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 the Claims
Claims 1-2, 5-8, 13 and 15-27 are pending wherein claims 22-23 are amended and claims 3-4, 9-12 and 14 are canceled.
Status of Previous Rejections
The previous rejection of claims 22-23 under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor regards as the inventio nis withdrawn in view of the Applicant’s amendment to claims 22-23.
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.
Claims 1-2, 7-8, 19-22 and 24-27 are rejected under 35 U.S.C. 103 as being unpatentable over Eylon et al. (US 5,447,582).
In regard to claims 1 and 24, Eylon et al. (‘582) discloses a method of refining the alpha-2 titanium and orthorhombic microstructure of titanium aluminide alloys that were fabricated by casting and machining (brought to room temperature) comprising hydrogenating at or slightly below the beta-transus temperature such as for about 10 hours; cooling to about 20 to 40% below the beta-transus temperature (phase transformation temperature, such as 650°C) under a positive partial pressure of hydrogen and holding for 10 hours; and dehydrogenating by heating the article at a temperature below the beta-transus (such as 650 to 760°C) under vacuum for about 12 to 48 hours (column 2, lines 30-45 and column 3, line 8 to column 4, line 20). Since a time frame of about 1 minute to about 48 hours would be sufficient to convert to substantially homogenous beta phase [0056 of the instant specification), the about 10 hours at the beta-transus as disclosed by Eylon et al. (‘582) would be sufficient to convert to substantially homogenous beta phase as would be appreciated by one having ordinary skill in the art. The Examiner notes that at the beta-transus relative as disclosed by Eylon et al. (‘582) would be close enough to “above β-transus temperature” as claimed to establish prima facie obviousness. MPEP 2144.05 I.
In regard to claim 2, Eylon et al. (‘582) discloses hydrogen charging times for 10 hours, which would provide a diffusion length under 1.5 inches (specification at [0053]), which would appear to read on the claim. MPEP 2112.01 I.
In regard to claim 7, Eylon et al. (‘582) discloses wherein the dehydrogenating by heating the article at a temperature below the beta-transus (such as 650 to 760°C) under vacuum for about 12 to 48 hours (column 2, lines 30-45 and column 3, line 8 to column 4, line 20), which would read on the claim
In regard to claim 8, Eylon et al. (‘582) discloses charging in pure hydrogen (column 3).
In regard to claim 19, Eylon et al. (‘582) discloses subjecting a substantially similar composition to a substantially process. Therefore, a grain size less than 20 micrometers would be expected. MPEP 2112.01 I.
In regard to claim 20, Eylon et al. (‘582) discloses subjecting a substantially similar composition to a substantially process. Therefore, a grain size less than 10 micrometers would be expected. MPEP 2112.01 I.
In regard to claim 21, Eylon et al. (‘582) discloses subjecting a substantially similar composition to a substantially process. Therefore, a grain size of about 10 micrometers to about 100 micrometers would be expected. MPEP 2112.01 I.
In regard to claim 22, Eylon et al. (‘582) discloses wherein there would be about 0.4 weight percent hydrogen in the alloys (Examples). When converted to atomic percent, that would be about 14.3 atomic percent hydrogen and would read on the claim.
In regard to claim 25, Eylon et al. (‘582) teaches heating up to 980°C (Examples) whereas the claim recites about 825°C. Where the principal difference between a claimed process and that taught by a reference is a temperature difference, it is incumbent upon applicants to establish the criticality of that difference. Ex parte Khusid, Bezgodova, and Ruben 174 USPQ 59 (Bd. Pat. App. & Int. 1971).
In regard to claim 26, Eylon et al. (‘582) discloses cooling to about 20 to 40% below the beta-transus temperature (phase transformation temperature, such as 650°C) under a positive partial pressure of hydrogen and holding for 10 hours (column 2, lines 30-45 and column 3, line 8 to column 4, line 20). Where the principal difference between a claimed process and that taught by a reference is a temperature difference, it is incumbent upon applicants to establish the criticality of that difference. Ex parte Khusid, Bezgodova, and Ruben 174 USPQ 59 (Bd. Pat. App. & Int. 1971).
