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 .
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-22 of U.S. Patent No. 11,634,792, claims 1-20 are rejected over claims 1-19 of U.S. Patent No. 12,258,655, and claims 1-20 are rejected over claims 1-19 of U.S. Patent No. 12,319,985. Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping compositions as outlined in the table below:
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/406746 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because of overlapping compositions as outlined in the table below:
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Component
Instant (wt.%)
'792 Patent (wt.%)
'655 Patent (wt.%)
'985 Patent (wt.%)
'746 App (wt.%)
Al
1.0-3.5
1.0-3.5
1.0-3.5
1.5-4.5
1.0-3.5
Ti
0.0-3.6
0.0-3.6
0.0-<3.0
1.1-3.4
0.0-3.6
Nb
0.0-6.0
0.0-6.0
0.0-6.0
0.0-4.0
0.0-6.0
Ta
0.0-4.9
0.0-4.9
0.0-4.9
0.0-5.2
0.0-4.9
W
0.0-5.4
0.0-5.4
0.0-5.4
0.9-6.6
0.0-5.4
Mo
0.0-4.0
0.0-4.0
0.0-4.0
0.0-2.9
0.0-4.0
Co
8.9-30.0
8.9-30.0
8.9-30.0
0.0-24.0
8.9-30.0
Cr
10.8-20.6
10.8-20.6
15.0-20.6
16.0-17.3
10.8-20.6
C
0.02-0.35
0.02-0.35
0.02-0.35
0.02-0.15
0.02-0.35
B
0.001-0.2
0.001-0.2
0.001-0.2
0.001-0.015
0.001-0.2
Zr
0.001-0.01
0.001-0.01
0.001-0.5
0.0-0.1
0.001-0.5
Re
0.0-5.0
0.0-5.0
0.0-5.0
0.0-3.0
0.0-5.0
Ru
0.0-8.5
0.0-8.5
0.0-8.5
0.0-2.0
0.0-8.5
Ir
0.0-4.6
0.0-4.6
0.0-4.6
0.0-3.0
0.0-4.6
V
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
Pd
0.0-1.0
0.0-1.0
0.0-1.0
0.0-1.0
0.0-1.0
Pt
0.0-1.0
0.0-1.0
0.0-1.0
0.0-1.0
0.0-1.0
Si
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
Y
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
La
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
Ce
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
0.0-0.1
S
0.0-0.003
0.0-0.003
0.0-0.003
0.0-0.003
0.0-0.003
Mn
0.0-0.25
0.0-0.25
0.0-0.25
0.0-0.25
0.0-0.25
Fe
0.0-6.0
0.0-6.0
0.0-6.0
0.0-5.0
0.0-6.0
Cu
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
0.0-0.5
Hf
0.0-0.5
0.0-0.5
0.0-0.5
0.0-1.0
0.0-0.5
Ni
Balance
Balance
Balance
Balance
Balance
The instant claims and those of US 11,634,792, US 12,258,655, US 12,319,985, and application 19/406746 recite overlapping ranges and the courts have held that where ranges overlap or lie inside a prima facie case of obviousness exists. See MPEP 2144.05.
In addition to the overlapping compositions as outlined above, instant claim 11 recites a γ’ content expected to be present in the compositions of the ‘792 patent, the ‘655 patent, the ‘985 patent, and the ‘746 application as a material and its properties are inseparable, absent an objective showing.
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.
Claims 3, 7, and 16-20 are rejected under 35 U.S.C. 112(b) 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 3 and 20 recite a sum of Mo and W being up to 10.8% and this renders the claims indefinite as the upper bound of Mo is 4.0 wt.% and W is 5.4 wt.% for a total upper limit of 9.4 wt.%. It is unclear how the total of Mo and W can exceed 9.4 wt.% and therefore the scope of the claim is unclear. This may be overcome by amending the sum of Mo and W to an upper limit of 9.4 wt.%.
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 7 recites the broad recitation a Cr content of 15.0% or more where “or more” is an unbounded upper limit, and the claim also recites a Cr content of 10.8-20.6% which is the narrower statement of the range/limitation. Similar language is in claims 16-20 regarding the content of Ta, Nb, Ti, W, and Cr. 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. This rejection may be overcome by amending the claimed Ta, Nb, Ti, W, and Cr contents to the upper limits set forth in claim 1 (e.g. claim 7 may be amended to 15.0 wt.% or more and 20.6 wt.% or less).
