UNITED STATES PATENT AND TRADEMARK OFFICE
`
`
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`PO. Box 1450
`Alexandria, Virginia 2231371450
`www.uspto.gov
`
`13/408,824
`
`02/29/2012
`
`David OPIE
`
`P10162USD1
`
`1862
`
`Crue1b1e Intellectual Property, LLC
`C/o Brownstein Hyatt Farber Sehreek
`410 Seventeenth St., Suite 2200
`Denver, COLORADO 80202
`UNITED STATES OF AMERICA
`
`YANG” HE
`
`1733
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`06/06/2018
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`
`following e—mail address(es):
`
`patentdoeket @ bhfs . com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`Off/09 A0170” Summary
`
`Application No.
`13/408,824
`Examiner
`JIE YANG
`
`Applicant(s)
`OPIE et al.
`Art Unit
`1733
`
`AIA Status
`No
`
`- The MAILING DA TE of this communication appears on the cover sheet wit/7 the correspondence address -
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a). In no event, however, may a reply be timely filed
`after SIX (6) MONTHS from the mailing date of this communication.
`|f NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1). Responsive to communication(s) filed on 12/13/2017.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a)D This action is FINAL.
`
`2b)
`
`This action is non-final.
`
`3)[:] An election was made by the applicant in response to a restriction requirement set forth during the interview on
`; the restriction requirement and election have been incorporated into this action.
`
`4)[:] Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Expat/7e Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`5)
`Claim(s)
`
`37—51 is/are pending in the application.
`
`5a) Of the above claim(s)
`
`is/are withdrawn from consideration.
`
`E] Claim(s)
`
`is/are allowed.
`
`Claim(s) 3—39 and 41—51 is/are rejected.
`
`Claim(s) fl is/are objected to.
`
`) ) ) )
`
`6 7
`
`8
`
`
`
`are subject to restriction and/or election requirement
`[:1 Claim(s)
`9
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`
`http://www.uspto.gov/patents/init events/pph/index.'sp or send an inquiry to PPeredback@uspto.gov.
`
`Application Papers
`10):] The specification is objected to by the Examiner.
`
`11):] The drawing(s) filed on
`
`is/are: a)C] accepted or b)E] objected to by the Examiner.
`
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`Priority under 35 U.S.C. § 119
`12)C] Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)C] All
`
`b)C] Some”
`
`c)C] None of the:
`
`1:]
`
`Certified copies of the priority documents have been received.
`
`2C]
`
`Certified copies of the priority documents have been received in Application No.
`
`3.[:] Copies of the certified copies of the priority documents have been received in this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`
`** See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) C] Notice of References Cited (PTO-892)
`
`2) E] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date_
`U.S. Patent and Trademark Office
`
`3) C] Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`4) CI Other-
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20180531
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 2
`
`Notice of Pre-AIA or AIA Status
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions
`
`DETAILED ACTION
`
`Continued Examination Under 37 CFR 1. 114
`
`A request for continued examination under 37 CFR 1.114, including the fee set
`
`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
`
`application is eligible for continued examination under 37 CFR 1.114, and the fee set
`
`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
`
`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
`
`12/13/2017 has been entered.
`
`Status of the Claims
`
`Claims 1-36 have been cancelled; claims 37, 45, and 50-51 have been amended;
`
`and claims 37-51 remain for examination, wherein claims 37, 45, and 51 are
`
`independent claims.
`
`Allowable Subject Matter
`
`Claim 40 includes allowable matter. Claim 40 is still objected to as depending
`
`from rejected independent claims, but would be allowable if rewritten in independent
`
`form including all of the limitations of the base claim and any intervening claims. The
`
`Examiner notes that recorded prior arts do not teach the heating the feedstock at the
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 3
`
`claimed temperature and form the claimed porous amorphous structure with claimed
`
`features.
`
`Note: claim 40 is still rejected on the ground of non-statutory obviousness type
`
`double patenting as being un-patentable over claims 1-20 of co-pending application No.
