 12 to about 50%
Thus, the composition in Richter overlaps the claimed amounts for Ni, Co, Mo, and Cr as well as the amount of Cr + Mo. 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 improved resistance to physical fatigue, a high corrosion resistance and the ability to be drawn into a thin wire (Richter, paragraph [0038]) 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.
Richter discloses where this is a medical device comprising a wire according to the composition of the embodiment (Richter, paragraph [0114]), meeting the limitation where this is a medical device and where the cobalt-chromium alloy member has a wire shape and the claim 9 limitation of a medical device including a wire and the claim 22 limitation of the device having a wire shape. However, Richter does not disclose where the member has a crystal structure including a face-centered cubic lattice (fcc) or a crystal structure including a face-centered cubic lattice (fcc) and a hexagonal lattice (hcp); and an average value of a crystal grain size of 2 to 15 μm and a change amount in local crystal orientation (KAM value) of 0.0 or more and 1.0 or less nor a of tensile strength of 1000 to 1200 MPa, and a breaking elongation of 30 to 80%.
Further, claims 8, 15, 17, and 21-22 all contain product-by-process limitations, and 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, they do not imply any further structure beyond what is claims for the device.
Nevertheless, Richter discloses where the alloy is prepared by vacuum induction or arc melting, electro-slag melting, homogenization, cogging, finish rolling, and a straightening step (Richter, paragraphs [0122]-[0131]). Richter discloses where the straightening step is a cold straightening step carried out from about 10 to about 100°C (Richter, paragraph [0140]), matching the disclosed method in paragraph [0054] of the specification as well as claims 15 and 17-18 where the cobalt-chromium alloy as processed material being obtained by homogenizing followed by causing the cobalt-chromium alloy material to be subjected to cold plastic working into a predetermined shape. However, Richter does not disclose performing heat treatment on a cobalt-chromium alloy as-processed material for 1 minute or more and 60 minutes or less at a temperature exceeding a recrystallization temperature (or 800°C as required in claims 17 and 21) of a cobalt-chromium alloy material and not more than 1100°C.
Chiba relates to the same field of endeavor of Co-Ni based alloys (Chiba, paragraph [0013]). Chiba discloses where the member is formed using cold rolling at a reduction ratio of 15% or more and 90% or less, followed by heat treatment at 350°C or more (Chiba, paragraphs [0082] and [0083]). Chiba discloses where the ultimate tensile strength varies from 1,030 to 2,600 MPa and breaking elongation varies from 0.40 to 61.80% (Chiba, Tables 3 and 4) and Chiba also specifically discloses sample 14 which is cold rolled with a reduction ratio of 90% -- reading upon cold plastic working into a predetermined shape – and then performs a heat treatment at 1050°C for 1 hour to produce a finished member – reading upon a heat treatment between recrystallization temperature and 1100°C as well as the claim 17 and 21 limitation of between 800 and 1100°C (Chiba, Table 3 and paragraph [0133]). Chiba teaches that this produces a Co—Ni-based alloy excellent in mechanical characteristics such as hardness and tensile strength (Chiba, paragraph [0027]).
Thus it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to add a heat treatment at 1050°C for 1 hour as taught by Chiba into the method disclosed by Richter, thereby producing a Co—Ni-based alloy excellent in mechanical characteristics such as hardness and tensile strength (Chiba, paragraph [0027]).
Thus, as Richter discloses a patentably indistinct composition and the combination of Richter and Chiba applies a substantially identical method thereto, it would be expected by a person of ordinary skill in the art that the same method applied to the same starting materials would produce the same properties of where the member has a crystal structure including a face-centered cubic lattice (fcc) or a crystal structure including a face-centered cubic lattice (fcc) and a hexagonal lattice (hcp); and an average value of a crystal grain size of 2 to 15 μm and a change amount in local crystal orientation (KAM value) of 0.0 or more and 1.0 or less, tensile strength of 1000 to 1200 MPa, and a breaking elongation of 30 to 80%. “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) (emphasis added), see MPEP § 2112.01(I).
As to claim 10, it is not clear what device is being referenced, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as a device capable of use in gas turbines. In the instant case, as Richter discloses where a wire and tube are formed of the material with the composition in Table A above (Richter, claim 1), Richter meets the claim limitations as the tube disclosed in Richter is capable of being a tail tube, or tail pipe.
