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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-6, in the reply filed on 01/13/2026 is acknowledged.
Claims 7-10 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 01/13/2026.
Claim Objections
Claim 14 is objected to because of the following informalities:
In reference to claim 14, it is suggested to (1) in lines 9-10, amend “a form of a sheet” to “the form of the sheet” and (3) in line 10, amend “the method” to “a method”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
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.
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Inoue et al. (WO 2022/064898) (Inoue) in view of Kondoh (US 2016/0332233) further taken in view of evidence by Shirai et al. (US 2017/0233850) (Shirai).
It is noted that when utilizing WO 2022/064898, the disclosures of the reference are based on US 2023/0311205 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2022/064898are found in US 2023/0311205.
In reference to claims 1-6, Inoue teaches a sheet-shaped titanium-based porous body ([0001]) (corresponding to a titanium porous body in a form of a sheet). The titanium porous body has a thickness of 0.2 mm to 0.8 mm ([0025]) (corresponding to a thickness of 0.3 mm or less; the thickness is 0.04 mm or more and 0.3 mm or less). The porosity of the titanium-based porous body is 35% to 45% ([0026]) (corresponding to a porosity of 35% or more and 45% or less).
Inoue further teaches the a compression deformation rate of 19% or less and 2% or more, the compression deformation rate is a rate of change in thickness before and after an operation for applying a pressure of 65 MPa for 3 minutes in the thickness direction to compress it and the releasing the pressure is performed twice ([0033]-[0039]) (corresponding to an irreversible deformation amount after being pressurized at 65 MPa of 5.0% or less; the irreversible deformation amount after being pressurized at 65 MPa is 3.0% or less). The titanium-based porous body maybe pure titanium, the titanium content being 98% by mass or more ([0023]) (corresponding to the titanium porous body has a titanium content of 97% by mass or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Inoue does not explicitly teach the titanium-based porous body has an oxygen content of 0.9% by mass or more and 2.0% by mass or less and a carbon content of 0.01% by mass or more and 0.06% by mass or less, as presently claimed. However, Inoue teaches the titanium-based porous body is prepared using titanium-containing powder as a raw material ([0041]-[0042]).
Kondoh teaches a titanium powder containing strengthened by a solid solution of oxygen in titanium ([0001]). The titanium material can maintain higher strength and higher ductility compared to materials produced by melting methods ([0010]). The titanium powder is formed from pure titanium and contains 1.5 to 1.9 mass% of oxygen ([0022]-[0023]) (corresponding to an oxygen content of 0.9% by mass or more and 2.0% by mass or less; the oxygen content is 1.3% by mass or more and 2.0% by mass or less). Kondoh further teaches the nitrogen content in the pure titanium powder is 0.021% by mass ([0074]; Table 1) (corresponding to the titanium porous body has a nitrogen content of 0.01% by mass or more and 0.10% by mass or less). Kondoh teaches using pure titanium powder as the starting material, it is clear the pure titanium will have a composition including 0.08% by mass or less carbon (corresponding to a carbon content of 0.01% by mass or more and 0.06% by mass or less). As evidence by Shirai, commercially pure titanium have compositions corresponding to JIS Class 1-4 each including up to 0.08% by mass of carbon ([0051]-[0052]).
Kondoh teaches the titanium powder and material comprising oxygen in the above range has both increased tensile strength and yield strength and maintains appropriate ductility ([0096]; [0012]).
In light of the motivation of Kondoh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the titanium-based porous body of Inoue be made of the titanium material disclosed by Kondoh, in order to provide increased tensile strength and yield strength to the titanium-based porous body while also maintaining an appropriate ductility.
Given that the titanium-based porous metal body of Inoue in view of Kondoh is substantially identical to the present claimed titanium porous body in composition and structure, the titanium-based porous metal body of Inoue in view of Kondoh would intrinsically have a bending strain at break of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 11, Inoue in view of Kondoh teaches the limitations of claim 1, as discussed above. Inoue teaches the titanium-based porous body made of pure titanium containing titanium and oxygen ([0023]). Inoue in view of Kondoh does not teach the titanium-based porous bodies made of pure titanium include any amount of iron (i.e., 0% by mass Fe) (corresponding to the titanium porous body has an Fe content of 0.25% by mass or less).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 12, Inoue in view of Kondoh teaches the limitations of claim 1, as discussed above. Inoue teaches the titanium porous material is a sintered body composed of titanium powder ([0015]; [0058]) (corresponding to the titanium porous body is a sintered body composed of titanium powder).
