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Claims 1-19 are pending wherein claims 9-11 are amended, claims 12-19 are new and claims 1-8 are withdrawn from consideration.
Status of Previous Rejections
The previous rejection of claim 11 under 35 U.S.C. 112(d) as being of improper dependent from for failing to further limit the subject matter of the claim upon which it depends is withdrawn in view of the Applicant’s amendment to claim 11.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 9, 12, 14-15 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rak et al. (Porous titanium foil by tape casting techniques).
In regard to claims 9, 14-15 and 19, Rak et al. discloses a sintered titanium sheet having a thickness of 370 micrometers (0.37 mm) with a porosity of 36.2% (Table 2) and a flexural strength (bending strength) of above 400 MPa (Introduction).
In regard to claim 12, Rak et al. discloses wherein the origin of titanium is titanium powder (abstract and page 359, left column). However, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
Claims 9-10, 12-13, 15 and 17-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nakayama et al. (JP 2013-078556).
In regard to claims 9-10 and 12, Nakayama et al. (JP ‘556) discloses compressed fiber structural material measuring 0.5 mm (thickness) x 43 mm x 13 mm, obtained by methods such as hot pressing and spark plasma sintering fibrous titanium made of pure titanium, and indicates that the flexural (bending) strength was 310 MPa and porosity was 25% to 50% ([0007], [0015], [0037], [0080], and [0099]).
With respect to the recitation “derived from a titanium-containing powder” in claim 12, this would constitute a processing limitation whereas the claims are drawn to a product. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
In regard to claim 13, Nakayama et al. (JP ‘556) discloses compressed fiber structural material measuring 0.5 mm (thickness) x 43 mm x 13 mm, obtained by methods such as hot pressing and spark plasma sintering fibrous titanium made of pure titanium, and indicates that the flexural (bending) strength was 310 MPa and porosity was 25% to 50% ([0007], [0015], [0037], [0080], and [0099]). Since pure titanium would be 100% titanium and the claim requires 98% by mass or more, Nakayama et al. (JP ‘556) would read on the claim.
In regard to claims 15 and 17-18, Nakayama et al. (JP ‘556) discloses compressed fiber structural material measuring 0.5 mm (thickness) x 43 mm x 13 mm, obtained by methods such as hot pressing and spark plasma sintering fibrous titanium made of pure titanium, and indicates that the flexural (bending) strength was 310 MPa and porosity was 25% to 50% ([0007], [0015], [0037], [0080], and [0099]).
With respect to the recitation “derived from a titanium-containing powder” in claim 15, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
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 11 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Rak et al. (Porous titanium foil by tape casting techniques).
In regard to claim 11, Rak et al. discloses a sintered titanium sheet having a thickness of 370 micrometers (0.37 mm) with a porosity of 36.2% (Table 2) and a flexural strength (bending strength) of above 400 MPa (Introduction).
With respect to the recitation “and the maximum height is 1.5 mm or less” in claim 11, merely changing the dimension of a prior art product would not be sufficient to distinguish from the prior art product. MPEP 2144.04(IV)(A).
In regard to claim 16, Rak et al. discloses wherein the powders have mean particle sizes in the range of 5 to 20 micrometers, which overlaps the range of the instant invention (page 359, right column). MPEP 2144.05 I.
Claims 11, 14, 16 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Nakayama et al. (JP 2013-078556).
In regard to claim 11, Nakayama et al. (JP ‘556) discloses compressed fiber structural material measuring 0.5 mm (thickness) x 43 mm x 13 mm, obtained by methods such as hot pressing and spark plasma sintering fibrous titanium made of pure titanium, and indicates that the flexural (bending) strength was 310 MPa and porosity was 25% to 50% ([0007], [0015], [0037], [0080], and [0099]).
With respect to the recitation “and the maximum height is 1.5 mm or less” in claim 11, merely changing the dimension of a prior art product would not be sufficient to distinguish from the prior art product. MPEP 2144.04(IV)(A).
In regard to claim 16, Nakayama et al. (JP ‘556) discloses wherein the titanium would have an average grain diameter of 5 to 50 micrometers, which overlaps the range of the instant invention [0024]. MPEP 2144.05 i.
In regard to claims 14 and 19, Nakayama et al. (JP ‘556) discloses wherein the porosity was 25% to 50% ([0007], [0015], [0037], [0080], and [0099]).
Response to Arguments
Applicant's arguments filed January 12, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the bending strength of the porous titanium sheet of Rak et al. cannot be the same as pure titanium because porous titanium sheet includes pores and Rak does not disclose or suggest anything about the flexural strength of a porous titanium sheet.
In response, the Examiner notes that the titanium in Table 2 is a sintered titanium sheet and this is well know powder metallurgical route. The introduction refers to powder metallurgical routes of making titanium and alloys thereof in excess of 1000 MPa and thus to say that the flexural strength of a titanium sheet made by powder metallurgy to have at least 400 MPa flexural strength is not beyond what is envisioned in Rak et al.
Second, the Applicant primarily argues that claims 9-14 as amended recite a porous metal sintered body and Nakayama et al. (JP ‘556) discloses a method for producing a compressed fiber structural material with “room temperature compression shear processing” that is not sintering the produced compressed fiber structural material cannot be a sintered body.
In response, the Examiner notes that the claims are drawn to a product and not a process. even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113.
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
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