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 pending and presented for examination on the merits.
Claims 1-20 are currently amended. Claim 21 is canceled.
Priority
Copies of the certified copies of the priority documents have been received in this National Stage application from the International Bureau.
Information Disclosure Statement
Three (3) information disclosure statements (IDS) were submitted on 06/27/2024, 09/23/2024, and 01/28/2026. The submissions are in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS are being considered by the examiner.
Drawings
The drawings are objected to because there are multiple views in Figures 1a and 1b. Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. See 37 C.F.R. § 1.84(u)(1).
In this case, Fig. 1a shows partial views of:
a sheet,
a strip,
a bar,
a tube,
wire and weld filler in wire form (page 25) on the left side of Fig. 1a.
Fig. 1a also shows an example process of how a product or precursor product is formed by cutting and chamfering, joining, and fusion welding (pages 25-26) on the right side of Fig. 1a. Similarly, Fig. 1b shows several examples of a process. It is suggested to separate the figures so that only one product (with all its partial views) or one process is shown per figure. The specification should be amended accordingly to reflect any changes to the drawings.
Corrected drawings in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. The replacement sheet(s) should be labeled “Replacement Sheet” in the page header (as per 37 CFR 1.84(c)) so as not to obstruct any portion of the drawing figures. If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claims 1 and 5-20 are objected to because of the following informalities:
Claim 1 recites the limitation “max.” which is an abbreviation. For clarity, abbreviations should be spelled out before relying on the abbreviation alone. Abbreviations are usually introduced in parentheses after introducing the full term.
Claims 1, 8, and 18 recite elements by either their full name (e.g. chromium, aluminum, iron, etc.) in the beginning of the claims or only their elemental symbols in the relationships at the end of the claims. Claims 5-7, 9-17 and 19 recite elements only by their full name and claim 20 recites elements only by their elemental symbol without reciting their full name. For clarity, elements should be recited in the same format throughout the claim. It is suggested to introduce the full name and symbol the first time they are used (e.g. “chromium (Cr)”).
Appropriate correction is required.
Claim Interpretation
Regarding claim 1, the terms “comprise” in line 3 and “containing” in line 4 are inclusive or open-ended, and do not exclude additional, unrecited elements or method steps. See MPEP 2111.03(I). However, as currently written, the limitation “the rest nickel, greater than or equal to 50% and the common process-related impurities” closes the composition of the nickel-chromium-aluminum alloy used in the claimed method since the remainder of the alloy must be nickel and “common process-related impurities” to meet the composition of claim 1.
Regarding the chemical composition of claims 1 and 5-20, elements including zero in their compositional range explicitly or implicitly by including the limitations “or less”, “max.”, or “at most”, including the claimed titanium, magnesium, calcium, sulfur, molybdenum, tungsten, niobium, zirconium, yttrium, lanthanum, cerium, “cerium mixed metal”, hafnium, tantalum, boron, cobalt, copper, vanadium, lead, zinc, and tin, are interpreted as optional elements since they are explicitly claimed as optional and/or their claimed ranges include a 0% content.
Regarding claim 1, the limitations “for homogenization of the welded seams and/or for reduction of stresses” and “with the consequence that the creep strength and the creep ductility of the welded seams are improved by this annealing” are interpreted as the intended results of the annealing step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" See MPEP 2111.04(I).
Regarding claim 2, the limitations “for homogenization of the welded seam and/or for reduction of stresses” and “with the consequence that the creep strength and the creep ductility of the welded seams are improved by this” are interpreted as the intended results of the annealing step. The court noted that a "‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" See MPEP 2111.04(I).
Regarding the semifinished product of claims 1 and 4, “semifinished product” is interpreted in light of the specification as “partly completed products” (end of page 10) including, but not limited to, “sheet, strip, bar, forgings, seamless or longitudinally seam-welded tube or wire” (end of page 10, start of page 11).
Regarding claim 3, “metal dusting resistance” is interpreted as resistance to metal dusting which is a type of corrosion where solid metals disintegrate into a dust of graphite and fine metal particles when exposed to carburizing environments, as understood by one of ordinary skill in the art.
Regarding claim 13, “cerium mixed metal” is interpreted as “cerium mischmetal” which is an alloy of rare-earth metals including cerium, lanthanum, neodymium, and traces of other rare earth metals, as understood by one of ordinary skill in the art.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 18/832,179 (reference application).
