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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on March 3, 2026 was filed after the mailing date of the Non-final Rejection on January 27, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
This Final Rejection is in response to the Amendment dated April 1, 2026 filed in response to the Non-final Rejection dated January 27, 2026.
Cancelation of claims 2-3, 8, 10 and 14-16 is acknowledged.
The 35 U.S.C. 102(a)(1) rejection in the previous Office action is withdrawn in view of the amendments made to the claims distinguishing them from the rejection. However, the claims continue to be rejected based upon new grounds necessitated by the amendments.
Response to Arguments
Applicant argues, starting near the bottom of page 5 of the Amendment, Golovko does not anticipate claim 1 as amended. Examiner agrees. Accordingly, the rejection is withdrawn as stated above. However, other prior art references teach aspects of amended claim 1 which would have been obvious to apply to the disclosure of Golovko rendering claim 1 unpatentable under 35 U.S.C. 103 as explained in the rejection below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 11 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 11 recites the limitation "the heating device" in the first and second lines of the claim. There is insufficient antecedent basis for this limitation in the claim. Claim 11 will be interpreted as claiming “The system according to claim 9, further comprising a heating device configured to apply a temperature between 180°C and 290°C for tempering an extruded tubular semi-finished product.” for examination purposes.
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.
Claims 6-7 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 5,031,436 to Visser, hereinafter “Visser”.
Regarding claim 6, Visser discloses a device for producing a tubular semi-finished product for a scaffold of an implant for use with a heated die (This preamble is recital of purpose or intended use for the claimed device fully claimed in the body of the claim such that it is not considered a limitation of the claim. See M.P.E.P. 2111.02,II.), the device comprising a tube drawing device (tube drawing extrusion puller device 12 shown in Figs. 1-4; col. 4, line 61-65), the tube drawing device comprising a clamping device configured to create a tensile stress in the material of the semi-finished product while the semi-finished product is exiting from the heated die (clamping device jaws 36 and 38 in Figs. 1-4 are configured to create a tensile stress in material exiting from a heated die by axially pulling the material from the die as disclosed in the abstract and illustrated by arrow A in Fig. 4; col. 5, line 31-33), wherein the clamping device is configured to be fixed on a predefined portion of the tubular semi-finished product while the semi-finished product is exiting from the heated die (Fig. 4 shows clamping device jaws 36 and 38 are configured to be fixed on a predefined portion of a product exiting a die).
Regarding claim 7, Visser anticipates the device of claim 6 as explained above. Visser further discloses a slide movable on or in a guide (puller 12 slides on guides 24 and 28 in Fig. 1; col. 4, line 61-col. 5, line 7), the slide being connected to the clamping device and being configured to apply the tensile stress (clamping device jaws 36 and 38 are mounted on slide puller 12 which is configured to apply the tensile stress by being movable along guides 24 and 28).
Regarding claim 9, Visser discloses a system comprising a device according to claim 6 (see the rejection of claim 6 above), comprising
an extrusion device with a heated die for extruding the tubular semi-finished product (extrusion device press 22 in Fig. 2 with die 60 heated by friction generated during extrusion of billet 62 therethrough; col. 6, line 22-30).
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.
Claims 1 and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Golovko et al., “Manufacturing of small diameter magnesium tubes with the hot extrusion and drawing process”, Tube Ukraine 2007 International Conference, 2007, pp. 263-274, hereinafter “Golovko”, in view of Visser and further in view of U.S. Patent Application Publication No. US 2012/0125070 A1 by Birgmann et al., hereinafter “Birgmann”.
Regarding claim 1, Golovko discloses a method for producing a tubular semi-finished product for a scaffold on an implant, wherein the semi-finished product consists of a magnesium alloy (see the abstract), said method comprising:
extruding the tubular semi-finished product in a heated die (section “2. Extrusion process” discloses a MgCa-alloy billet was extruded in the extrusion tool illustrated in Fig. 1 heated within the range of 340°C to 420°C during testing as shown in Fig. 6),
creating a tensile stress in the tubular semi-finished product or the extruded tubular semi-finished product by a tube drawing device (section “3. Drawing process” discloses the extruded tube was then drawn in a chain drawing bench), wherein the tube drawing device comprises a clamping device, the clamping device being fixed on a predefined portion of the tubular semi-finished product or extruded tubular semi-finished product (section “3.1 Experimental methods” discloses drawing dies were used to clamp the extruded tube during drawing), wherein tensile force generated by the tube drawing device creates the tensile stress that transfers to the tubular semi-finished product (section “3.2 Results” discloses tensile force generated by the drawing device transferred to the extruded tube which changed the structure of the tube material as shown in Fig. 10),
wherein the heated die applies heat to the material of the tubular semi-finished produced in the heated die (Section “2. Extrusion process” discloses the die was heated to correspond to the billet temperature shown in Fig. 6 as ranging from 340°C to 420°C. The section discloses variables of the extrusion process, such as, e.g., the ram speed, the size of the billet, amount of lubrication, and the extrusion ratio, impact the temperature range used to extrude the material.).
