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 .
DETAILED ACTION
Specification (abstract) and Claim 1 have been amended; Claims 1-4 remain for examination, wherein claim 1 is an independent claim.
Previous Rejections/Objections
Previous objection of specification is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 8/13/2026.
Previous objection of claim 1 is withdrawn in view of the Applicant’s “Arguments/Remarks with amendment” filed on 8/13/2026.
However, in view of the Applicant’s amendment, newly recorded prior art(s), and reconsideration, a new ground rejection has been listed as following:
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 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.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Tamura et al (EP 3276016 A1, thereafter EP’016).
EP’016 is applied to instant claims 1-4 for the same reason as stated in the previous office action dated 5/13/2026.
Regarding the amendment in instant claim 1, which does not change the claimed scope of the instant claim.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory obviousness-type double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-4 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 1-2 of copending application No. 18/688869 (US-PG-pub 2024/0229195 A1).
Claims 1-2 of copending application No. 18/688869 (US-PG-pub 2024/0229195 A1) is applied to instant claims 1-4 for the same reason as stated in the previous office action dated 5/13/2026.
Regarding the amendment in instant claim 1, which does not change the claimed scope of the instant claim.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Claims 1-4 are rejected on the ground of nonstatutory obviousness type double patenting as being unpatentable over Claims 8-21 of copending application No. 19/104787 (US-PG-pub 2026/0055720 A1).
Claims 8-21 of copending application No. 19/104787 (US-PG-pub 2026/0055720 A1) is applied to instant claims 1-4 for the same reason as stated in the previous office action dated 5/13/2026.
Regarding the amendment in instant claim 1, which does not change the claimed scope of the instant claim.
This is a provisional obvious-type double patenting rejection since the conflict claims in the co-pending application have not in fact been patented.
Notes: Konno et al (US-PG-pub 2013/0336835 A1) is cited as a reference only.
Response to Arguments
Applicant’s arguments to the rejections to Claims 1-4 have been considered but they are not persuasive.
The Applicant’s arguments are summarized as following:
1, the cited prior art EP’016 requires Cr and Fe as mandatory elements in the alloy, which is contrary to the max of 0.2wt% Fe and no Cr as claimed in the instant claim. 1-7wt% Cr+Fe is required for alloy of EP’016.
2, present invention concerns with low-alloy Ti alloy.
3, Regarding the ODP rejections, the copending application required different mandatory elements compared to the instant invention.
In response,
Regarding arguments 1 and 2, Firstly, as pointed in the rejection as stated the rejection in the previous office action dated 5/13/2026, all of the alloy composition ranges disclosed by EP’016 overlap the claimed alloy composition ranges as claimed in the instant claims, which creates a prima facie case of obviousness. MPEP 2144 05 I. Secondly, the instant claims do not exclude Cr in the alloy and there is no limitation for “a low alloy Ti alloy” as argued. Thirdly, EP’016 indicates Fe is adjustable from 0-2.5wt%, which overlaps the claimed Fe range. MPEP 2144 05.I. Finally, “alloy containing…” is a “open” language, which does not limit including additional alloy element, such as Cr, in the alloy.
Regarding argument 3, the claimed limitations in the instant claims do not exclude different mandatory elements in the claimed Ti alloy.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIE YANG whose telephone number is (571)270-1884. The examiner can normally be reached on IFP.
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/JIE YANG/Primary Examiner, Art Unit 1734
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