Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Specification
The disclosure is objected to because of the following informalities: In specification paragraph 0001, the status of the parent application needs to be updated. In paragraph 0075, --of-- should apparently be inserted after “profile”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-5 and 15-19 are rejected under 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed, had possession of the claimed invention. Regarding claims 4-5 and 15-19, a “non-hardened zone [being] formed by preventing diffusion of the at least one diffusion hardening material into the substrate” (instant claim 4) is neither mentioned in grandparent application 12/811,672 nor adequately described in the current application. Moreover, “removing at least a portion of the at least one diffusion hardening material” (claim 18, line 2) is likewise unsupported; instead, the original disclosure discusses grinding or the like to remove “excess second metal material from the substrate” (grandparent application paragraphs 0059, 0087; emphasis added). Distinctions among alloying species and diffusion hardening species are further explained, for example, in paragraphs 0084-0086 of said grandparent application.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of pre-AIA 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 –
(b) the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of application for patent in the United States.
Claims 1-8 and 10-17 are rejected under pre-AIA 35 U.S.C. 102(b) as being clearly anticipated by Davidson et al., US 5,372,660, which discloses an outer surface layer 3 and a substrate 1, 2, 4 in which is formed an inner surface alloyed zone including an inner surface alloyed hardened zone 2 and/or 4 having at least one diffusion hardening material and an inner surface alloyed non-hardened zone 1 having no diffusion hardening material (Figure 1; abstract; column 3, lines 3-61; column 5, line 54, to column 6, line 7).
Regarding claims 3-4 and 15, diffusion of oxygen or the like into the inner surface alloyed non-hardened zone 1 is prevented by limiting the duration of heat treatment (column 3, lines 47-61). Regarding claims 5 and 11, temperatures may lie within the claimed range (column 6, lines 15-25), and as for temperature values and partial vacuum levels, the patentability of a product or implant does not depend on its method of production (MPEP § 2113). Regarding claims 7 and 17, inert gases may be used (column 6, lines 36-38). Regarding claim 8, hardened zone 2 and/or 4 may involve oxides (column 5, lines 40-53; column 6, lines 4-5), and under an alternative interpretation, the substrate and surface alloyed zone formed therein may additionally comprise the mixed oxide layer 3 (Figure 1; column 3, line 8). Regarding claims 12-13, the inner surface alloyed zone may additionally include niobium (column 7, line 8-12, et seq.). Regarding claim 14, the inner surface alloyed zone has a thickness defined by hardened zone 2 of about 20 microns or about 50 microns (column 3, lines 59-61; column 6, lines 63-64). The further limitations of other claims are readily apparent (MPEP §§ 707 and 2113) from the above explanations and referenced Davidson et al. passages.
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 9 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Davidson et al., US 5,372,660. Hardened zone 2 having a thickness of approximately 25 microns would have been obvious to the ordinary practitioner at the effective invention date from the discussion at column 3, lines 54-61, under routine analysis and/or experimentation in order to optimize for a diversity of alloys (column 4, line 26 et seq.; column 7, line 8 et seq.) and uses (column 1, lines 18-27).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to David H. Willse, whose telephone number is 571-272-4762. The examiner can normally be reached on Monday through Thursday. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Thomas Barrett can be reached at telephone number 571-272-4746. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID H WILLSE/ Primary Examiner, Art Unit 3774
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