However, it is noted claim 12 defines the product by how the product is made. Thus, claim 12 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a titanium porous body. Inoue in view of Kondoh suggests such a product.
In reference to claim 13, Inoue in view of Kondoh teaches the limitations of claim 1, as discussed above. Inoue further teaches the titanium-based porous body has a porosity to achieve the required permeability ([0026]). Thus, it is clear the porous body includes a three-dimensional network structure (corresponding to the titanium porous body has a skeleton of sponge titanium-shaped three-dimensional network structure).
In reference to claim 14, Inoue teaches a sheet-shaped titanium-based porous body ([0001]) (corresponding to a titanium porous body in a form of a sheet). The titanium porous body has a thickness of 0.2 mm to 0.8 mm ([0025]) (corresponding to a thickness of 0.3 mm or less; the thickness is 0.04 mm or more and 0.3 mm or less). The porosity of the titanium-based porous body is 35% to 45% ([0026]) (corresponding to a porosity of 35% or more and 45% or less).
Inoue further teaches the a compression deformation rate of 19% or less and 2% or more, the compression deformation rate is a rate of change in thickness before and after an operation for applying a pressure of 65 MPa for 3 minutes in the thickness direction to compress it and the releasing the pressure is performed twice ([0033]-[0039]) (corresponding to an irreversible deformation amount after being pressurized at 65 MPa of 5.0% or less; the irreversible deformation amount after being pressurized at 65 MPa is 3.0% or less). The titanium-based porous body maybe pure titanium, the titanium content being 98% by mass or more ([0023]) (corresponding to the titanium porous body has a titanium content of 97% by mass or more).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Inoue does not explicitly teach the titanium-based porous body has an oxygen content of 0.9% by mass or more and 2.0% by mass or less and a carbon content of 0.01% by mass or more and 0.06% by mass or less, as presently claimed. However, Inoue teaches the titanium-based porous body is prepared using titanium-containing powder as a raw material ([0041]-[0042]).
Kondoh teaches a titanium powder containing strengthened by a solid solution of oxygen in titanium ([0001]). The titanium material can maintain higher strength and higher ductility compared to materials produced by melting methods ([0010]). The titanium powder is formed from pure titanium and contains 1.5 to 1.9 mass% of oxygen ([0022]-[0023]) (corresponding to an oxygen content of 0.9% by mass or more and 2.0% by mass or less; the oxygen content is 1.3% by mass or more and 2.0% by mass or less). Kondoh further teaches the nitrogen content in the pure titanium powder is 0.021% by mass ([0074]; Table 1) (corresponding to the titanium porous body has a nitrogen content of 0.01% by mass or more and 0.10% by mass or less). Kondoh teaches using pure titanium powder as the starting material, it is clear the pure titanium will have a composition including 0.08% by mass or less carbon (corresponding to a carbon content of 0.01% by mass or more and 0.06% by mass or less). As evidence by Shirai, commercially pure titanium have compositions corresponding to JIS Class 1-4 each including up to 0.08% by mass of carbon ([0051]-[0052]).
Kondoh teaches the titanium powder and material comprising oxygen in the above range has both increased tensile strength and yield strength and maintains appropriate ductility ([0096]; [0012]).
In light of the motivation of Kondoh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the titanium-based porous body of Inoue be made of the titanium material disclosed by Kondoh, in order to provide increased tensile strength and yield strength to the titanium-based porous body while also maintaining an appropriate ductility.
Given that the titanium-based porous metal body of Inoue in view of Kondoh is substantially identical to the present claimed titanium porous body in composition and structure, the titanium-based porous metal body of Inoue in view of Kondoh would intrinsically have a bending strain at break of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Although Inoue in view of Kondoh does not explicitly teach the titanium porous body being produced by the method as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Inoue in view of Kondoh meets the requirements of the claimed product, Inoue in view of Kondoh clearly meets the requirements of the present claim.
Claims 1, 3-4, 6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Wada et al. (JP 2011-099146) (Wada).
