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 and Status of Claims
Applicant’s election without traverse of Invention I, claims 1-5, 9 and 15-18 in the reply filed on 8/26/26 is acknowledged.
Claims 6-8 and 10-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 8/26/26.
As such, claims 1-5, 9 and 15-18 are examined in this office action of which claims 1-5 and 9 were amended and claims 10-14 are new in the preliminary amendment dated 6/11/24.
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 9 and 15-18 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.
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, claims 9 and 15-18 recites the broad recitation of ”, and the claim also recites "in 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 1-5, 9 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over JP 6839401 B1 with reference to its English equivalent US 2022/0154311 A1 of Aoki.
Table A
Element
Claim 1 Limitation unless otherwise noted (wt%)
Aoki claim 1 (mass%)
Aoki Example 2 (Table 3) (mass%)
Co
4.0 to 15.7%
Claim 4: 4.0 to 13.2%
Claim 5: 4.0 to 11.0%
up to 18.0%
13.5%
Cr
15.3 to 19.5%
14.0 to 22.0%
19.0%
Mo
1.6 to 5.45%
up to 8.0%
4.3%
Al
1.65 to 2.5%
Claim 3: 1.65 to 2.10%
Claim 4: 1.80 to 2.30%
Claim 5: 2.0 to 2.50%
0.10 to 2.80%
1.28%
Ti
2.8 to 4.3%
Claim 3: 2.8 to 3.45%
Claim 4: 3.5 to 4.0%
Claim 5: 4.05 to 4.4%
0.50 to 5.50%
2.90%
C
to 0.10%
Claim 2: 0.02 to 0.06%
up to 0.10%
0.033%
B
0.003 to 0.02%
Claim 2: 0.005 to 0.01%
up to 0.030%
0.0052%
Zr
to 0.10%
Claim 2: 0.02 to 0.06%
up to 0.10%
0.05%
Fe
0 to 6.0%
up to 45%
0.37%
W
0 to 6.3%
up to 5.0%
Nb
0 to 0.4%
up to 5.8%
Ni
Balance to 100%
balance
Balance
As to claims 1-3, Aoki discloses a Ni-based superalloy (Aoki, paragraph [0001]) with a composition in comparison to the claim limitations as shown in Table A above. Thus, Aoki discloses Example 2 which has the elemental values for elements Co, Cr, Mo, Ti, C, B,, Zr, Fe, W, Nb, and Ni are within the claimed ranges in claims 1-3 except for Al. However, Aoki also teaches that Al is an element which forms a γ′ phase (gamma prime phase) that is a precipitation-strengthening phase and enhances tensile strength and amounts between 0.10% and 2.80% improve the tensile strength without deteriorating hot workability (Aoki, paragraph [0020]). 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 2.0% Al into Example 2 as taught by Aoki, thereby improving the tensile strength without deteriorating hot workability (Aoki, paragraph [0020]).
In the alternative, Aoki also discloses in claim 1 where ranges for the elements in the Ni-based superalloy overlap the claimed ranges, 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 Ni-based superalloy has high tensile strength (Aoki, paragraph [0007]) 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 claims 4-5, Aoki discloses where amounts of Co, Al, and Ti in Example 2 are close to the claimed ranges. It has been held that when the difference between a claimed invention and the prior art is the range or value of a particular variable, then a prima facie rejection is properly established when the difference in the range or value is minor, see MPEP § 2144.05 Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
In the alternative, Aoki discloses ranges for Co, Al, and Ti which overlap the claimed ranges (Aoki, claim 1). 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 Co in an amount of 5.0% to 18.0% enhance stability of the structure at a high temperature to obtain high tensile strength (Aoki, paragraph [0018]), that Al amounts between 0.10% and 2.80% improve the tensile strength without deteriorating hot workability (Aoki, paragraph [0020]), and Ti amounts of at least 0.50% to 5.50% forms a γ′ phase and enhances tensile strength (Aoki, paragraph [0021]) 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 claims 9 and 15-18, these claims contain broad and narrow limitations with respect to an aeronautical part, see 112(b) rejection above. For the purposes of applying prior art, this will be interpreted as merely requiring an aeronautical part as this is the broadest statement of the claim. Aoki discloses where its Ni-based superalloy is used in members in jet engines for aircraft (Aoki, paragraph [0013]), meeting the limitation of an aeronautical part.
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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