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
`
`12/04/2018
`7590
`”05“-
`Cruelble Intellectual Property, LLC
`e/o Brownstein Hyatt Farber Sehreek
`410 Seventeenth St., Suite 2200
`Denver CO 80202
`
`YANG” HE
`
`1733
`
`PAPERNUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/04/2018
`
`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 10/3/2018.
`[:1 A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2a). This action is FINAL.
`
`2b) C] 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—56 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) fl is/are rejected.
`
`Claim(s) M 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)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`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 20181129
`
`

`

`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
`
`Claims 1-36 have been cancelled; claims 37-38, 40, and 51 have been
`
`amended; claims 52-56 are added as new claims; and claims 37-56 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
`
`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”.
`
`Claims 37-39 and 41 -44 are allowed except these claims are still rejected on
`
`the ground of non-statutory obviousness type double patenting as being un-
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 3
`
`patentable over claims 1-20 of co-pending application No. 10/521 ,424, updated as
`
`US 7,560,001 82, which can be overcome by proper “Terminal Disclaimer”.
`
`Status of the Previous Rejection
`
`The previous rejection of Claims 37-39 and 41 -44 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) has been withdrawn according to the applicant’s
`
`amendment/remarks filed on 10/3/2018.
`
`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 45-56 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).
`
`
`PG’605 in View of US"363 and PG’222 is applied to the
`
`
`claims 45—51 for the same reason as stated in the previous
`
`rejection dated 6/6/2018.
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 4
`
`Regarding
`
`
`
`am nd d
`atur
`
`th
`
`in the instant claim 51,
`
`PG’605 teaches applying water—cooled copper mold
`
` ‘or article
`
`
`
`suitable :Or MR"
`having a shape
`image (claim l, Fig.1—7,
`
`
`
`
`
`O ?
`
`Xample
`
`may read on
`
`\\_
`forcing” the heated body against a mold as
`
`recited in the instant claim.
`
`Regarding newly added claim 52,
`
`PG’605 teaches applying
`
`water—cooled copper mold
`
` .20],
`
`article having a shape suitable
`
`
`
`
`
`
`
`and Rxample
`o BG’605),
`
`Fig.l—7,
`
`
`
`
`:Or MR"
`image
`
`which reads on
`
`(claim l,
`
`the mold with
`
`
`
`‘eatures
`desired body sur‘ace
`
`
`
`a negative impression o:
`
`the
`
`(claim 38) and that mold is a
`
`
`
`permanent mold as recited in the instant claim.
`
`Regarding newly claim 53,
`
`the claimed super—cooled liquid
`
`region is recognized as a property or
`
` amorphous alloy. PG’605
`
`
`teaches the same
`
`
`
`claimed property,
`
`
`
`the same mold casting method
`
`BMG alloy without adding Ni manufactured by
`
`
`
`
`
`
`(5xamp'e
`o BG’605,
`
`
`ed '
`(ATsc)
`such as super—coo"
`iquid region
`
`I)
`
`
`
`0:
`
`
`
`
`
`the
`
`90°C or more would be inherer
`
`
`0
`
`Ni
`tree 0“
`amorphous alloy
`
`t exist in the Zr/Ti base
`
`PG’605.
`
`
`
`Regarding
`
`newly claims 54—55,
`
`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.
`
` manufacturing a dental
`US’O74 teaches a process or
`
`
`
`
`
`BG’605).
`
`
`
`
`
`
`
`
`The se'
`mo'
`‘—weight 0'
`ding material
`
`and
`
`
`
`
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 5
`
`implant with Ti
`
`based alloy
`
`(Abstract,
`
`Col.l,
`
`lines 14—19, and
`
`Col.2,
`
`lines 54
`
`
`—62 of US’074).
`
`US’074 teaches treating the
`
`sur
`
`
`
`face 0:
`
`the
`
`implant
`
`in order to
`
`
`
` firmly bonded and fixed'
`
`the living body
`
`Col.4,
`
`lines 17—47 of
`
`US’074
`
`
`
`
`
`
`
`have been obvio
`
`
`'ines 48—64 0:
`coating (Co'.4,
`I)
`'ines ll—3’ O'
`coating (Co'.5,
`
`US’07—
`
`
`US’07—
`
`
`
`
`
`including CVD
`
`
`
`
`
`and cement resin
`
`Therefore,
`
`i' would
`
`
`
`
`
`
`'l
`in the art at the
`us to one 0“ ordinary ski
`
`the invention was made to apply surface treatment and/or
`
`time
`
`
`
`cement
`
`resin coating on the implant alloy as demonstrated by
`
`US’07— in the p
`
`IOCGSS O: PG’605 in view 0:
` US’363 because
`
`US’07—
`
`
`
`teaches that
`
`the treatment providing a
`
`
`
`structure as a means to increase
`
`the bonding s
`
`the living body and dental
`
`US’074).
`
`implant
`
`(Col.l,
`
`
`
`threaded
`
` trength between
`
`
`lines 25—35 of
`
`_aim 56,
`Regarding newly added c:
`
`
`
`hardware includ
`ing "racture ”ixation screws,
`
`PG’605 teaches dental
`
`rods, pins, etc.
`
`(paragraphs [00
`
`02] and [0005:
`
`O
`
`PG’605),
`
`which reads on the
`
`
`
`load bearing member as recited in the instant claim.
`
`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
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 6
`
`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 37-56 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.
`
`
`Claims l—20 of copending application No.
`
`lO/521,424,
`
`
`updated as US 7,560,001 32,
`
`
`is applied to the claims 37—51 for
`
`the same reason as stated in the previous rejection dated
`
`10/18/2016.
`
`Regarding the newly added claims 52—26, Although the
`
`
`con"liccing claims are not identical,
`
`they are not patentable
`
`
`
`
`application No.
`
`
`dissincs Irom each other because the claims 1—20 0: copending
`
`
`
`lO/521,424, updated as US 7,560,00’ 37 teach
`
`
`
`
`
`
`
`an process 0: manufacturing composites 0‘ bulk—solidi‘ying
`
`
`
`amorphous al'oys including all 0“ the essential process steps,
`
`
`
`
`such as providing feed stock, heating, shaping, and mold
`
`

