Detailed Action1
America Invents Act Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 USC 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis 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.
Rejections under 35 USC 1032
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 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious3 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
Claims 1-5 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2017/0095711 (“Ferguson”) in view of US Patent No. 5,755,627 (“Yamazaki”), USPGPub No. 2016/0001140 (“Lo”), and USPGPub No. 2006/0287131 (“Hirano”).
Regarding claim 1, Ferguson teaches a method for manufacturing a striking face of a golf club head, the method comprising: [providing] a … titanium alloy into a pre-forged face insert (fig. 4A, paras. [0078]-[0080]); providing the pre-forged face insert into a heating apparatus (para. [0081], i.e. heating for five minutes in a conveyor belt oven); forging the heated, pre-forged face insert to form a forged face insert (figs. 4A-4C, paras. [0078]-[0081]); and attaching the forged face insert to a body of the golf club head to form the striking face of the golf club head (fig. 1, paras. [0072] & [0082]).
Ferguson fails to explicitly teach the titanium alloy being a near-beta titanium alloy, and, heating the pre-forged face insert to a temperature between 740 Celsius and 780°C. However, this would have been obvious in view of Yamazaki.
Yamazaki is also directed to forming a striking face of a golf club by forging titanium (col. 4 lines 28-35). Yamazaki teaches that the face portion of a golf club head can be made out of a beta titanium or near beta titanium (col. 3 lines 21-29, col. 4 lines 32-40, col. 7 lines 33-35 & col. 8 lines 19-26). Yamazaki teaches that both beta and near beta titanium alloys exhibit high strength and can be forged at the relatively low temperature of 750 degrees Celsius, thus saving cost (col. 3 lines 21-29).
In this case, each of Ferguson and Yamazaki are directed to forming a striking face of a golf club by forging titanium. While Ferguson is silent as to the specific titanium used, Yamazaki teaches that near beta titanium alloy exhibits high strength and can be forged at the relatively low temperature of 750 degrees Celsius, thus saving cost. Thus, it would be predictable that a near beta titanium alloy will alloy the golf club of Ferguson to function as intended, and be forged at lower temperatures than other alloys. As such, it is obvious to modify Ferguson so that the face insert is a near beta titanium alloy that is heated to 750 degrees Celsius before forging.
Ferguson fails to explicitly teach the providing step above including cutting a sheet into a shape of a face insert to form a pre-forged face insert. However, this would have been obvious in view of Lo.
Lo is also directed to forming a titanium alloy faceplate of a golf club via forging (paras. [0002], [0036] & [0038]). Lo teaches the pre-forged plate material to be cut from raw material so that the cut material has a thickness and an outline similar to that of the post-forged insert (fig. 4A, para. [0036]). Since Lo teaches laser cutting a plurality of plate materials from a raw material (¶ [0036]), one of skill in the art would reasonably infer that the raw material is a sheet/plate.
In this case, each of Ferguson and Lo teach forming a titanium alloy faceplate of a golf club via forging. While Ferguson is silent as to how the pre-forged insert is made, Lo teaches that it is predictable to form a pre-forged insert having a similar outline to the post-forged insert by laser cutting the pre-forged insert with a predetermined thickness from a sheet of larger material. Thus, it would be obvious to cut the pre-forged insert illustrated in fig. 4a of Ferguson from a sheet of raw material. One of skill in the art appreciates that this will make the manufacturing process more efficient.
Ferguson et al. fail to explicitly teach providing the insert into a heating apparatus for a duration of 6 to 10 minutes. However, this would have been obvious in view of Hirano.
Hirano is also directed to manufacturing a golf club head with a forged titanium alloy face insert (fig. 4, paras. [0001], [0052] & [0095]-[0097]). To forge the face insert, the pre-forged blank is heated to a predetermined temperature for between 3 and 30 minutes because if this heat treatment time is less than 3 minutes it is difficult to evenly and sufficiently heat up the material and the workability liable to become lower, and, if the time is more than 30 minutes unfavorable change in the crystal structure is easy to occur (para. [0098]).
