`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMIVHSSIONER FOR PATENTS
`PO. Box 1450
`Alexandria1 Virginia 22313-1450
`wwwusptogov
`
`APPLICATION NO.
`
`13/408,824
`
`
`
` F ING DATE
`
`02/29/2012
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`CONFIRMATION NO.
`
`David OPIE
`
`P10162USD1
`
`1862
`
`130551
`
`7590
`
`.
`Cruc1ble Intellectual Property, LLC
`c/o Brownstein Hyatt Farber Schreck
`410 Seventeenth St., Suite 2200
`Denver, CO 80202
`
`10/18/2016
`
`EXAMINER
`
`YANG, JIE
`
`ART UNIT
`1733
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`10/18/2016
`
`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):
`
`patentdocket @ bhfs.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`Application No.
`Applicant(s)
`
` 13/408,824 OPIE ET AL.
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`1733JIE YANG first“
`
`-- The MAILING DA TE of this communication appears on the cover sheet with 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).
`after SIX (6) MONTHS from the mailing date of this communication.
`If 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).
`
`In no event, however, may a reply be timely filed
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 8/9/2016.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I 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)|:I 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 EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) E Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20161012
`
`Disposition of Claims*
`5)|XI Claim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s M is/are rejected.
`
`is/are objected to.
`
`) )
`
`_
`
`
`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* 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
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
`
`
`
`
`
`, or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I 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)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. §119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I 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)
`
`
`
`

`

`Application/Control Number: 13/408,824
`
`Page 2
`
`Art Unit: 1733
`
`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 8/9/2016 has been entered.
`
`Status of the Claims
`
`Claims 1-36 have been cancelled; claims 37, 45, and 51 have been amended; and
`
`claims 37-51 remain for examination, wherein claims 37, 45, and 51 are independent claims.
`
`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) has been withdrawn according to the
`
`applicant’s amendment/remarks filed on 8/9/2016.
`
`The previous rejection of Claim 40 under 35 U.S.C. 103(a) as unpatentable over
`
`PG’605 in view of US’363, 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.
`
`

`

`Application/Control Number: 13/408,824
`
`Page 3
`
`ArtUnfizl733
`
`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 further in view of Otani et al (US 5,049,074,
`
`thereafter US’074) has been withdrawn according to the applicant’s amendment/remarks filed
`
`on 8/9/2016.
`
`However, in view of the Applicant’s amendments and newly recorded reference(s), a
`
`new ground rejection is listed as following:
`
`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, 41, 44-47, and 50-51 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 Hosoe (US-PG-pub 2004/0211222 A1,
`
`thereafter PG’222).
`
`Regarding claims 37 and 45, PG’605 teaches a process or
`
`
`manufacturing dental hardware, especially medical
`
`instruments and
`
`
`biomedical appliances by bulk metallic glass (BMG). PG’605 provides
`
`
`
`samples for the BMG implants without adding Ni
`
`(Paragraphs [0043]-
`
`
`[OO44]), which reads on the method companying manufacturing an object
`
`
`
`
`
`having a composition free 0" Ni
`"or placement into a region as
`
`

`

`Application/Control Number: 13/408,824
`
`Page4
`
`AItUnfizl733
`
`recited in the instant claims. PG’605 teaches arc cast Zr-32.5Cu-5Ti-
`
`lOAl alloy into a water-cooled copper mold to obtain amorphous
`
`
`
`
`
`
`of PG’605), which reads on all 0:
`article (?xample
`
`the essential
`
`
`
`
`
`
`process steps including: providing feed stock, heating, shaping, and
`
`mold quenching as recited in the instant claims. Regarding around
`
`1.7% or more elastic Strain limit
`
`in the ins
`
`
`
`recognized as material property depended on
`
`:ant claims, which is
`
` the material composition
`
`
`
`and heat treatment processes. Because PG’605 teaches the same BMG
`
`
`alloy without adding Ni manufactured by the same mold casting method
`
`
`
`
`
`
`
`O" PG’605),
`(1xample
`
`the claimed property, around 1.2% or more
`
`I)
`
`
`
`elastic strain limit, would be inherent exist in the QMG alloy 0'
`
`?G’605. This position is further evidenced by PG’605. PG’605 teaches
`
`
`
`
`that the mechanical properties 0'
`QMG including higher elastic strain
`
`
`
`
`
`limit
`
`
`
`(paragraph [0047] of PG’605). PG’605 does nOt specify heating
`
`the feedstock around the glass transition temperatire with reaching
`
`
`to a viscous fluid regime as recited in the instant claims. US’363
`
`
`
`
`
`
`
`
`
`teaches a process 0: manufacturing bulk solidifying amorphous alloy
`
`
`(AbstraCt and claims of US’363). US’363 teaches solid die-cast
`
`:ure such that their
`
`
`process to heating the alloy at a tempera
`
`
`
`viscosity is greater than a specific poin'
`
`(Col.2,
`
`
`lines 8—37 0:
`
`
`
`US'363). Therefore, 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
`
`
`
`

