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 .
Status of Previous Rejection
All previous art rejections are maintained from previous office action of 03/31/2026.
Status of Claims
Claims 1-14 are pending and are presented for this examination. No claims are amended.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 11/08/2023 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
Instant claims 1-7 required open transitional phase “comprising” is an open inclusive term which does not (emphasis added) exclude other unrecited steps. That is, if applicant argues prior art discloses other unrecited steps, it still reads on the claims. See MPEP 2111.03 I Comprising.
instant claim 1 required processing atmosphere is interpreted as any processing gas including hydrogen.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-13 are rejected under 35 U.S.C. 102(a)(1)/(a)(2) as being anticipated by Paramore (US20190106777A1).
As for claims 1-13, instant claimed “for grain growth mitigation in Ti, Zr and/or Hf” is intended use and preamble according to MPEP 2111.02 II. Because the preamble merely states the purpose or intended use of the invention, rather than a claim limitation, it is not given patentable distinction over prior art.
Paramore discloses a method of thermos-hydrogen refinement of microstructure of Ti material comprising:
Heating under a hydrogen containing atmosphere (i.e. claimed processing atmosphere) to a hydrogen charging temperature (i.e. claimed first temperature) above a β transus temperature of the Ti material and holding the Ti material at the hydrogen charging temperature for 1-4 hours (i.e. claimed first holding time) (Claim 2). Hence, instant claim 12 and 13 first holding time is met.
Hence, Paramore discloses instant claim 1 required heating and holding step.
Paramore also discloses before the heating step, pre-charging hydrogen to achieve the hydrogen containing atmosphere at a hydrogen partial pressure (i.e. claimed predetermined hydrogen partial pressure). (Claim 6) Hence, pre-charging suggests instant claimed introducing hydrogen step. Hence, Paramore anticipated instant claim 1.
After the holding step, the Ti material is then cooled to α phase transformation temperature (i.e. claimed second temperature). Figure 2 illustrated α phase transformation temperature is less than the hydrogen charging temperature. ([0045]) Hence, instant claim 2 is met.
At the α phase transformation temperature, the hydrogen atmosphere is replaced with an inert atmosphere or vacuum which suggests hydrogen gas is removed at the α phase transformation temperature. Hence, instant claim 3 is met.
After the hydrogen gas is removed to form a dehydrogenated Ti material, further heat treating (Figure 2 Step IV ) the dehydrogenated Ti material under an inert or vacuum atmosphere (Claim 8 and [0046]). Hence, instant claim 4 annealing step is met.
The Ti material may be optionally cooled to room temperature after be cooled to the α phase transformation temperature (i.e. claimed second temperature) but before the hydrogen removal. Hence, instant claim 5 cooling to a third temperature less than the second temperature is met.
The hydrogen containing atmosphere can include hydrogen mixed with an inert gas such as argon. (paragraph [0051[) Hence, instant claim 6 is met.
After the heat treating Step IV, aging (Step V of Figure 2) under inert atmosphere (Claim 12) reads on instant claim 7 required cooling step in an inert.
The Ti material being pure Ti or Ti-6Al-4V alloy (Claim 16) reads on instant claims 8 and 10 wherein clause.
The Ti material includes zirconium ([0038][0018]). Hence, instant claims 9 and 11 are met.
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) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Paramore.
As for claim 14, Paramore discloses the predetermined hydrogen partial pressure has broad range of between 0.01 and 10 atm, (paragraph [0020]) which overlaps claimed <0.5 atm.
A prima facie case of obviousness exists where the claimed ranges and prior art ranges overlap or are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05 I.
Response to Argument
Applicant’s argument filed on 06/05/2026 is considered but is not persuasive for the following reasons.
Applicant first argues that applicant teaches heating the material in inert gas and then introducing hydrogen at a specific point during the temperature increase. Argument is incommensurate in scope of claim 1 which does not require heating the material in inert gas and then introducing hydrogen at a specific point during the temperature increase. Claim 1 merely requires processing atmosphere, not inert atmosphere.