In regard to claim 27, Eylon et al. (‘582) discloses dehydrogenating by heating the article at a temperature below the beta-transus (such as 650 to 760°C) under vacuum for about 12 to 48 hours (column 2, lines 30-45 and column 3, line 8 to column 4, line 20).
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 1-2, 8, 13, 15, 17 and 24-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-16 of U.S. Patent No. 10,920,307. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 1, claim 1 of U.S. Patent No. 10,920,307 discloses a method of refining a microstructure of a titanium material, comprising: providing a solid material at a temperature below about 400°C (which would be below a β-transus temperature); heating the titanium material under a hydrogen-containing atmosphere to a hydrogen charging temperature above a β-transus temperature of the titanium material and below a melting temperature of the titanium material, and holding for a hydrogen charging time sufficient to convert the titanium material to a substantially homogenous β phase titanium material; cooling the β-phase titanium material under the hydrogen-containing atmosphere to a phase transformation temperature below the β-transus temperature and above about 400°C, and holding at the phase transformation for a phase transformation time to produce a transformed titanium material having α phase regions; and holding the transformed titanium material under a substantially hydrogen-free atmosphere or vacuum at a dehydrogenation temperature below the β transus temperature and above about δ phase decomposition temperature, to remove hydrogen from the transformed titanium material to form a dehydrogenated titanium material.
Since the temperatures of the “providing […]” step in U.S. Patent No. 10,920,307 would be narrower than the instant invention, this would be a nonstatutory obvious-type double patenting rejection.
In regard to instant claim 2, if a maximum diffusion length of about 4 inches would form due to the providing under beta transus temperature, the maximum diffusion length of about 4 inches would also form when the providing below about 400°C occurred as stated in claim 1 of U.S. Patent No. 10,920,307. MPEP 2112.01 I.
In regard to instant claim 8, claim 6 of U.S. Patent No. 10,920,307 discloses wherein the hydrogen-containing atmosphere consists of pure hydrogen or a mixture of hydrogen and inert gas wherein a partial pressure of hydrogen is from 0.5 atm to about 1 atm.
In regard to instant claim 13, claim 16 of U.S. Patent No. 10,920,307 discloses commercially pure titanium.
In regard to instant claim 15, claim 16 of U.S. Patent No. 10,920,307 discloses Ti-6Al-4V alloy.
In regard to instant claim 17, claim 14 of U.S. Patent No. 10,920,307 discloses 3D printing which would be a type of additive manufacturing.
In regard to instant claims 24 and 27, claim 5 of U.S. Patent No. 10,920,307 discloses wherein the dehydrogenation temperature is from about 200 to 995°C, which encompasses the range of the instant claim 24 and instant claim 27.
In regard to instant claim 25, claim 2 of U.S. Patent No. 10,920,307 discloses wherein the hydrogen charging temperature would be from about 825 to 1605°C, encompasses the range of instant claim 25.
In regard to instant claim 26, claim 4 of U.S. Patent No. 10,920,307 discloses wherein the phase transformation temperature would be from about 400 to 825°C, which encompasses the range set forth in instant claim 26.
Claims 1-2, 5-8, 13, 15 and 24-27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,624,105. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 1, claim 1 of U.S. Patent No. 11,624,105 discloses a method of refining a microstructure of a titanium material, comprising: providing a solid material at a temperature below about 400°C (which would be below a β-transus temperature); heating the titanium material under a hydrogen-containing atmosphere to a hydrogen charging temperature above a β-transus temperature of the titanium material and below a melting temperature of the titanium material, and holding for a hydrogen charging time sufficient to convert the titanium material to a substantially homogenous β phase titanium material; cooling the β-phase titanium material under the hydrogen-containing atmosphere to a phase transformation temperature below the β-transus temperature and above about 400°C, and holding at the phase transformation for a phase transformation time to produce a transformed titanium material having α phase regions; and holding the transformed titanium material under a substantially hydrogen-free atmosphere or vacuum at a dehydrogenation temperature below the β transus temperature and above about δ phase decomposition temperature, to remove hydrogen from the transformed titanium material to form a dehydrogenated titanium material.