As to claim 11, it is not clear what device is being referenced, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as a device capable of use in industrial equipment. Further, the manner of operating the device does not differentiate an apparatus or product claim from the prior art. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus teaches all the structural limitations of the claim, see MPEP § 2114 (II). In the instant case, as Richter discloses where a wire and tube are formed of the material with the composition in Table A above (Richter, claim 1), Richter meets the claim limitations as the tube or wire is industrial equipment capable of use in waste incinerators, boilers, high-temperature reaction vessels, rotary calciners, or a production plant or synthesis gas plant of petrochemical products and this intended use does not change the structure of the claimed device.
As to claim 18, Richter discloses where a wire and tube are formed of the material with the composition in Table A above (Richter, claim 1), meeting the limitation where the predetermined shape is a tubular shape. With respect to the properties of the cobalt-chromium member, as these are all the same or fall within the ranges in claim 8 above, cobalt-chromium material in the combination of Richter and Chiba would exhibit these claimed properties for the reasons stated in the rejection of claim 8 above.
As to claims 23-24, the recitation of performing the heat treatment for 1 minute or more and 5 minutes or less and 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, they do not imply any further structure beyond what the properties and microstructure is claimed in claims 8 and 22 from which they depend. Thus, as Richter discloses a patentably indistinct composition and the combination of Richter and Chiba applies a substantially identical method thereto, it would be expected by a person of ordinary skill in the art that the same method applied to the same starting materials would produce the same properties as there is no evidence on record of a one to five minute heat treatment producing distinct properties from the disclosed one minute to one hour. “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) (emphasis added), see MPEP § 2112.01(I).
Response to Arguments
Applicant’s amendments to the abstract have cured the previous issues and the objection is withdrawn.
With respect to the 112(b) rejections of claims 10 and 11, applicant’s amendments have cured the issue concerning “device”. However, these amendments do not cure the broad/narrow issues concerning the lists of narrower applications of the device.
With respect to the 103 rejection over Richter in view of Chiba, applicant argues that while Chiba teaches a heat treatment at 1050°C for one hour, this would not inherently produce a tensile strength of 1000 to 1200 MPa as Chiba discloses a lower UTS of 480 MPa (Applicant’s remarks, pg. 8, 1st and 2nd paragraphs). Applicant argues that the product-by-process limitation clearly differentiates from Chiba as in Chiba this heat treatment results in the severe degradation of tensile strength and therefore the assumption of inherency is incorrect (Applicant’s remarks, pg. 8, 3rd – 5th paragraphs).
In response to applicant's argument that Chiba doesn’t reach the required tensile strength, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981). In the instant case, what is of importance is what the alloy and method of Richter in combination with Chiba would reach and the Chiba heat treatment when combined with the composition and method in Richter would be expected to produce the same results of a tensile strength of 1000-1200 MPa.
Further, Chiba does disclose a UTS of 1030 MPa when treated at 1050°C for one hour. The 480 MPa that applicant identifies is for the 0.2% proof stress and not the tensile strength. Thus, as the combination of Richter and Chiba discloses the same starting material and applies the same method thereto as applicant, it would be expected that this would produce the same properties. Also, as Chiba discloses where it’s heat treatment produces a UTS within the claimed ranges, this further strengthens the conclusion that the combination would produce the claimed results. Thus, applicant’s arguments are not persuasive and the rejection is maintained.
With respect to the Double Patenting rejection, as Application No. 18/011745 has gone abandoned, it is no longer copending and the rejection is therefore withdrawn.
Finally, with respect to new claims 22-24, applicant argues that claim 22 is allowable for the same reasons as claim 8 above (Applicant’s remarks, pg. 9, 2nd paragraph). However, as Richter discloses where the device is a wire, this meets the only distinction between claim 8 and 22 and otherwise claim 22 is rejected for the same reasons with respect to claim 8 above.
Applicant also argues that claims 23-24 which require heat treatment being one minute or more and five minutes or less differentiates from Chiba (Applicant’s remarks, pg. 9, 3rd paragraph). However, as noted above, this is a product-by-process claim and there is no evidence of record to show that this retreated range produces a structure at 1-5 minutes that is distinct from the structure produced by heat treatment from one minute to one hour. As such, the device produced by the combination of Richter and Chiba after heat treatment for one hour would have patentably indistinct properties from those heated at 1-5 minutes and therefore the rejection is maintained.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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
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