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 .
Status of the Claims
Claims 1-15 are pending wherein claims 1 and 6 are amended, claims 11-15 are new and claims 5-6 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claims 1 and 4 under 35 U.S.C. 102(a)(1) as being anticipated by Jaffee et al. (US 2,892,706) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 1-3 and 7 under 35 U.S.C. 103 as being unpatentable over Wright et al. (US 2011/0268602) is withdrawn in view of the Applicant’s amendment to claim 1. The previous rejection of claims 4 and 8-10 under 35 U.S.C. 103 as being unpatentable over Wright et al. (US 2011/0268602), and further in view of Boyer (An overview of the use of titanium in the aerospace industry) is withdrawn in view of the Applicant’s amendment to claim 1.
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 15 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 regard to claim 15, claim 14 upon which claim 15 depends recites “the amount of Fe is 1.0% or more”. However, claim 15 allows for one of Fe, Cr and Ni in an amount of 1.0% to 2.5% in total. As such a scope of claim 15 would fail to limit the scope of claim 14 since the scope may be exactly the same. 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.
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.
Claims 1, 4, 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jaffee et al. (US 2,892,706).
In regard to claim 1, Jaffee et al. (‘706) discloses titanium base alloys having compositions relative to that of the instant invention as set forth below (claim 4).
Element
Instant Claim
(mass percent)
Jaffee et al. (‘706)
(weight percent)
Overlap
Al
4 – 9
0.5 – 8
4 – 8
Cr + Ni
0.5 – 2.5
1 – 25
1 – 2.5
C
0 – 0.1
0
0
N
0 – 0.1
0
0
H
0 – 0.1
0
0
O
0 – 0.5
0
0
Ti
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen, and oxygen disclosed in Jaffee et al. (‘706) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen and oxygen from the amounts disclosed by Jaffee et al. (‘706) because Jaffee et al. (‘706) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the titanium alloy member includes a hard part having a Vickers hardness of 350 HV or greater” in claim 1, Jaffee et al. (‘706) discloses a titanium base alloy sheet (member) that would be used for a wing or a fuselage with hardnesses of 350 or above (Table I). Since Jaffee et al. (‘706) discloses the sheet would have this hardness, any part of the sheet would also have the hardness and would therefore read on the claim. Additionally, since Jaffee et al. (‘706) discloses a substantially similar composition, the claimed hardness would be expected. MPEP 2112.01 I.
With respect to the recitations “consisting of” in claim 1, Jaffee et al. (‘706) discloses a titanium alloy composition (claim 4) that does not require the presence of any elements beyond that of titanium, aluminum, chromium and nickel and therefore Jaffee et al. (‘706) reads on this transitional language. MPEP 2111.03.
In regard to claim 4, Jaffee et al. (‘706) discloses a titanium base alloy sheet (column 1 and Table I). The Examiner considers a sheet to read on an ultrathin plate-shaped portion.
With respect to the recitation “wherein the hard part has a Vickers hardness of 360 Hv or greater” in claim 11, Jaffee et al. (‘706) discloses a substantially similar composition as set forth above. Therefore, the claimed hardness would be expected. MPEP 2112.01 I.
In regard to claim 13, Jaffee et al. (‘706) discloses 0.5 to 8 weight percent aluminum, which overlaps the range of the instant invention (claim 4). MPEP 2144.05 I.
Claims 1, 3-4, 9 and 12-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kunieda et al. (WO 2020/213719).
In regard to claim 1, Kunieda et al. (WO ‘719) discloses titanium base alloys having compositions relative to the instant invention as set forth below (abstract and pages 7-8 of the English Translation).
Element
Instant Claim
(mass percent)
Kunieda et al. (WO ‘719)
(mass percent)
Overlap
Al
4 – 9
0 – 7
4 – 7
Fe, Cr, Ni
0.5 – 2.5
0 – 0.5
0.5
C
0 – 0.1
0 – 0.08
0 – 0.08
N
0 – 0.1
0 – 0.1
0 – 0.1
H
0 – 0.1
0 – 0.015
0 – 0.015
O
0 – 0.5
0 – 0.7
0 – 0.5
Ti
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen, and oxygen disclosed in Kunieda et al. (WO ‘719) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen and oxygen from the amounts disclosed by Kunieda et al. (WO ‘719) because Kunieda et al. (WO ‘719) discloses the same utility throughout the disclosed ranges.
With respect to the recitation “wherein the titanium alloy member includes a hard part having a Vickers hardness of 350 HV or greater” in claim 1 and in regard to claim 3, Kunieda et al. (WO ‘719) discloses a titanium base alloy plate that would be used for making a copper foil manufacturing drum with hardnesses of 350 or less (page 8 of translation), which overlaps the claimed hardness range. Since Kunieda et al. (WO ‘719) discloses the plate would have this hardness, any part of the plate would also have the hardness since Kunieda et al. (WO ‘719) discloses the titanium would be homogenized (page 4) and would therefore read on the claim. Additionally, since Kunieda et al. (‘719) discloses a substantially similar composition, the claimed hardness would be expected. MPEP 2112.01 I.
