Prosecution Insights
Last updated: April 19, 2026
Application No. 18/266,897

COMPOSITE MATERIAL, MANUFACTURING METHOD OF COMPOSITE MATERIAL, AND BIOCOMPATIBLE IMPLANT

Non-Final OA §102§103
Filed
Jun 13, 2023
Examiner
HORGER, KIM S.
Art Unit
1784
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Kyocera Corporation
OA Round
1 (Non-Final)
70%
Grant Probability
Favorable
1-2
OA Rounds
2y 8m
To Grant
90%
With Interview

Examiner Intelligence

Grants 70% — above average
70%
Career Allow Rate
192 granted / 274 resolved
+5.1% vs TC avg
Strong +20% interview lift
Without
With
+20.4%
Interview Lift
resolved cases with interview
Typical timeline
2y 8m
Avg Prosecution
44 currently pending
Career history
318
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
49.9%
+9.9% vs TC avg
§102
7.6%
-32.4% vs TC avg
§112
27.6%
-12.4% vs TC avg
Black line = Tech Center average estimate • Based on career data from 274 resolved cases

Office Action

§102 §103
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. Election/Restrictions Applicant's election with traverse of Group I, claim 1-12, in the reply filed on 20 February 2026 is acknowledged. The traversal is on the ground(s) that Zoga does not anticipate or render obvious amended claim 1. This is not found persuasive because although Zoga does not teach all of the amended features, these features are taught or rendered obvious by the disclosure of Petersson et al. (US 2006/0154206) as outlined herein. As such, the technical feature of the composite of claim 1 is considered to be neither novel nor inventive a posteriori over the prior art. The requirement is still deemed proper and is therefore made FINAL. Claim s 13-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention , there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 20 February 2026. Response to Amendment The amendment filed 20 February 2026 has been entered. Claims 1-3, 5-9, and 11-16 remain pending in the application wherein claim 1 has been amended, claims 4 and 10 are newly canceled, and claims 13-16 are withdrawn. The amended limitations in claim 1 were previously presented in newly canceled claims 4 and 10. Accordingly, no new matter has been presented as a result of the amendments. Claim Interpretation The use of parentheses may introduce indefiniteness in a claim. However, the parentheses in claim 1 are considered to define XPS as the conventional abbreviation used for X-ray Photoelectron Spectrometry and the parentheses in claims 2 and 3 are considered to define the value of X (i.e. as a required feature of the claims). 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. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis ( i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 1-3, 6, 8-9, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Petersson et al. (US 2006/0154206). Claim 1: Petersson teaches an implant treated to improve the biocompatibility (paragraph 0001). The implant surface is preferably a metallic implant surface such as a titanium implant surface (i.e. a base material of titanium) (paragraph 0074) provided with fluorine and/or fluoride on at least a part of the implant surface (paragraph 0069) that is preferably incorporated within the oxide layer (i.e. titanium oxide layer; i.e. a surface layer located on a surface of the base material) on the metallic implant surface (paragraph 0076). The fluorine/fluoride can be provided by any suitable method such as plasma deposition, electrochemical treatment, treatment with a solution containing fluorine/fluoride, ion implantation, etc. (paragraphs 0077-0082), and the fluorine/ fluoride is considered to form a titanium fluoride compound (i.e. a first compound including titanium and fluorine) (paragraph 0018), and provides an oxide layer on the metallic implant surface that is more reactive than an oxide layer without fluorine/fluoride (i.e. the oxide layer with fluorine is considered to have a second compound including titanium, fluorine, and oxygen) (paragraph 0076). The amount of fluorine/fluoride can decrease during storage (paragraph 0073) and the thickness of the oxide layer (i.e. amount of oxygen) increases with storage time (paragraph 0160) (i.e. over time the amount of second compound increases and amount of first compound decreases). Preferably the implant surface has an average atomic concentration of at least 0.2 at% fluorine and/or fluoride and ≤20 at%, preferably 0.4-7 at% (paragraphs 0071-0073). Based on a theoretical density of titanium dioxide (i.e. rutile form has a density of 4.23-4.26 g/cm 3 which is slightly higher than the anatase or other crystal forms of titanium dioxide; calculations were made using the highest density of 4.26 g/cm 3 ) and the molar weight of titanium dioxide (i.e. about 79.87 g/mol), the number of molecules at the surface is less than about 1.01 x 10 15 /cm 2 , which is equates about 2.02 x 10 12 /cm 2 of fluorine and/or fluoride (i.e. lower for a porous oxide layer, higher for a higher concentration of fluorine/fluoride). The instantly claimed abundance of first compound relative to second compound, ratio of peak areas attributed to the first and second compounds, and amount of fluorine eluted are considered to be present because the range for amount of fluorine lies within the amount of the instant disclosure (i.e. compared to implanting 3 x 10 17 atoms/cm 2 or less of fluorine as disclosed in paragraph 0021 of the instant specification) and substantially identical materials have substantially identical properties and functions. See MPEP § 2112.01. Claim 2: Petersson teaches that the fluorine and/or fluoride is preferably incorporated within the oxide layer (i.e. titanium oxide layer) on the metallic implant surface (paragraph 0076), which is considered to teach the second compound being at least one of the recited group as