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
Claims 1 and 3 have been amended; Claims 3-18 have been withdrawn as non-elected claims; Claims 1-2 remain for Examination, wherein Claim 1 is an independent claim.
Previous Rejections/Objections
Previous rejection of Claims 1-2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as failing to set forth 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or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the applicant regards as the invention is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/26/2026.
Previous rejection of Claims 1-2 under 35 U.S.C. 103(a) 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 Zhang et al (CN 104674320 A, listed in IDS filed on 2/23/2023, thereafter CN’320) 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and bioactivity, Journal of Materials Science: Materials in medicine 13 (2002) pp.457-464, thereafter NPL-1) is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/26/2026.
However, in view of the Applicant’s “Arguments/Remarks with amendment” filed on 1/26/2026, newly recorded reference(s), and reconsideration, a new ground rejection has listed as following:
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 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 claim 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. 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).
Response to Arguments
Applicant’s arguments to the art rejection to Claims 1-2 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.
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 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 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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