The examiner has provided a machine translation of JP 2011-099146 with the Office Action mailed 10/15/2025. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1, 3-4 and 6, Wada teaches a porous metal sheet made of Ti with a C content of 0.5 mass% or less and an O content of 1 mass% or less ([0015]; [0019]) (corresponding to a titanium porous body in a form of a sheet, wherein the titanium porous body has a titanium content of 97% by mass or more, an oxygen content of 0.9% by mass or more and 2.0% by mass or less, and a carbon content of 0.01% by mass or more and 0.06% by mass or less). The metal sheet has a thickness of 0.03 mm or more and 0.3 mm or less and a porosity of 10 to 50% ([0016]; [0024]; [0025]) (corresponding to the titanium porous body has: a thickness of 0.3 mm or less; a porosity of 35% or more and 45% or less; the thickness is 0.04 mm or more and 0.3 mm or less).
Wada teaches ranges which overlaps the presently claimed ranges.
Wada differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Given that the titanium porous sheet of Wada is substantially identical to the present claimed titanium porous body in composition and structure, the titanium porous sheet of Wada would inherently have an irreversible deformation amount after being pressurized at 65 MPa of 3% or less and a bending strain at beak of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 11, Wada teaches the limitations of claim 1, as discussed above. Wada teaches the porous sheet includes Ti, C and O ([0015]; [0019]). Wada does not teach the porous sheet requires any amount of Fe (i.e., 0 mass% Fe) (corresponding to the titanium porous body has an Fe content of 0.25% by mass or less).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 12, Wada teaches the limitations of claim 1, as discussed above. Wada teaches the porous metal sheet is a sintered metal sheet produced by mixing titanium raw material powder and sintering the powder (Abstract; [0001]; [0014]) (corresponding to the titanium porous body is a sintered body composed of titanium powder).
However, it is noted claim 12 defines the product by how the product is made. Thus, claim 12 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a titanium porous body. Wada suggests such a product.
In reference to claim 13, Wada teaches the limitations of claim 1, as discussed above. Wada further teaches the porous metal sheet has a plurality of pores dispersed therein such that a fluid can flow through the pores ([0014]; [0015]). The plurality of pores are dispersedly arranged and communicate with each other ([0017]) (corresponding to the titanium porous body has a skeleton of sponge titanium-shaped three-dimensional network structure).
In reference to claim 14, Wada teaches a porous metal sheet made of Ti with a C content of 0.5 mass% or less and an O content of 1 mass% or less ([0015]; [0019]) (corresponding to a titanium porous body in a form of a sheet, wherein the titanium porous body has a titanium content of 97% by mass or more, an oxygen content of 0.9% by mass or more and 2.0% by mass or less, and a carbon content of 0.01% by mass or more and 0.06% by mass or less). The metal sheet has a thickness of 0.03 mm or more and 0.3 mm or less and a porosity of 10 to 50% ([0016]; [0024]; [0025]) (corresponding to the titanium porous body has: a thickness of 0.3 mm or less; a porosity of 35% or more and 45% or less; the thickness is 0.04 mm or more and 0.3 mm or less).
Wada teaches ranges which overlaps the presently claimed ranges.
Wada differs from the claims by failing to disclose an anticipatory example or a range that is sufficiently specific to anticipate the claimed range. However, it has been held that overlapping ranges are sufficient to establish prima facie obviousness.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have selected from the overlapping portion of the range taught by the reference, because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Given that the titanium porous sheet of Wada is substantially identical to the present claimed titanium porous body in composition and structure, the titanium porous sheet of Wada would inherently have an irreversible deformation amount after being pressurized at 65 MPa of 3% or less and a bending strain at beak of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Although Wada does not explicitly teach the titanium porous body being produced by the method as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Wada meets the requirements of the claimed product, Wada clearly meets the requirements of the present claim.
Claims 1-6 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Kohno et al. (US 8,921,689) (Kohno) in view of Kondoh.
In reference to claims 1-6, Kohno teaches a conductive metal layer formed of a metallic porous body (Abstract) (corresponding to a porous body in a form of a sheet). The metallic porous body has a porosity of 30 to 60 vol% and is formed of Ti (col. 2, lines 28-33; 40-43; col. 4, lines 25-28; col. 6, lines 41-45) (corresponding to a titanium porous body; a porosity of 35% or more and 45% or less). The thickness of the conductive metal layer is 1 µm to 600 µm (i.e., 0.001-0.6 mm) (col. 4, lines 31-33) (corresponding to the titanium porous body has: a thickness of 0.3 mm or less; the thickness is 0.04 mm or more and 0.3 mm or less).