`
`10/521 ,424, updated as US 7,560,001 B2, which can be overcome by proper “Terminal
`
`Disclaimer”
`
`Status of the Previous Rejection
`
`The previous rejection of Claims 37-39, 41, 44-47, and 50-51 under 35
`
`U.S.C. 103(a) as unpatentable over Horton, Jr et al (US-PG-pub 2002/0162605A1,
`
`thereafter PG’605) in view of Scruggs et al (US 5,711,363, thereafter US’363) and
`
`Hosoe (US-PG-pub 2004/0211222 A1, thereafter PG’222) has been withdrawn
`
`according to the applicant’s amendment/remarks filed on 12/13/2017.
`
`The previous rejection of Claim 40 under 35 U.S.C. 103(a) as unpatentable over
`
`PG’605 in view of US’363 and PG’222, and further in view of Lin et al (US 5,797,443,
`
`thereafter US’443) has been withdrawn according to the applicant’s
`
`amendment/remarks filed on 8/9/2016.
`
`The previous rejection of Claim 42, 43, 48, and 49 under 35 U.S.C. 103(a) as
`
`unpatentable over PG’605 in view of US’363 and PG’222, and further in view of Otani et
`
`al (US 5,049,074, thereafter US’O74) has been withdrawn according to the applicant’s
`
`amendment/remarks filed on 8/9/2016.
`
`However, in view of the Applicant’s amendments and reconsideration, a new
`
`ground rejection is listed as following:
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 4
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
`
`obviousness rejections set forth in this Office action:
`
`(a) A patent may not be obtained though the invention is not identically disclosed or described as set
`forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior
`art are such that the subject matter as a whole would have been obvious at the time the invention was made to
`a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be
`negatived by the manner in which the invention was made.
`
`Claims 37-39 and 41 -51 are rejected under 35 U.S.C. 103(a) as unpatentable
`
`over Horton, Jr et al (US-PG-pub 2002/0162605A1, thereafter PG’605) in view of
`
`Scruggs et al (US 5,711,363, thereafter US’363), and Otani et al (US 5,049,074,
`
`thereafter US’O74).
`
`Regarding claims 37, 45, and 51, PG’605 teaches a process
`
`
`0: manufacturing dental hardware, especially medical
`
`instruments
`
`
`and biomedical appliances by bulk metallic glass (BMG). PG’605
`
`
`
`
`
`provides samp'es ‘or the BMG implants without adding Ni
`
`
`
`(Paragraphs [0043 —[0044]), which reads on the method companying
`
`
`
`
`
`
`
`
`
`
`Ni
`or
`manufacturing an object having a composition ‘ree o
`
`placement into a region as recited in the ins:ant claims. PG’605
`
`teaches arc cast Zr—32.5Cu—5Ti—10Al alloy into a water—cooled
`
`
`
`
`
`
`
`copper mold to obtain amorphous artic'e (?Xample
`O“ BG’605),
`
`
`
`
`which reads on all or the essential process steps including:
`
`
`providing feed stock, heating, shaping, and mold quenching as
`
`recited in the instant claims. Qegarding around 1.2% or more
`
`
`
`elas:ic strain limit
`
`
`
`in the ins:ant claims, which is recognized
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 5
`
`as material property depended on the material composition and
`
`heat treatment
`
`
`
`processes. Because PG’605 teaches the same BMG
`
`
`
`
`alloy without adding Ni manufactured
`
`
`
`
`
`
`0“ BG’605),
`method (Txample
`
`
`
`the claimed property, aro;nd
`
`by the same mold casting
`
`
`
`
`
`1.7% or more elastic strain limit, would be inherent exist in
`
`
`
`
`the RMG alloy 0“ PG’605. This position is further evidenced by
`
`PG’605. PG’605
`
`
`
`
`teaches that the mechanical properties of RMG
`
`
`
`including higher elastic Strain limit
`
`
`