Claim 1 of U.S. Patent No. 11,624,105 also recites “heating the titanium material under an inert gas atmosphere to a pre-charge temperature for a pre-charge time to form a heated titanium material” and while this step is not recited in instant claim 1, instant claim 1 recites the transitional language “comprising” and would be open to additional, unrecited steps such as this one. MPEP 2111.03.
In regard to instant claim 2, claim 2 of U.S. Patent No. 11,624,105 discloses wherein the titanium material has a maximum diffusion length of greater than 1.5 inches to about 4 inches.
In regard to instant claim 5, claim 5 of U.S. Patent No. 11,624,105 discloses wherein the hydrogen charging temperature is from about 825 to 1605°C and the hydrogen charging time is from about 1 day to 10 days.
In regard to instant claim 6, claim 6 of U.S. Patent No. 11,624,105 discloses wherein the phase transformation temperature is from about 400 to about 825°C and the phase transformation time is from about 1 day to 10 days.
In regard to instant claim 7, claim 7 of U.S. Patent No. 11,624,105 discloses wherein the dehydrogenation temperature is from 200 to 995°C and the dehydrogenation time is 1 day to 10 days.
In regard to instant claim 8, claim 8 of U.S. Patent No. 11,624,105 discloses wherein the hydrogen-containing atmosphere consists of pure hydrogen or a mixture of hydrogen and inert gas wherein a partial pressure of the hydrogen is from about 0.5 atm to about 1 atm.
In regard to instant claim 13, claim 13 of U.S. Patent No. 11,624,105 discloses commercially pure titanium.
In regard to instant claim 15, claim 13 of U.S. Patent No. 11,624,105 discloses Ti-6Al-4V alloy.
In regard to instant claims 24 and 27, claim 7 of U.S. Patent No. 11,624,105 discloses wherein the dehydrogenation temperature is from about 200 to 995°C, which encompasses the range of the instant claim 24 and instant claim 27.
In regard to instant claim 25, claim 5 of U.S. Patent No. 11,624,105 discloses wherein the hydrogen charging temperature would be from about 825 to 1605°C, which encompasses the range of instant claim 25.
In regard to instant claim 26, claim 6 of U.S. Patent No. 11,624,105 discloses wherein the phase transformation temperature would be from about 400 to 825°C, which encompasses the range set forth in instant claim 26.
Claims 1-2, 5-8, 13, 15, 17 and 24-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 4-18 of U.S. Patent No. 12,098,454. Although the claims at issue are not identical, they are not patentably distinct from each other because:
In regard to instant claim 1, claim 1 of U.S. Patent No. 12,098,404 discloses a method of refining a microstructure of a titanium material, comprising: providing a solid material at a temperature below about 400°C (which would be below a β-transus temperature); heating the titanium material under a hydrogen-containing atmosphere to a hydrogen charging temperature above a β-transus temperature of the titanium material and below a melting temperature of the titanium material, and holding for a hydrogen charging time sufficient to convert the titanium material to a substantially homogenous β phase titanium material; cooling the β-phase titanium material under the hydrogen-containing atmosphere to a phase transformation temperature below the β-transus temperature and above about 400°C, and holding at the phase transformation for a phase transformation time to produce a transformed titanium material having α phase regions; and holding the transformed titanium material under a substantially hydrogen-free atmosphere or vacuum at a dehydrogenation temperature below the β transus temperature and above about δ phase decomposition temperature, to remove hydrogen from the transformed titanium material to form a dehydrogenated titanium material.
Claim 1 of U.S. Patent No. 12,098,404 also recites “heating the titanium material under an inert gas atmosphere to a pre-charge temperature for a pre-charge time to form a heated titanium material” and “holding the transformed titanium material […]” and while these steps are not recited in instant claim 1, instant claim 1 recites the transitional language “comprising” and would be open to additional, unrecited steps such as this one. MPEP 2111.03.