In this case, Ferguson et al. teach providing the pre-forged insert in the heating apparatus for five minutes. One of skill in the art appreciates that the length of time needed to fully and evenly heat a pre-forged insert to a predetermined temperature depends on the thickness of the pre-forged insert as well as the temperature in the oven. Hirano teaches one of skill in the art that there is a sizable range for how long a pre-forged insert can be heated (wherein Hirano teaches between 3 and 30 minutes). Thus, to ensure the pre-forged insert of Ferguson et al. is fully and evenly heated to the desired temperature, it would be obvious to provide the pre-forged face insert in the heating apparatus for between 6 and 10 minutes. Based on the teachings of Hirano there would be a reasonable expectation of success of no unfavorable change in the crystal structure occurring.
Alternatively, MPEP 2144.05(II) states that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization. In this case, Hirano teaches that the heating time is a result effective variable wherein there is a minimum time period needed to sufficiently heat an insert of a specific thickness and material, and a maximum time before unfavorable changes in the material occur. In addition, there is a reasonable expectation of success to determine the time range for the specific insert of Ferguson et al. since placing inserts into a heating apparatus for different times is a relatively easy and routine experiment. Thus, it would be routine optimization to determine a range of workable/optimal times (including 6 to 10 minutes) to heat the insert of Ferguson et al. in a heating apparatus. The examiner also notes that Applicant’s originally filed disclosure does not state that a specific range from 6 to 10 minutes is critical. Applicant’s originally filed specification states a duration in the heating apparatus “may” be less than ten minutes, and gives an “example” of between 6-8 minutes. Applicant’s disclosure does not teach that a time of 6-8 minutes provides enhanced properties with respect to five minutes as taught by Ferguson. Similarly to the teachings of Hirano, Applicant’s originally filed specification merely states that the insert should be limited in the heating apparatus to prevent unfavorable changes in the material.
Regarding claim 2, Ferguson further teaches the pre-forged face insert has a thickness (T), and the forging causes a significant deformation to be formed in the forged face insert (figs. 4 & 5, para. [0086]).
However, Ferguson et al. fail to explicitly teach the significant deformation including a protrusion having a depth (D) that is at least 25% of the thickness (T) of the pre-forged face insert. This would also be obvious in view of Lo.
Lo also teaches the forging process creating a central protrusion 13 (figs. 4b & 4c, para. [0038]). Lo teaches the thickness of the pre-forged insert being between 2-9 mm and the thickness T2 of the post-forged insert can be roughly equal to the pre-forged thickness or a little greater (figs. 4A-4B, paras. [0006] & [0038], Table 2).
When viewing fig. 5a of Ferguson, assuming the recess in the top of the insert has a thickness about equal to the protrusion, the total thickness of the insert would be 4.8 mm (3.65 + 1.15; see para. [0086] of Ferguson). Lo teaches that this thickness can be created from a pre-forged insert having a thickness of around 4 mm (see Table 2). Thus, the protrusion depth of 1.15 mm would be 28.75% of the pre-forged insert thickness. Further, Ferguson teaches the final thickness of the insert being 3.65 mm (para. [0086]) and the protrusion having a depth of 1.15 mm (see para. [0086], i.e. 3.65-2.5). While Ferguson is silent as to the thickness of the pre-forged insert, Lo teaches that the pre-forged insert can have a thickness of between 3.15 and 3.65 mm (see para. [0006] and Table 2 of Lo)—which would create a protrusion depth that is between 31.5 and 36.5 % of the pre-forged thickness. Thus, it would be obvious to modify Ferguson so that the pre-forged insert has a thickness between 3.15 and 4 mm, which would result in the protrusion depth being between 28.75 and 36.5% of the pre-forged insert thickness.
Claim 3 recites the protrusion depth (D) is less than 50% of the thickness (T) of the pre-forged insert. See the rejection with respect to claim 2, above.
