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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/10/2026 has been entered.
Response to Arguments
Applicant's arguments filed 04/10/2026 have been fully considered but they are not persuasive. Applicant primarily argues Wu does not teach “closely packed sintered particles of the particulate product metal.” The examiner disagrees as there appears no set definition given by applicant or in the art as to what closely packed entails thus the agglomerates of Wu would meet the limitation. However, the examiner notes that such an arrangement of sintered Ti particles is still known in the art as set forth below.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-3, 5-8 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Jacobsen et al. (US 20100329919 A1), herein Jacobsen.
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, Jacobsen teaches a titanium powder comprising individual irregular shaped particles of diameter of less than 1 micron that form irregularly shaped agglomerate particle of sintered coalesced individual particles having a diameter from about 3.3 to about 1.3 microns [Abstract, 0006, 0015, Figs. 7-9]. These ranges are encompassed by the claimed ranges. Jacobsen further teaches the agglomerates are used to make a sintered product [0046, claims 7,16, 23, 32].
In regards to claims 2-3, 5, 7-8 and 10, Jacobsen teaches the titanium powder is a Ti64 alloy which contains aluminum and vanadium [0002, 0013, 0016].
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) in view of Jacobsen et al. (US 20100329919 A1), herein Jacobsen.
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 metals 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 to a closely the metal product of closely packed sintered particles, the term closely packed does not seem to have a single definition in the art nor one given in the Instant Spec. The agglomerated particles of the nanoparticles of Wu as deemed to meet the limitation. Alternatively, a sintered product of the particles through a hot isostatic pressing process work also meet the limitation.
Jacobsen teaches irregularly shaped Ti based alloy particles [Abstract, Fig. 4-11, 0012, 0024-0026]. Jacobsen further teaches such powders are used to create metal products via a hot isostatic pressing process [0046].
It would have been obvious of ordinary skill in the art before the effective filing date of the invention to have used the Ti powder of Wu in a hot isostatic pressing process to make a metal product as taught by Jacobsen. One would have been motivated to do as Jacobsen teaches this is a known process for irregularly shaped Ti based powders and thus one would have had a reasonable expectation of success.
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) in view of Jacobsen et al. (US 20100329919 A1), herein Jacobsen, as applied to claims 1-2 and 6-7 above.
In regards to claims 3, 5, 8 and 10, Wu does not expressly teach that the titanium alloy is Ti-6Al-4V.
Jacobsen teaches irregularly shaped Ti based alloy particles [Abstract, Fig. 4-11, 0012, 0024-0026]. Jacobsen further teaches such powders are used to create metal products via a hot isostatic pressing process [0046]. Jacobsen teaches the Ti alloy powder is a Ti64 alloy which contains aluminum and vanadium [0002, 0013, 0016].
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 Jacobsen 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/Primary Examiner, Art Unit 1784
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