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 .
The Amendment filed September 3, 2025 has been entered. Claims 30-34 and 36-49 are pending in this application and examined herein.
Information Disclosure Statement
The Examiner acknowledges receipt of the lengthy information disclosure statement (IDS) filed _September 4, 2025 , citing 186 references. There is no requirement that applicants explain the materiality of English language references. However, the cloaking of a clearly relevant reference in a long list of references may not comply with applicants’ duty to disclose; see Penn Yan Boats, Inc. v. Sea Lark Boats, Inc., 359 F.Supp. 948, 175 USPQ 260 (S.D.Fla. 1972), aff’d 479 F.2d. 1338, 178 USPQ 577 (5th Cir. 1973). An applicant’s duty of disclosure of material and information is not satisfied by presenting a patent examiner with “a mountain of largely irrelevant [material] from which he is presumed to have been able, with his expertise and with adequate time, to have found the critical [material]. It ignores the real world conditions under which examiners work.” Rohm & Haas Co. v. Crystal Chemical Co., 722 F.2d 1556, 1573 [220 USPQ 289] (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). There is no duty for the Examiner to consider these references to a greater extent than those ordinarily looked at during a regular search by the Examiner. Accordingly, the Examiner has considered these references in the same manner as references encountered during a normal search of Office search files; see MPEP 609.05(b). See also MPEP section 2004, paragraph 13.
Statutory Basis for Prior Art Rejections
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.
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.
Rejections -- 35 U.S.C. 102/103
Claims 30-34, 36-40 and 44-49 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over the Fuchs et al. Materials Science and Engineering article.
This rejection is substantially for reasons set forth in item no. 10 of the Office Action of March 4, 2025. Claims 30-34, 37-40 and 45-49 have not been amended since that time. The present amendments to claims 36 and 44 are directed to minor editorial changes that do not materially affect any statements made in the prior Office Action. For reasons previously stated, the disclosure of the Fuchs et al. article is held to anticipate the claimed invention, or alternatively to render the particles as claimed obvious to one of ordinary skill in the art.
Claims 30-34, 36-40, and 44-49 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Hu et al. (CN 102021355 and its translation of record).
This rejection is substantially for reasons set forth in item no. 11 of the Office Action of March 4, 2025. Claims 30-34, 37-40 and 45-49 have not been amended since that time. The present amendments to claims 36 and 44 are directed to minor editorial changes that do not materially affect any statements made in the prior Office Action. For reasons previously stated, the disclosure of Hu et al. is held to anticipate the claimed invention, or alternatively to render the particles as claimed obvious to one of ordinary skill in the art.
Rejections -- 35 U.S.C. 103
Claims 41-43 are rejected under 35 U.S.C. 103 as being unpatentable over either the Fuchs et al. article or Hu et al. CN ‘355.
This rejection is for reasons set forth in item no. 12 of the Office Action of March 4, 2025. The instant claims have not been amended since that time. For reasons previously stated, the particles as presently claimed would have been considered nothing more than obvious variants of the particles as disclosed by Fuchs et al. or Hu et al. by one of ordinary skill in the art.
Response to Arguments
Applicant’s remarks filed September 3, 2025 have been fully considered, with the following effect:
a) The examiner agrees that the claims as amended are free from objections and from rejections under 35 U.S.C. 112.
b) The terminal disclaimer filed on September 3, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of U.S. Patent 11,148,202 has been reviewed and is accepted. The terminal disclaimer has been recorded. This obviates any potential conflict between the present claims and those of the ‘202 patent.
c) With regard to the rejection based on Fuchs et al., Applicant argues that Fuchs expresses doubt as to whether the prior art particles have a martensitic (or α’ phase) microstructure as required by the instant claims. While Fuchs does express some doubt in this regard, note the discussion in the right hand column of p.280 of Fuchs where Fuchs states that the disordered α (in the as-solidified particles) “may form from a martensitic transformation of β”. In other words, Fuchs does not expressly dismiss the presence of a martensitic phase, but merely indicates that additional work is required to establish the solidification path of the disordered α microstructure. The actual presence of a martensitic transformation (and therefore the presence of a martensitic phase) would render the prior art material identical to that presently claimed.
d) With regard to the rejection based on Hu et al., Applicant argues that this reference is non-enabling with respect to production of a material as claimed, i.e. that Hu teaches the manufacture of a biomedical porous material from spherical titanium particles but fails to disclose how to make those particles in the first place. In response, the examiner notes that para [0021] of Hu states “spherical titanium particles as a foaming agent, granularity is less than 48 [mu] m, 48 to 74 [mu] m, 75 to 165 [mu] m. the foaming agent has a volume fraction of martensite-austenite. %, 20vol. %, 30vol. %, 40vol. %, 50vol. %” [emphases added]. In other words, Hu discloses the presence of spherical titanium particles having between 20 and 50vol% martensite, in accord with the present claims. Hu therefore was clearly in possession of that material, i.e. at the time of Hu’s disclosure such a material was i) described in a printed publication and/or ii) available to the public.
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 GEORGE WYSZOMIERSKI whose telephone number is (571) 272-1252. The examiner can normally be reached on Monday thru Friday from 8:30 am to 5:00 pm Eastern time.
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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/GEORGE WYSZOMIERSKI/ Primary Examiner, Art Unit 1733 October 23, 2025