Claim 4 recites the duration is between 6-8 minutes. As detailed in the rejection to claim 1 above, this range is obvious in view of Hirano, or this range can be determined by finding the workable time periods via routine optimization.
Claim 5 recites the titanium alloy has a molybdenum equivalency (MoE) of about 8 to about 10. Yamazaki teaches the titanium alloy being Ti-10V-2Fe-3Al, which has an MoE of 9.5.
Regarding claim 10, as detailed in the rejections to claims 1 and 5 above, Ferguson et al. teach a method for manufacturing a striking face of a golf club head, the method comprising: cutting a titanium alloy sheet into a shape of a face insert to form a pre-forged face insert, the titanium alloy has a molybdenum equivalency (MoE) of 6 to 10; providing the … insert into a heating apparatus for a duration of less than 10 minutes; heating the … insert to a temperature between 740 Celsius (°C) and 780 C; detail forging the heated, … face insert to form a detail-forged face insert; and attaching the detail-forged face insert to a body of the golf club head to form the striking face of the golf club head.
Ferguson et al. as applied to claims 1 and 5 fail to explicitly teach a forging process before the detail forging, comprising providing the pre-forged face insert into a heating apparatus for a duration of 6 to 10 minutes; heating the pre-forged face insert to a temperature between 740 Celsius (°C) and 780 C; raw forging the heated, pre-forged face insert to form a raw-forged face insert. However, this would have been obvious in view of a separate teaching of Ferguson.
Ferguson teaches that the heating and forging steps can be repeated a plurality of times for rough and fine forging, wherein the geometries of the forging tools are slightly different from one another, with each finer mold having a closer resemblance to the final finished geometry (para. [0104]). Multiple heating and forging steps can allow for more precise and complicated geometries (para. [0104]).
Thus, in order to create a more precise final product, it would be obvious to modify the embodiment of Ferguson used in the rejection of claims 1 and 5 so that the heating and forging steps are repeated so that the first heating/forging step is a rough/raw forging step of the pre-forged insert, and, the second heating/forging step is the fine/detail forging of the rough/raw forged insert.
Claim 11 recites the titanium alloy has a molybdenum equivalency (MoE) of about 8 to about 10. Yamazaki teaches the titanium alloy being Ti-10V-2Fe-3Al, which has an MoE of 9.5.
Claims 16-17 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Ferguson in view of Yamazaki, Lo, Hirano, and USPGPub No. 2021/0316194 (“Deshmukh”).
Claim 16 recites limitations found in claims 1, 2, and 4. Ferguson in view of Yamazaki, Lo, and Hirano teach these limitations detailed in the previous rejections of claims 1, 2, and 4, above. Ferguson et al. fail to explicitly teach the golf club head has a Strength over Hardness Ratio of greater than 11.0 ksi/HRC, in combination with the limitation of claim 19 of the golf club head has a modulus of resilience (MOR) Ratio of greater than 1.25. However, this would have been obvious in view of Deshmukh.
Deshmukh is also directed to a golf club head with a striking face/insert 103 formed out of a near beta titanium alloy (¶ [0042], wherein each of Ti-17 and SP-700 are near beta titanium alloys). Deshmukh teaches that the properties of such an alloy can be combined with an alloy of the body portion of the golf club head so that the strength of over hardness ratio can be over 11 ksi/HRC, preferably over 16 ksi/HRC, and a MOR ratio is over 1.25, preferably over 1.45 (¶ [0043]-[0048]). Deshmukh teaches that the above ratios create a performance benefit (¶ [0046]).
