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
`
`04’1””
`7590
`”05“-
`Cruelble Intellectual Property, LLC
`e/o Brownstein Hyatt Farber Sehreek
`410 Seventeenth St., Suite 2200
`Denver CO 80202
`
`YANG” HE
`
`1733
`
`PAPERNUMBER
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`NOTIFICATION DATE
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`DELIVERY MODE
`
`04/19/2019
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`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)
`
`

`

`AdvisoryAcI/oh
`Before [/79 Filing ofa” Appea/Bfief
`
`Application No.
`
`13/4081824
`Examiner
`JIE YANG
`
`Applicant(s)
`
`OPIE et al.
`Art Unit
`1733
`
`AIA (FITF) Status
`N0
`
`-- 7'he MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`THE REPLY FILED 02 April 2019 FAILS TO PLACE THIS APPLICATION IN CONDITION FOR ALLOWANCE.
`N
`N Tl E
`F APPEAL FILED
`
`1.
`
`The reply was filed after a final rejection. No Notice of Appeal has been filed. To avoid abandonment of this application, applicant must timely file
`one of the following replies: (1) an amendment, affidavit, or other evidence, which places the application in condition for allowance;
`(2) a Notice of Appeal (with appeal fee) in compliance with 37 CFR 41.31; or (3) a Request for Continued Examination (RCE) in compliance with
`37 CFR 1.114 if this is a utility or plant application. Note that RCEs are not permitted in design applications. The reply must be filed within one of
`the following time periods:
`The period for reply expires 4 months from the mailing date of the final rejection.
`a)
`b) D The period for reply expires on: (1) the mailing date of this Advisory Action; or (2) the date set forth in the final rejection, whichever is later.
`In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of the final rejection.
`c) CI A prior Advisory Action was mailed more than 3 months after the mailing date of the final rejection in response to a first after-final reply filed
`within 2 months of the mailing date of the final rejection.The current period for reply expires
`months from the mailing date of
`[hepf/bfAdV/Sij/Ac/Ibfl or SIX MONTHS from the mailing date of the final rejection, whichever is earlier.
`ExammerNole: If box 1
`is checked, check either box (
`), (b) or (c). ONLY CHECK BOX (b) WHEN THIS ADVISORY ACTION IS THE
`FIRST RESPONSE TO APPLICANTS FIRST AFTER-FINAL REPLY WHICH WAS FILED WITHIN TWO MONTHS OF THE FINAL
`REJECTION. ONLY CHECK BOX (c) IN THE LIMITED SITUATION SET FORTH UNDER BOX (0). See MPEP 706.07( ).
`Extensions of time may be obtained under 37 CFR 1.136(a). The date on which the petition under 37 CFR 1.136(a) and the appropriate
`extension fee have been filed is the date for purposes of determining the period of extension and the corresponding amount of the fee. The
`appropriate extension fee under 37 CFR 1 .17(a) is calculated from: (1) the expiration date of the shortened statutory period for reply originally
`set in the final Office action; or (2) as set forth in (b) or (c) above, if checked. Any reply received by the Office later than three months after the
`mailing date of the final rejection, even if timely filed, may reduce any earned patent term adjustment. See 37 CFR 1.704(b).
`N TI E
`F APPEAL
`
`. A brief in compliance with 37 CFR 41.37 must be filed within two months of the date of filing the Notice
`2. E] The Notice of Appeal was filed on
`of Appeal (37 CFR 41 .37(a)), or any extension thereof (37 CFR 41 .37(e)), to avoid dismissal of the appeal. Since a Notice of
`Appeal has been filed, any reply must be filed within the time period set forth in 37CFR 41 .37(
`).
`AMENDMENTS
`
`3. CI The proposed amendments filed after a final rejection, but prior to the date of filing a brief, will n_o_t be entered because
`a) CI They raise new issues that would require further consideration and/or search (see NOTE below);
`b) CI They raise the issue of new matter (see NOTE below);
`c) C] They are not deemed to place the application in better form for appeal by materially reducing or simplifying the issues for
`appeal; and/or
`d) C] They present additional claims without canceling a corresponding number of finally rejected claims.
`NOTE:
`(See 37CFR 1.116 and 41 .33(
`)).
`4. D The amendments are not in compliance with 37CFR 1.121. See attached Notice of Non-Compliant Amendment (PTOL-324).
`5.
`Applicants reply has overcome the following rejection(s): See Continuation Sheet
`6. D Newly proposed or amended claim(s)
`would be allowable if submitted in a separate, timely filed amendment canceling the non-allowable
`claim( ).
`For purposes of appeal, the proposed amendment(s):(a)Dwill not be entered, or (b).will be entered, and an explanation of how the
`new or amended claims would be rejected is provided below or appended.
`AFFIDAVIT R THER EVIDEN E
`
`7.
`
`8. CI A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`9. I:I The affidavit or other evidence filed after final action, but before or on the date of filing a Notice of Appeal will n_o_t be entered because applicant
`failed to provide a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented. See 37
`CFR 1.116( ).
`10. CI The affidavit or other evidence filed after the date of filing the Notice of Appeal, but prior to the date of filing a brief, will n_o_t be entered because
`the affidavit or other evidence failed to overcome a_|| rejections under appeal and/or appellant fails to provide a showing of good and sufficient
`reasons why it is necessary and was not earlier presented. See 37 CFR 41 .33(d)(
`).
`11. C] The affidavit or other evidence is entered. An explanation of the status of the claims after entry is below or attached.
`RE
`E T F R RE
`N IDERATI N THER
`
`12.
`
`The request for reconsideration has been considered but does NOT place the application in condition for allowance because:
`See Continuation Sheet.
`
`
`
`).
`
`13. CI Note the attached Information D/lsc/osure Slalemen/(s). (PTO/SB/08) Paper No(
`14.
`Other: See Continuation Sheet.
`STATUS OF CLAIMS
`15. The status of the claim(s) is (or will be) as follows:
`Claim(s) allowed:37—39 and 41—44.
`Claim(s) objected to:4_0.
`Claim(s) rejected:45—56.
`Claim(s) withdrawn from consideration:
`/JIE YANG/
`Primary Examiner, Art Unit 1733
`US. Patent and Trademark Office
`PTOL-303 (Rev. 08-2013)
`
`Advisory Action Before the Filing of an Appeal Brief
`
`Paper No. 20190415
`
`