The copending application claims “a method for the manufacture of a component, produced partly or entirely from a semifinished product of a nickel-chromium-aluminum alloy” “wherein the component contains welded seams of similar type and/or the component is provided partly or completely with welded seams of similar type for installation in a plant”, which overlaps with the claimed method for the manufacture of a component with one or more welded seams and/or for installation of a component in a plant with one or more welded seams of the instant application. Although the claims at issue are not identical, they are not patentably distinct from each other because both applications claim a method of manufacturing a component with welded seams comprising an alloy with identical chemical compositions, an annealing step with identical temperatures, times, environments (i.e. shield gas or air) and locations (namely annealing “only the welded seams” and “heat-affected zones surrounding the welded seams”), and identical Cr+Al and Fp requirements.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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(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.
Claims 1-20 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.
Claims 1-20 are presented as method claims, however no method steps are recited. The claims, as currently written, do not recite any active, repeatable, and tangible method steps. Accordingly, the scope of protection sought is unclear and the claims are therefore indefinite. Attempts to claim a process without setting forth any steps involved in the process generally raises an issue of indefiniteness under 35 U.S.C. 112(b). For example, a claim which read: "[a] process for using monoclonal antibodies of claim 4 to isolate and purify human fibroblast interferon" was held to be indefinite because it merely recites a use without any active, positive steps delimiting how this use is actually practiced. Ex parte Erlich, 3 USPQ2d 1011 (Bd. Pat. App. & Inter. 1986). See MPEP § 2173.05(q).
In this case, the examiner notes that the claim appears to be written as a product claim reciting a product that has been subjected to method steps, rather than a method claim reciting active, positively recited steps. For example, “after the welding” and “subjected to an annealing” in claim 1 are passive steps written in past tense which suggest the welding and annealing have already happened rather than a welding and annealing step occurring as part of the claimed method. As another example, claim 3 recites “after a process of grinding of the welded seam and of the heat-affected zone, it is advantageous when roughness values Ra of 0.01 to 15 pm are attained, since this improves the corrosion resistance and especially the "metal dusting" resistance and raises them almost to the value of the parent material”. As currently written, claim 3 explains the benefits of a roughness value after grinding, but does not require any active method step, including any grinding or grinding under specific conditions that result in the roughness values currently recited.
Applicant is encouraged to amend the claim to recite active, repeatable, and tangible method steps.
Claim 1 recites the limitation "A method for the manufacture of a component with one or more welded seams and/or for installation of a component in a plant with one or more welded seams, which comprise a nickel-chromium- aluminum alloy, containing […]" in lines 1-4. This limitation renders the claim indefinite since it is unclear whether the nickel-chromium-aluminum alloy is part of the “component”, “one or more welded seams”, “plant”, any combination of the above, or a different interpretation. Claim 1 later recites “the component is partly or completely made up of this nickel-chromium-aluminum wrought alloy”. If the “wrought alloy” refers to the same alloy introduced in lines 3-4 of claim 1, the claim as written suggests the component and the seams are all made of the same alloy composition introduced in claim 1.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 1 recites the limitation “only the welded seams of this nickel-chromium-aluminum wrought alloy”. This limitation renders the claim indefinite since the alloy does not have seams. As currently written, the claimed component has one or more welded seams, not the alloy.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Regarding claim 1, 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 1 recites the broad recitation “a nickel-chromium-aluminum alloy”, and the claim also recites "this nickel-chromium-aluminum wrought alloy" (emphasis added) 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. In this case, it is unclear whether the claimed alloy must use a nickel-chromium-aluminum alloy, or a nickel-chromium-aluminum wrought alloy.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, 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 1 recites the broad recitation “the rest nickel”, and the claim also recites "nickel, greater than or equal to 50%" (emphasis added) 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. In this case, it is unclear whether the nickel has to meet the greater than or equal to 50% or be the remainder of the alloy to meet the claimed limitation.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, claim 1 recites “semifinished products of this nickel-chromium-aluminum wrought alloy” and “only the welded seams of this nickel-chromium-aluminum wrought alloy”. These limitations render the claim indefinite since it is unclear if the limitation “this nickel-chromium-aluminum wrought alloy” refers to the semifinished product, the welded seams, the component, the plant, all of the above, any combination of the above, or a different interpretation.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claims 1 and 2 recite the limitation “after the welding”. There is insufficient antecedent basis for this limitation in the claim. This limitation renders the claims further indefinite since it is unclear whether the method claims require a welding step. See 112(b) rejection for claims 1-20 reciting no method steps.
