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 .
Status of the Claims
Claims 1-2 are pending and are currently under examination.
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.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Yin et al. (CN 106636739A)
In regard to claim 1, Yin et al. (CN ‘739) discloses titanium base alloys having compositions relative to that of the instant invention as set forth below (abstract and [0007]).
Element
Instant Claim
(weight percent)
Yin et al. (CN ‘739)
(mass percent)
Overlap
Al
0.7 – 1.5
1.5 – 3.5
1.5
Zr
0.5 – 1.5
0.5 – 5
0.5 – 1.5
Nb
0.5 – 1.5
0.5 – 3
0.5 – 1.5
Mo
0.1 – 0.5
0.5 – 2
0.5
Si
0 – 0.5
0
0
Fe
0 – 0.2
0
0
O
0 – 0.15
0
0
C
0 – 0.1
0
0
N
0 – 0.03
0
0
Element
Instant Claim
(weight percent)
Yin et al. (CN ‘739)
(mass percent)
Overlap
H
0 – 0.015
0
0
Ti
Balance
Balance
Balance
The Examiner notes that the amounts of aluminum, zirconium, niobium, molybdenum, silicon, iron, oxygen, carbon, nitrogen and hydrogen overlap the amounts of the instant invention, which is prima facie evidence of obviousness. MPEP 2144.05 I. It would have been obvious to one having ordinary skill in the art prior to the filing of the instant invention to select the claimed amounts of aluminum, zirconium, niobium, molybdenum, silicon, iron, oxygen, carbon, nitrogen and hydrogen from the amounts disclosed by Yin et al. (CN ‘739) because Yin et al. (CN ‘739) discloses the same utility throughout the disclosed ranges.
With respect the transitional phrase “consisting of” in claim 1, Yin et al. (CN ‘739) does not require the presence of elements beyond that which is required in the claim and therefore would read on this transitional phrase. MPEP 2111.03.
In regard to claim 2, Yin et al. (CN ‘736) discloses wherein the titanium alloys would be used in ocean engineering equipment such as pipe (abstract and [0006]).
Response to Arguments
Applicant's arguments filed July 31, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the current claims are directed to obtaining the titanium to be used for exhaust system components, where along with heat resistance, oxidation resistance and elevated temperature operating capability, high technological ductility at room temperature is desired and exhaust system components are produced from thin sheets and tubes by bending, drawing, flaring, and forging operations.
In response, the Examiner notes that Applicant’s arguments are drawn to an intended use of the claimed alloys that would not further limit the structure of the claimed alloy and if Applicant seeks to claim a specific structure, that structure should distinguish from Yin et al. (CN ‘736). MPEP 2111.03.
Second, the Applicant primarily argues that the claimed alloy distinguishes from Yin et al. (CN ‘736) due to decreased aluminum content of range 0.7 to 1.5 weight percent, molybdenum content range of 0.1 to 0.5 weight percent as well as the established limits for impurity elements content.
In response, the Examiner does not find an establishment in criticality for aluminum, molybdenum and or impurities based on the instant specification. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). MPEP 716.02(d)(II).
Third, the Applicant primarily argues that the claimed aluminum interval of 0.7 to 1.5 weight percent is critical and refers to the balance achievement in reference to Table 2.
In response, the Examiner notes that Table 2 refers to a specimen that has been annealed. However, an annealed alloy is present in the pending claims and therefore Applicant’s argument is not commensurate in scope with the pending claims. MPEP 716.02(b)(III).
Fourth, the Applicant primarily argues that the instant invention has a strict limit on the content of oxygen, nitrogen and carbon and Yin et al. (CN ‘736) contains no information about the existence. The Applicant further argues that the claimed alloy also has a strict limit on the content of hydrogen and Yin et al. (CN ‘736) does not mention the presence of hydrogen.
In response, the Examiner’s position is that if a reference does not disclose the presence of something, one cannot assume it is there except in instances where there is some evidentiary reference that would suggest another element is present. Applicant has not provided such a reference and thus the Examiner would treat the presence of oxygen, nitrogen, carbon and hydrogen as having a lower limit of 0 weight percent much like an element such as helium or arsenic.
Conclusion
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.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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