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 .
DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/27/2026 has been entered.
Status of claims
Claims 1 and 3 have been amended; Claims 19-21 are added as new claims; Claims 3-18 are withdrawn from consideration as non-elected claims, Claims 1-2 and 19-21 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
In view of the Applicant’s amendment filed on 5/27/2026, newly cited prior art(s), and reconsideration, a new ground rejection has been listed as following.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 20 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. In the instant case, 1) the limitation of “a thickness of the surface oxide film is 9 mm or more”, which is contrary to the surface film as claimed in the instant claim; 2) proper up limit should be added to the range of the thickness of the oxide film. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements. Since claim 20 needs further clarification/amendment, this claim is not included in the following examination.
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.
Claim(s) 1-2, 19, and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Takahashi et al (US-PG-pub 2003/0178112 A1, listed in IDS filed on 2/23/2023, updated as US 7,594,973 B2, thereafter PG’112) in view of Valls (CA 3003619 A1, thereafter CA’619) alone or further in view of Feng et al ( NPL: Characterization of surface oxide films on titanium and bioactivity, Journal of Materials Science: Materials in medicine 13 (2002) pp.457-464, thereafter NPL-1).
Regarding claim 1, PG’112 teaches a Ti materials with oxide film on the surface (Abstract, claims, and Fig.3 of PG’112). PG’112 teaches that the surface oxide film containing not more than 7 at percent fluorine and not more than 20 at percent carbon (par.[0012]-[0015], [0034], Fig.3, and claim 4 of PG’112), which overlaps the claimed C and F ranges as claimed in the instant claim. Overlapping in composition ranges creates a prima facie case of obviousness. MEPE 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the alloy composition ranges of C and F in the surface oxide film from the disclosures of PG’112 in order to obtain the desired surface properties (par.[0012]-[0015] and [0034] of PG’112). PG’112 does not specify the surface composition of the Ti material including Zn and Ca as claimed in the instant claim. CA’619 teaches a metallic parts with high flexibility in the geometry attainable (Abstract of CA’619). CA’619 specify Ti based alloy with 0-5 wt% Ca and 0-10 wt% Zn(claim 12 and Page 46, 2nd paragraph of CA’619), which overlaps the claimed Ca and Zn amounts in the Ti material. MPEP 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply the Ti based material with the claimed Ca and Zn amounts as demonstrated by CA’619 including the surface of Ti material of PG’112 in order to obtain desired properties (Abstract, Examples, and claims of CA’619).
Still regarding claim 1, PG’112 in view of CA’619 does not specify XPS analysis as claimed in the instant claim. However, XPS analysis is recognized as a measurement method in a product claim. The product, Ti material, is manipulated by the Ti material itself. Therefore, the measurement method in the instant claim do not add weight on the patentability of the instant claims. MPEP 2113 [R-1]. In alternate, Applying XPS technique for surface analysis of Ti material, is a well-known technique as demonstrated by NPL-1. NPL-1 teaches a Ti implant with surface oxide film (Abstract and section 2, Material and method of NPL-1). NPL-1 teaches applying XPS for the surface characterization (Abstract and section 2, Material and method of NPL-1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply XPS for the surface analysis as demonstrated by NPL-1 on the surface of Ti material of PG’112 in view of CA’619 in order to obtain the features of the surface of the Ti based material (Abstract and section 2, Material and method of NPL-1).
Regarding claims 2, PG’112 teaches that the surface oxide film containing not more than 170 angstrom in thickness (par.[0014]-[0015] and [0041] of PG’112), which overlaps the claimed thickness range of 5-20 nm as claimed in the instant claim 2. Overlapping in composition ranges creates a prima facie case of obviousness. MEPE 2144 05 I. Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to optimize the thickness of the surface oxide film from the disclosures of PG’112 in order to obtain the desired surface properties (par.[0012]-[0015] and [0034] of PG’112).
Regarding claim 19, NPL-1 teaches applying XPS for the surface characterization (Abstract and section 2, Material and method of NPL-1). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to apply XPS for the surface analysis as demonstrated by NPL-1 on the surface of Ti material of PG’112 in view of CA’619 in order to obtain the features of the surface of the Ti based material (Abstract and section 2, Material and method of NPL-1). Since applying the same XPS for the surface characterization for the similar Ti material with the similar surface oxide film, the composition within a range of a depth of 8 nm or less from the surface would be highly expected for the Ti material as disclosed by PG’112 in view of CA’619 and NPL-1.
Regarding claim 21, PG’112 specify that the titanium materials as used here mean strips, sheets, pipes, bars, wires, and other formed products of pure titanium, typically for industrial use, and titanium alloys. (par.[0019] of PG’112), which reads on the claimed limitations in the instant claim.
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 and 19-21 have been considered but they moot in view of the new ground rejection as stated above. Regarding the arguments related to the amended features in the instant claims, the Examiner’s position has been stated as above.
The Applicant’s arguments have been summarized as following:
1, the Zn and Ca amount obtained by XPS is obtained from a chemical disposed on the surface to a depth of 8 nm or less in a state where sputtering is not carried out, which means the Ca and Zn are included in the surface oxide film. The cited prior art(s) does not specify these features.
2, Specification f the instant application has shown the criticality of the claimed Zn and Ca in term of excellent weather resistance.
In response,
Regarding the argument 1, Firstly, It is noted that PG’112 teaches that the surface oxide film containing not more than 170 angstrom in thickness (par.[0014]-[0015] and [0041] of PG’112), which overlaps the claimed oxide ranges (claim 2). Therefore, the XPS analysis for material PG’112 in view of CA’619 may including information from Ti bulk material and surface oxide.
Regarding the argument 2, the argued "excellent weather resistance" is not actually included in the instant claims. There is no any property or application limitation for the instant claims. PG'112 indicates that: "superior resistance to atmospheric corrosion, titanium materials have been used for building roofs and exterior walls exposed to severe corrosive environments in, for example, coastal areas. " (par.[0002] of PG'112).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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