`

`Continuation Sheet (PTOL-303)
`
`App"°at'°" N°' 13/408324
`
`Claims 45 and 51 are amended; claims 1-36 have been canceled; and claims 37-56 remain for
`examination, wherein claims 37, 45, and 51 are independent claims. It is acknowledged of the receipt of
`the Applicant's "terminal disclaimer" filed on 4/2/2019, which has been approved on 4/2/2019.
`
`Continuation of AMENDMENTS 5. Applicant's reply has overcome the following rejection(s): Previous
`rejection of claims 37-56 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 is
`withdrawn in view of the Applicant's "terminal disclaimer" filed on 4/2/2019, which has been approved on 4
`/2/2019.
`
`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.
`
`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’074).
`PG’605 in view of US"363 and US'074 is applied to the claims 45-51 for the same reason as stated in the
`previous rejection dated 6/6/2018. Regarding the amended features in the instant claims 45 and 51, they
`do not change the scope of the instant claims.
`
`Continuation of REQUEST FOR RECONSIDERATION/OTHER 12. The request for reconsideration has
`been considered but does NOT place the application in condition for allowance because: The Applicant's
`arguments filed on 4/2/2019 with respect to claims 41-56 have been fully considered but they are not
`persuasive.
`Applicant’s arguments are summarized as follows:
`1, None of the cited references taken alone or together teach pressing/forcing the heated body against a
`mold to form a plurality of surface features on the outer sider surface of a implant.
`2, Otani et al (US’074) applying blasting with abrasive sand rather than by molding as claimed method to
`obtain the claimed roughness features on the surface.
`In response:
`Regarding the argument 1, as pointed out in the previous office actions dated 6/6/2018 and 12/4/2018,
`Horton, Jr et al (PG’605) teaches arc cast Zr-32.5Cu-5Ti-10Al alloy into a water-cooled copper mold to
`obtain amorphous article (Example III of PG’605); and Scruggs et al (US’363) teaches solid die-cast
`process to heating the alloy at a temperature such that their viscosity is greater than a specific point (Col.2
`, lines 8-37 of US'363) and forcing metal into mold to form article with a plurality of surface features (Fig.5
`and 7-10 of US'363) with surface roughness less than 3um (claim 5 and Col.4, lns.13-16 of US'363). It is
`noted that there is no specific surface feature limitations in the instant claims (in other word: an article with
`a smooth surface does not mean that the article has no general surface features). Therefore, different
`shapes and dimensions of the implant articles in the cited prior arts (for example, Fig.4-6 of PG'605, Fig.1
`of US'363, and/or Fig.1-14 of US'074) would reads on the claimed article with a plurality of surface
`features as recited in the instant claims.
`
`Regarding the argument 2, as pointed out in the previous office actions dated 6/6/2018 and 12/4/2018, US
`’074 teaches a process of manufacturing a dental implant with Co-Cr alloy, Ti, or Ti based alloy (Abstract,
`Col.1, lines 14-19, and Col.2, lines 54-62 of US’074). US’074 teaches a porous layer with preferably at
`least 100um of pore size (Col.4, lns.8—15) and US’074 teaches the surface roughness of core material
`having maximum height of at least 10um (Col.3, lns.54-66 of US’074), 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 I. It is further noted that Scruggs et al (US’
`363) teaches solid die-cast process and forcing metal into mold to form an article with surface roughness
`
`

`

`App"°at'°" N°' 13/408324
`Continuation Sheet (PTOL-303)
`less than 3um (claim 5 and Col.4, lns.13-16 of US'363), which also overlapping the claimed roughness
`range. The reason and motivation for the combination can refer to the previous office actions dated dated
`6/6/2018 and 12/4/2018.
`
`The filed PTO-2323 has been reviewed, but a non-broadening amendment to at least one independent
`claim was not submitted.
`
`Any inquiry concerning this communication or earlier communications from the examiner should be
`directed to Jie Yang whose telephone number is 571-2701884. The examiner can normally be reached on
`IFP.
`
`