Kohno does not explicitly teach the metallic porous body has an oxygen content of 0.9% by mass or more and 2.0% by mass or less and a carbon content of 0.01% by mass or more and 0.06% by mass or less, as presently claimed. However, Kohno teaches using titanium porous bodies as the conductive metal layer and the conductive metal layer is obtained by a method of preparing a metal paste including metallic fine powder and heating the metal paste to a calcination temperature under a substantially oxygen-free ambient atmospheric condition (col. 6, lines 41-45, 22-29).
Kondoh teaches a titanium powder containing strengthened by a solid solution of oxygen in titanium ([0001]). The titanium material can maintain higher strength and higher ductility compared to materials produced by melting methods ([0010]). The titanium powder is formed from pure titanium and contains 1.5 to 1.9 mass% of oxygen ([0022]-[0023]) (corresponding to an oxygen content of 0.9% by mass or more and 2.0% by mass or less; the oxygen content is 1.3% by mass or more and 2.0% by mass or less). Kondoh further teaches the nitrogen content in the pure titanium powder is 0.021% by mass ([0074]; Table 1) (corresponding to the titanium porous body has a nitrogen content of 0.01% by mass or more and 0.10% by mass or less). Kondoh teaches using pure titanium powder as the starting material, it is clear the pure titanium will have a composition including 0.08% by mass or less carbon (corresponding to a carbon content of 0.01% by mass or more and 0.06% by mass or less). As evidence by Shirai, commercially pure titanium have compositions corresponding to JIS Class 1-4 each including up to 0.08% by mass of carbon ([0051]-[0052]).
Kondoh teaches the titanium powder and material comprising oxygen in the above range has both increased tensile strength and yield strength and maintains appropriate ductility ([0096]; [0012]).
In light of the motivation of Kondoh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the porous body of Kohno be made of the titanium powder disclosed by Kondoh, in order to provide increased tensile strength and yield strength to the titanium porous body while also maintaining an appropriate ductility.
Given that the porous titanium metal body of Kohno in view of Kondoh is substantially identical to the present claimed titanium porous body in composition and structure, porous titanium metal body of Kohno in view of Kondoh would intrinsically have an irreversible deformation amount after being pressurized at 65 MPa of 3.0% or less and a bending strain at break of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 11, Kohno in view of Kondoh teaches the limitations of claim 1, as discussed above. Kohno in view of Kondoh teaches the metallic porous body comprises titanium, oxygen and nitrogen (Kondoh, [0022]-[0023]; [0074]; Table 1). Thus, it is clear the metallic porous body includes no iron (i.e., 0 mass% of Fe) (corresponding to the titanium porous body has an Fe content of 0.25% by mass or less).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 12, Kohno in view of Kondoh teaches the limitations of claim 1, as discussed above. Kohno further teaches the conductive metal layer is prepared from a powder metal that is calcinated (col. 6, lines 22-29) (corresponding to the titanium porous body is a sintered body composed of titanium powder).
However, it is noted claim 12 defines the product by how the product is made. Thus, claim 12 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a titanium porous body. Kohno in view of Kondoh suggests such a product.
In reference to claim 13, Kohno in view of Kondoh teaches the limitations of claim 1, as discussed above. Kohno further teaches the metallic porous body has a multitude of holes isotopically communicated with one another (col. 2, lines 28-31) (corresponding to the titanium porous body has a skeleton of sponge titanium-shaped three-dimensional network structure).
In reference to claim 14, Kohno teaches a conductive metal layer formed of a metallic porous body (Abstract) (corresponding to a porous body in a form of a sheet). The metallic porous body has a porosity of 30 to 60 vol% and is formed of Ti (col. 2, lines 28-33; 40-43; col. 4, lines 25-28; col. 6, lines 41-45) (corresponding to a titanium porous body; a porosity of 35% or more and 45% or less). The thickness of the conductive metal layer is 1 µm to 600 µm (i.e., 0.001-0.6 mm) (col. 4, lines 31-33) (corresponding to the titanium porous body has: a thickness of 0.3 mm or less; the thickness is 0.04 mm or more and 0.3 mm or less).
Kohno does not explicitly teach the metallic porous body has an oxygen content of 0.9% by mass or more and 2.0% by mass or less and a carbon content of 0.01% by mass or more and 0.06% by mass or less, as presently claimed. However, Kohno teaches using titanium porous bodies as the conductive metal layer and the conductive metal layer is obtained by a method of preparing a metal paste including metallic fine powder and heating the metal paste to a calcination temperature under a substantially oxygen-free ambient atmospheric condition (col. 6, lines 41-45, 22-29).