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 1-6 and 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Snider (GB2252563).
Considering claim 1, Snider teaches a nickel-based alloy for gas turbines (abstract). The composition of the alloy is set forth in the table below (p.4 last paragraph - p.5 continuing paragraph).
Component
Instant (wt.%)
Snider (wt.%)
Al
1.0-3.5
0.5-1.5
Ti
0.0-3.6
2.0-3.5
Nb
0.0-6.0
3.5-6.0
Ta
0.0-4.9
1.0-2.0
W
0.0-5.4
1.0-3.0
Mo
0.0-4.0
3.0-6.0
Co
8.9-30.0
8.0-12
Cr
10.8-20.6
14-18
C
0.02-0.35
0.02-0.15
B
0.001-0.2
0.002-0.05
Zr
0.001-0.01
0.01-0.1
Ni
Balance
Balance
While not expressly teaching a singular example of the instantly claimed alloy, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Snider as Snider teaches a Ni alloy with composition overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05. Further, Snider teaches a W content of 1.0-3.0 wt.% and a Mo content of 3.0-6.0 wt.% and total amount W+Mo ranges from 1.0-9.0 wt.% overlapping the first claimed expression. Snider also teaches an Al content of 0.5-1.5%, a Ti content of 2.0-3.5%, a Nb content of 3.5-6.0%, and a Ta content of 1.0-2.0% and this encompasses an Al content of 1.0, a Ti content of 2.0, a Nb content of 3.5 wt.%, and a Ta content of 1.0% this corresponds to [1.0Al+0.5(2.0Ti)+1.5(0.3(3.5Nb)+0.15(1.0Ta))] = 3.8 overlapping the second claimed expression.
Considering claim 2, Snider teaches in the above table an Al content of 0.5-1.5%, a Ti content of 2.0-3.5%, a Nb content of 3.5-6.0%, and a Ta content of 1.0-2.0% and this encompasses [0.5(2.0Ti)+(0.3(3.5Nb)+0.15(1.0Ta)]/1.5Al = ~1.46 falling with the instantly claimed expression. See MPEP 2144.05.
Considering claim 3, Snider teaches in the above table a W content of 1.0-3.0 wt.% and a Mo content of 3.0-6.0 wt.% and total amount W+Mo ranging from 1.0-9.0 wt.% overlapping the claimed range. See MPEP 2144.05.
Considering claim 4, Snider teaches in the table above an Al 0.5-1.5 wt.%. See MPEP 2144.05.
Considering claim 5, Snider teaches in the above table a W content of 1.0-3.0 wt.%. See MPEP 2144.05.
Considering claim 6, Snider teaches in the above table a Mo content of 3.0-6.0 wt.%. See MPEP 2144.05.
Considering claim 10, Snider teaches in the above table a Nb content of 3.5-6.0%. See MPEP 2144.05.
Considering claim 11, Snider teaches a γ’ volume fraction of 25-40% (abstract; Claim 4). See MPEP 2144.05.
Considering claim 12, Snider is silent regarding the presence of Rh, Ru, and Ir and teaches a W content of 1.0-3.0 wt.% in the above table. See MPEP 2144.05.
Considering claim 13, Snider is silent regarding the presence of Rh, Ru, and Ir and these are considered to be absent (i.e. ~zero percent).
Considering claim 14, Snider teaches an Al content of 0.5-1.5%, a Ti content of 2.0-3.5%, a Nb content of 3.5-6.0%, and a Ta content of 1.0-2.0% and this encompasses an Al content of 1.0,% a Ti content of 2.0%, a Nb content of 3.5 wt.%, and a Ta content of 1.0% this corresponds to [1.0Al+0.5(2.0Ti)+0.3(3.5Nb)+0.15(1.0Ta)] = 3.2 overlapping the claimed expression. See MPEP 2144.05.
Considering claim 15, Snider teaches in the above table a Mo content of 3.0-6.0 wt.%. See MPEP 2144.05.
