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 claims 1-7 in the reply filed on 12/8/2025 is acknowledged.
Specification
The abstract of the disclosure is objected to because the abstract is written in the form of a claim. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 214642306 U; see machine translation provided).
Regarding claim 1, Zhang discloses (pg. 1, Background section) an implant for covering bone defects, wherein the implant (pg. 5, 4th full paragraph) consists of magnesium or a magnesium alloy, by providing a magnesium or magnesium alloy film having surface impurities on opposing major surfaces thereof; and removing a layer of material from both opposing major surfaces of the magnesium or magnesium alloy film, thereby removing the surface impurities.
Regarding claim 2, Zhang discloses (pg. 5, 4th full paragraph) wherein the layer of material is removed by grinding or polishing.
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.
Claim(s) 3, 4, 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 214642306 U).
Zhang discloses all the claimed subject matter except for the following: wherein a thickness of the magnesium alloy film is reduced by 3 to 60%; wherein a thickness of the magnesium or magnesium alloy film is reduced by a minimum of 10 µm on each side; wherein the magnesium or magnesium alloy film is produced with a material area ratio in a core zone of +/- 1 µm as determined from the Abbott-Firestone curve which is greater than 95%; or wherein the surface impurities are an unavoidable byproduct of an upstream rolling process in a rolling mill.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art to reduce a thickness of the magnesium alloy film by 3 to 60%, and to reduce a thickness of the magnesium or magnesium alloy film by a minimum of 10 µm on each side because Applicant has not disclosed reducing a thickness of the magnesium alloy film by 3 to 60%, or reducing a thickness of the magnesium or magnesium alloy film by a minimum of 10 µm on each side provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the reduction of the rolled magnesium alloy film taught by Zhang because an implant is produced according to the desired dimensions.
Regarding claim 7, the rolled magnesium alloy film Zhang inherently has a material area ratio, however, there is no disclosure of the material area ratio being in a core zone of +/- 1 µm as determined from the Abbott-Firestone curve which is greater than 95%. Since the determination of the material area ratio having the aforementioned criteria is based on a set of parameters one of ordinary skill in the art would be able to determine the set of parameters based on the material composition and surface characteristics of the rolled magnesium alloy film of Zhang.
It is conventional and well known to produce magnesium alloy film by rolling, and rolling inherently produces surface impurities.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to produce the magnesium or magnesium alloy film of Zhang by an upstream rolling process in a rolling mill wherein the surface impurities are an unavoidable byproduct of the rolling process, in order to provide a flat film layer.
Claim(s) 5 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang (CN 214642306 U) in view of CN 114855257 A.
Zhang discloses all of the claimed subject matter except for wherein a remaining thickness of the rolled magnesium or magnesium alloy film after grinding is further reduced on each side by 5-30 µm by etching; or further comprising cutting or shaping the rolled magnesium or magnesium alloy film between the grinding or polishing and the etching;
CN`257 (see machine translation) discloses in example 2 a magnesium film material having PTFE film layered on the magnesium film. CN`257 discloses a thickness of the rolled magnesium alloy film is reduced by removing 0.2 mm protective film. CN’257 also discloses wherein a remaining thickness of the magnesium film after polishing is further reduced by protective film being dissolved and removed by a chemical way to obtain the polished metal film.
It is conventional and well known to cut or shape metal as part of a post treatment process.
Therefore, it would have been obvious to one having ordinary skill in the art before the effective filing date to reduce a remaining thickness of the rolled magnesium alloy film of Zhang after polishing by etching, and to cut or shape the rolled magnesium alloy film of Zhang after polishing and before etching, in light of the teachings of CN`257, in order to produce a clean polished film layer.
Note that Zhang/CN`257 does not expressly disclose the magnesium alloy film being reduced on each side by 5 - 30 µm by etching.
At the time the invention was made, it would have been an obvious matter of design choice to a person of ordinary skill in the art after grinding to further reduce the film on each side by 5-30 µm by etching because Applicant has not after grinding to further reduce the film on each side by 5-30 µm by etching provides an advantage, is used for a particular purpose, or solves a stated problem. One of ordinary skill in the art, furthermore, would have expected Applicant’s invention to perform equally well with the reduction of the rolled magnesium alloy film taught by Zhang because an implant is produced according to the desired dimensions.
Response to Arguments
Applicant’s arguments, see pages 6-8 of the response, filed 3/24/2026, with respect to the rejection(s) of claim(s) 1-7 under 35 USC 103 as being obvious over Wang in view of CN’257 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Zhang (CN 214642306 U), and Zhang (CN 214642306 U) in view of CN`257.
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 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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/JERMIE E COZART/Primary Examiner, Art Unit 3799
May 28, 2026
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