Kondoh teaches a titanium powder containing strengthened by a solid solution of oxygen in titanium ([0001]). The titanium material can maintain higher strength and higher ductility compared to materials produced by melting methods ([0010]). The titanium powder is formed from pure titanium and contains 1.5 to 1.9 mass% of oxygen ([0022]-[0023]) (corresponding to an oxygen content of 0.9% by mass or more and 2.0% by mass or less; the oxygen content is 1.3% by mass or more and 2.0% by mass or less). Kondoh further teaches the nitrogen content in the pure titanium powder is 0.021% by mass ([0074]; Table 1) (corresponding to the titanium porous body has a nitrogen content of 0.01% by mass or more and 0.10% by mass or less). Kondoh teaches using pure titanium powder as the starting material, it is clear the pure titanium will have a composition including 0.08% by mass or less carbon (corresponding to a carbon content of 0.01% by mass or more and 0.06% by mass or less). As evidence by Shirai, commercially pure titanium have compositions corresponding to JIS Class 1-4 each including up to 0.08% by mass of carbon ([0051]-[0052]).
Kondoh teaches the titanium powder and material comprising oxygen in the above range has both increased tensile strength and yield strength and maintains appropriate ductility ([0096]; [0012]).
In light of the motivation of Kondoh, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the porous body of Kohno be made of the titanium powder disclosed by Kondoh, in order to provide increased tensile strength and yield strength to the titanium porous body while also maintaining an appropriate ductility.
Given that the porous titanium metal body of Kohno in view of Kondoh is substantially identical to the present claimed titanium porous body in composition and structure, porous titanium metal body of Kohno in view of Kondoh would intrinsically have an irreversible deformation amount after being pressurized at 65 MPa of 3.0% or less and a bending strain at break of 0.007 or more.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Although Kohno in view of Kondoh does not explicitly teach the titanium porous body being produced by the method as presently claimed, it is noted that the present claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kohno in view of Kondoh meets the requirements of the claimed product, Kohno in view of Kondoh clearly meets the requirements of the present claim.
Response to Arguments
Applicant primarily argues:
“Specifically, Inoue is not available as prior art under 35 USC 102(a)(1) because Inoue was published on March 31, 2022, after the present application's effective filing date (January 31, 2022, the filing date of Japanese priority application no. JP 2022-012822).
Further, Inoue is not available as prior art under 35 USC 102(a)(2) because each exception under 35 USC 102(b)(1) and (2) apply.
Specifically, the applicant (Toho Titanium Co., Ltd.) of the present application is the same as the applicant of the Inoue reference. Although the inventive entity of the present application (Yosuke Inoue) is different from the inventive entity of the reference (Yosuke Inoue and Shougo Tsumarari) of the Inoue reference because the inventor of Inoue includes Shougo Tsumagari. Although both the Japanese priority date (September 28, 2020) and international filing date (August 17, 2021) of the reference pre-date the present application's Japanese priority date (January 31, 2022), both the reference and the claimed invention were owned by the same person (Toho Titanium Co., Ltd.) before the effective filing date of the claimed invention.”
Remarks, p. 6-7
The examiner respectfully traverses as follows:
Applicant has provided evidence in this file showing that the claimed invention and the subject matter disclosed in the prior art reference were owned by, or subject to an obligation of assignment to, the same entity as Toho Titanium Co., Ltd. not later than the effective filing date of the claimed invention, or the subject matter disclosed in the prior art reference was developed and the claimed invention was made by, or on behalf of one or more parties to a joint research agreement in effect not later than the effective filing date of the claimed invention. However, although reference Inoue has been excepted as prior art under 35 U.S.C. 102(a)(2), it is still applicable as prior art under 35 U.S.C. 102(a)(1) that cannot be excepted under 35 U.S.C. 102(b)(2)(C).
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. Once the foreign priority date of 01/13/2022 has been perfected, Inoue will no longer be applicable as prior art under 35 U.S.C. 102(a)(1).
Alternatively, Applicant may rely on the exception under 35 U.S.C. 102(b)(1)(A) to overcome this rejection under 35 U.S.C. 102(a)(1) by a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application, and is therefore not prior art under 35 U.S.C. 102(a)(1). Applicant may alternatively rely on the exception under 35 U.S.C. 102(b)(1)(B) by providing evidence of a prior public disclosure via an affidavit or declaration under 37 CFR 1.130(b).
