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 .
Response to Arguments
Some of the 112 rejections are withdrawn based upon the claim amendments but a few remain as set forth below as “especially” is still present in the limitations of claim 1
Applicant's arguments filed 10/31/2025 have been fully considered but they are not persuasive.
Applicant primarily argues that the alloy of Li has a broader teaching of the elements such that the now claimed composition is not obvious.
The examiner has shown that the alloy of Li teaches each of the element of claimed alloy in overlapping or nearly overlapping range. Further, as taught by Stamm, smaller beneficial ranges are known in the art. It is noted that as set forth in MPEP 2144.05, in the case where the claimed range “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). Further, applicant gives no secondary consideration arguments as to the now claimed alloy. Applicant does not provide evidence to any unexpected or critical results that result from the now claimed alloy that would overcome the prima facie case and thus the rejections remain.
Applicant further argues that Li does not explicitly prohibit Re and Ru as required by claims 1 and 8. The alloy of Li is not taught or claimed to contain Re or Ru and thus it would be obvious to not add them. Applicant point to a background paragraph of conventionally known alloys that may contain Re and not a teaching of Li claimed alloy. Thus, applicant’s arguments are not persuasive.
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 1-7 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 claim 1, the phrase "especially" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
As to dependent claims 2-7, these dependent claims depend from independent claim 1 and incorporate the limitations therein. Accordingly, these dependent claims are rejected for the reasons set forth above in regards to independent claim 1.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20160168667 A1) in view of Stamm (US 20140220384 A1).
In regards to claims 1,3-5 and 7, Li teaches a protective coating (3) comprising a nickel based alloy comprising 15 to 39 wt. % Co, 10 to 25 wt. % Cr, 5 to 15 wt. % AI, 0.05 to 1 wt. % Y, 0.5 to 10 wt. % Fe, 0.05 to 2 wt % Mo, 0 to 4 wt % Si, 0 to 2 wt % Ta the remainder Ni and impurities [Abstract, 0020, claims 1-4 and 6, Fig]. The fraction of sulfur in the protective coating/alloy is less than or equal to 8*10−6 wt % [0013, claim 6]. These ranges overlap the claimed ranges except for Cr. No Ru or Re are required in the alloy/coating [claim 1]. The coating to a gas turbine component comprising a substrate made of a nickel-based superalloy or of a cobalt-based superalloy [0019]. The coating has a thickness of 30 μm to 800 μm [0015, 0020]. The coating further has a ceramic top coat (4) of zirconium oxide stabilized with yttrium oxide [0021].
The only deficiency of Li is that Li disclose the use of 15% Cr, while the present claims require 15.5% Cr.
It is apparent, however, that the instantly claimed amount of Cr and that taught by Li are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of Cr disclosed by Li and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of Cr, it therefore would have been obvious to one of ordinary skill in the art that the amount of Cr disclosed in the present claims is but an obvious variant of the amounts disclosed in Li, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Additionally, regarding the ranges of Co and Cr, Stamm teaches a Ni based protective alloy used to protect a component against corrosion and/or oxidation, in particular at high temperatures [Abstract, 0001]. The alloy comprises 22-26 wt% Co and 15-16 wt% Cr [Claim 17, 0019-0023, 0032-0036].
Stamm teaches these ranges of Co and Cr are advantageous to the alloy [0032-0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have utilized the Co and Cr in the ranges taught Stamm in the alloy of Li. One would have been motivated to do so as by the advantageous properties afforded by the elements in the ranges.
Claim 9
Li
Stamm
wt%
wt%
wt%
cobalt
25.5
15-39
22-26
chromium
15.5
10-15
15-16
aluminum
12.1
5-15
10.5-12
yttrium
0.4
0.05-1.0
0.2-0.6
iron
4.5
0.5-10
tantalum
0.7
0-2.0
0.1-3
molybdenum
0.5
0.05-2.0
silicon
0.5
0-4.0
0.05-0.4
sulfur
≤ 10 ppm
≤ 8.00E-06
ruthenium
0
0
0
rhenium
0
0
0
Ni
Remainder
remainder
remainder
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20160168667 A1) in view of Stamm (US 20140220384 A1).