Claims 3-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Further regarding claim 1, claim 1 recites the limitations “A method for the manufacture of a component with one or more welded seams and/or for installation of a component in a plant with one or more welded seams, which comprise a nickel-chromium- aluminum alloy”, “wherein the component is partly or completely made up of semifinished products of this nickel-chromium-aluminum wrought alloy”, and “only the welded seams of this nickel-chromium-aluminum wrought alloy”. These limitations render the claim indefinite since it is unclear what the relationship is between the “alloy” or “wrought alloy” and the “component”, “welded seams”, “plant”, and “semifinished products” are.
Claims 2-20 depend on claim 1, do not resolve the aforementioned issues, and are thereby also indefinite.
Claim 2 recites the limitation “the entire component containing the welded seams is subjected, for homogenization of the welded seam and/or for reduction of stresses, to a further annealing”. This limitation renders the claim indefinite since it is unclear whether the annealing is of the entire component after the annealing of claim 1, therefore having the welded seams subjected to a similar annealing twice, or if the method of claim 2 is intending to anneal the entire component once, with no additional annealing of only the welded seam. The examiner notes that the examples in the instant specification only show one annealing and no example shows two annealing steps (see Table 5 in page 46).
Claim 2 recites the limitation “improved by this”. This limitation renders the claim indefinite since it is unclear whether “this” refers to the annealing as a whole, to specific annealing parameters, or a different interpretation.
Claim 3 recites the limitation “raises them almost to the value of the parent material”. The term “almost to the value of the parent material” in claim 3 is a relative term which renders the claim indefinite. The term “almost” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In this case, it is unclear what value must be achieved to be considered “almost to the value of the parent material”.
Claim 3 recites the limitation “since this improves the corrosion resistance” and “raises them almost to the value of the parent material”. These limitations render the claim indefinite since it is unclear what “this” and “them” are referring to.
Claim 4 recites the limitation “the semifinished product”. This limitation renders the claim indefinite since it is unclear whether this applies to only one semifinished product of claim 1 or all semifinished products of claim 1.
Claims 5-7 recite the limitations “with a chromium content of 20 to 33%”, “with an aluminum content of 1.8 to 3.2%”, and “with an iron content of 0.01 to 4.0%”. These limitations render the claim indefinite since it is unclear whether the claimed contents are intending to modify the chromium, aluminum, and iron contents of claim 1, or if they are additional contents, and if so, if the contents are of the alloy, component, welded seams, plants, or something else.
Claims 8-19 recites “a content” of various elements. These limitations render the claim indefinite since it is unclear whether the claimed contents are intending to modify the composition of the nickel-chromium-aluminum alloy of claim 1, or if they are additional contents, and if so, if the contents are of the alloy, component, welded seams, plants, or something else.
Claim 8 recites the limitation “wherein the formula (4a) is supplemented by a term for Nb: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 1.26*Nb + 0.374*Mo + 0.538*W - 11.8*C”. There is insufficient antecedent basis for this limitation in the claim since “formula (4a)” is not introduced before claim 8.
Claim 18 recites the limitation “wherein the formula (4a) is supplemented by a term for Cu: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 0.477*Cu + 0.374*Mo + 0.538*W - 11.8*C (3c)”. There is insufficient antecedent basis for this limitation in the claim since “formula (4a)” is not introduced before claim 18.
Claim 20 recites the limitation "the impurities" in line 2. There is insufficient antecedent basis for this limitation in the claim since claim 1 recites “common process-related impurities”.
Further regarding claim 20, the limitation “the impurities” renders the claim indefinite since it is unclear whether “the impurities” of claim 20 is attempting to refer to the “common process-related impurities” of claim 1 or a different set of “impurities”. The examiner notes that one of ordinary skill in the art would not consider the claimed Pb, Zn, and Sn “common process-related impurities” for nickel-chromium-aluminum alloys.
