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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/20/2026 has been entered.
Claim Status
An amendment, filed 5/1/2026, is acknowledged. Claims 1 is amended. Claims 1-2 are currently pending.
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.
Claim(s) 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Seto (JP 2017-057473)(cited on IDS, machine translation previously provided).
With respect to Claims 1-2, the claim recites the term “commercially pure titanium.” The claim does not require any specific grade or maximum non-titanium/impurity level with the exception of limiting the iron content to 0.50 wt% or less. 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.
Seto teaches a specific titanium sheet example (comparative example 2), the titanium sheet comprising 98% of an isometric (i.e. equiaxed) alpha phase with an average crystal grain size of 13.0 microns, the titanium having a composition comprising 0.33 wt% oxygen, 0.17 wt% iron, 0.002 wt% nitrogen, balance titanium. (see Table 1).
Thus, Seto teaches a fine-grained commercially pure titanium having an equiaxed microstructure fraction ratio falling within the claimed range, a content of iron falling within the claimed range, and a content of oxygen falling within the range of claim 2. Seto is further deemed to teach an average grain size falling within the claimed range. Alternatively, as the disclosed average grain size of equiaxed grains falls within the claimed range and such equiaxed grains comprise 98% of the material, the overall average grain size of the material would necessarily be expected to fall within the claimed range. See MPEP 2112.01.
"Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established.” In re Best, 195 USPQ 430, 433 (CCPA 1977). Thus, the burden is shifted to the applicant to prove that the product of the prior art does not necessarily or inherently possess the characteristics attributed to the claimed product. See In re Spada, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990) (“When the PTO shows a sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not."); MPEP 2112.01. Therefore, the prima facie case can only be rebutted by evidence showing that the prior art products do not necessarily possess the characteristics of the claimed product.
Thus, Seto is deemed to teach a fine-grained commercially pure titanium with sufficient specificity to anticipate the instant claims. Finally, while it is acknowledged that the above cited example 2, that anticipates the instant claims is a comparative example, the reference is no less anticipatory. See MPEP 2131.05 (“A reference is no less anticipatory if, after disclosing the invention, the reference then disparages it. The question whether a reference "teaches away" from the invention is inapplicable to an anticipation analysis. Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998) (The prior art was held to anticipate the claims even though it taught away from the claimed invention. "The fact that a modem with a single carrier data signal is shown to be less than optimal does not vitiate the fact that it is disclosed."). See Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005)(claimed composition that expressly excluded an ingredient held anticipated by reference composition that optionally included that same ingredient); see also Atlas Powder Co. v. IRECO, Inc., 190 F.3d 1342, 1349, 51 USPQ2d 1943, 1948 (Fed. Cir. 1999) (Claimed composition was anticipated by prior art reference that inherently met claim limitation of "sufficient aeration" even though reference taught away from air entrapment or purposeful aeration.).”)
Response to Arguments
Applicant’s arguments, filed 5/1/2026, with respect to the rejection(s) of claim(s) 1-2 under 35 U.S.C. 103 over Seto and over Colombo have been fully considered and are persuasive in view of Applicant’s amendment. Specifically, Seto requires an inventive content of iron (Fe) outside the claimed range and Colombo teaches away from the amended average grain size. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Seto (JP 2017/057473A) under 35 U.S.C. 102, as detailed above. In other words, while the inventive titanium composition of Seto teaches away from the amended claims, the disclosure contains a comparative titanium example meeting each limitation of the amended claim with sufficient specificity to anticipate the claims.
Applicant’s arguments are deemed moot in view of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN A HEVEY whose telephone number is (571)270-0361. The examiner can normally be reached Monday-Friday 9:00-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Walker can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOHN A HEVEY/Primary Examiner, Art Unit 1735
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