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 .
Claim Status
An amendment, filed 12/23/2025, is acknowledged. Claims 1-2 are amended; claim 3 is canceled. Claims 1-2 are currently pending.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Seto (JP 2017-057473)(cited on IDS, machine translation previously provided).
With respect to Claim 1, the claim recites the term “commercially pure titanium.” The claim does not require any specific grade or maximum non-titanium/impurity level. One of ordinary skill in the art, would understand that there are different grades/types of commercially available pure titanium, each having varying amounts for the allowable content of non-titanium elements. Additionally, dependent claim 2 specifically requires a content of 0.25-0.45 wt% oxygen present in the “commercially pure titanium.” As a result, the term “commercially pure titanium” is interpreted to allow for the inclusion of small amounts of additional elements and does not require a strict maximum for such additional elements.
Seto teaches a titanium sheet comprising 15-90% of an isometric (i.e. equiaxed) alpha phase with an average crystal grain size of 2-10 microns, the titanium comprising 0.28-0.4 wt% oxygen and 0.8-1.5 wt% iron. (see abstract). While Seto does not teach the overall average grain size of the material, as the disclosed grain size is significantly smaller than the claimed range and may occupy 90% of the material, the average grain size of the material would be expected to fall within or overlap the claimed range. Thus, Seto is deemed to teach a “Fine grained pure titanium,” as interpreted above, having an equiaxed microstructure fraction and average grain size overlapping the instantly claimed ranges. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Finally, Seto teaches wherein the titanium is in the form of a sheet, deemed to constitute or be the obvious equivalent of “a plate shape.” (see abstract, rejection of claim 1 above). Alternatively, it would have been obvious to one of ordinary skill in the art to form a plate shape, for example, by cutting, in order to obtain a conventional shape having wide-ranging utility for subsequent processing, testing, shaping, storage, etc.
With respect to Claim 2, Seto teaches wherein the titanium comprises 0.25-0.45 wt% oxygen, overlapping the claimed range. (see abstract, rejection of claim 1 above). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Claim(s) 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Colombo et al. (US 2016/0108499)(previously cited) alone or alternatively, as evidenced by Welk (US 2018/0245186)(previously cited).
With respect to Claim 1, Colombo teaches a nanostructured titanium, wherein the titanium may comprise “commercially pure titanium,” including Grades 1-4, the titanium having at least 80% of the crystal grains having a size of 1 micron or less, and wherein the grains have an equiaxed microstructure. (para. 17, 30-32, 44-45; Figs. 4, 7-9). For example, Colombo teaches an embodiment (see Fig. 4) detailing grain size by area fraction in the titanium, wherein the average grain size across the entire material is less than 1 micron, falling within the claimed range. Thus, Colombo is deemed to teach a commercially pure titanium having a content of grains with an equiaxed microstructure and average grain size falling within or overlapping the instantly claimed ranges, respectively. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges. Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
In the alternative, it is noted that one of ordinary skill in the art would recognize that that term “equiaxed” does not have a strict definition and the range of aspect ratios or shapes of grains described as equiaxed varies. Claims 1-2 do not limit the scope of equiaxed grains. Colombo teaches that the titanium has equiaxed crystal grains (see above) and further teaches wherein at least 80% of all grains have an aspect ratio in the range of 0.3 to 0.7. As evidenced by Welk, titanium grain structures with an average aspect ratio of 3:1 or less are considered an equiaxed grain structure. (para. 56). Colombo teaches wherein 80% or more of the grains have an aspect ratio of 0.3 to 0.7 equivalent to 1.4:1 to 3.3:1 and is therefore, interpreted to teach a content of equiaxed crystal grains meeting or overlapping the instantly claimed range. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges, and further, to maximize the content of equiaxed grains as the nanostructured microstructure is taught to enhance the material properties of the titanium. (see, e.g., para. 2, 30); MPEP § 2144.05.
Finally, with respect to the limitation “wherein the commercially pure titanium has a plate shape,” Colombo does not require any particular form/shape for the disclosed titanium, but does teach wherein the titanium may be subjected to conventional titanium processing methods such as rolling, extrusion, and forging (para. 37, 39). One of ordinary skill in the art would recognize that a sheet or plate shape is one of the most common shapes for a workpiece subjected to a rolling process. It would have been obvious to one of ordinary skill in the art to select a form for the titanium of Colombo suitable for such processing methods, such as a plate/sheet, with a predictable result of success. Additionally, one of ordinary skill in the art would have found it obvious to alter the shape of the product of Colombo into the conventional shape of a plate, for example, by cutting or rolling, in order to obtain a conventional shape having wide-ranging utility for subsequent processing, testing, shaping, storage, etc. Cutting the material into a plate shape, for example, would not change the microstructure of the material.
