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 .
DETAILED ACTION
Claims 1-90 cancelled
Claims 91-107 pending
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 107 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 107 states “a process for preparing a reactive metal powder mixture comprising mixing together the raw reactive metal powder obtained by the process as defined in claim 91 with a reactive metal powder obtained by a different process.”
However, it is unclear what is this “different process” as this generic statement could simply include the mixing with the powder that is simply sieved to a desired particle size, or simply washed with cleaning solution.
Additionally, this “reactive metal powder” could be any generic metal powder that have any reactivity property, which include all metals.
Moreover, it is unclear under what conditions is this “mixing together” is being performed.
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 91-106 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,337,389 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because
Claim 91 states: “A reactive metal in-flight heat treatment process comprising:
contacting a reactive metal with an in-flight heat treatment process gas mixture comprising (i) at least one in-flight heat treatment process gas and (ii) at least one additive gas that is present at a concentration of less than 1000 ppm in said mixture, while carrying out said in-flight heat treatment process to obtain a raw reactive metal powder; and
diffusing a component of the at least one additive gas into particles of the raw reactive metal powder beneath a surface of the particles to create a concentration profile for the diffused component within the particles, wherein the particles are Ti-6Al-4V particles;
wherein a particle size distribution of about 10 to about 53 m of said raw reactive metal powder has a flowability less than 40 s, measured according to ASTM B213; and
wherein contacting the reactive metal with the in-flight heat treatment process gas mixture while carrying out said in-flight heat treatment process to obtain the raw reactive metal powder comprises maintaining a chemical composition of the reactive metal such that the amount of oxygen within the raw reactive metal powder is below 1800 ppm according to AMS 4998.”
This is disclosed in claim 1 of Pat ‘389.
Claims 92-106 are disclosed in claims 1-15 of Pat ‘389.
Allowable Subject Matter
The following is an examiner’s statement of reasons for allowance:
The prior art of Phillips (US Pat 5,989,648) discloses the process of the metal powder along with supporting material with in-flight heat treatment process gas mixture (such as aerosol) carried out through plasma torch forming metal catalyst powder (raw reactive metal powder) (abstract), where this process gas mixture comprises (1) processing plasma gas, and (2) additive/parasol gas (Col. 4, lines 37-41), where the processing plasma gas is inert gas (Col. 11, lines 23-27), and the additive/personal gas include oxygen (claim 9), and where the particle size distribution is from 0.01 to 1000 µm (Col. 4, lines 30-32), and where the reactive metal powder include transitional metal powder such as chrome and supported powder such as titanium dioxide (Col. 4, lines 10-25).
However, none of the prior art of record discloses or suggests the claimed invention including, “reactive metal in-flight heat treatment process comprising:
contacting a reactive metal with an in-flight heat treatment process gas mixture comprising (i) at least one in-flight heat treatment process gas and (ii) at least one additive gas that is present at a concentration of less than 1000 ppm in said mixture, while carrying out said in-flight heat treatment process to obtain a raw reactive metal powder, wherein the reactive metal source comprises a titanium alloy, and wherein the at least one additive gas comprises an oxygen-containing gas;
and diffusing a component of the at least one additive gas into particles of the raw reactive metal powder beneath a surface of the particles to create a concentration profile for the diffused component within the particles, wherein the particles are Ti-6Al-4V particles;
wherein a particle size distribution of about 10 to about 53 mm of said raw reactive metal powder has a flowability less than 40 s, measured according to ASTM B213;
and wherein contacting the reactive metal with the in-flight heat treatment process gas mixture while carrying out said in-flight heat treatment process to obtain the raw reactive metal powder comprises maintaining a chemical composition of the reactive metal such that the amount of oxygen within the raw reactive metal powder is below 1800 ppm according to AMS 4998”, as claimed.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 8:00am -5:00PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Mohammad Mayy/
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
Prosecution Insights