In regard to instant claim 2, claim 13 of U.S. Patent No. 12,098,404 discloses wherein the titanium material has a maximum diffusion length of greater than 1.5 inches to about 4 inches.
In regard to instant claim 5, claim 7 of U.S. Patent No. 12,098,404 discloses wherein the dehydrogenation temperature is from about 825°C to about 995°C and is 1 to 10 days.
In regard to instant claim 6, claim 14 of U.S. Patent No. 12,098,404 discloses wherein the phase transformation temperature is from about 400 to about 825°C and the phase transformation time is from about 1 day to 10 days.
In regard to instant claim 7, claim 7 of U.S. Patent No. 12,098,404 discloses wherein the dehydrogenation temperature is from about 825 to 995°C and the dehydrogenation time is 1 day to 10 days.
In regard to instant claim 8, claim 8 of U.S. Patent No. 12,098,404 discloses wherein the hydrogen-containing atmosphere consists of pure hydrogen or a mixture of hydrogen and inert gas wherein a partial pressure of the hydrogen is from about 0.5 atm to about 1 atm.
In regard to instant claim 13, claim 10 of U.S. Patent No. 12,098,404 discloses commercially pure titanium.
In regard to instant claim 15, claim 10 of U.S. Patent No. 12,098,404 discloses Ti-6Al-4V alloy.
In regard to instant claim 24, claim 7 of U.S. Patent No. 12,098,454 discloses wherein the dehydrogenation temperature is from about 875 to 995°C, which encompasses the range of the instant claim 24.
In regard to instant claim 25, claim 14 of U.S. Patent No. 12,098,454 discloses wherein the hydrogen charging temperature would be from about 825 to 1605°C, which encompasses the range of instant claim 25.
In regard to instant claim 26, claim 15 of U.S. Patent No. 12,098,454 discloses wherein the phase transformation temperature would be from about 400 to 825°C, which encompasses the range set forth in instant claim 26.
Allowable Subject Matter
Claims 16 and 18 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
In regard to claim 16, Eylon et al. (‘582) fails to specify an anisotropic microstructure wherein the dehydrogenated titanium material would have reduced anisotropy relative to the solid titanium material.
In regard to claim 18, Eylon et al. (‘582) discloses forming by casting, which would be different than SLM as claimed.
Claim 23 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
In regard to claim 23, Eylon et al. (‘582) discloses wherein there would be about 0.4 weight percent hydrogen in the alloy, which would translate to about 14.3 atomic percent hydrogen, which would be less than 25 atomic percent as claimed.
Response to Arguments
Applicant's arguments filed July 30, 2026 have been fully considered but they are not persuasive.
First, the Applicant primarily argues that the limitation “above the β transus temperature of the titanium material” is a critical difference from the teachings of Eylon et al. (‘582) and this difference provides a result that is different in kind and not merely in degree from the results of the prior art since Eylon et al. (‘582) teaches “a temperature at or slightly below the β-transus temperature of the alloy.”. The Applicant further argues that the instant claims create a 100% homogenous β-phase microstructure and Eylon et al. (‘582) would teach a mixture of phases if the temperature is held below the β-transus temperature and this is not merely “close” in degree as in the Titanium Metals case because the material is so different above the β transus relative to at or below that it would not be obvious to modify the teachings of Eylon et al. (‘582) by using a temperature that is at or below the β transus temperature.
In response, the Examiner’s position is that this really is a close but not overlapping type scenario as would be set forth in the Titanium Metals case and the Examiner takes this position cognizant of the fact the industrial temperature controllers deviate from a set point 0.5 to 2% in practice and for instance if one having ordinary skill in the art programmed the temperature controller based on the teachings of Eylon et al. (‘582) at the β-transus temperature and for instance that temperature is 1000°C, then the deviation would be from about 980 to 1020°C which would encompass temperatures above and below. Likewise, for the sake of minimizing heating costs, the same person of ordinary skill in the art set the temperature at 1010°C based on the teaching that the temperature must be above 1000°C, then the same industrial temperature controller is going provide temperatures from about 990 to 1030°C. So it would not appear that the structures would be all that different as Applicant has argued.