In regards to claim 8, Li teaches a protective coating (3) comprising a nickel based alloy comprising 15 to 39 wt.-% Co, 10 to 25 wt.-% Cr, 5 to 15 wt.-% AI, 0.05 to 1 wt.-% Y, 0.5 to 10 wt.-% Fe, 0.05 to 2 wt % Mo, 0 to 4 wt % Si, 0 to 2 wt % Ta the remainder Ni and impurities [Abstract, 0020, claims 1-4 and 6, Fig]. The fraction of sulfur in the protective coating/alloy is less than or equal to 8*10−6 wt % [0013, claim 6]. These ranges overlap the claimed ranges expect for Cr. No Ru or Re are required in the alloy/coating [claim 1]. As no additional elements are required the alloy, the composition meets the consisting of claim language.
The only deficiency of Li is that Li disclose the use of 15% Cr, while the present claims require 15.5% Cr.
It is apparent, however, that the instantly claimed amount of Cr and that taught by Li are so close to each other that the fact pattern is similar to the one in In re Woodruff , 919 F.2d 1575, USPQ2d 1934 (Fed. Cir. 1990) or Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed.Cir. 1985) where despite a “slight” difference in the ranges the court held that such a difference did not “render the claims patentable” or, alternatively, that “a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough so that one skilled in the art would have expected them to have the same properties”.
In light of the case law cited above and given that there is only a “slight” difference between the amount of Cr disclosed by Li and the amount disclosed in the present claims and further given the fact that no criticality is disclosed in the present invention with respect to the amount of Cr, it therefore would have been obvious to one of ordinary skill in the art that the amount of Cr disclosed in the present claims is but an obvious variant of the amounts disclosed in Li, and thereby one of ordinary skill in the art would have arrived at the claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “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).
Additionally, regarding the ranges of Co and Cr, Stamm teaches a Ni based protective alloy used to protect a component against corrosion and/or oxidation, in particular at high temperatures [Abstract, 0001]. The alloy comprises 22-26 wt% Co and 15-16 wt% Cr [Claim 17, 0019-0023, 0032-0036].
Stamm teaches these ranges of Co and Cr are advantageous to the alloy [0032-0036].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have utilized the Co and Cr in the ranges taught Stamm in the alloy of Li. One would have been motivated to do so as by the advantageous properties afforded by the elements in the ranges.
Claim 9
Li
Stamm
wt%
wt%
wt%
cobalt
25.5
15-39
22-26
chromium
15.5
10-15
15-16
aluminum
12.1
5-15
10.5-12
yttrium
0.4
0.05-1.0
0.2-0.6
iron
4.5
0.5-10
tantalum
0.7
0-2.0
0.1-3
molybdenum
0.5
0.05-2.0
silicon
0.5
0-4.0
0.05-0.4
sulfur
≤ 10 ppm
≤ 8.00E-06
ruthenium
0
0
0
rhenium
0
0
0
Ni
Remainder
remainder
remainder
Claims 2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Li (US 20160168667 A1) in view of Stamm (US 20140220384 A1), as applied to claim 1 above, and further in view of Kudo et al. (US 20210123124 A1).
In regards to claims 2 and 6, Li teaches the coating is applied via thermal spray but does not expressly teach that the alloy is a powder [0020, claim 11]. The coating has a thickness of 30 μm to 800 μm [0015, 0020].
Kudo teaches a MCrAlY alloy and powder [Abstract, 0058].
Kudo teaches the powder is used as a thermal spray material for forming bond coatings [0058].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have formed the alloy of Li into a powder as taught by Kudo. One would have been motivated to do so as Kudo teaches that powder form is a conventionally known form of bond alloys used in thermal spray application and thus one would have had a reasonable expectation of success of both forming and using the alloy as a powder.
It is noted the term optionally renders the limitation that follows optional and thus the limitation is not necessary to meet the claim limitations.
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 ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784