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 .
Claim Rejections - 35 USC § 112(b)
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 8, 9, 11-14 and 18 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.
Regarding claims 8 and 11, claims 8 and 11 recite the limitation “a+b+c+d+e+f = 100 atomic%” and also recite the limitation “g≤3 atomic%.” This limitation is indefinite because in order for a+b+c+d+e+f to equal 100 atomic%, g must be equal to 0 atomic%. This indefiniteness issue is further compounded in instant claims 9 and 13 which require g to be greater than 0, which cannot be true if a+b+c+d+e+f = 100 atomic%. For the purposes of search and examination, the claims have been interpreted to read “a+b+c+d+e+f+g = 100 atomic%.”
Instant claims 9, 12-14 and 18 depend on instant claims 8 and 11 and are indefinite for at least the same reasons.
Claim Rejections - 35 USC § 112(d)
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 12 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Instant claim 11, from which instant claim 12 depends, recites that the Ti and Al content are each in a range of 2 to 15 atomic%, which is narrower than the recitation of instant claim 12 of “wherein an amount of each of Al and Ti is 15 atomic% or less relative to all metal elements constituting the alloy.”
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1, 7-9 and 11-13 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “The outstanding tensile strength of Ni-rich high entropy superalloy fabricated by powder metallurgical process” by Kang et al (cited by applicant in IDS).
Regarding claims 1, 7-9 and 11-13, Kang discloses an alloy material comprising a composition lying wholly within the instantly claimed composition as follows:
Element
Claimed wt%
Kang wt%
Lies within?
Fe
0-20
8
Yes
Ni
35-65
46
Yes
Co
0-35
22
Yes
Cr
0-20
8
Yes
Al
2-15
12
Yes
Ti
2-15
3
Yes
Mo, Mn, Si, W, Z, Nb, Hf, B
0-3 | >0-3
1
Yes
Wherein the alloy material comprises a matrix of a face centered cubic structure (FCC) and a precipitate of a lattice structure formed in the matrix, and wherein the alloy has peaks of thematrix and the precipitate at about 2Θ = 44±1°, 51±1°, and 74±1°, and a superlattice peak of the precipitate at about 2Θ = 24±1° in X-ray diffraction measurements using CuKα rays.
(Kang, abstract, “3. Results and discussion,” pages 2-5, Figures 3 and 4, Table 2).
Kang anticipates instant claims 1, 7-9 and 11-13 because Kang discloses an alloy material having meeting all of the limitations of instant claims 1, 7-9 and 11-13
Claim Rejections - 35 USC § 102/103
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.
Claim(s) 2-6, 14 and 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “The outstanding tensile strength of Ni-rich high entropy superalloy fabricated by powder metallurgical process” by Kang et al (cited by applicant in IDS) as applied to claims 1, 7-9 and 11-13 above.
Regarding claims 2-6, 14 and 16-18, Kang discloses an alloy material as set forth above. When the structure recited in the reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent. 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 (see MPEP 2112.01 [R-3].) In the instant case, the alloy of Kang would be expected to have the same or similar properties as the instantly claimed alloy because the alloy of Kang has the same or substantially the same composition, microstructure and method of manufacturing. Therefore, a rejection based alternatively on either 35 U.S.C. 102 or 35 U.S.C. 103 is eminently fair and acceptable.
Claim Rejections - 35 USC § 103
Claim(s) 10 and 15 is/are rejected under 35 U.S.C. 103 as obvious over “The outstanding tensile strength of Ni-rich high entropy superalloy fabricated by powder metallurgical process” by Kang et al (cited by applicant in IDS) as applied to claims 1-9, 11-14 and 16-18 above and further in view of “Nickel and Nickel Alloys” by Mankins et al.
Kang sets forth an alloy material as set forth above. Kang does not explicitly disclose that the alloy material is in the form of a joule heating tube for a hydrocarbon reactor.
Mankins discloses that nickel alloys have a known application as piping for petrochemical reaction vessels (Mankins, page 430, “Applications and Characteristics of Nickel Alloys”), e.g. joule heating tubes for hydrocarbon reactors.
Regarding claims 10 and 15, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to employ the alloy material of Kang as piping for petrochemical reaction vessels, e.g. joule heating tubes for hydrocarbon reactors, as suggested by Mankins. The motivation for doing so is that the alloy material of Kang is a nickel alloy and nickel alloys have a known application as piping for petrochemical reaction vessels (Mankins, page 430, “Applications and Characteristics of Nickel Alloys”), e.g. joule heating tubes for hydrocarbon reactors.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2017/0369970 A1, CN 113718152 A and “Optimising the Al and Ti compositional window for the design of [gamma]’ (L12) strengthened AlCoCrFeNiTi high entropy alloys,” were all cited by applicant in IDS and were all cited in the European Search Report submitted by applicant in the IDS. All three references appear to disclose alloy compositions lying within the limits of at least instant claims 8 and 11.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRIAN D WALCK whose telephone number is (571)270-5905. The examiner can normally be reached Monday-Friday 10 AM - 6:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at 571-272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRIAN D WALCK/Primary Examiner, Art Unit 1738
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