Claims 3 and 8-19 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.
Claim 3 recites “wherein, after a process of grinding of the welded seam and of the heat-affected zone, it is advantageous when roughness values Ra of 0.01 to 15 pm are attained, since this improves the corrosion resistance and especially the "metal dusting" resistance and raises them almost to the value of the parent material”. This limitation merely describes the benefits of particular roughness values after grinding, but does not require any grinding or specific roughness as currently written. Since no method steps are positively recited (see 112b rejection in this Office action), claim 3 fails to further limit the subject matter of the claim upon which it depends.
Claim 8 recites the limitation “wherein the formula (4a) is supplemented by a term for Nb: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 1.26*Nb + 0.374*Mo + 0.538*W - 11.8*C”. Since the formula for Fp is different in claims 1 and 8, claim 8 fails to include all the limitations of the claim upon which it depends since the Fp values and formulas are not comparable.
Regarding claims 8-19, claim 1 recites a nickel-chromium-aluminum alloy “containing” chromium, aluminum, iron, silicon, manganese, titanium, magnesium and/or calcium, carbon, nitrogen, oxygen, phosphorus, sulfur, molybdenum, tungsten, and “the rest nickel, greater than or equal to 50% and the common process-related impurities”. Reciting “the rest” closes the composition of claim 1 since the remainder of the alloy must be nickel and “common process-related impurities” to meet the composition of claim 1. Claims 8-19, which depend on claim 1, recite further elements in the composition of the claimed alloy adding niobium in claim 8, zirconium in claim 9, yttrium in claim 10, lanthanum in claim 11, cerium in claim 12, “cerium mixed metal” in claim 13, hafnium in claim 14, tantalum in claim 15, boron in claim 16, cobalt in claim 17, copper in claim 18, vanadium in claim 19, and Pb, Zn, and Sn in claim 20. Since claim 1 closes the composition by reciting “the rest” (see Claim Interpretation section), the claim excludes any element not specified in the claim. See MPEP 2111.03(II). Claims 8-9 therefore fail to include all the limitations of the claim upon which it depends since it is attempting to re-open the close-ended composition recited in claim 1 by including additional elements not recited in claim 1.
Claim 18 recites the limitation “wherein the formula (4a) is supplemented by a term for Cu: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 0.477*Cu + 0.374*Mo + 0.538*W - 11.8*C (3c)”. Since the formula for Fp is different in claims 1 and 18, claim 18 fails to include all the limitations of the claim upon which it depends since the Fp values and formulas are not comparable.
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 § 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0050182 A1 of Hattendorf (US equivalent of DE102012011161A1 cited in IDS mailed 06/27/2024) in view of US 2015/0344987 A1 of Tuttle (as cited in IDS mailed 01/28/2026).
Regarding claims 1-20, Hattendorf teaches a nickel-chromium-aluminum alloy (Abstract, reads on claimed nickel-chromium-aluminum alloy). Hattendorf teaches using the alloy in product forms of strip, sheet, bar, wire, longitudinally seam-welded pipe and seamless pipe ([0163], reads on claimed semifinished product, component, and/or one or more welded seams and on claimed method for manufacture or installation).
