DETAILED ACTION
Response to Amendment
In view of the addition of claims 16 and 17, new rejections directed to these claims are set forth below. These new rejections were necessitated by these amendments.
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 1-14 and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication Number 2013/0032252 (He).
In regards to independent claim 1 and dependent claims 2-5 and 16-17, He is directed to an amorphous alloy (or metallic glass), more particularly to an amorphous nickel-free zirconium alloy which is readily formed through copper mold casting. (¶2) The amorphous alloy can have the chemical formula ZraNbfTibCucAld, where a, b, c, d, f are atomic percents of the first to fourth elements and the additional element respectively, wherein a=45 ~ 69%, b=0.25 ~ 8%, c=21 ~ 35%, d=7.5 ~ 13%, b + f=0.25 ~ 10%, where a sum of a, b, c, d and f is equal to 100%. (¶21, Claim 8) These compositions overlap the claimed compositional ranges. Therefore, a prima facie case of obviousness is established.
As to claim 6, the percentage of amorphous phase is basically 95%. (¶25)
As to claims 7-8, the critical thickness is at least 1 mm. (¶25) This range overlaps the claimed range.
As to claims 9-13, it appears from the instant specification that the claimed properties arise due to the composition of the metallic glass. (See ¶62-70 of Specification) The alloy composition makes it possible to obtain parts having an exceptional compromise of properties. (¶73 of Specification) The part can be made by melting a mixture of metals to obtain an alloy, molding the obtained alloy, cooling to obtain an amorphous alloy, and demolding. (¶77 of Specification) Likewise, as discussed above, He sets forth an alloy composition that overlaps the claimed composition. Likewise, it sets forth a method of producing a part that is identical or substantially identical to that of the instant application. In particular, an alloy is formed through copper mold casting. (¶12) The components of the alloy are melted and copper mold casted. (¶28) The amorphous alloy is formed through a critical cooling rate. (¶30) Therefore, since the prior art sets forth compositional ranges that overlap the claimed amounts and sets forth a method that is identical or substantially identical to that used to produce the claimed properties, it would likewise be expected that the product of the prior art would meet the claimed product limitations.
As to claim 14, the product can be used in biomedical device or implants. (¶8)
Response to Arguments
Applicant's arguments filed 4 June 2026 have been fully considered but they are not persuasive.
Applicant asserts that He does not disclose the feature of claim 1 reciting that the sum of zirconium, niobium, and titanium are in the claimed range. Applicant acknowledges that He teaches that the sum of these elements is from 45.25 to 79 atomic %. Applicant argues that He does not set forth a reason for selecting the range.
Applicant’s argument is not found to be persuasive.
As set forth in Applicant’s arguments, the range of the composition overlaps the claimed range. The claimed range constitutes almost 15% of the range for these elements set forth in He. This is significant overlap. Further, the range of the prior art completely encompasses the claimed range. A prior art reference that discloses a range encompassing a somewhat narrower range is sufficient to established a prima facie case of obviousness. (MPEP 2144.05,I) Therefore, a prima facie case of obviousness is established. Applicant has failed to rebut this finding.
He sets forth compositional ranges that overlap the claimed ranges and include values that satisfy the claimed relationship of zirconium, niobium, and titanium. Applicant acknowledges that the range of the elements taught by He encompass the range claimed in the instant claims.
Applicant points to a specific alloy within He that has different properties as the instant claimed product.
This argument is not found to be persuasive.
The use of patents as references is not limited to what patentees describe as their own inventions or to the problems with which they are concerned. MPEP 2123. They are part of the literature of the art, relevant for all they contain. Id. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Id. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. Id. The prior art’s mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed. Id.
The specific example of He does not constitute a teaching away from the broader disclosure. Further, the materials within the overlapping portion would expected to have the claimed properties. However, this is not commensurate in scope with the claims since claim 1 does not set forth any property requirements.
Therefore, the arguments directed to this single embodiment and not the broader disclosure of the ranges taught by He are not found to be persuasive.
Applicant argues that Example 2 of the instant claim provides unexpected results of the claimed invention.
This argument is not found to be persuasive.
Applicants can rebut a prima facie case of obviousness by showing the criticality of the range. MPEP 2144.05,III,A. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. MPEP 716.02(d),II. Applicant has failed to provide a sufficient number of tests. A single cited example in the arguments is not sufficient.
Therefore, Applicant has failed to rebut the finding of prima facie obviousness.
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 Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784
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