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 without traverse of Group II, claims 1-4 in the reply filed on 08/18/2026 is acknowledged.
Claims 5-8 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected group II, there being no allowable generic or linking claim.
Status of Claims
Claims 1-8 are pending. Claims 1-4 are presented for this examination.
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) was submitted on 06/28/2024 and 12/31/2025 and is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claims 1-4 are 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 pre-AIA the applicant regards as the invention.
Instant claims 1-2 recite the limitations "the titanium alloy" in last line. There is insufficient antecedent basis for this limitation in the claim. It is unclear whether the titanium alloy is the titanium alloy base material as recited in step b) or something else.
As a result of rejected claim 1, all dependent claims are also rejected under the same statue.
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.
Claim(s) 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu (CN111041273A) in view of Xi(CN110983105A) and evidenced by Ferrochrome (NPL document: “Ferrochrome(FeCr)”)
As for claims 1-3, Zhu discloses low cost of forging titanium alloy material used for gold head using low cost of ferromolybdenum, ferrochromium alloy to reduce the material cost.
The method comprising:
Mixing 0.016kg of ferrochromium alloy, 0.93 kg sponge titanium (i.e. pure Ti as claimed) to make 1kg of titanium alloy material. ([0026])
Hence, 0.016kg of ferrochromium alloy is expected to be 1.6% by weight, which reads on instant claim 1 second wherein clause “wherein the ferrochrome is added in amount of smaller than 4% by weight with respect to total (1kg) of titanium alloy material. It also reads on instant claim 2 required 0.5-2%.
Hence, instant claimed step a) adding ferrochrome to a pure Ti is met.
Vacuum melting and cooling to form an ingot, which reads on claimed step b) melting step
Forging several times by hot rolling to obtain a desired high strength forging titanium alloy material, which reads on claimed step c) hot forming.
Zhu differs from instant claim 1 such that it does not disclose composition of ferrochromium alloy and hot forging temperature and forming ratio as required by instant claim 3.
Xi discloses a similar preparation method of making Ti alloy by mixing sponge titanium, ferromolybdenum alloy and ferrochrome alloy, melting the mixture and cooling followed by forging.
Xi explicitly discloses ferrochrome alloy is low carbon ferrochromium such as FeCr69C0.06 ([0038]) which suggests the ferrochrome includes Fe 30%, Cr 69%, C 0.06%. Ferrochrome further evidences that low carbon ferrochromium is expected to have Si up to 1.5%. (Tables) Hence, Xi suggests instant claim 5 required ferrochromium includes Fe 30%, Cr 69%, C 0.06% with Si up to 1.5%.
Xi also discloses hot forging 640 mm titanium alloy ingot at 850 degree C, 50 degree C below the phase transformation temperature of TB to obtain 60 mm titanium alloy bar, (Example 3 and English translation page 5 paragraph 3) which suggests forming temperature and forming ratio as required by instant claim 7.
Since Zhu desires to use low cost ferrochrome to reduce production cost and low carbon ferrochromium is a ferrochrome with low carbon content, it would have been obvious to one skill in the art, at the time the invention is made to use low carbon ferrochrome and forging temperature and forming ratio as suggested by Xi, in the preparation process of Zhu, for the benefit of reduced carbon emission and low production cost and high strength as low carbon ferrochrome is expected to have low carbon content which leads to reduced carbon emission.
As for claim 4, Table 1a below further illustrates Zhu’s prepared Ti alloy has overlapping compositions and TS as claimed.
Table 1a
Element
Applicant
(weight %)
Zhu et al.
(weight %)
Abstract
Overlap
(weight %)
Cr
0.1-3
0.6-1.4
0.6-1.4
Fe
0.1-1
0.6-1.8
0.6-1
Si
0.01-0.1
O
<=0.4
0
0
TS (MPa)
861-1165
>=720
861-1165
With respect to Si amount, it is a resulting characteristic of claimed process of mixing same raw material of pure Ti with low ferrochrome including Fe, Si and C and Cr as claimed.
When a claimed process along with its resultant product reasonably appears to be substantially the same as, or an obvious variant of, a product disclosed by the prior art, the burden is on the applicant to prove that the prior art process and its resultant product does not necessarily or inherently possess characteristics attributed to the claimed product, and that it is of no moment whether the rejection is based on § 102 or § 103 since the burden on the applicant is the same. Cf. In re Spada, 911 F.2d 705, 708 (Fed Cir. 1990); In re Best,562 F.2d 1252, 1255 (CCPA 1977).
In the instant case, Since the starting raw material of Zhu in view of Xi has ferrochrome compositions including Fe, Si, C and Cr that meet the instant application composition and resulting Ti alloy is made from a similar process steps mixing, melting and hot forming , it is therefore reasonable to believe that the prepared Ti alloy composition such as Si would have naturally flowed following the suggestion of Zhu in view of Xi absent evidence of the contrary. See MPEP 2112.01 I.
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 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); 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 nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 5-8 of copending Application No. 18/725,472 (copending application’472). Although the claims at issue are not identical, they are not patentably distinct from each other because both inventions claim a method of preparing a titanium alloy comprising adding ferrochrome in the amount of less than 4% with respect to total titanium alloy amount, melting and then cooling the molten to form a base material and then hot forming the base material. The ferrochrome includes Fe, Si, and C with remainder of Cr.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JENNY R WU whose telephone number is (571)270-5515. The examiner can normally be reached on 8:30 AM-5:00 PM.
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/JENNY R WU/Primary Examiner, Art Unit 1733
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