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 Status
A preliminary amendment, filed 7/8/2024, is acknowledged. Claims 2-5 are canceled; claim 6 is added. No new matter is present. Claims 1 and 6 are currently pending.
Drawings
The drawings are objected to because there is a single figure incorrectly labeled as “Fig. 1” rather than, for example, “Figure.” Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation “FIG.” must not appear. 37 CFR 1.84(u)(1).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). 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 Rejections - 35 USC § 103
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.
Claim(s) 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Li et al. (CN108396223A)(machine translation provided).
With respect to Claim 1, Li teaches a steel composition comprising Ni and Cr (thus, a Ni-Cr-Fe alloy) with a composition, in mass%, as follows (pgs. 1-2 of translation):
Claim 1
Li
C
0.002-0.030
≤ 0.025
Si
0.05-0.50
≤ 0.6
Mn
0.10-1.50
1.5-7.0
P
≤ 0.050
≤ 0.025
S
≤ 0.0200
≤ 0.005
Ni
29.0-40.0
20.0-38.0
Cr
24.00-30.00
22.0-35.0
Mo
5.0-7.5
5.5-8.0
N
0.20-0.40
0.35-0.75
Al
≤ 0.50
-
Ca
0.0002-0.0040
0.01-0.06
B
0.0001-0.005
0.0005-0.012
Cu
0-0.40
0.25-1.20
W
0-1.00
≤ 3.0
Sn
0-0.50
-
Co
0-0.50
-
V
0-0.50
0.05-0.20*
Nb
0-0.50
0.05-0.20*
Ti
0-0.50
0.05-0.20*
Zr
0-0.200
-
Hf
0-0.200
-
Ta
0-0.50
-
Rare earth metal
0-0.0030
0.005-0.12
Fe
Balance with impurities
Balance with inevitable impurities
*one or more
Compositional ranges including zero are interpreted as optional elements. Therefore, Li teaches an alloy with compositional ranges overlapping each of the instantly required ranges and not comprising any additional elements outside those claimed using the closed transitional phrase “consisting of.” It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
In addition, regarding the composition-based “Formula (1)” of claim 1, the instantly claimed formula fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the Ni-Cr-Fe alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 6, Li teaches wherein the alloy may comprise contents of one or more of Cu, W, V, Nb, Ti and rare earth metals overlapping the instantly claimed ranges. (see rejection of claim 1 above).
Claim(s) 1 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Mizoguchi et al. (JP2013199661A)(machine translation provided).
With respect to Claim 1, Mizoguchi teaches a steel composition comprising Ni and Cr (thus, a Ni-Cr-Fe alloy) with a composition, in mass%, as follows (pgs. 1, 3-4 of translation):
Claim 1
Mizoguchi
C
0.002-0.030
0.001-0.030
Si
0.05-0.50
0.10-0.70
Mn
0.10-1.50
0.10-1.00
P
≤ 0.050
≤ 0.045
S
≤ 0.0200
≤ 0.003
Ni
29.0-40.0
18.0-40.0
Cr
24.00-30.00
20.0-30.0
Mo
5.0-7.5
3.0-8.0
N
0.20-0.40
0.05-0.30
Al
≤ 0.50
≤ 0.13
Ca
0.0002-0.0040
3 x S to 0.20 total**
B
0.0001-0.005
0.0005-0.020
Cu
0-0.40
0.05-2.0
W
0-1.00
-
Sn
0-0.50
-
Co
0-0.50
-
V
0-0.50
-
Nb
0-0.50
-
Ti
0-0.50
-
Zr
0-0.200
3 x S to 0.20 total**
Hf
0-0.200
-
Ta
0-0.50
-
Rare earth metal
0-0.0030
10 x S content to 0.20
Fe
Balance with impurities
Balance
** total of Ca, Mg, Zr
Compositional ranges including zero are interpreted as optional elements. Therefore, Mizoguchi teaches an alloy with compositional ranges overlapping each of the instantly required ranges and not comprising any additional elements outside those claimed using the closed transitional phrase “consisting of.” Specifically, the reference teaches the optional addition of a combined total content of Ca, Mg and Zr (noting that Mg is not a claimed element) where the lower limit is based on the sulfur content of the alloy. As Mizoguchi does not teach a lower limit of sulfur, the lower limit of Ca, Mg, and Zr is interpreted as zero and any incidental content of S, and thereby Mg, is deemed to fall within an impurity level. Accordingly, the reference does not require a content of an element outside those claimed.
It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
In addition, regarding the composition-based “Formula (1)” of claim 1, the instantly claimed formula fully depends on the composition of the alloy. It is well settled that there is no invention in the discovery of a general formula if it covers a composition described in the prior art. In the instant case, as the Ni-Cr-Fe alloy of the prior art is capable of falling within the boundaries of the instantly claimed composition formulas, it would have been obvious to one of ordinary skill in the art to have selected any portion of the disclosed ranges which fall within the boundaries of the instantly claimed composition-based formulas because the reference discloses utility throughout the disclosed ranges. See also MPEP § 2144.05.
With respect to Claim 6, Mizoguchi teaches wherein the alloy may comprise contents of one or more of Cu, Zr, and rare earth metals overlapping the instantly claimed ranges. (see rejection of claim 1 above).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2001/0012491, drawn to an alloy overlapping most but not all of the instantly claimed ranges. US 2025/0327154, drawn to a related alloy having a substantially similar composition but requiring a rare earth metal content outside the instantly claimed ranges.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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