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 Claims
Claims 1-8, 10, 12, and 15-21 are pending.
Claims 9, 11, and 13-14 were cancelled.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Applicant cannot rely upon the certified copy of the foreign priority application to overcome a rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Should applicant desire to obtain the benefit of foreign priority under 35 U.S.C. 119(a)-(d) prior to declaration of an interference, a certified English translation of the foreign application must be submitted in reply to this action. 37 CFR 41.154(b) and 41.202(e).
Failure to provide a certified translation may result in no benefit being accorded for the non-English application
Information Disclosure Statement
It is noted that the applicant cites the following two references in their specification:
Sawahata, et al., (2018) "Synthesis and Mechanical Characteristic Evaluation of Polycrystalline Single-Phase ω-Ti and ω-Zr under High Pressure" (in Japanese), High Pressure Science & Technology, 28, Special Issue
Sawahata, et al., (2019) "Synthesis and Bending Characteristic Evaluation of Polycrystalline Single-Phase ω-Ti under High Pressure" (in Japanese), High Pressure Science & Technology, 29, Special Issue, 93
The listing of these references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered. Furthermore, this listing fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed.
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 1-8, 10, 12, and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Li (“Towards pure: The single-phase bulk omega titanium and modulation on its elastic properties under biaxial strains”).
Regarding claims 1-8, 10, 12, and 15-21, Li teaches a 99.9 % pure titanium material (pg. 2 §2.1 “Experimental Procedures”). The titanium material’s microstructure comprises 100% ω-phase with grain sizes exceeding 1 µm (pg. 2 §3.1 “Phase Identification”, Fig. 3 (d)). Li’s taught grain sizes read on the claimed average grain diameter limitations.
Li fails to teach tensile strength, fracture elongation, yield strength (tensile or compressive) heat-resistant temperature, or D90/D10 proportion values. However, it is noted that that the titanium production method taught by Li has overlap with the applicant’s disclosed method. Particularly, Li’s method comprises pressurizing the starting titanium material to a pressure of about 7.5 GPa with an anvil and holding the pressure for 18-28.8 ks (equivalently, 5-8 hrs) (pg. 2 §2.1 “Experimental Procedures”, Fig. 1(a-b)). In contrast, the applicant pressurizes their starting titanium material to 6-11 GPa with an anvil and holds the pressure for 1-5 hrs.
Overall, given the overlap between Li’s titanium material characteristics (i.e. composition, grain size, and omega phase fraction) & production method and the applicant’s material characteristics & production method, Li’s titanium material will inherently have tensile strength, fracture elongation, yield strength (tensile or compressive) heat-resistant temperature, and D90/D10 proportion values that fulfill the limitations set forth in the applicant’s claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (See MPEP 2112.01).
Applicant cannot rely upon the certified copy of the foreign priority application to overcome this rejection because a translation of said application has not been made of record in accordance with 37 CFR 1.55. When an English language translation of a non-English language foreign application is required, the translation must be that of the certified copy (of the foreign application as filed) submitted together with a statement that the translation of the certified copy is accurate. See MPEP §§ 215 and 216.
Claims 1-8, 10, 12, and 15-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sawahata (“Fabrication of single-phase polycrystalline ω-Ti and ω-Zr under high pressure and temperature, and their physical properties”, published September 2018).
Regarding claims 1-8, 10, 12, and 15-21, Sawahata teaches a pure single-phase ω-titanium material.
However, Sawahata fails to teach grain diameter, tensile strength, fracture elongation, yield strength (tensile or compressive) heat-resistant temperature, or D90/D10 proportion values. However, it is noted that that the titanium production method taught by Sawahata has significant overlap with the applicant’s disclosed method. Particularly, Sawahata’s method comprises the following steps:
Furnishing polycrystalline α-titanium rods 4 mm in diameter and 3 mm in height.
Subjecting the α-titanium rods to a pressure of 12 GPa and a temperature of 400OC for a duration of 4 hours.
In contrast, the applicant discloses the following method steps in their specification:
Furnishing polycrystalline α-titanium rods 10 mm in diameter and 6 mm in height.
Subjecting the α-titanium rods to a pressure of 6-11 GPa and a temperature of 200-600OC for a duration of 1-5 hours.
Sawahata’s taught temperature and duration are within the applicant’s disclosed temperature and duration ranges. However, Sawahata’s taught rod geometry and pressure differ from the applicant’s rod geometry and pressure range.
In the case of the differing pressures, Sawahata’s taught pressure is sufficiently close to the applicant’s pressure range that a ω-titanium material produced by Sawahata’s method would have similar properties to a ω-titanium material made by the applicant’s method. Additionally, it is noted that the applicant discloses that a ω-titanium material produced with a 12 GPa pressure presumably results in the unwanted formation of ω-phase grains with nanoscale dimensions. However, there is no showing in the applicant’s specification that this is indeed the case. Claims that differ from the prior art only by slightly different (non-overlapping) ranges are prima facie obvious without a showing that the claimed range achieves unexpected results relative to the prior art. (MPEP 2144.05)
In the case of the differing rod geometries, Sawahata’s taught dimensions are sufficiently close to the applicant’s dimensions that a ω-titanium material produced by Sawahata’s method would have similar properties to a ω-titanium material made by the applicant’s method. Additionally, there is no showing in the specification that the rod dimensions have an impact on the material properties. Since the instant specification is silent to unexpected results, it would have been obvious to one of ordinary skill in the art to change the rod dimensions to accommodate, for example, post-production characterization. A change in size (dimension) is generally recognized as being within the level of ordinary skill in the art. In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955). Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04 IV(A).
Overall, given the overlap between Sawahata’s titanium material & production method and the applicant’s material & production method, Sawahata’s titanium material will inherently have grain diameter, tensile strength, fracture elongation, yield strength (tensile or compressive) heat-resistant temperature, and D90/D10 proportion values that fulfill the limitations set forth in the applicant’s claims. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (See MPEP 2112.01).
Contact information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAVIER FLORES whose telephone number is (571)272-9130. The examiner can normally be reached Mon-Fri 7:30AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, KEITH WALKER can be reached at 571-272-3458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.F./Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735
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