DETAILED ACTION
Claims 1-10, 19, and 24-32 are pending, and claims 1-6 are currently under review.
Claims 7-10, 19, and 24-32 are withdrawn.
Claims 11-18 and 20-23 are cancelled.
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 .
Election/Restrictions
Applicant's election with traverse of group I between groups I and II in the reply filed on 1/19/2026 is acknowledged. The traversal is on the ground(s) that there is no search burden. This is not found persuasive because restriction is made based on lack of unity of invention. Search burden and lack thereof is not relevant to a determination of lack of unity of invention.
The requirement is still deemed proper and is therefore made FINAL.
Applicant’s election of group I between further groups III to V in the reply filed on 1/19/2026 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 7-9 and 25-32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to the nonelected invention of group II, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 1/19/2026.
Claims 10, 19, and 24 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to the nonelected inventions of groups III-V, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 1/19/2026.
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 6 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 6 recites that the alloy can further comprise elements of Cr, Ni, etc. However, claim 6 depends upon claim 1, wherein claim 1 recites that the alloy can be consisting. Accordingly, it is unclear as to what particular composition is required by “consisting of” which is close ended while “comprising” is open ended. Specifically, it is unclear whether claim 6 requires the claim scope to be “comprising” and further recites additional elements, or whether claim 6 serves to broaden the narrower recited scope of “consisting of”.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 6 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. As stated above, claim 6 recites “comprising”, which is open ended. This is contrary to the recitation of “consisting of” in 1, which is close ended. Therefore, claim 6 fails to further limit the scope of claim 1. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 1-5 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Liu et al. (2011, In vitro investigation of Fe30Mn6Si shape memory alloy as potential biodegradable metallic material).
Regarding claims 1-5, Liu et al. discloses a shape memory alloy having a composition of Fe30Mn6Si having promising biodegradability properties [abstract, p.540]. Liu et al. does not expressly teach any other alloying inclusions, such that one of ordinary skill would understand Fe to be included as the remainder (ie. 64 weight percent). The examiner notes that the composition of Liu et al. falls within the claimed ranges.
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.
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al. (2011, In vitro investigation of Fe30Mn6Si shape memory alloy as potential biodegradable metallic material) as applied to claim 1 above, and further in view of Sato et al. (2006, Mechanical properties of Fe-Mn-Si based SMA and the application).
Regarding claim 6, Liu et al. discloses the alloy of claim 1 (see previous). Liu et al. does not expressly teach inclusion of additional elements as claimed. Sato et al. discloses that it is well known to alloy Fe-Mn-Si based shape memory alloys with inclusions such as Cr, Ni, Nb, V, C, N, etc. for construction applications [p.571]. Therefore, it would have been obvious to one of ordinary skill to modify the alloy of Liu et al. by adding the aforementioned inclusions because these are well known for use in construction applications as disclosed by Sato et al. above.
Claim(s) 1-6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mori et al. (US 4,780,154).
Regarding claim 1, Mori et al. discloses a shape memory alloy for use in several applications including medical devices, which one of ordinary skill would recognize to require some degree of biodegradability [col.1 ln.15-40]. Mori et al. discloses that said shape memory alloy has a composition as seen in table 1 below, which meets the claimed components [col.2 ln.13-21].
Table 1.
Element (wt.%)
Claim 1 (wt.%)
Mori et al. (wt.%)
Fe
Present
Balance
Mn
Present
20 – 40
Si
Present
3.5 – 8
Regarding claims 2-5, Mori et al. discloses the alloy of claim 1 (see previous). The examiner notes that the aforementioned composition of Mori et al. further overlaps with the claimed ranges, which is prima facie obvious. See MPEP 2144.05(I).
Regarding claim 6, Mori et al. discloses the alloy of claim 1 (see previous). Mori et al. further teaches that the alloy can include additions of Cr, Ni, Co, etc. [col.3 ln.8-21].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS A WANG whose telephone number is (408)918-7576. The examiner can normally be reached usually M-Th: 7-5.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 5712721177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICHOLAS A WANG/Primary Examiner, Art Unit 1734