List 1
Instant claims (mass%)
Hattendorf (wt%)
Hattendorf Batch 250132 (wt%)
Chromium (Cr)
18-33
20-33 (claim 5)
24-33
28.3
Aluminum (Al)
1.8-4.0
1.8-3.2 (claim 6)
1.8-4.0
2.61
Iron (Fe)
0.01-7.0
0.01-4.0 (claim 7)
0.10-7.0
0.6
Silicon (Si)
0.001-0.50
0.001-0.50
0.06
Manganese (Mn)
0.001-2.0
0.005-2.0
0.27
Titanium (Ti)
0-0.60
0.00-0.60
<0.01
Magnesium (Mg)
0-0.05
0.0002-0.05 (Mg and/or Ca)
0.009
Calcium (Ca)
0-0.05
0.0002-0.05 (Mg and/or Ca)
0.0012
Carbon (C)
0.005-0.12
0.005-0.12
0.059
Nitrogen (N)
0.0005-0.050
0.001-0.05
0.022
Oxygen (O)
0.0001-0.020
0.0001-0.020
0.001
Phosphorus (P)
0.001-0.030
0.001-0.030
0.004
Sulfur (S)
Max. 0.010
Not more than 0.010
0.003
Molybdenum (Mo)
Max. 2.0
Not more than 2.0
<0.01
Tungsten (W)
Max. 2.0
Not more than 2.0
0.02
Nickel (Ni)
“the rest”
≥ 50
“and common process-related impurities”
Remainder and the usual process-related impurities
68.2
Lead (Pb)
Max. 0.002 (“the impurities”, claim 20)
Max. 0.002 ([0152], “impurities”)
Max. 0.002
Zinc (Zn)
Max. 0.002 (“the impurities”, claim 20)
Max. 0.002 ([0152], “impurities”)
Max. 0.002
Tin (Sn)
Max. 0.002 (“the impurities”, claim 20)
Max. 0.002 ([0152], “impurities”)
Max. 0.002
Niobium (Nb)
0.0-1.1 (“optionally”, claim 8)
0.0-1.10 (“optionally”)
0.01
Zirconium (Zr)
0.0-0.20 (“optionally”, claim 9)
0.01-0.20 (“optionally”, claim 15)
0.03
Yttrium (Y)
0.001-0.20 (“optionally”, claim 10)
0.01-0.20 (“optionally”)
0.07
Lanthanum (La)
0.001-0.20 (“optionally”, claim 11)
0.001-0.20 (“optionally”)
-
Cerium (Ce)
0.001-0.20 (“optionally”, claim 12)
0.001-0.20 (“optionally”)
-
Cerium mixed metal
0.001-0.20 (“optionally”, claim 13)
0.001-0.20 (“optionally”)
-
Hafnium (Hf)
0.001-0.20 (“optionally”, claim 14)
0.001-0.2 (claim 16)
-
Tantalum (Ta)
0.001-0.60 (“optionally”, claim 15)
0.001-0.6 (“optionally”, [0134])
-
Boron (B)
0.0001-0.008 (“optionally”, claim 16)
0.0001-0.008 (“optionally”, claim 17)
0.001
Cobalt (Co)
0.0-5.0 (“optionally”, claim 17)
0.0-5.0 (claim 18)
<0.01
Copper (Cu)
At most 0.5 (“optionally”, claim 18)
At most 0.5 (“optionally”, claim 19)
0.02
Vanadium (V)
At most 0.5 (“optionally”, claim 19)
At most 0.5 (“optionally”, claim 20)
0.01
Annealing
980-1250°C
700-1250°C
900-1270°C ([0196])
Annealing time
0.05 min – 24 hours
0.1 min to 70 hours
1 hour ([0196])
Cooling
Stationary or moving shield gas or air
Cooling in air, in the agitated annealing atmosphere (shielding gas) or in water bath ([0162])
Broader disclosure
Formula (1a)
≥ 28
≥ 28
30.9
Formula (2a) obtained from (3a)
≤ 39.9
≥ 39.9 (same Fp formula as instant)
34.1
Roughness Ra
0.01-15 μm (claim 3)
-
-
Grain size
Semifinished product
30-600 μm (claim 4)
Product forms of strip, sheet, bar, wire, longitudinally seam-welded pipe and seamless pipe ([0163])
5-600 μm ([0164])
Preferred: 20-200 μm ([0164])
Typically 70-300 μm
Hattendorf teaches a broader disclosure with a method for heat treating an alloy with a chemical composition (claims 1-18, [0023]-[0152]), values of (1a) and (2a) ([0088]-[0091], Hattendorf teaches the same formulas for obtaining the claimed (1a) and (2a) values in [0088] and [0090] respectively), annealing temperature ([0162]), annealing time ([0162]), annealing environment ([0162]), and grain size of the semifinished product ([0164]) overlapping with the claimed invention, as shown in List 1. Furthermore, Hattendorf teaches an inventive example (Batch 250132, Tables 3a, 3b, [0195]-[0198]) with a composition, (1a) value, (2a) value, and grain size lying within the claimed ranges of claims 1-2 and 4-20, and annealing temperature and times overlapping with the claimed invention. 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); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP § 2144.05 I.