Second, the Applicant primarily argues that the Examiner’s assertion that holding the material at the material at the β transus temperature for 10 hours as taught by Eylon et al. (‘582) would be sufficient to convert the material to substantially homogenous β-phase and as explained, the material likely would be of different phases at the temperature used by Eylon et al. (‘582) and there is no evidence that the material would ever convert to a 100% homogenous β-phase if the material is not heated above the β-transus temperature and therefore Eylon et al. (‘582) does not teach or suggest the limitation “holding for a charging time sufficient to convert the titanium material to a substantially homogenous β phase titanium material.
In response, the Examiner notes that the hydrogen charging time of the instant invention is from about 1 hour to about 8 hours [0056] whereas Eylon et al. (‘582) teaches holding for 10 hours. Typically, this transition would depend on time and temperature. The temperature deviation in modern industrial controllers is addressed as set forth above and 10 hours of holding as set forth by Eylon et al. (‘582) would cover the about 1 to 8 hours set forth in the instant specification. Therefore, the Examiner is of the position that the teachings of Eylon et al. (‘582) would be sufficient to meet the 100% homogenous β structure the same as when following the steps set forth in the instant invention, all of the temperatures may not be above the β-transus based on the temperature deviation corresponding to modern controllers.
Third, the Applicant primarily argues that with regard to U.S. Patent No. 10,920,307 that the present claims are patentably distinct because they have a different scope and claim 1 of the present application does not require the that the temperature of the solid titanium material is below 400°C or that the phase transformation temperature is above 400°C and the present rejection should be withdrawn.
In response, the Examiner notes that it is the instant application that lacks these steps and U.S. Patent No. 10,920,307 has these additional steps. Since the instant application utilizes the transitional language “comprising”, the instant application would still remain open to such steps as set forth in U.S. Patent No. 10,920,307 although not explicitly stated and as such the instant application is broader than that of U.S. Patent No. 10,920,307 and the filing of a terminal disclaimer without some other amendment would be necessary to overcome this rejection. MPEP 2111.03.
Fourth, the Applicant primarily argues that with regard to U.S. Patent No. 11,624,105 that the present claims are patentably distinct because they have a different scope and claim 1 of the present application does not require the that the temperature of the solid titanium material is below 400°C or that the phase transformation temperature is above 400°C and the present rejection should be withdrawn.
In response, the Examiner notes that it is the instant application that lacks these steps and U.S. Patent No. 11,624,105 has these additional steps. Since the instant application utilizes the transitional language “comprising”, the instant application would still remain open to such steps as set forth in U.S. Patent No. 11,624,105 although not explicitly stated and as such the instant application is broader than that of U.S. Patent No. 11,624,105 and the filing of a terminal disclaimer without some other amendment would be necessary to overcome this rejection. MPEP 2111.03.
Fifth, the Applicant primarily argues that with regard to U.S. Patent No. 12,098,454 that the present claims are patentably distinct because they have a different scope and claim 1 of the present application does not require the that the temperature of the solid titanium material is below 400°C or that the phase transformation temperature is above 400°C and the present rejection should be withdrawn.
In response, the Examiner notes that it is the instant application that lacks these steps and U.S. Patent No. 12,098,454 has these additional steps. Since the instant application utilizes the transitional language “comprising”, the instant application would still remain open to such steps as set forth in U.S. Patent No. 12,098,454 although not explicitly stated and as such the instant application is broader than that of U.S. Patent No. 12,098,454 and the filing of a terminal disclaimer without some other amendment would be necessary to overcome this rejection. MPEP 2111.03.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jessee Roe whose telephone number is (571)272-5938. The examiner can normally be reached Monday thru Friday 7:30 am to 4 pm.
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/JESSEE R ROE/Primary Examiner, Art Unit 1759
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