In this case, each of Ferguson et al. and Deshmukh teach a golf club head with a striking face/insert 103 formed out of a near beta titanium alloy. Deshmukh teaches that when combining the high hardness near beta titanium alloy of the striking face with a body material having properties so that the strength of over hardness ratio is over 11 ksi/HRC, and the MOR ratio is above 1.25, advantageous benefits will occur. Thus, it would be obvious to modify Ferguson et al. so that an alloy for the body portion of the golf club head is chosen and manufactured so that the strength over hardness ratio is over 11 ksi/HRC and the MOR ratio is over 1.25. There would be a reasonable expectation of success of achieving this given the properties of the high hardness/strength near beat titanium alloy taught by Yamazaki, and the specific alloys taught by Deshmukh that can be used for the body portion.
Claim 17 recites the near-beta titanium alloy has a molybdenum equivalency (MoE) of about 8 to about 10. Yamazaki teaches the titanium alloy being Ti-10V-2Fe-3Al, which has an MoE of 9.5.
Claim 20 recites the protrusion depth (D) is less than 50% of the thickness (T) of the pre-forged insert. See the rejection of Ferguson et al. as applied to claims 2 and 3, above.
Claims 1, 6-10, and 12-15 are rejected under 35 U.S.C. 103 as being unpatentable over USPGPub No. 2021/0316194 (“Deshmukh”) in view of Yamazaki, Lo, and Hirano.
Regarding claim 1, Deshmukh teaches a method for manufacturing a striking face of a golf club head, the method comprising: [providing] a near-beta titanium alloy face insert (103) to [provide] a pre-forged face insert; and attaching the [finally formed] face insert to a body of the golf club head to form the striking face of the golf club head (fig. 1, ¶ [0040]-[0045], wherein each of Ti-17 and SP-700 are near beta titanium alloys).
Deshmukh fails to explicitly teach providing the pre-forged face insert into a heating apparatus; heating the pre-forged face insert to a temperature between 740 Celsius (°C) and 780°C; forging the heated, pre-forged face insert to form a forged face insert. However, this would have been obvious in view of Yamazaki.
Yamazaki is directed to forming a striking face of a golf club by forging titanium (col. 4 lines 28-35). Yamazaki teaches that the face portion of a golf club head can be made out of a beta titanium or near beta titanium (col. 3 lines 21-29, col. 4 lines 32-40, col. 7 lines 33-35 & col. 8 lines 19-26). Yamazaki teaches that both beta and near beta titanium alloys exhibit high strength and can be forged at the relatively low temperature of 750 degrees Celsius, thus saving cost (col. 3 lines 21-29).
The examiner also notes that as detailed in the Office action mailed on October 15, 2025, “heating apparatus” is interpreted under 112f as an oven. The examiner is taking Official Notice that it is well known in the art to heat materials in an oven/furnace.
In this case, each of Deshmukh and Yamazaki are directed to forming a titanium striking face of a golf club out of near beta titanium. Deshmukh teaches a face insert goes “through so much transformation” from a face insert in its mill annealed state to its final forming condition (¶ [0045]), but is silent as to how the insert is shaped/transformed into the final forming condition. Yamazaki teaches that near beta titanium alloy can be forged at the relatively low temperature of 750 degrees Celsius, thus saving cost. Thus, it would be predictable that forming the near-beat titanium alloy face insert via forging will allow the golf club of Deshmukh to function as intended, and be forged at lower temperatures than other titanium alloys. As such, it is obvious to modify Deshmukh so that the near beta titanium alloy face insert is finally formed by heating it to 750 degrees Celsius in an oven/furnace before forging. The examiner also notes that Lo, described below, also teaches that it is known and predictable to form striking plates/inserts via forging (¶ [0004]-[0006]).
Deshmukh fails to explicitly teach cutting the near-beta titanium pre-forged face insert from a sheet. However, this would have been obvious in view of Lo.
Lo is also directed to forming a titanium alloy faceplate of a golf club via forging (paras. [0002], [0036] & [0038]). Lo teaches the pre-forged plate material to be cut from raw material so that the cut material has a thickness and an outline similar to that of the post-forged insert (fig. 4A, para. [0036]). Since Lo teaches laser cutting a plurality of plate materials from a raw material (¶ [0036]), one of skill in the art would reasonably infer that the raw material is a sheet/plate. One of skill in the art appreciates that this will make the manufacturing process more efficient compared to individually forming each blank to be forged into the finally formed face insert.