Considering claim 16, Snider teaches in the above table a Ta content of 1.0-2.0 wt.%. See MPEP 2144.05.
Considering claim 17, Snider teaches in the above table a Nb content of 3.5-6.0 wt.%. See MPEP 2144.05.
Considering claim 18, Snider teaches in the above table a Ti content of 2.0-3.05 wt%. See MPEP 2144.05.
Considering claim 19, Snider teaches in the above table a W content of 1.0-3.0 wt.%. See MPEP 2144.05.
Considering claim 20, Snider teaches in the above table Snider a Cr content of 14-18 wt.% and a total amount W+Mo ranging from 1.0-9.0 wt.% overlapping the claimed range. See MPEP 2144.05.
Claims 1-10 and 12-20 are rejected under 35 U.S.C. 103 as being unpatentable over Erickson (US 5,476,555).
Considering claim 1, Erickson teaches nickel-cobalt based alloys (abstract) having increased thermal stability and microstructural stability at elevated temperatures (Column 1 lines 12-15) including the composition outlined in the table below (Column 4 lines 11-28).
Component
Instant (wt.%)
Erickson (wt.%)
Al
1.0-3.5
0-5
Ti
0.0-3.6
0-5
Nb
0.0-6.0
0-2.5
Ta
0.0-4.9
0-6
W
0.0-5.4
0-6
Mo
0.0-4.0
0-6
Co
8.9-30.0
20-35
Cr
10.8-20.6
12-19
C
0.02-0.35
0.002-0.07
B
0.001-0.2
0-0.04
Zr
0.001-0.01
0-0.06
Ni
Balance
Balance
V
0.0-0.5
0-2.5
While not expressly teaching a singular example of the instantly claimed alloy, this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Erickson as Erickson teaches a Ni alloy with composition overlapping that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05. Further, Erickson teaches a W content of 0-6 wt.% and a Mo content of 0-6 wt.% and total amount W+Mo ranges from 0-12 wt.% overlapping the first claimed expression. Erickson also teaches an Al content of 0-5%, a Ti content of 0-5%, a Nb content of 0-2.5%, and a Ta content of 0-6% and these ranges fall within and overlap the second claimed expression.
Considering claim 2, Erickson teaches an Al content of 0-5%, a Ti content of 0-5%, a Nb content of 0-2.5%, and a Ta content of 0-6% as outlined in the table above and these ranges fall within and overlap the claimed expression. See MPEP 2144.05.
Considering claim 3, Erickson teaches a W content of 0-6 wt.% and a Mo content of 0-6 wt.% and total amount W+Mo ranges from 0-12 wt.% as outlined in the table above.
Considering claim 4, Erickson teaches an Al content of 0-5 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 5, Erickson teaches a W content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 6, Erickson teaches a Mo content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 7, Erickson teaches Ti content 0-5 wt.% and a Cr content of 12-19% as outlined in the table above. See MPEP 2144.05.
Considering claim 8, Erickson teaches a Co content of 20-35 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 9, Erickson teaches a Zr content of 0-0.6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 10, Erickson teaches a Nb content of 0-2.5 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 12, Erickson teaches a W content of 0-6 wt.% and is silent regarding the presence of Rh, Ru, and Ir.
Considering claim 13, Erickson is silent regarding the presence of Rh, Ru, and Ir and is considered absent these materials (e.g. ~zero).
Considering claim 14¸ Erickson teaches an Al content of 0-5%, a Ti content of 0-5%, a Nb content of 0-2.5%, and a Ta content of 0-6% as outlined in the table above and these ranges fall within and overlap the claimed expression. See MPEP 2144.05.
Considering claim 15, Erickson teaches a Mo content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 16, Erickson teaches a Ta content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 17, Erickson teaches a Nb content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 18, Erickson teaches a Ti content of 0-5 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 19, Erickson teaches a W content of 0-6 wt.% as outlined in the table above. See MPEP 2144.05.
Considering claim 20, Erickson teaches a Cr content of 12-19%, a W content of 0-6 wt.%, and a Mo content of 0-6 wt.% as outlined in the table above where a total amount W+Mo ranges from 0-12 wt.%. See MPEP 2144.05.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/ Primary Examiner, Art Unit 1784