Moreover, a mere selection or change in form, such as forming a conventional bulk metal shape such as a plate, would be prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
With respect to Claim 2, Colombo teaches wherein the commercially pure titanium comprises 0.40 wt% maximum oxygen, including examples comprising, respectively, 0.25 wt%, 0.35 wt% and 0.40 wt% oxygen. (para. 34; Table 1). Overlapping ranges, in particular, where the ranges of a claimed composition overlap with the ranges disclosed in the prior art, have been held sufficient to establish a prima facie case of obviousness. MPEP § 2144.05.
Response to Arguments
Applicant's arguments filed 12/23/2025 have been fully considered but they are not persuasive.
Applicant argues that Seto teaches a titanium alloy sheet wherein 10-85% of the sheet has a processed structure and argues that this lowers the content of equiaxed alpha phase outside the claimed range. These arguments have been fully considered but are not found persuasive.
Applicant appears to misinterpret the reference. While Seto does disclose 10-85% of the titanium sheet has a processed structure, this is a separate measure that does not change the disclosed contents of alpha and beta phase. Seto is therefore interpreted to teach up to 90% of an equiaxed alpha phase, whether in a processed state or not. Furthermore, even assuming arguendo the processing resulting in the “processed state” did change the content of the disclosed alpha and beta phase ranges, the intermediate product of Seto, prior to such processing has up to 90% of the equiaxed phase meeting the instant claim.
Applicant also argues “amended claim 1 is directed to commercially pure titanium, which is a single phase material” (Remarks, p. 4) and concludes that the reference(s) teaches alpha-beta titanium differ from the instant claims. These arguments are not found persuasive.
Commercially pure titanium is interpreted as a titanium material having a limited amount of alloying and/or impurity elements; however, the specific grade or level of such elements is not claimed (see further interpretation of the term in the 103 rejection above). Commercially pure titanium is not interpreted as limiting the microstructure of the material. Therefore, Applicant’s arguments are not found persuasive.
With respect to prior art Colombo, Applicant argues that processing steps of the reference including severe plastic deformation are difficult to apply to a plate-shaped workpiece and therefore, the reference fails to teach a plate-shaped titanium as required by the instant claims. These arguments are not found persuasive.
The instant claims are drawn to a product not a method of making. The claims do not require that the titanium is in a plate shape prior to or during the manufacture (e.g. in a sever plastic deformation step). Colombo does not require any particular form/shape for the disclosed titanium, but does teach wherein the titanium may be subjected to conventional titanium processing methods such as rolling, extrusion, and forging (para. 37, 39). One of ordinary skill in the art would recognize that a sheet or plate shape is one of the most common shapes for a workpiece subjected to a rolling process. It would have been obvious to one of ordinary skill in the art to select a form for the titanium of Colombo suitable for such processing methods, such as a plate/sheet, with a predictable result of success. Additionally, one of ordinary skill in the art would have found it obvious to alter the shape of the product of Colombo into the conventional shape of a plate, for example, by cutting or rolling, in order to obtain a conventional shape having wide-ranging utility for subsequent processing, testing, shaping, storage, etc. Cutting the material into a plate shape, for example, would not change the microstructure of the material.
Moreover, a mere selection or change in form, such as forming a conventional bulk metal shape such as a plate, would be prima facie obvious to one of ordinary skill in the art. MPEP 2144.05; Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree "will not sustain a patent"); In re Williams, 36 F.2d 436, 438 (CCPA 1929) ("It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.").
Finally, Applicant argues that Colombo fails to teach wherein the titanium has an equiaxed microstructure fraction ratio of 90% or more. This argument is not found persuasive.
Colombo is drawn to a titanium material having highly uniform microstructure with equiaxed grains wherein 80% or more of the grains have an aspect ratio within 0.3-0.7. (para. 45; Figs. 7-8; claim 11). One of ordinary skill in the art would recognize that that term “equiaxed” does not have a strict definition and the range of aspect ratios or shapes of grains described as equiaxed varies. The claims do not limit the scope of equiaxed grains. As evidenced by Welk, titanium grain structures with an average aspect ratio of 3:1 or less are considered an equiaxed grain structure. (para. 56). Colombo teaches wherein 80% or more of the grains have an aspect ratio of 0.3 to 0.7 equivalent to 1.4:1 to 3.3:1 and is therefore, interpreted to teach a content of equiaxed crystal grains meeting or overlapping the instantly claimed range. It would have been obvious to one of ordinary skill in the art to select from the portion of the overlapping ranges, and further, to maximize the content of equiaxed grains as the nanostructured microstructure is taught to enhance the material properties of the titanium. (see, e.g., para. 2, 30); MPEP § 2144.05.
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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/JOHN A HEVEY/Primary Examiner, Art Unit 1735