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 .
Response to Arguments
Applicant’s arguments, see Pgs. 1-3, filed 08/28/2025, with respect to the rejection(s) of claim(s) under Gülsoy have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Wu (US 20100242680 A1).
Claim Rejections - 35 USC § 103
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.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-2, 4, 6-7 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 20100242680 A1).
Claims 1 and 6 define the product by how the product was made. Thus, claims 1 and 6 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure comprising Ti metal or Ti64 alloy having irregularly shaped particles that are sintered from smaller primary particles. The reference suggests such a product, see rejections below.
In regards to claims 1 and 6, Wu teaches metal submicron and nano-scale powders comprising titanium alloys [Abstract, 0020, 0028]. The irregularly shaped sub-micron sized powders comprise sintered and agglomerated closely packed nanoscale primary particles [Fig. 1, 6, Abstract, 0035]. Wu teaches sub-micron refers to a particle with an average particles size of more than 100 nm and less than 1 microns [0015]. Additionally, “nanoparticle” refers to a particle with an average particle size of about 100 nm or less [0014]. These ranges are encompassed by the claimed ranges.
Wu differs from claim 1 by teaching titanium in a list of possible metals, such that it cannot be said that the titanium species is anticipated.
However, it would have been obvious of ordinary skill in the art before the effective filing date of the invention to have employed any of the protective layers taught by Wu, including a titanium. The motivation for doing so is that the “selection of a known material based on its suitability for its intended use [supports] a prima facie obviousness determination.” See MPEP 2144.07.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In regards to claims 2 and 7, Wu further teaches the titanium is a titanium alloy [0028].
In regards to claims 4 and 9, Wu further teaches the submicron particles can further undergo sintering to modify the particle size [0039].
It would have been obvious of ordinary skill in the art before the effective filing date of the invention to have adjusted the final particle size of the sintered particles to a range of 20-300 microns based on the desired application. One would have been motivated to do so, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Claims 3, 5, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US 20100242680 A1), as applied to claims 1-2 and 6-7 above, and further in view of Gülsoy et al. (Particle morphology influence on mechanical and biocompatibility properties of injection molded Ti alloy powder), herein Gülsoy.
In regards to claims 3, 5, 8 and 10, Wu does not expressly teach that the titanium alloy is Ti-6Al-4V.
Gülsoy teaches a Ti-6Al-4V (Ti64) metal product comprising sintered irregularly shaped particles [Abstract, Sec. 2.1, Fig. 2b] The particles have a diameter of less than 500 microns [Fig. 1, Table 1]. Gülsoy teaches Ti64 is a commonly used alloy powder for biomaterials applications [Abstract].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have used the Ti64 alloy of Gülsoy as the titanium alloy of Wu. One would have been motivated to do so as it would have been the simple substitution of one known Ti alloy for another to obtain predictable results.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784