Regarding the formulas of claims 8 and 18, Hattendorf teaches optionally further containing niobium from 0.0 to 1.1%, wherein Formula 4a is supplemented by a term with Nb:
Fp=Cr+0.272*Fe+2.36*Al+2.22*Si+2.48*Ti+1.26*Nb+0.374*Mo+0.538*W−11.8*C (4b) (claim 14, formula is the same as the claimed invention), and further containing at most 0.5% copper, wherein Formula 4a is supplemented by a term with Cu:
Fp=Cr+0.272*Fe+2.36*Al+2.22*Si+2.48*Ti+0.477*Cu+0.374*Mo+0.538*W−11.8*C (4b) (claim 18, formula is the same as the claimed invention).
Hattendorf therefore reads on the limitations a method for the manufacture of a component with one or more welded seams and/or for installation of a component in a plant with one or more welded seams, which comprise a nickel-chromium- aluminum alloy, containing (in mass-%) more than 18 to 33% chromium, 1.8 to 4.0% aluminum, 0.01 to 7.0% iron, 0.001 to 0.50% silicon, 0.001 to 2.0% manganese, 0.00 to 0.60% titanium, respectively 0.0 to 0.05% magnesium and/or calcium, 0.005 to 0.12% carbon, 0.0005 to 0.050% nitrogen, 0.0001 - 0.020% oxygen, 0.001 to 0.030% phosphorus, max. 0.010% sulfur, max. 2.0% molybdenum, max. 2.0% tungsten, the rest nickel, greater than or equal to 50% and the common process-related impurities, wherein the component is partly or completely made up of semifinished products of this nickel-chromium-aluminum wrought alloy and, after the welding, this nickel-chromium-aluminum wrought alloy are subjected, for homogenization of the welded seams and/or for reduction of stresses, to an annealing between 980 and 1250°C for times of 0.05 minutes to 24 hours, followed by a cooling in stationary shield gas or air, moving (blown) shield gas or air, with the consequence that the creep strength and the creep ductility of the welded seams are improved by this annealing, wherein the following relationships must be satisfied: Cr+Al> 28 (1 a) and Fp 39.9 with (2a) Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 0.374*Mo + 0.538*W - 11.8*C (3a) wherein Cr, Fe, Al, Si, Ti, Mo, W and C are the concentrations of the elements in question in mass-% of claim 1, wherein the component contains welded seams and, after the welding, the entire component containing the welded seams is subjected, for homogenization of the welded seam and/or for reduction of stresses, to a further annealing between higher than 980 and 1250*C for times from 0.05 minutes up to 24 hours, followed by a cooling in stationary shield gas or air, moving (blown) shield gas or air or in water, with the consequence that the creep strength and the creep ductility of the welded seams are improved by this of claim 2, wherein, after a process of grinding of the welded seam and of the heat-affected zone, it is advantageous when roughness values Ra of 0.01 to 15 pm are attained, since this improves the corrosion resistance and especially the "metal dusting" resistance and raises them almost to the value of the parent material of claim 3, wherein the semifinished product has a grain size of 30 to 600 μm of claim 4, with a chromium content of 20 to 33% of claim 5, with an aluminum content of 1.8 to 3.2% of claim 6, with an iron content of 0.01 to 4.0% of claim 7, if necessary with a content of niobium of 0.0 to 1.1%, wherein the formula (4a) is supplemented by a term for Nb: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 1.26*Nb + 0.374*Mo + 0.538*W - 11.8*C (3b) and Cr, Fe, Al, Si, Ti, Nb, Mo, W and C are the concentrations of the elements in question in mass-% of claim 8, optionally with a content of zirconium of 0.0 to 0.20% of claim 9, optionally with an yttrium content of 0.001 to 0.20% of claim 10, optionally with a lanthanum content of 0.001 to 0.20% of claim 11, optionally with a cerium content of 0.001 to 0.20% of claim 12, optionally with a content of cerium mixed metal of 0.001 to 0.20% of claim 13, optionally with a content of hafnium of 0.001 to 0.20% of claim 14, optionally with a content of tantalum of 0.001 to 0.60% of claim 15, optionally with a content of boron of 0.0001 to 0.008% of claim 16, further optionally containing 0.0 to 5.0% cobalt of claim 17, further optionally containing at most 0.5% copper, wherein the formula (4a) is supplemented by a term for Cu: Fp = Cr + 0.272*Fe + 2.36*AI + 2.22*Si + 2.48*Ti + 0.477*Cu + 0.374*Mo + 0.538*W - 11.8*C (3c) and Cr, Fe, AI, Si, Ti, Cu, Mo, W and C are the concentrations of the elements in question in mass-% of claim 18, further optionally containing at most 0.5% vanadium of claim 19, and wherein the impurities are adjusted to contents of max. 0.002% Pb, max. 0.002% Zn, max. 0.002% Sn of claim 20.
