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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 28 July 2026 has been entered.
Response to Amendment
The Amendment filed 28 July 2026 has been entered. Claims 1-2 and 6-15 remain pending in the application. Claims 9-15 have been withdrawn. Claims 3-5 have been canceled. No new claim(s) have been added. Applicant's amendments to the claims have overcome the 112(d) rejection previously set forth in the Final Rejection mailed 06 May 2026.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 29 February 2024 was considered by the examiner. The submission is in compliance with the provisions of 37 CFR 1.97.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over US2018339342A1 of Hofmann in view of CN115058667A (machine translation) of Ma, WO2019228963A1 of Duocastella and EP3854495B1 of Golagani.
Regarding Claim 1, Hofmann teaches dendrite-reinforced titanium-based metal matrix composites in the same field of endeavor as the claimed invention. Hofmann discloses an alloy having at least 85 atomic % of at least Ti and at least one component selected from the group of Zr, Hf, Ta, Nb, V, and Mo, and one or more additional components, X, selected from the group of Co, Fe, Ni, Cu, Al, B, Ag, Pd, Au, Pd, C, Si, and Sn, wherein the atomic % of Ti is greater than any other single component (titanium alloy made from two or more metal elements; wherein the titanium alloy has a molecular formula of TiaZrbHfcNbdSne; wherein a, b, c, d, and e represent atomic percentages of the metal elements, falling within the ranges of 45 ≤ a ≤ 55, 36 ≤ b ≤ 43, 3 ≤ c ≤ 6, 3.5 ≤ d ≤7.5, and 1.5 ≤ e ≤ 3), Para[0007]. Hofmann’s composition encompasses the claimed composition as the elemental ranges of the claimed invention add up to a range for Ti+Zr+Hf+Nb+Sn of 89-100%. This overlaps with the claimed range of at least 85 at%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Therefore, Hofmann covers all compositional combinations of the claimed invention.
Hofmann also discloses a monolithic alloy (titanium alloy exhibits a single phase), Para[0069], and metastable alloys (metastable phase), Para[0078]. Hofmann also teaches that titanium metal is a dimorphic allotrope with two possible crystal structure lattices: hexagonal closed packed HCP, also known as the alpha (α) form) and body centered cubic BCC, also known as the beta (β) form (β matrix), Para[0055], as well as nanocrystalline ultra-fine grained (UFG) microstructures (an initial microstructure characterized by an equiaxed ultra-fine grain (UFG) structure), Para[0004], comprising a crystalline phase dispersed in a nano-structured matrix (wherein the UFG structure is reinforced by hierarchical nanostructures during tensile deformation), Para[0063].
Hofmann does not teach a grain size for the UFG structure or nanotwins containing confined nanobands. While Hofmann discloses that the ultimate tensile strength is greater than 1 GPa, Hofmann does not disclose a uniform elongation.
Ma discloses a preparation method of nano twin crystal high-entropy alloy with low temperature and high toughness in the same field of endeavor as the claimed invention. Ma teaches that as a special microstructure, nanotwins can bring excellent strength-ductility synergy to metallic materials, Para[0005], and that secondary nanotwins continue to nucleate and grow on the primary nanotwins (the hierarchical nanostructures comprising nanotwins containing confined nanobands), Para[0041]. Figures 3D and 4H of Ma show microstructures of secondary nanotwins (nanobands) confined in primary nanotwins.
Ma also discloses that the ultimate tensile strength is increased by 10%, while maintaining a uniform elongation of 27% (a uniform elongation of at least 20%), Para[0039]. This falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05.
Therefore, it would be obvious to one of ordinary skill in the art to use the secondary nanotwins within the primary nanotwins as disclosed by Ma in the titanium alloy of Hoffman in order to bring excellent strength ductility synergy to the alloy while maintaining uniform elongation.