`

`Application/Control Number: 13/408,824
`
`PageS
`
`AItUnfizl733
`
`order to obtain the desired solid die-cast articles
`
`(Col.2,
`
`lines 8-
`
`37
`
` O
`f US'363).
`
`
`PG’605 in view of US
`
`
`
`’363 does not specify the surface
`
`roughness and particle size as recited in the instant claims.
`
`PG’222
`
`teaches a process 0
`
`
`
`applying metallic glass mold
`
`(abstract,
`
`par.[OO27], and Fig
`
`.l-6 of PG’222).
`
`PG’222 teaches controlling the
`
`
`
`SUI:
`
`face accuracy under 1.5um
`
`
`SUl”
`
`
`"ace roughness and particle size.
`
`the claimed ranges 0
`
`
`It would
`
`(par.[OO84]
`
` o
`
`PG’222),
`
`which is within
`
`
`have been obvious to one 0'
`
`' ordinary skill
`
`in the art at the time the
`
`
`invention was made to apply surface
`
`accuracy control as demonstrated
`
`
`
`
`by PG’222 in the process of PG’605 in view of US’363 for the desired
`
`
`
`optical application (par.[0077] of PG’???).
`
`Regarding claims 38, 39, and 46, PG’605 teaches applying water-
`
`
`
`
`
`
`cooled copper mo'd for artic'e having a shape suitable for MR"
`image
`
`
`
`
`
`
`
`
`(claim 1, Fig.1—7, and ?xamp'e
`of PG’605), which reads on the
`
`
`
`
`mold with a negative impression of the desired body sur"ace "eatures
`
`
`
`
`
`
`(claim 38) and that mold is a permanent mold (claims 39 and 46).
`
`Regarding claims 41 and 47,
`
`th
`
`e claimed super-cooled liquid
`
` amorphous alloy.
`region is recognized as a property or
`
`PG’605 teaches
`
`the same
`
`casting method
`
`
`
`BMG alloy without adding Ni manufactured by the same mold
`
`
` O
`
`
`
`(
`Example
`
`PG’6
`
`05,
`
`the claimed property,
`
`such as
`
`
`
`900C or more w0le be inherent
`
`oy
`
`
`
` free 0"
`
`Ni
`
`PG’605.
`
`
`
`o l
`
`
`
`super—cooled liq
`
`Jld region (ATsc)
`
`o
`
`exist in the Zr/Ti base amorphous a"
`
`