With respect to the recitations “consisting of” in claim 1, Kunieda et al. (WO ‘719) discloses a titanium alloy composition that does not require the presence of any elements beyond that of titanium, aluminum, chromium and nickel and therefore Kunieda et al. (WO ‘719) reads on this transitional language. MPEP 2111.03.
In regard to claims 4 and 9, Kunieda et al. (WO ‘719) discloses a titanium base alloy plate that would be used for making a copper foil manufacturing drum with hardnesses of 350 or less (page 8 of translation), which overlaps the claimed hardness range. Since Kunieda et al. (WO ‘719) discloses the plate would have this hardness, any part of the plate would also have the hardness since Kunieda et al. (WO ‘719) discloses the titanium would be homogenized (page 4). Additionally, merely changing the thickness of a prior art product would not be sufficient to patently distinguish from the prior art product. MPEP 2144.04(IV)(A).
In regard to claim 12, Kunieda et al. (WO ‘719) discloses titanium base alloys having compositions relative to the instant invention as set forth below (abstract and page 7 of the English Translation).
Element
Instant Claim
(mass percent)
Kunieda et al. (WO ‘719)
(mass percent)
Overlap
Al
4 – 9
0 – 7
4 – 7
Fe, Cr, Ni
0.5 – 2.5
0 – 0.5
0.5
Element
Instant Claim
(mass percent)
Kunieda et al. (WO ‘719)
(mass percent)
Overlap
C
0.001 – 0.1
0 – 0.08
0 – 0.08
N
0.001 – 0.1
0 – 0.1
0 – 0.1
H
0001 – 0.1
0 – 0.015
0 – 0.015
O
0.01 – 0.5
0 – 0.7
0 – 0.5
Ti
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen, and oxygen disclosed in Kunieda et al. (WO ‘719) overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the invention to select the claimed amounts of aluminum, chromium, nickel, carbon, nitrogen, hydrogen and oxygen from the amounts disclosed by Kunieda et al. (WO ‘719) because Kunieda et al. (WO ‘719) discloses the same utility throughout the disclosed ranges.
In regard to claim 13, Kunieda et al. (WO ‘719) discloses 0 to 7 mass percent aluminum, which overlaps the range of the instant invention (abstract and page 7 of English Translation).
Allowable Subject Matter
Claims 2, 7-8, 10 and 14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 2, Jaffee et al. (‘706) and Kunieda et al. (WO ‘719) disclose titanium alloys as set forth above, but neither Jaffee et al. (‘706) nor Kunieda et al. (WO ‘719) specify wherein a metallographic structure of the hard part includes needle-like crystals, plate-like crystals, and a remainder in microstructure, a total amount of the plate like crystals and the remainder in microstructure in a cross section of the hard part is 10% or less and an amount of the plate-like crystals in the cross section of the hard part is 0 to 2 area percent.
In regard to claim 14, neither Jaffee et al. (‘706) and Kunieda et al. (WO ‘719) specify an amount of iron that 1% or more. Jaffee et al. (‘706) does not appear to disclose addition of iron and Kunieda et al. (WO ‘719) has a maximum content of 0.5 mass percent.
Response to Arguments
Applicant's arguments filed November 10, 2025 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that it would not be obvious for one of ordinary skill in the art to modify the titanium alloy of Jaffee et al. (‘706) to obtain a titanium alloy member as recited in Applicant’s claim 1 because if Cb is omitted from the chemical composition of Jaffee et al. (‘706), the hardness is deteriorated and Table 1 of Jaffee et al. (‘706) mentions a titanium alloy having only 4% Al and 2% Cr and the hardness of the 3rd Example (aluminum and chromium alone) is 326 Hv which is lower than the claimed range; the composition of the 4th Example has 5% Cr and 4% Al and while the hardness is higher (336Hv) it is still lower than the claimed amount and lower than the last example having 5% Cb with a 355 Hv.
In response, the Examiner notes that the Office Action points to claim 4, which is a composition having only titanium, aluminum, chromium and nickel, a composition that overlap the range of the instant invention and while Jaffee et al. (‘706) does provide different embodiments employing different amounts of elements and different elements present, there is not much comparison of an alloy having only titanium, aluminum, chromium and nickel as set forth in claim 4. Only one sample in Table 1 has only titanium, aluminum, chromium and nickel and the total amount of chromium and nickel (4.5 weight percent) is above that which is set forth in claim 1.
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759