In this case, each of Deshmukh et al. and Lo teach forming a titanium alloy faceplate of a golf club via forging. While Deshmukh et al. is silent as to how the pre-forged insert is made, Lo teaches that it is predictable to form a pre-forged insert having a similar outline to the post-forged insert by laser cutting the pre-forged insert with a predetermined thickness from a sheet of larger material. Thus, it would be obvious to cut the pre-forged insert used to form face insert 103 of Deshmukh from a sheet of raw material.
Deshmukh fails to explicitly teach providing the pre-forged face insert into a heating apparatus for a duration of 6 to 10 minutes. However, this would have been obvious in view of Hirano.
Hirano is also directed to manufacturing a golf club head with a forged titanium alloy face insert (fig. 4, paras. [0001], [0052] & [0095]-[0097]). To forge the face insert, the pre-forged blank is heated to a predetermined temperature for between 3 and 30 minutes because if this heat treatment time is less than 3 minutes it is difficult to evenly and sufficiently heat up the material and the workability liable to become lower, and, if the time is more than 30 minutes unfavorable change in the crystal structure is easy to occur (para. [0098]).
In this case, Deshmukh et al. teach providing the pre-forged insert in the heating apparatus. One of skill in the art appreciates that the length of time needed to fully and evenly heat a pre-forged insert to a predetermined temperature depends on the thickness of the pre-forged insert as well as the temperature in the oven. Hirano teaches one of skill in the art that there is a sizable range for how long a pre-forged insert can be heated (wherein Hirano teaches between 3 and 30 minutes). Thus, to ensure the pre-forged insert of Deshmukh et al. is fully and evenly heated to the desired temperature, it would be obvious to provide the pre-forged face insert in the heating apparatus for between 6 and 10 minutes.
Further, there would be a reasonable expectation of success of determining a workable heating range so that the final properties allow for the preferred strength over hardness ratio and MOR ratio as detailed in ¶ [0047] & [0048] of Deshmukh since the same alloys taught by Deshmukh are used, and the material properties for the body portion of the golf club can be altered as needed.
Alternatively, MPEP 2144.05(II) states that where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine optimization. In this case, Hirano teaches that the heating time is a result effective variable wherein there is a minimum time period needed to sufficiently heat an insert of a specific thickness and material, and a maximum time before unfavorable changes in the material occur. In addition, there is a reasonable expectation of success to determine the time range for the specific insert of Deshmukh et al. since placing inserts into a heating apparatus for different times is a relatively easy and routine experiment. Thus, it would be routine optimization to determine a range of times (including 6 to 10 minutes) to heat the insert of Deshmukh et al. in a heating apparatus. Applicant’s disclosure does not teach that a time of 6-10 minutes provides enhanced properties with respect to other durations. Similarly to the teachings of Hirano, Applicant’s originally filed specification merely states that the insert should be limited in the heating apparatus to prevent unfavorable changes in the material (however Applicant’s specification does not teach what the upper range of the duration is that would lead to unfavorable changes).
Regarding claim 6, Deshmukh further teaches the golf club head has a Strength over Hardness Ratio of greater than 6.0 ksi/HRC (¶ [0047]).
Regarding claim 7, Deshmukh further teaches the Strength over Hardness Ratio of the golf club head is greater than 11 ksi/HRC (¶ [0047]).
Regarding claim 8, Deshmukh further teaches the golf club head has a modulus of resilience (MOR) Ratio of greater than 1.25 (¶ [0048]).
Regarding claim 9, Deshmukh further teaches the MOR Ratio of the golf club head is greater than 1.35 (¶ [0048]).