`

`Application/Control Number: 13/408,824
`
`Page 6
`
`AItUnfizl733
`
`Regarding claims 44 and 50, PG’605 teaches dental hardware
`
`
`
`including "racture "ixation screws,
`
`rods, pins, etc.
`
`(paragraphs
`
`
`
`
`
`[0002] and [0005] of RG’605), which reads on the load bearing member
`
`as recited in the instant claims.
`
`I)
`
`Regarding newly claim 51, PG’605 teaches a process or
`
`
`manufacturing dental hardware, especially medical
`
`instruments and
`
`
`biomedical appliances by bulk metallic glass (BMG). PG’605 provides
`
`
`
`samples for the BMG implants without adding Ni
`
`(Paragraphs [0043]-
`
`
`[0044]), which reads on the method companying manufacturing an object
`
`
`
`
`having a composition free 0" Ni
`"or placement into a region as
`
`recited in the instant claim. PG’605 teaches arc cast Zr-32.5Cu-5Ti-
`
`
`
`lOAl alloy into a water-cooled copper mold to obtain amorphous
`
`
`
`
`
`
`article (Rxample
`O" PG’605), which reads on all 0:
`
`the essential
`
`
`
`
`
`
`process steps including: providing feed stock, heating, shaping, and
`
`mold quenching as recited in the instant claims. Regarding around
`
`l.7% or more elastic strain limit
`
`
`
`in the instant claim, which is
`
`
`
`recognized as material property depended on the material composition
`
`
`and heat treatment processes. Because PG’605 teaches the same BMG
`
`
`alloy without adding Ni manufactured by the same mold casting method
`
`
`
`
`
`
`
`(Rxample
`O" PG’605),
`
`the claimed property, around 1.2% or more
`
`
`
`I)
`
`
`
`elastic strain limit, would be inherent exist in the RMG alloy 0'
`
`
`
`RG’605. This position is further evidenced by PG’605. PG’605 teaches
`
`
`
`that the mechanical properties 0' RMG including higher elastic strain
`
`
`
`

`

`Application/Control Number: 13/408,824
`
`Page7
`
`AItUnfizl733
`
`limi" (paragraph
`
`[0047]
`
`O
`
` PG’605).
`
`PG’605 does nO'
`
`
`: specify heating
`
`the
`
`feedstock around the glass transition temperatire with reaching
`
` : claims. US’363
`
`to a viscous
`
`
`fluid regime as recited in the instan'
`
`
`
`
`teaches a process OZ
`
`
`
`manu:
`
`
`
`
`facturing bulk solidi:
`
`fying amorphous alloy
`
`(Abstrac
`
`
`: and claims 0:
`
`US’363).
`
`US’363 teaches solid die-cast
`
`
`
`process
`
`to heating the alloy at a tempera
`
`
`a specific point
`
`(Col.2,
`
`
`lines 8—37 of
`
`:ure such that their
`
`
`
`viscosity is greater
`
`
`US'363). Therefore,
`
`than
`
` i
`
`
`: would have been obvious to one of ordinary
`
`
`
`skill in the art at the time the invention was made to app
`
`ly the
`
`heating process as demonstrated by US’363 in the process 0:
`
`f PG’605 in
`
`
`view 0'
`
`PG’???
`
`in order to obtain the desired solid die-cast articles
`
`(Col.2,
`
`
`lines 8-37 0:
`
`f US'363).
`
`Claim 40 is rejected under 35 U.S.C. 103(3) 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).
`
`Regarding claim 40,
`
`?G’605 in view 0
`
`f US’363 and
`
`?G’222 does not
`
`
`specify heating the
`
` feeds
`
`cock above melt
`
`temperature 0:
`
`
`
`
`solidi:
`
`
`fying amorphous alloy. US’443 teaches a process 0:
`
`
`article 0:
`
`a bulk-solidi
`
`JS alloy
`fying amorpho
`
`
`(Title and abstract 0:
`
`I]
`
`US’443).
`
`US’443 teaches
`
`the casting charge over the
`
`the bulk
`
`: mold casting
`
`melting temperature and mo:
`
`_d-cas,ing to obtain
`
`
`
`
`that hea ,ing
`
` 4,
`
`(Col.3,
`
`lines 11—22 and Col.
`
`
`
`lines 39-55 0
`
`' ordinary s
`
`WOU
`
`
`id have been obvious to one 0'
`
`fill
`
`in the art at the
`
`amorphous article
`
`US’443).
`
`
`Therefore,
`
`it
`
`