Duocastella teaches a beta-phase titanium and tungsten alloy in the same field of endeavor as the claimed invention. Duocastella discloses that the beta titanium alloy of the invention is one wherein each grain of the equiaxed beta grain structure has an average diameter from 0.01 µm to 200 µm (an equiaxed ultra-fine grain (UFG) structure having an average grain size of 300 nm to 2 µm), Para[0034]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Duocastella teaches that the beta titanium alloy of the present invention is a“strain-transformable” alloys showing a strain-transforming effects when the beta phase is in metastable state, and that the strain transforming effects of the alloy of the present invention are advantageous because the dynamic strain-hardening effect is associated with the formations of martensites and/or twins, allowing strengthening the material as a function of plastic deformation and avoids localization of strain (i.e. necking) at the early stage of the plastic flow, resulting in an enhanced uniform ductility, Para[0011]. Therefore, it would be obvious to one of ordinary skill in the art to apply the equiaxed beta titanium grain size of Duocastella to the titanium alloy of Hoffman in order to strengthen the material as a function of plastic deformation enhancing uniform ductility.
Golagani teaches a method for manufacturing a biocompatible wire in the same field of endeavor as the claimed invention. Golgani teaches substantially nickel-free beta-titanium alloys having shape memory and super-elastic properties suitable for, e.g., medical device applications, Para[0002]. Golagani also teaches structure with several nanotwins embedded between the grain boundaries, Para[0045], and a mean grain size of 20 to 1000 nm (an equiaxed ultra-fine grain (UFG) structure having an average grain size of 300 nm to 2 µm), Para[0038]. This overlaps with the claimed range. Golagani discloses an ultimate tensile strength in a range of 1700 to 2400 MPa (the titanium alloy demonstrates a tensile strength of 1.75 GPa or more), Para[0038]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Golagani also teaches a cold work percentage is 97 to 99 %, Para[0036], and that the cold work applied to the material decides the geometrical and the mechanical attributes of the wire, as for example its strength, Para[0014]. Therefore, it would be obvious to one of ordinary skill in the art to apply the cold work percentage of Golagani to the alloy of Hoffman in order to achieve the desired mechanical attributes such as grain size and tensile strength.
It is noted that the term “multifunctional” in the preamble of the claim is not considered a limitation. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction, see MPEP 2111.02.
The term “deformation-induced” in the body of the claim is a product-by-process limitation. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. The patentability of a product does not depend on its method of production, see MPEP 2113. Therefore, the term “deformation induced” is not given patentable weight.
Thus, Hofmann in view of Ma, Duocastella and Golagani cover all limitations of claim 1.
Regarding Claim 2, Hofmann discloses an alloy having at least 85 atomic % of at least Ti and at least one component selected from the group of Zr, Hf, Ta, Nb, V, and Mo, and one or more additional components, X, selected from the group of Co, Fe, Ni, Cu, Al, B, Ag, Pd, Au, Pd, C, Si, and Sn, wherein the atomic % of Ti is greater than any other single component (the titanium alloy comprises 48 at.% of Ti, 39 at.% of Zr, 4.5 at.% of Hf, 6.3 at.% of Nb, and 2.2 at.% of Sn.), Para[0007]. Hofmann’s composition encompasses the claimed composition as Ti is greater than any other single element and the elemental ranges of claim 2 add up to 100% for Ti+Zr+Hf+Nb+Sn. This overlaps with the claimed range of at least 85 at%. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Therefore, Hofmann covers the composition of claim 2. Thus, Hofmann in view of Ma, Duocastella and Golagani cover all limitations of claim 2.
Regarding Claim 6, while Hofmann, Ma, Duocastella and Golagani do not specifically teach the numerical limitation related to fatigue cycles, the chemical composition of Hofmann and the deformation processes to induce twins taught by Ma, Duocastella and Golagani are substantially identical to that of the claimed invention. 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, see MPEP 2112.01. Therefore, the fatigue cycle behavior of Hofmann, Ma, Duocastella and Golagani would be inherently substantially identical to that of the claimed invention. Thus, Hofmann in view of Ma, Duocastella and Golagani cover all limitations of claim 6.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over US2018339342A1 of Hofmann in view of CN115058667A (machine translation) of Ma, WO2019228963A1 of Duocastella and EP3854495B1 of Golagani. as applied to claim 1 above, and further in view of WO2018089028A1 of Cai.
Regarding Claim 7, Hofmann, Ma and Duocastella are silent on recoverable strain. Golagani discloses recoverable strains of at least 3.5%, Para[0002]. This overlaps with the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Golagani also teaches a cold work percentage is 97 to 99 %, Para[0036], and that the cold work applied to the material decides the geometrical and the mechanical attributes of the wire, as for example its strength, Para[0014]. Therefore, it would be obvious to one of ordinary skill in the art to apply the cold work percentage of Golagani to the alloy of Hoffman in order to achieve the desired mechanical attributes such as recoverable strain.