Where is the recitation of heating the material in inert gas and then introducing hydrogen at a specific point during the temperature increase in claim 1 ? The answer is none. Hence, applicant’s argument is merely allegation.
Second, applicant argues Paramore teaches heating the material from the beginning in a hydrogen atmosphere and hence does not teach or suggest the specific process step of introducing hydrogen at an intermediate point during the temperature ramp up. Argument is incommensurate in scope of claim 1 which neither excludes heating the material from the beginning in a hydrogen atmosphere nor requires introducing hydrogen at an intermediate point during the temperature ramp up. The fact Paramore teaches heating under a hydrogen containing atmosphere reads on claimed processing atmosphere. Processing atmosphere encompasses any atmosphere including hydrogen. In other words, claim 1 does not require processing atmosphere as inert gas. Hence, pre-charging hydrogen before the heating step reads on introducing hydrogen step.
Applicant argues Paramore’s pre-charging hydrogen is an isothermal hold and holds a lower temperature within the existing hydrogen atmosphere to allow hydrogen to diffuse into the material before ramping to the final higher temperature, Argument is incommensurate in scope of claim 1 which neither excludes hydrogen as claimed processing atmosphere nor excludes isothermal hold and holds a lower temperature before heating above beta transus in claim 1.
Applicant also argues Paramore’s method is expressly designed to promote growth of beta phase grain to reset the microstructure according to [0044] and [0054], argument is not persuasive because Paramore’s paragraph [0044] explicitly disclose grain size can be maintained which suggests grain growth mitigation. Second, reset the microstructure is not equivalent to grain growth. That is, applicant’s allegation that Paramore promotes grain growth completley lacks any evidence support.
Applicant further argues criticality of the claimed pressure range is directly linked to the novel timing of hydrogen production, a feature not taught by Paramore. The ability to achieve effective grain growth mitigation at these lower partial pressures is an unexpected result of the Applicant's unique process.
Argument is not persuasive because according to MPEP 716.01(c): “The arguments of counsel cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965}. Examples of attorney statements which are not evidence and which must be supported by an appropriate affidavit or declaration include statements regarding unexpected results, commercial success, solution of a long-felt need, inoperability of the prior art, invention before the date of the reference, and allegations that the author(s) of the prior art derived the disclosed subject matter from the inventor or at least one joint inventor.” In the instant case, where is the criticality of claimed pressure range in the form of an appropriate 132 affidavit or declaration? The answer is none.
Whether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the “objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support.” In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. In re Clemens, 622 F.2d 1029, 1036, 206 USPQ 289, 296 (CCPA 1980). To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). See MPEP 716.02(d) II and MPEP 2144.05 III.
In the instant case, where is the object evidence of unexpected result rather than attorney statement? The answer is none.
Hence, absent criticality or unexpected of claimed pressure range in the form of objective evidence and/or 132 Declaration, prima facie case of obviousness is maintained due to overlapping.
Lastly, applicant’s PGPUB paragraph [0027] explicitly discloses hydrogen partial pressure is 0.01 to 10 atm, which further strengthens examiner’s position that there is absolutely no criticality of claimed <0.5 atm.
Applicant also argues Figure 1 of instant application demonstrates even small changes in hydrogen pressure can have significant impact on grain size, argument is not persuasive because Figure 1 has no hydrogen pressure at all. Figure 1 merely discloses the effect of heating/cooling time on grain size, not the effect of hydrogen pressure on grain size.
Applicant finally argues that Paramore does not disclose or teach hydrogen partial pressure is a result effect variable for mitigating grain growth. Argument is incommensurate in scope of current obviousness rejection based on overlapping, not result effective variable. Hence, optimize Paramore’ broad range to arrive at applicant’s narrow uncritical is completely not necessary.
Furthermore, it is well established that a prior art reference that discloses a range that overlaps a claimed range, or encompasses a somewhat narrower claimed range, is sufficient to establish a prima facie case of obviousness. See /n re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003).
Conclusion
THIS ACTION IS MADE FINAL. 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 JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Keith Hendricks can be reached on (571)272-1401. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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