DETAILED ACTION
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 6 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 6 requires at least one of the plurality of layers to be made of a different alloy, however parent claim 5 requires that “each of” the plurality of layers be made of “the same” alloy. It is unclear how each of the plurality layers can be formed of the same alloy while simultaneously including at least one layer of a different alloy. For purposes of examination claim 5 is interpreted to require each of the plurality of layers to be formed of the same alloy, while claim 6 will be considered to require at least one of the plurality of layers to be formed of a different alloy relative to one or more of the other layers of the plurality of layers.
Claim Rejections - 35 USC § 102/103
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.
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 1-3 and 20 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Rasmussen et al. (US Patent 6,592,724).
Regarding applicants’ claim 1, Rasmussen et al. disclose deposition of NiTiHf alloy by sputtering (col. 3 lines 16-21), thereby forming a bulk material comprising NiTiX where X is Hf.
Rassmussen et al. do not appear to characterize the precipitates in the deposited NiTiHf material (i.e. mean inclusion size), however substantially identical materials treated in a substantially identical manner are expected to produce products having substantially identical structures.
Applicants disclose the deposition of materials including NiTiX, where X includes Hf, by PVD techniques (paragraphs 0007-0012). The deposition is exemplified using NiTiCo and NiTiTa by using an evacuated chamber comprising an inert gas where the deposition pressure is 0.1 to 10mTorr (present specification paragraph 0038). Rasmussen et al. disclose deposition of NiTiHf by sputtering (a PVD technique) in an evacuated chamber comprising an inert gas, where the deposition pressure is 0.5 to 5mTorr (col. 3 lines 16-47).
Given the deposition of NiTiHf by substantially identical processes, the NiTiHf deposit of Rassmussen et al. would be expected to be substantially identical to the deposit disclosed by applicants, including having a mean inclusion size within, or at least so close to, applicants’ claimed range as to establish a prima facie case of obviousness (MPEP 2112 III and MPEP 2144.05 I).
Regarding applicants’ claims 2, 3, and 20, for those reasons as discussed with respect to claim 1, substantially identical materials treated in a substantially identical manner are expected to result in products having substantially identical structures. Given the deposition of NiTiHf by substantially identical processes, the NiTiHf deposit of Rassmussen et al. would be expected to be substantially identical to the deposit disclosed by applicants, including having an average area fraction of the inclusions with the claimed range (claim 2), a maximum inclusion size less than about 100nm (claim 3), and where the material is crystalline (claim 20), or be at least so close to, applicants’ claimed range as to establish a prima facie case of obviousness (MPEP 2112 III).
Claims 7, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Rasmussen et al. (US Patent 6,592,724).
Rasmussen et al. disclose a NiTiHf deposit as discussed above with respect to claim 1 but do not appear to explicitly disclose the configuration of the substrate as a non-planar three-dimensional configuration (claim 7), tubular configuration (claim 15), or semi-lunar configuration (claim 16). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to deposit the NiTiHf alloy on substrates of varying configurations as a matter of design choice. Absent a showing that a particular configuration is critical to the claimed deposit, the claimed configurations do not distinguish over the substrates which would be employed by one of ordinary skill in the art in view of Rasmussen et al. (MPEP 2144.04 IV B).
Claims 8-11 and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Rassmussen et al. (US Patent 6,592,724) in view of Yaniv et al. (WO 2016/084087)
Regarding applicants’ claims 8-11, Rasmussen et al. disclose a NiTiHf deposit as discussed above with respect to claim 1 where the alloy contains Hf in addition to Ni and Ti, however Rasmussen et al. do not appear to explicitly disclose the addition of cobalt to form a NiTiCo alloy. In addition to NiTiHf ternary shape memory alloys, Yaniv et al. disclose other ternary NiTi shape memory alloys to include NiTi-Cu, NiTi-Co, NiTi-Pd, NiTi-Pt, NiTi-Zr (page 63 lines 10-13). The substitution of one known element for another shown in the art to be functionally equivalent is within the ordinary level of skill in the art. One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to use a NiTiCo alloy in place of the NiTiHf alloy disclosed by Rasmussen et al. where NiTiCo is demonstrated in the art as a known alternative ternary NiTi alloy. There is a reasonable expectation of success in the use of cobalt where both alloys are NiTi shape memory alloys and where both alloys are shown in the art as known alternative NiTi ternary alloys.
Regarding applicants’ claims 17-19, substantially identical materials treated in a substantially identical manner are expected to result in products having substantially identical structures and properties (as discussed with respect to claim 1 above). Where NiTi-Co is deposited in place of NiTiHf by Rasmussen et al., the resulting NiTi-Co deposit would be expected to exhibit properties substantially identical to applicants’ material, including a tensile stress plateau and recovery energy within, or at least overlapping, applicants’ claimed values.
Allowable Subject Matter
Claims 4-6 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.
Rasmussen et al. disclose a NiTiHf deposit but do not disclose the deposit to comprise a plurality of layers. Further there is insufficient evidence such that one of ordinary skill in the art would have expected to deposit of Rasmussen et al. to necessarily exhibit a layered structure, and there is insufficient evidence such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention to modify the process of Rasmussen et al. in order to produce a bulk material exhibiting a plurality of layers.
Claims 12-14 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.
Rasmussen et al. disclose a NiTiHf deposit but do not disclose the ratio of Ni to Ti with the exception of Example 1where the Ni:Ti ratio is 1.37. Further there is no motivation such that one of ordinary skill in the art before the effective filing date of applicants’ claimed invention, would have found it obvious to select values for Nickel and Titanium that result in a Ni:Ti ratio within the claimed range of 1.267 to 1.273.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure includes Yang et al. (Yang et al., Structure analysis of a precipitate phase in an Ni-rich high-temperature NiTiHf shape memory alloy, Acta Materialia 61 (2013) 3335-3346) who disclose a NiTiHf alloy comprising spindle-shaped precipitates that are 40-50nm thick and 300-500nm long, however Yang et al. does not appear to disclose a mean inclusion size.
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/Adam Krupicka/Primary Examiner, Art Unit 1784