DETAILED ACTION
Response to Amendment
In view of the amendments to claim 1, the 35 U.S.C. 102 rejections of the claims have been withdrawn.
In view of the amendments to claim 1, the 35 U.S.C. 103 rejections of the claims under U.S. Patent Application Publication Number 2020/0087754 (Hibino) have been withdrawn.
In view of the amendments to claim 1, the 35 U.S.C. 103 rejections under GB 2,153,845 have been modified. These changes were necessitated by these amendments.
In view of the amendments to claim 1, new prior art rejections are set forth below. These changes were necessitated by these amendments.
In view of the amendments of claims 2 and 7, the 35 U.S.C. 112 rejections of these claims have been withdrawn.
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 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Number 4,108,647 (US ‘647).
In regards to independent claim 1, Shaw is directed to improved high temperature properties nickel-base alloys by further correlation of the percentages of chromium, carbon, and boron in the alloy. (Abstract) Shaw sets forth alloy compositions in Tables I and III, reproduced below. For example, Alloy 2, Alloy 13, and Alloy 16 fall within the claimed compositional ranges.
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351
656
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391
656
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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 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over GB 2,153,845 (Shaw).
In regards to independent claim 1 and dependent claims 2-4 and 9, Shaw is directed to a nickel-chromium or nickel-cobalt-chromium base superalloy. (Abstract)
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The compositional ranges set forth in Table I overlap the claimed composition. Therefore, a prima facie case of obviousness is established.
As to claims 5-8, these elements are not required elements within the composition of Shaw. A zero value would fall within the claimed ranges.
As to claim 10, Shaw teaches that the powder has a particle size of less than 150 microns. (Lines57-60) This range overlaps the claimed range. Therefore, a prima facie case of obviousness is established.
Claims 1, 5-9 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 4,108,647 (US ‘647).
In regards to independent claim 1 and dependent claim 9, U.S. ‘647 is directed to improved high temperature properties nickel-base alloys by further correlation of the percentages of chromium, carbon, and boron in the alloy. (Abstract)
The alloys have, by weight, about 5 to 25% cobalt, up to 3.5% molybdenum, up to 5% tungsten, the tungsten and molybdenum being correlated such that the %W + 0.5 (%Mo) is from 0.5 to 5, about 1.7 to 5% titanium and about 1 to 4% aluminum, the sum of the titanium and aluminum being about 4 to 6.5% with the ratio therebetween being from 0.75:1 to 4:1, from 0.5 to 3% tantalum, up to 3% niobium, 0.005 to 1% zirconium and up to 2% hafnium, the value of %Zr + 0.5 (%Hf) being from 0.01 to 1, up to about 0.2% in total of yttrium and/or lanthanum, and having chromium, carbon, and boron, the balance being essentially nickel in an amount of at least 30%, the improvement that the chromium content is at least 22 to 25% and the carbon and boron contents are such that when the carbon content is less than 0.02 down to 0.001% the boron content is in the range of from 0.001 to 1% and when the carbon content is in the range of from 0.02 to 0.25% the boron content is greater than 0.05 up to 1%. (1:42-62)
As to claims 5-8, these elements are not required elements within the composition of US ‘647. A zero value would fall within the claimed ranges.
Response to Arguments
Applicant's arguments filed 2 July 2026 have been fully considered but they are not persuasive.
Applicant presented arguments directed to the 35 U.S.C. 102 rejection under Engeli, Zhou and Hu. As set forth above, these rejections have been withdrawn. Therefore, these arguments are rendered moot.
Applicant presented arguments directed to the 35 U.S.C. 103 rejections under Hibino. As set forth above, these rejections have been withdrawn. Therefore, these arguments are rendered moot.
Applicant argues that the Office Action relies on a broad genus-level boron ranges in Shaw and Hibino and asserts that it does not establish that a person of ordinary skill would have selected a claimed narrow subrange.
This arguments is not found to be persuasive.
In the case where the claimed ranges overlap or lie inside ranges disclosed by the prior art, a prima facie case of obviousness exists. MPEP 2144.05,I. Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Id. A prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness. Id.
Applicant is correct that if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. MPEP 2144.05,I. However, this is not the situation in the present rejection.
The instant claim 1 has been amended to set forth a range of 0.07 to 0.08 wt. % B. Shaw sets forth a broad range of 0 to 1% and a preferred range of 0 to 0.85%. The ranges of Shaw are also not quite broad. They correspond to ranges spanning only 1% and 0.85%. The range of Shaw not only completely encompasses the claimed range, but the claimed range constitutes 1% of the broad range of Shaw and 1.2% of the preferred range of Shaw. Therefore, it is inappropriate to construe this as a situation with millions of compounds that does not render obvious a claim to three compounds.
Applicant asserts that Shaw does not identify, exemplify, or prefer the presently claimed range of boron. Applicant points to actual examples in Shaw having only about 0.015 to 0.025 wt. % B. Therefore, Applicant asserts that the cited references do not direct a person of ordinary skill toward the claimed high-boron subrange.
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
In the instant case, Shaw does not criticize, discredit, or otherwise discourage the use of boron within the broader range. Clearly Shaw sets forth broad and preferred ranges that encompass the claimed boron range. There is no indication that Shaw is criticizing, discrediting, or discouraging the use of boron within the explicit broad and preferred ranges. The mere presence of these embodiments does not constitute a teaching away from the broader disclosure.
Applicant asserts that the application demonstrates that the claimed boron range is not an arbitrary selection and that it is useful for suppressing micro-crack formation.
This argument is not found to be persuasive.
To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d).
In the present situation, Applicant points to a single example within the claimed range and a single example outside of the claimed range. This is an insufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range.
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 Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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, 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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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/ Primary Examiner, Art Unit 1784
Prosecution Insights