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 .
Claim Rejections - 35 U.S.C. § 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 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 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 1-2 are rejected under 35 U.S.C. § 103 as being unpatentable over Masahasshi et al., U.S. Patent App. Pub. No. 2011/0160047 A1 [hereinafter Masahasshi] in view of Kim, U.S. Patent App. Pub. No. 2019/0046299 A1.
The body of the claim is generally written with parentheses following the limitations indicating the prior art’s teachings and/or examiner notes.
1. The following references teach the claim.
I. Masahasshi
A method for forming a superhydrophilic oxide film on a titanium surface (superhydrophilic titanium dioxide layer on titanium; Masahasshi abstract, [0008]-[0009], & [0012]), the method comprising the steps of:
polishing the titanium (Ti) surface (step 1) (polishing; Masahasshi [0083]); and
anodizing polished titanium (Ti) at 99.5 to 102 V (50-500 V; Masahasshi [0064], claim 16) for 9.5 to 11 minutes (2 minutes or longer or 10 minutes to 3 hours; Masahasshi [0066], claim 16) to form an oxide film on the titanium surface (step 2) (anodizing to form a titanium dioxide film on titanium; Masahasshi abstract, [0055]),
wherein the anodizing electrolyte in the step 2 is a mixture of … water (aqueous sulfuric acid; Masahasshi [0063])…
wherein the superhydrophilic oxide film has superhydrophilicity with a contact angle of 20° or less (15° or less; Masahasshi claims 24 & 27).
Masahasshi is silent on anodizing polished titanium (Ti) at exactly 10 to 110 V (50-500 V; Masahasshi [0064], claim 16) for exactly 1 to 30 minutes.
However, “[i]n the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” MPEP § 2144.05(I).
Because Masahasshi’s 50-500 V and 2 minutes or longer/20 minutes-3 hours overlaps the claimed ranges, a prima facie case of obviousness exists.
II. Anodized Electrolyte - Kim
Masahasshi is silent on wherein the anodizing electrolyte in the step 2 is a mixture of NH4F … and ethylene glycol. Masahasshi does teach sulfuric acid as an electrolyte.
However, Kim teaches that ethylene glycol and sulfuric acid are known solvents for anodization of titanium. Kim abstract, [0042]-[0044].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have substituted or added the aforementioned prior art’s sulfuric acid with Kim’s ethylene glycol to yield the predictable result of having a suitable solvent for anodization.
Kim teaches that ammonium fluoride prevents corrosion pitting. Id.
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s electrolyte with Kim’s ammonium fluoride to prevent corrosion pitting.
2. The method of claim 1, wherein titanium is pure titanium of any one of Ti grades 1 to 4 having a Ti content of 99 wt.% or more (pure titanium, ASTM G1-4 titanium). Masahasshi [0057].
Claim 3 is rejected under 35 U.S.C. § 103 as being unpatentable over Masahasshi in view of Kim as applied to claim 1 previously, and further in view of Curran et al., U.S. Patent App. Pub. No. 2018/0084658 A1 [hereinafter Curran].
3. The method of claim 1, wherein the polishing in the step 1 is one or more of electrochemical polishing and chemical polishing. Masahasshi is silent on this.
But Masahasshi must use some kind of polishing.
Curran teaches that chemical polishing smooths titanium. Curran [0064]-[0065].
Therefore, it would have been obvious with a reasonable expectation of success to a person having ordinary skill in the art before the effective filing date of the claimed invention to have modified the aforementioned prior art’s polishing with Masahasshi’s chemical polishing to yield the predictable result of smoothing titanium.
Response to Arguments
Applicant’s latest filed arguments have been fully considered and are addressed below.
The Examiner has considered Applicant’s argument (a) that Masahasshi doesn’t disclose the claimed electrolyte.
The Examiner respectfully submits that while sulfuric acid along with its sulfur doping is an embodiment that Masahasshi teaches, it is not the only one. Masahasshi teaches typical “examples of electrolyte include dilute sulfuric acid and other dilute mineral acid,” which shows that Masahasshi explicitly permits the use of other acids. See Masahasshi [0063] (emphasis added).
The Examiner has considered Applicant’s argument (b) that Masahasshi doesn’t disclose both voltage and duration.
The Examiner respectfully submits that claim 16(i) teaches both claimed voltage and duration: “(i) applying a voltage of 100 V or higher and performing anodic oxidation for a duration of 2 minutes or longer … .” Claim 16(i).
The Examiner has considered Applicant’s argument (c) of criticality.
The Examiner respectfully submits that the claimed result of a contact angle of 20° or less is explicitly taught by Masahasshi so the claimed ranges are not critical since Masahassi still ends up with the claimed results even if Masahassi has some differences.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Hosung Chung whose telephone number is (571)270-7578. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM CT.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached on (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
/HOSUNG CHUNG/Primary Examiner, Art Unit 1794