Golovko does not disclose from amended claim 1 the tensile stress created by the tube drawing device is created while the semi-finished product is exiting from the heated die.
In the same field of extruding metal material, Visser teaches it was known before the effective filing date of the claimed invention to create a tensile stress in metal material being extruded from a die by axially pulling the material as it exits the die. See Visser’s abstract and Fig. 4.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to perform Golovko’s disclosed step of creating tensile stress with a tube drawing device while Golovko’s disclosed semi-finished product exits from Golovko’s heated die in the same way Visser teaches creating tensile stress in material exiting an extrusion die using a pulling device. A person of ordinary skill would have recognized applying the teaching of Visser to the disclosure of Golovko would achieve the predictable result of carrying out Golovko’s two separate disclosed extrusion and drawing steps in one continuous process as Visser teaches.
Golovko also does not teach the heated die applies heat to the material of the tubular semi-finished product in the heated die in a range between 180°C and 290°C.
In the same field of producing thin-walled tubes from magnesium alloy, Brigmann teaches it was known before the effective filing date of the claimed invention to adjust the heating temperature of the extrusion die to within the range of 200°C to 450°C during extrusion to keep extrusion press forces low in processing small outer diameter tubes. See paragraphs [0006] through [0015] and [0017].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to apply the teaching of Brigmann to Golovko’s disclosed method by adjusting Golovko’s temperature range to within the overlapping range of 200°C and 290°C when Golovko’s disclosed method is used in producing a smaller diameter product as taught by Brigmann. A person of ordinary skill would have recognized processing variables of Golovko’s disclosed method, such as temperature, would need to be adjusted when producing product of a different size.
Regarding claim 4, the prior art reference combination of Golovko in view of Visser and Brigmann renders the method according to claim 1 unpatentable as explained above. However, Golovko is silent regarding structural details of the chain drawing bench disclosed in section 3.
Visser teaches a device configured to axially pull an extruded product from an extrusion die where the device comprises clamping device jaws on a slide movable on a guide. See the rejection of claims 6 and 7 above.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to substitute Visser’s extrusion puller for Golovko’s disclosed chain drawing bench to achieve the predictable result of performing Golovko’s method using a drawing device having the structure as taught by Visser.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Golovko in view of Visser and Brigmann and further in view of U.S. Patent No. 1,525,730 to Gates, hereinafter “Gates”.
Regarding claim 5, the prior art reference combination of Golovko in view of Visser and Brigmann renders the method according to claim 1 unpatentable as explained above. However, Golovko does not disclose a rotary head of the tube drawing device is rotatable about a longitudinal axis that runs parallel to a longitudinal axis of the tubular semi-finished product and the clamping device is connected to the rotary head.
In the same field of tube drawing devices, Gates teaches it was known before the effective filing date of the claimed invention to use a rotary head connected to the clamping device of a tube drawing device to apply torsional stress to the tube material which increases the strength of the tube. See Figs. 7 and 8 and the written description at page 2, line 48-111.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a rotary head into Visser’s extrusion puller to apply torsional stress to the tube material disclosed by Golovko to increase the strength of the tube as further conditioning of the material as Visser’s abstract suggests. A person of ordinary skill would have recognized applying the teaching of Gates to Visser’s extrusion puller would achieve the predictable result of adding a rotary head to Visser’s extrusion puller.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Visser in view of Brigmann.
Regarding claim 11, Visser anticipates the system according to claim 9 as explained above. However, Visser does not disclose a heating device configured to apply a temperature between 180°C and 290°C for tempering an extruded tubular semi-finished product.
In the same field of extruding metal, Brigmann teaches it was known before the effective filing date of the claimed invention to fit an extrusion die with a heating device to heat the extruded material to within the range of 200°C to 450°C during extrusion to keep extrusion press forces low in processing small outer diameter tubes. See at least paragraphs [0006] through [0017] and [0039].
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate a heating device into Visser’s extruding die 60 to heat the extruded material to within the overlapping range of 200°C to 290°C when processing magnesium alloy materials as Brigmann teaches. A person of ordinary skill would have recognized applying the teaching of Brigmann to the system disclosed by Visser would achieve the predictable result of adding a heating device which heats the extruded material as Brigmann teaches.
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 PAUL DEREK PRESSLEY whose telephone number is (313)446-6658. The examiner can normally be reached 7:30am to 3:30pm Eastern.
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/P DEREK PRESSLEY/Examiner, Art Unit 3725
/BOBBY YEONJIN KIM/Primary Examiner, Art Unit 3725
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