Regarding claim 10, as detailed in the rejection to claim 1 above, Deshmukh et al. teach a method for manufacturing a striking face of a golf club head, the method comprising: cutting a titanium alloy sheet into a shape of a face insert to form a pre-forged face insert; providing the … insert into a heating apparatus for a duration of less than 10 minutes; heating the … insert to a temperature between 740 Celsius (°C) and 780 C; detail forging the heated, … face insert to form a detail-forged face insert; and attaching the attaching the detail-forged face insert to a body of the golf club head to form the striking face of the golf club head.
Deshmukh et al. fails to explicitly teach a forging process before the detail forging, comprising providing the pre-forged face insert into a heating apparatus for a duration of 6 to 10 minutes; heating the pre-forged face insert to a temperature between 740 Celsius (°C) and 780 C; raw forging the heated, pre-forged face insert to form a raw-forged face insert. However, this would have been obvious in view of a separate teaching of Lo.
Lo teaches that it is generally well known and conventional for the heating and forging steps to be repeated multiple times for rough and fine forging, wherein the preliminary forging step forms a rough contour and the subsequent forging step forms a precise contour (¶ [0004]-[0005]). Multiple heating and forging steps can allow for more precise geometries especially if the final plate has an uneven thickness (¶ [0004]-[0005]).
Thus, in order to create a more precise final product such as a plate with an uneven thickness (see fig. 3 & ¶ [0050]-[0051] of Deshmukh), it would be obvious to modify Deshmukh et al. so that the heating and forging steps are repeated—wherein the first heating/forging step is a rough/raw forging step of the pre-forged insert, and, the second heating/forging step is the fine/detail forging of the rough/raw forged insert.
Deshmukh fails to explicitly teach the titanium alloy has a molybdenum equivalency (MoE) of about 6 to about 10. However, this is obvious in view of Yamakazi.
Yamazaki teaches that the face portion of a golf club head can be made out of a beta titanium or near beta titanium (col. 3 lines 21-29, col. 4 lines 32-40, col. 7 lines 33-35 & col. 8 lines 19-26). Yamazaki teaches that both beta and near beta titanium alloys exhibit high strength and can be forged at the relatively low temperature of 750 degrees Celsius, thus saving cost (col. 3 lines 21-29). Yamazaki teaches the titanium alloy being Ti-10V-2Fe-3Al, which has an MoE of 9.5.
In this case, each of Deshmukh and Yamazaki teach forming a striking face of a golf club out of a near beta titanium alloy. Yamazaki teaches other near beta titanium alloys having high strength, can be forged at 750 degrees Celsius, and are suitable for a golf club (i.e. Ti-10V-2Fe-3Al). Thus, it would be obvious to substitute the near beta titanium alloy of Deshmukh with Ti-10V-2Fe-3Al. One of skill in the art would reasonably expect the properties of Ti-10V-2Fe-3Al to be similar to the near beta titanium alloys taught by Deshmukh since Ti-10-3-2 and each of the near beta titanium alloys taught by Deshmukh are high strength near beta titanium alloys.
Regarding claim 12, Deshmukh further teaches the golf club head has a Strength over Hardness Ratio of greater than 6.0 ksi/HRC (¶ [0047]).
Regarding claim 13, Deshmukh further teaches the Strength over Hardness Ratio of the golf club head is greater than 11 ksi/HRC (¶ [0047]).
Regarding claim 14, Deshmukh further teaches the golf club head has a modulus of resilience (MOR) Ratio of greater than 1.25 (¶ [0048]).
Regarding claim 15, Deshmukh further teaches the MOR Ratio of the golf club head is greater than 1.35 (¶ [0048]).
Response to Arguments
Applicant's arguments filed January 14, 2026 (“the remarks”) have been fully considered. Each of applicant’s remarks is set forth, followed by examiner’s response.
On pages 8-9 of the remarks, Applicant argues that Ferguson et al. does not render obvious the combination of the near beta titanium, heating temperature, and heating time because one of skill in the art would reduce the heating time taught by Ferguson (i.e. five minutes) since the temperature is reduced, and that one of skill in the art would understand that the heating time may need to be adjusted if a different alloy is used.