these are the different compounds and arrangements that can result from fluorine and/or fluoride incorporating into titanium oxide ( e . g . at least fluorine-interstitial and/or fluorine substituted TiO 2 ). Claim 3: Petersson teaches that the fluorine/ fluoride is considered to form a titanium fluoride compound (i.e. a first compound including titanium and fluorine) (paragraph 0018), which would correspond to the instantly claimed first compound of TiF x wherein 1≤x≤4. Claim 6: Petersson teaches that the implant surface has an average atomic concentration of at least 0.2 at% fluorine and/or fluoride and ≤20 at%, preferably 0.4-7 at% (paragraphs 0071-0073), which lies within the instantly claimed range. See MPEP § 2131.03. Claim 8: Petersson teaches that the implant surface has an average atomic concentration of at least 0.2 at% fluorine and/or fluoride and ≤20 at%, preferably 0.4-7 at% (paragraphs 0071-0073). With such a low percentage of fluorine and/or fluoride, it would be reasonable for one of ordinary skill in the art to expect that not all of the titanium dioxide has fluorine/fluoride bonded thereto (i.e. there exists in the layer a third compound of titanium and oxygen). Claim 9: Petersson teaches that the oxide layers of titanium implants mainly contain titanium(IV) dioxide (i.e. TiO 2 ) (paragraph 0014). Claim 11: Petersson teaches the implant surface (i.e. the base material) is preferably a metallic implant surface, such as a titanium implant surface (paragraph 0074), and is preferably made of commercially pure titanium or an alloy of titanium (paragraph 0094). Claim 12: Petersson teaches an implant (i.e. the composite material as outlined above regarding claim 1) for implantation into bone tissue and treating the implant to improve the biocompatibility (i.e. a biocompatible implant) (paragraph 0001). 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. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis ( i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention. Claims 5 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Petersson et al. (US 2006/0154206) as applied to claim 1 above . Claim 5 : The teachings of Petersson regarding claim 1 are outlined above. Petersson teaches an implant treated to improve the biocompatibility (paragraph 0001) , wherein t he implant surface is preferably a metallic implant surface such as a titanium implant surface (paragraph 0074) provided with fluorine and/or fluoride on at least a part of the implant surface (paragraph 0069) that is preferably incorporated within the oxide on the metallic implant surface (paragraph 0076). The fluorine/fluoride can be provided by any suitable method such as plasma deposition, electrochemical treatment, treatment with a solution containing fluorine/fluoride, ion implantation, etc. (paragraphs 0077-0082) , and the fluorine/ fluoride is considered to form a titanium fluoride compound (i.e. a first compound including titanium and fluorine) (paragraph 0018), and provides an oxide layer on the metallic implant surface that is more reactive than an oxide layer without fluorine/fluoride (i.e. the oxide layer with fluorine is considered to have a second compound including titanium, fluorine, and oxygen) (paragraph 0076). The amount of fluorine/fluoride can decrease during storage (paragraph 0073) and the thickness of the oxide layer (i.e. amount of oxygen) increases with storage time (paragraph 0160) (i.e. over time the amount of second compound increases and amount of first compound decreases) . Preferably the implant surface has an average atomic concentration of at least 0.2 at% fluorine and/or fluoride and ≤20 at% (paragraphs 0071-0073) , which overlaps the instantly claimed range . The courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that no demonstration of a criticality to the claimed ranges has been presented. While not reciting a singular example of the instantly claimed composite material (e.g. having a maximum value of fluorine concentration that exceeds 10 atom%), it would have been obvious to one of ordinary skill in the art before the effective filing date because the amount of fluorine overlaps the instantly claimed range and the courts have held overlapping ranges to be prima facie obvious. See MPEP § 2144.05. Claim 7: Petersson teaches that the titanium oxide layer of implants generally has a thickness of about 4-8 nm, but can be up to about 20 µm (i.e. about 20,000 nm) by using anodic oxidation (paragraph 0014). This thickness overlaps the instantly claimed thickness. See MPEP § 2144.05. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Park (US 2010/0136506) teaches an implant formed by immersing a substrate of titanium or titanium alloy in electrolytic solution including at least one of phosphate or fluoride ion and strontium ion, followed by forming an oxide film layer. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FILLIN "Examiner name" \* MERGEFORMAT KIM S HORGER whose telephone number is FILLIN "Phone number" \* MERGEFORMAT (571)270-5904 . The examiner can normally be reached FILLIN "Work Schedule?" \* MERGEFORMAT M-F 9:30 AM - 4:00 PM EST . Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, FILLIN "SPE Name?" \* MERGEFORMAT Humera Sheikh can be reached at FILLIN "SPE Phone?" \* MERGEFORMAT 571-272-0604 . 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. /KIM S. HORGER/ Examiner, Art Unit 1784
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Prosecution Timeline

Jun 13, 2023
Application Filed
Mar 19, 2026
Non-Final Rejection — §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
70%
Grant Probability
90%
With Interview (+20.4%)
2y 8m
Median Time to Grant
Low
PTA Risk
Based on 274 resolved cases by this examiner. Grant probability derived from career allow rate.

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