`

`Application/Control Number: 13/408,824
`
`PageS
`
`AItUnfizl733
`
`time the invention was made to apply the
`
`heating over the melting
`
`
`temperature 0: casting alloy as demonstrated by US’443 in the process
`
`
`
`
`
`of PG’605 in view of US’363 and PG’222 because US’443 clearly teaches
`
`
`
`
`
`
`overheating according to TTT crystallization curve of the alloy can
`
`
`
`improve the casting performance of the bulk solidifying amorphous
`
`alloy (Col.8,
`
` US’443).
`lines 58—67 and Fig.4—7 of
`
`Claim 42, 43, 48, and 49 are rejected under 35 U.S.C. 103(a) as unpatentable over
`
`PG’605 in view of US’363 and PG’222, and further in vi
`
`ew of Otani et al (US 5,049,074,
`
`thereafter US’074).
`
`
`Regarding claims 42, 43, 48, and 49, PG’605 in view of US’363
`
`
`and PG’222 does not specify 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
`
`
`
`implant
`
`lines 14-19, and Col.2,
`
`lines
`
`with Ti based alloy (Abstract, Col.;,
`
`
`
`
`
`
`54-62 of US’O74). US’O74 teaches treating the surface of the implant
`
`
`
`in order to firmly bonded and fixed to the living body (Col.4,
`
`lines
`
`
`17—47 of US’O74)
`
`
`including CV3 coating (Col.4,
`
`lines 48-64) and
`
`cement resin coating (Col.5,
`
`
`
`lines ll—3l of US’O74). Therefore, it
`
`
`would have been obvious to one 0" ordinary skill
`
`in the art at the
`
`time the invention was made to apply sur:
`
`
`
`face treatment and/or cement
`
`resin coating on the implant alloy as demonstrated by US’O74 in the
`
`
`
`
`
`process of PG’605 in view of US’363 and PG’222 because US’O74 teaches
`
`

`

`Application/Control Number: 13/408,824
`
`Page 9
`
`AItUnfizl733
`
`
`
`that
`
`
`
`the treatment providing a threaded structure as a means to
`
`increase the bonding strength between the living body and dental
`
`implant
`
`(Col.l,
`
`
`lines 25-35 of US’O74).
`
`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 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 conflicting claims are not identical,
`
`they are not
`
`
`
`
`
`patentable disoinct jrom each other because the claims l-ZO o:
`
`copending application No.
`
`
`lO/521,424, updated as US 7,560,001 32
`
`
`
`
`
`
`teach an process 0: manufacturing composites of bulk—solidi‘ying
`
`

`

`Application/Control Number: 13/408,824
`
`Page 10
`
`ArtUnfizl733
`
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`amorphous alloys including all 0" the essential process steps,
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`such
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`as providing feed stock, heating, shaping, and mold quenching, as
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`recited in the instant claims. Claim 5 o: copending application No.
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`10/521,424 t ach s th sam sup r—cooled liquid regime 0“ larger than
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`900C. Ni is optional alloy element according claims 6-8 0: copending
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`application No. 10/521,424. Thus, no patentable distinction was found
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`in the instant c'aims in View 0" the c'aims O" copending application
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`No. 10/521,424, updated as US 7,560,00’ Q2.
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`Stil'
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`regarding claim 5l, claims ’—20 of copending application
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`’0/52’,424, updated as US 7,560,00’ S2 teach an process of
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`No.
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`manufacturing composites 0“ bulk—solidifying amorphous alloys
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`including all 0:
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`the essential process steps,
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`such as providing feed
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`stock, heating, shaping,
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`and mold quenching, as recited in the
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`instant claim. Thus, no patentable distinction was found in the
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`instant c'aims in View 0
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`the claims 0: copending application No.
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`10/521,424, updated as US 7,560,001 32.
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`Applicant's arguments filed 8/9/2016 have been fully considered but they are moot in
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`Response to Arguments
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`view of the new ground rejection above.
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`

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`Application/Control Number: 13/408,824
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`Page 11
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`Art Unit: 1733
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to die Yang whose telephone number is 571 -2701 884. The
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`examiner can normally be reached on IFP.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Roy King can be reached on 571-2721244. The fax phone number for the
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`organization where this application or proceeding is assigned is 571-273-8300.
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`/Jie Yang/
`Primary Examiner, Art Unit 1733
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`