`

`she claims 0: copending application
`
`
`
`
`
`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 7
`
`I)
`
`quenching, as recited in the instant claims. Claim 5 o;
`
`
`copending application No. 10/521,121 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
`
`
`
`
`
`
`
`No. 10/521,424, updated as US 7,560,00’ R2.
`
`Response to Arguments
`
`Applicant’s arguments with respect to claims 45-56 have been considered but
`
`they are not persuasive.
`
`The Applicant argued that:
`
`1, Regarding the rejection of Claims 45-56 under 35 U.S.C. 103(a) as
`
`unpatentable over Horton, Jr et al (PG’605) in view of Scruggs et al (US’363) and
`
`Otani et al (US’074), Horton, Jr et al (PG’605) does not discloses forming a claimed
`
`surface features, Scruggs et aI (US’363) teaches molding BMG with a smooth
`
`surface, and Otani et al (US’074) does not indicate casting or molding to form the
`
`claimed surface features.
`
`2, TD may file upon a finding of allowable subject matter in the present case.
`
`In response,
`
`Regarding the argument 1, Firstly, it is noted that “comprising” language for the
`
`claimed process steps, which does not excluding the other steps for the claimed surface
`
`features; Secondly, US’074 teaches the surface roughness of core material having
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 8
`
`maximum height of at least 10um (Col.3, lns.54-66 of US’O74), which overlap the
`
`claimed surface roughness and pore size as recited in the instant claims. Overlapping in
`
`the surface roughness and pore size create a prima facie case of obviousness. MPEP
`
`21444 05 l; Finally, it is noted that the Applicant's arguments are against the references
`
`individually, one cannot show nonobviousness by attacking references individually
`
`where the rejections are based on combinations of references. See In re Keller, 642
`
`F.2d 413, 208 USPO 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ
`
`375 (Fed. Cir. 1986). In the instant case, Horton, Jr et al (PG’605) in view of Scruggs et
`
`al (US’363) and Otani et al (US’074) is applied to the instant claims 45-56. The reason
`
`and motivation for the combination can refer to the rejection for the instant claims above
`
`and previous rejection dated 6/6/2018.
`
`Proper TD is necessary for overcoming the rejection 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 82.
`
`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
`
`CFR1.136(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
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 9
`
`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
`
`extension fee 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 date of this final action.
`
`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
`
`(AIR) at http://www.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Keith D Hendricks can be reached on 571-272—1401. 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
`
`

`

`Application/Control Number: 13/408,824
`Art Unit: 1733
`
`Page 10
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272-1 000.
`
`/J|E YANG/
`
`Primary Examiner, Art Unit 1733
`
`