`PG’605). PG’605 does not specify heating the feedstock around
`
`
`(paragraph [0047] of
`
`
`
`
`
`the glass transition temperature with reaching to a viscous
`
`fluid regime as recited in the instant claims. US’363 teaches a
`
`
`
`
`
`
`process 0: manufacturing bulk solidi: fying amorphous alloy
`
`
`
`(AbstraCt and c'aims of US’363). US’363 teaches solid die—cast
`
`
`
`process to heating the alloy at a temperature such that their
`
`
`
`
`
`point
`
`(Col.2,
`
`
`lines 8—37 0:
`
`
`viscosity is greater than a specific
`
`
`
`
`
`US'363). There
`
`I)
`
`
` fore, it would have been obvious to one o;
`
`
`
`ordinary skill in the art at the time the invention was made to
`
`apply the heating process as demonstrated by US’363 in the
`
`
`process 0: PG’605 in order to obtain the desired solid die—cast
`
`articles (Col.2,
`
`
`
`lines 8—37 of US'363). PG’605 in view of US’363
`
`does nOt speci
`
`as recited in
`
`
`
`fy the surface roughness and particle or pore size
`
`
`
`
`
`
`the instant claims. US’O74 teaches a process or
`
` manufacturing a dental
`
`alloy (Abstract, Col.;,
`
`lines 14—19,
`
`
`
`implant with Co—Cr alloy, Ti, or Ti based
`
`
`
`and Col.2,
`
`
`lines 54—62 of
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 6
`
`
`
`US’O74). US’O74 teaches a porous 'ayer with preferably at least
`
`
`
`
`
`
`
`lns.8—;5) and US’O74 teaches the
`
`
`
`surface roughness of core material having maximum heigho of at
`
`
`lOOum of pore size Col.4,
`
`
`
`least lOum Col.3,
`
`
`
`
`lns.54—66 of US’O74), which overlap the
`
`claimed surface roughness and pore size as recited in the
`
`instant claims. Over
`
`size create a prima
`
`
`
`lapping in the sur:
`
`
`face roughness and pore
`
`
`facie case 0:
`
`obviousness.
`
`
`MPEP 21444 05
`
`
`
` for the implan'
`
`
`
`
`Therefore,
`
`i.
`
`in the art at
`
`
`
`would have been obvious to one o
`
`_ ordinary skii'
`
`the time the invention was made
`
`to apply optimized
`
`surface roughness and pore size
`
`: alloy as
`
`
`demonstrated by US’O74 in the process 0:
`
`I)
`PG’605 in view 0;
`
`US’363 in order to increase the bonding strength between
`
`living body and dental
`
`implant
`
`(Col.l,
`
`
`lines 25—35 of US’O74).
`
`Regarding claims 38, 39,
`
`and 46,
`
`PG’605 teaches applying
`
` the
`
`water—cooled copper mold
`
`MR:
`
`image (claim 1, Fig.l—7,
`
`and
`
`
`for article having a shape suitable
`
`
`
`
`
`
`o BG’605), which
`?Xample
`
`:0]:
`
`
`the desired body
`
`
`
`reads on the mold with a negative impression o:
`
`
`ace
`Slll’
`
`
`"eatures (claim 38)
`
`and that mold is a permanent mold
`
`(claims 39 and 46).
`
`Regarding claims 41 and 47
`
`I
`
`the claimed super—cooled liquid
`
`
`region is recognized as a property 0;
`
`amorphous alloy.
`
`PG’605
`
`teaches the same
`
`same mold casting method (
`
`
`BMG alloy without adding Ni manu
`
`
` O
`
`
`
`
`?Xample
`
`BG’605,
`
`factured by the
`
` the claimed
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 7
`
`property,
`
`such as super—cooled liquid region
`
`(ATsc)
`
`o
`
`
`f 90°C or
`
`more would be inherent exist in the Zr/Ti base amorphous alloy
`
`
`
`
` 0.-
` Ni
`free 0“
`
`PG’605.
`
`Regarding claims 42,
`
`43,
`
`48,
`
`and 49,
`
`I)
`
`PG’605 in view 0;
`
`
`US’363 does not speci:
`
`fy the chemical
`
`or thermal
`
`treatment
`
`(claims 42 and 48)
`
`and the coating
`
`(claims 43 and 49)
`
` for the
`
`implant article.
`
`US’O74 teaches a process 0:
`
`
`manufacturing a
`
`dental
`
`imp:
`
`_ant with Ti based alloy
`
`(AbstraCt, Col.l,
`
`lines 14—
`
`l9,
`
`2
`
`,
`
`
`lines 54—62 of US’O74).
`
`US’O74 teaches
`
`treating
`
`and Col.