Additionally, Cai teaches Ni-free beta Ti alloys with shape memory and super-elastic properties in the same field of endeavor as the claimed invention. Cai discloses that the present group of alloys is capable of substantially complete strain recovery after a 4% strain, and greater than 5% recoverable strain after strains of 6-7% (the titanium alloy exhibits a recoverable strain of 4.3% to 7%), Para[0084]. This falls within the claimed range. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, see MPEP 2144.05. Cai also discloses that cold work processing is performed to impart a cold work as much as 99% or 99.9%, Para[0062]. Cai teaches that the present disclosure is directed to a group of substantially nickel-free beta-titanium alloys that have shape memory and super-elastic properties suitable for, e.g., medical device applications, Para[0006]. Therefore, it would be obvious to one of ordinary skill in the art to apply the cold work processing of Cai to the alloy of Hofmann in order to achieve the disclosed recoverable strain to achieve shape memory and super-elastic properties suitable for medical device applications. Thus, Hofmann in view of Ma, Duocastella, Golagani and Cai cover all limitations of claim 7.
Regarding Claim 8, while Hofmann, Ma, Duocastella, Golagani and Cai do not specifically teach recoverable strain when the applied deformation exceeds 8%, the chemical composition of Hofmann and the deformation processes to induce twins taught by Ma, Duocastella, Golagani and Cai are substantially identical to that of the claimed invention. 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, see MPEP 2112.01. Therefore, the recoverable strain behavior of Hofmann, Ma, Duocastella, Golagani and Cai would be inherently substantially identical to that of the claimed invention. Thus, Hofmann in view of Ma, Duocastella, Golagani and Cai cover all limitations of claim 8.
Response to Arguments
Applicant's arguments filed 28 July 2026 have been fully considered but they are not persuasive. Applicant argues that (remarks, page 6 and 7 of 11) Hofmann lacks any teaching or suggestion of maintaining a single metastable beta matrix. This is not found persuasive as Hofmann teaches Ti alloys that are body centered cubic (BCC, also known as the beta (β) form), Para[0055], and metastable alloys, Para[0078]. Hofmann also discloses a monolithic titanium alloy, Para[0069]. Therefore, Hofmann does in fact teach a single phase metastable beta matrix.
Applicant argues that (remarks, page 7 of 11) Ma fails to teach the hierarchical architecture where nanobands are confined within nanotwins. This is not found persuasive as Ma teaches that the subsequent tensile twinning during multiaxial forging can continue to twin, detwin, and re-twin, thereby improving work hardening capability, Para[0009]. The term re-twin corresponds to nanotwins confined inside of nanotwins. Additionally, Figures 3D and 4H of Ma clearly show, with labels, secondary nanotwins confined within primary nanotwins. One of ordinary skill in the art could apply this microstructural feature to the alloy of Hofmann. Therefore, Ma does in fact teach the claimed hierarchical architecture.
Applicant argues that (remarks, page 9 of 11) since Cai’s recoverable strain is in a significantly lower strength context, it would not cover the claimed recoverable strain. This is not found persuasive. While Cai’s strength is lower than that claimed, one of ordinary skill in the art would understand that applying the cold rolling of Cai to the alloy of Hofmann would be able to achieve the hierarchical nanotwin microstructure of Ma, Duocastella and Golagani. This would result in an increase in strength while maintaining the ductility characteristic such as recoverable strain. This is best shown through Ma’s teaching that the ultimate tensile strength is increased by 10%, while maintaining a uniform elongation of 27% by using nanotwins, Para[0039].
Applicants arguments regarding Alabort, Won, Thomas and Pan are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner’s Note
Examiner has attached a previously-cited foreign reference with its original document that was inadvertently omitted in the last office action. Reference Included herein: CN115058667A (machine translation)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB BENJAMIN STILES whose telephone number is (571)272-0598. The examiner can normally be reached Monday-Friday 7:30am - 5:00pm.
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/Keith D. Hendricks/Supervisory Patent Examiner, Art Unit 1733
/JACOB BENJAMIN STILES/Examiner, Art Unit 1733