The examiner agrees that the heating time taught by Ferguson may have to be adjusted if the alloy and heating temperature are changed. However, determining workable heating times can be done via routine optimization. Further, when compared to the teachings of the prior art, there does not appear to be any obstacles overcome in determining workable heating times—nor does Applicant’s specification state that 6 to 10 minutes is critical. The range of 6-10 minutes is close to the heating time taught by Ferguson (i.e. five minutes), and as taught by Hirano one of skill in the art appreciates that there can be a sizable range of workable times before unfavorable changes to the material occur.
With respect to reducing the heating time of Ferguson, the examiner agrees that one of skill in the art may believe that the minimum time in a range of workable times may be lowered if the temperature is lowered. However, one of skill in the art would not believe that the time period within the heating device has to be lowered since as stated above there can be a sizable range of workable times. While a material can be provided in a heating apparatus for a lower time period if it is heated to a lower temperature, it is also well known to keep materials in for longer than the minimum time. As taught by Hirano, one of skill in the art would believe the maximum workable time is above ten minutes. In addition, as detailed in the rejections, it would be routine optimization to determine the maximum time for the specific alloy and heating temperature taught by Yamazaki. As stated above, Applicant’s specification does not teach that Applicant faced any obstacles in determining a heating time of between 6 to 10 minutes, or that this range provides superior results than a heating time of 5 minutes or 15 minutes (Applicant’s specification teaches the heating time “may be less than about ten minutes”, and gives “some examples” of between 6-8 minutes).
On pages 10-11 of the remarks, Applicant argues that one of skill in the art would not have a reasonable expectation of success in forging near-beta TI alloys with significant deformations since the inventors of the instant application have found that it is possible to do so.
The examiner disagrees with the argument that one of skill in the art would not have a reasonable expectation of success in forging near-beta TI alloys with significant deformations. Yamazaki, which teaches forging a near beta titanium alloy at a temperature within the claimed temperature range, teaches the forging deforming round bar 20 to form face member 11/51 (see figs. 4-5 & 10, and col. 5 lines 21-30, col. 7 lines 29-45 & col. 8 lines 19-26 of Yamazaki). The amount of deformation to go from the bar 20 to the face member 11/51 of Yamazaki appears to be much larger than the deformation taught by Applicant’s disclosure. Thus, one of skill in the art would have a reasonable expectation of success of forming the deformation of Ferguson in a near beta titanium alloy.
Conclusion
Applicant's amendment necessitated the new grounds of rejection presented in this Office action. For example, Deshmukh is used to reject dependent claims 6-9, 12-15, and 19 since the amendments to the respective independent claims made this a stronger rejection compared to the previous prior art rejections. Deshmukh is also used to reject claims 16-17 and 20 since this rejection is stronger given the amendment to claim 16 which introduces the previously unexamined combination of the strength over hardness ratio greater than 11, the significant deformation, and the heating time period of between 6-8 minutes (claim 16), and further the addition of the specific MoE range of claim 17. 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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kyle Cook whose telephone number is 571-272-2281. The examiner’s fax number is 571-273-3545. The examiner can normally be reached on Monday-Friday 9AM-5PM EST.
If attempts to reach the examiner by telephone are unsuccessful, please contact the examiner's supervisor Thomas Hong (571-272-0993). The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/KYLE A COOK/Primary Examiner, Art Unit 3726
1 The following conventions are used in this office action. All direct quotations from claims are presented in italics. All information within non-italicized parentheses and presented with claim language are from or refer to the cited prior art reference unless explicitly stated otherwise.
2 In 103 rejections, when the primary reference is followed by “et al.”, “et al.” refers to the secondary references. For example, if Jones was modified by Smith and Johnson, subsequent recitations of “Jones et al.” mean “Jones in view of Smith and Johnson”.
3 Hereafter all uses of the word “obvious” should be construed to mean “obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.”
Prosecution Insights