`
`
`
`
`
`in order to
`imp'ant
`firmly bonded and
`
` fixed
`
`lines 17——
`
`7
`
` of US’O74)
`
`
`including CVD
`
`
`
`living body
`
`
`
`(Col.4,
`
`
`the surface of the
`
`to the
`
`
`
`
`coating
`
`(Col.4,
`
`lines 48—64 of
`
`
`
`
`
`US’O7—
`
`
`
`and cement resin
`
`coating
`
`(Col.5,
`
`lines ll—3l
`
`
`of US’O74
`
`Therefore,
`
`it would have been
`
`
`
`in
`obvious to one 0" ordinary skil'
`
`the art at the time the
`
`invention was made to apply sur.
`
`face treatmen
`
`t and/or cement
`
`resin coating on the implant al
`
`loy as demonstrated by
`
`US’O74 in
`
`
`
`
`the process 0
`
`US’363 beca
`
`ise US’O74 teaches
`
`: PG’605 in view 0:
`
`
`
`
`
`that
`
`the treatment providing a
`
`threaded structure as a means
`
`increase
`
`the bonding strength between the living body and dental
`
`implant
`
`(Col.l,
`
`
`lines 25—35 of US’O74).
`
`
` "racture
`
`Regarding claims 44 and 50,
`
`
`PG’605 teaches dental hardware
`
`including
`
`”ixation screws,
`
`rods, pins, etc.
`
`(paragraphs
`
`'ZO
`
`
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 8
`
`
`[0002] and [0005] of PG’605), which reads on the load bearing
`
`member as recited in the instant claims.
`
`Double Parenting
`
`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
`
`obviousness-type 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); and 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 a nonstatutory
`
`double patenting ground provided the conflicting application or patent either is shown to
`
`be commonly owned with this application, or claims an invention made as a result of
`
`activities undertaken within the scope of a joint research agreement.
`
`Effective January 1, 1994, a registered attorney or agent of record may sign a
`terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with
`37 CFR 3.73(b).
`
`Claims 37-51 are rejected on the ground of nonstatutory obviousness type
`
`double patenting as being unpatentable over claims 1-20 of copending application No.
`
`10/521,424, updated as US 7,560,001 B2.
`
`
`Although the con‘licting claims are not identical,
`
`they are
`
`
`not patentable distinct from each other because the claims 1—20
`
`
`of copending application No. 10/521,424, updated as US 7,560,001
`
`
`
`
`
`32 teach an process or manufacturing composites of bulk—
`
`
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 9
`
`
`
`solidifying amorphous alloys including all 0“ the essential
`
`process steps,
`
`
`such as providing feed stock, heating, shaping,
`
`I)
`
`and mold quenching, as recited in the instant claims. Claim 5 o;
`
`
`copending application No. 10/521,i2i t ach s th sam sup r—
`
`cooled liquid regime 0" larger than 90°C. Ni is optional alloy
`
`
`element according claims 6—8 0: copending application No.
`
`
`
`
`10/521,424. Thus, no patentable distinction was found in the
`
`
`
`instant c'aims in View 0
`
`
`
`the claims 0: copending application
`
`
`
`
`
`
`
`
`
`No. 10/521,424, updated as US 7,560,00’ R2.
`
`
`Stil'
`regarding claim 51, claims ’—20 O“ copending
`
`
`
`application No. 10/521,424, updated as US 7,560,00’ R2 teach an
`
`
`
`
`
`process 0: manufacturing composites 0" bulk—so'idi‘ying
`
`
`
`
`
`
`
`
`amorphous alloys including all 0“ the essential process steps,
`
`such as providing feed stock, heating, shaping, and mold
`
`
`quenching, as recited in the instant claim. Thus, no patentable
`
`
`
`
`
`distinction was lOlnd in the instant c'aims in View 0" the
`
`
`
`
`
`
`
`
`
`
`
`
`
`claims 0: copending application No. 10/521,424, updated as US
`
`
`
`7,560,00’ R2.
`
`
`
`Response to Arguments
`
`Applicant's arguments filed 12/13/2017 have been fully considered but they are
`
`moot in view of the new ground rejection above.
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 10
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to JIE YANG whose telephone number is (571 )270-1 884.
`
`The examiner can normally be reached on IFP.
`
`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
`
`
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Keith D Walker can be reached on 571 -272—3458. The fax phone number
`
`for the organization where this application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
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`USPTO Customer Service Representative or access to the automated information
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`system, call 800-786-9199 (IN USA OR CANADA) or 571-272—1000.
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`/JIE YANG/
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`Primary Examiner, Art Unit 1733
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