However, Hattendorf anneals the entire product and does not explicitly disclose only the welded seams of this nickel-chromium-aluminum wrought alloy and the heat-affected zones surrounding the welded seams are subjected to an annealing of claim 1.
Tuttle teaches a method for performing a localized post weld heat treatment on a weld seam in a thin wall metallic body (Abstract). Tuttle and Hattendorf are considered analogous art since they are similarly concerned with heat treatments on welded metallic products made of nickel alloys, such as longitudinally seam-welded pipes and are therefore in the same field of endeavor and are solving the same technical problem of heat treating nickel alloy products with welds.
Tuttle teaches thin-wall welded structures may require post-weld heat treatments to relieve residual stress and that heating the entire component can require extensive equipment, fixturing requirements, and processing times ([0015]). Tuttle teaches a method of locally heat treating a weld seam without thermally affecting material adjacent to the weld ([0001], claims 1-3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Hattendorf to only heat treat the welded seams, as taught by Tuttle, to relieve residual stress in the weld seam without extensive processing requirements and without thermally affecting material adjacent to the weld, as taught by Tuttle.
Modified Hattendorf therefore reads on the limitation only the welded seams of this nickel-chromium-aluminum wrought alloy and the heat- affected zones surrounding the welded seams are subjected to an annealing of claim 1.
Modified Hattendorf therefore reads on all the limitations of claims 1-20.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0050182 A1 of Hattendorf (US equivalent of DE102012011161A1 cited in IDS mailed 06/27/2024) in view of US 2015/0344987 A1 of Tuttle ((as cited in IDS mailed 01/28/2026).), as applied to claim 1 above, and further in view of JP2016132019A of Hashimoto (as cited in IDS mailed 01/28/2026 with reference to its English machine translation).
In the interest of compact prosecution, an alternate 35 U.S.C. 103 rejection of claim 3 is presented in the case where the claim is amended to require an active grinding step with the recited roughness values for the claimed method. See 112(b) rejection in this Office action regarding no method steps recited.
Regarding claim 3, modified Hattendorf teaches the method of claim 1, as described above.
However, Hattendorf does not explicitly disclose a process of grinding of the welded seam and of the heat-affected zone of claim 3.
Hashimoto teaches a welded structure for a high-Ni heat-resistant pipe (Abstract). Hashimoto and Hattendorf are considered analogous art since they are similarly concerned with welded products made of nickel alloys, have similar alloy compositions, and are in the same field of endeavor.
Hashimoto teaches the tube is preferably processed so that the surface roughness is 6.3 μm or less, and preferably between 2.5 and 4.0 μm so that formation of chromia film can be suppressed and a more suitable alumina film can form by subsequent heat treatment (claim 10, [0048]-[0049], one of ordinary skill in the art understands processes to achieve a surface roughness include grinding).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the method of Hattendorf with the processing and surface roughness of Hashimoto to suppress formation of an undesirable chromia film, as taught by Hashimoto.
Modified Hattendorf therefore reads on the limitations of claim 3.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
DE 102015/008322 A1 of Hattendorf (hereafter DE’322, as cited in IDS mailed 06/27/2024 and with reference to its English machine translation) is considered relevant to claims 1-20. DE’322 teaches a process for producing a nickel-iron-chromium-aluminum alloy welded products with a composition (Abstract, claims 1-24) overlapping with that of the claimed invention and teaches Pb, Zn, and Sn as impurities (claim 24).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAYELA ALDAZ whose telephone number is (571)270-0309. The examiner can normally be reached Monday -Thursday: 10 am - 7 pm and alternate Friday: 10 am - 6 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached at (571) 272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/M.A./Examiner, Art Unit 1733
/REBECCA JANSSEN/Primary Examiner, Art Unit 1733
Prosecution Insights