Applicant further argues:
“Because the claimed titanium porous body is different from the titanium porous sheet of Wada in the production method, the titanium porous sheet of Wada is not deemed to intrinsically have the irreversible deformation amount after being pressurized at 65 MPa and the bending strain at break as recited in claim 1 of the present application. Specifically, the claimed titanium porous body can be obtained by the method according to present claim 7, and the porous body of claim 14 is recited as a product-by-process claim incorporating the limitations of claim 4..
In contrast, the method for producing a titanium porous sheet of Wada is different from that of the present application in that (i) the method of Wada uses a slurry containing titanium powder, an organic binder, water, and, if necessary, a plasticizer (see paragraph [0028] of Wada) instead of the paste as recited in claims 7 and 14 of the present application, and (ii) the method of Wada does not include the preheating step as recited in claims 7 and 14of the present application.
As to (ii), in the method according to claim 7 and recited in claim 14, the preheating step is performed in an oxygen-containing atmosphere. The purpose of this step is to form a relatively thick surface oxide layer on the surface of the titanium powder (see paragraphs [0065] and [0066] of the published application). In the method of Wada, a debinding step is performed in an argon atmosphere (see paragraph [0033] of Wada), which cannot form a relatively thick surface oxide layer on the surface of the titanium powder. It is to be expected that parameters of the titanium porous body, such as irreversible deformation amount after being pressurized at 65 MPa and bending strain at break, are affected depending on different production methods. Therefore, the titanium porous sheet of Wada is not deemed to intrinsically have the irreversible deformation amount after being pressurized at 65 MPa and the bending strain at break as recited in claim 1 of the present application.”
Remarks, p. 7-8
The examiner respectfully traverses as follows:
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the Applicant regarding the titanium porous sheet of Wada is not deemed to intrinsically have the irreversible deformation amount after being pressurized at 65 MPa and the bending strain at break as recited in claim 1 of the present application because the production method is different from that recited in new claim 14 must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
While the examiner agrees the method of Wada is different from the process limitations of claim 14, the elected claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Wada meets the requirements of the claimed product, Wada clearly meets the requirements of the present claim.
Further, the instant application discloses when the oxygen content in the titanium porous body is too high the bending strain at break is lower and when the oxygen content in the titanium porous body is lower the irreversible deformation amount is higher ([0068]-[0069]). Thus, it is clear when the oxygen content of the titanium porous body of Wada is within the presently claimed oxygen range the titanium porous body of Wada would inherently have the bending strain at break and irreversible deformation amount as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Applicant further argues:
“Because the claimed titanium porous body is different from the titanium porous body of Kohno in the production method, and Kondoh merely discloses a method for producing a titanium powder instead of a titanium porous body in the form of a sheet, the titanium porous body of Kohno in view of Kondoh is not to be deemed to intrinsically have the irreversible deformation amount after being pressurized at 65 MPa and the bending strain at break as recited in claims 1 and 14 of the present application.
Specifically, the claimed titanium porous body can be obtained by the method according to claim 7. In contrast, Kohno describes an invention of a dye-sensitized solar cell comprising a conductive metal layer formed of a metallic porous body sheet (see claim 1).”
Remarks, p. 9
The examiner respectfully traverses as follows:
It is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the Applicant regarding the metallic porous body of Kohno in view of Kondoh is not deemed to intrinsically have the irreversible deformation amount after being pressurized at 65 MPa and the bending strain at break as recited in claim 1 of the present application because the production method is different from that recited in new claim 14 must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
While the examiner agrees the method of Kohno in view of Kondoh is different from the process limitations of claim 14, the elected claims are drawn to a product and not drawn to a method of making. Thus, “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed process and given that Kohno in view of Kondoh meets the requirements of the claimed product, Kohno in view of Kondoh clearly meets the requirements of the present claim.
Further, the instant application discloses when the oxygen content in the titanium porous body is too high the bending strain at break is lower and when the oxygen content in the titanium porous body is lower the irreversible deformation amount is higher ([0068]-[0069]). Thus, it is clear when the oxygen content of the titanium porous body of Kohno in view of Kondoh is within the presently claimed oxygen range the titanium porous body of Kohno in view of Kondoh would inherently have the bending strain at break and irreversible deformation amount as claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Therefore, Applicant's arguments filed 01/13/2026 have been fully considered but they are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784