`
`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
`
`08/17/2015
`
`EXAMINER
`
`YANG, JIE
`
`ART UNIT
`1733
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`08/17/2015
`
`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.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`patentdocket @ bhfs.c0m
`jhowell @ bhfs.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/408,824 OPIE ET AL.
`
`
`AIA (First Inventor to File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`JIE YANG its“ 1733
`-- 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 CFR1.136(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)IZI Responsive to communication(s) filed on 8/5/2015.
`El A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)|:l This action is non-final.
`2a)|Z| 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
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:| Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
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`closed in accordance with the practice under Exparte Quay/e, 1935 CD. 11, 453 O.G. 213.
`
`Disposition of Claims*
`
`5)IZI C|aim(s) fl is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`
`is/are allowed.
`6 El Claim s)
`s E is/are rejected.
`
`3) D Interview Summary (PTO-413)
`1) D Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`4) I:I Other'
`2) I] Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`
`Paper No(s)/Mai| Date .
`US. Patent and Trademark Office
`PTOL—326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mai| Date 20150811
`
`) )
`
`_
`
`
`is/are objected to.
`
`are subject to restriction and/or election requirement.
`9)I:I C|aim(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
`
`
`
`
`hit
`:i/wwwusnto. ov/ atentS/init events/
`iindex.‘s orsend an inquiry to PPI-iieedback{®usgtc.00v.
`
`Application Papers
`
`10)I:l The specification is objected to by the Examiner.
`11)I:l 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
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`12)I:| Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`a)I:l All
`
`b)|:l Some” c)I:l None of the:
`
`1.I:I Certified copies of the priority documents have been received.
`2.|:l 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)
`
`
`
`

`

`Application/Control Number: 13/408,824
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`Page 2
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`Art Unit: 1733
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`The present application is being examined under the pre-AIA first to invent provisions.
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`DETAILED ACTION
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`Claims 1-36 have been cancelled; and claims 37-51 remain for examination,
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`wherein claims 37, 45, and 51 are independent claims. There is no amendment in the
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`instant claims.
`
`Claim Rejections - 35 USC § 103
`
`The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all
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`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
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`unpatentable over Horton, Jr et al (US-PG-pub 2002/0162605A1, thereafter PG’605) in
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`view of Scruggs et al (US 5,711,363, thereafter US’363).
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`PG’605 in View of US"363 is applied to the claims 37-39,
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`41, 44—47, and 50—51 for the same reason as stated in the
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`
`
`
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`previous rejection dated 2/6/2015.
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`Claim 40 is rejected under 35 U.S.C. 103(a) as unpatentable over PG’605 in view
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`of US’363, and further in view of Lin et al (US 5,797,443, thereafter US’443).
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`

`

`Application/Control Number: 13/408,824
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`Page 3
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`Art Unit: 1733
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`PG’605 in View of US"363 and US’443 is applied to the
`
`
`claim 40 for the same reason as stated in the previous rejection
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`dated 2/6/2015.
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`Claim 42, 43, 48, and 49 are rejected under 35 U.S.C. 103(a) as unpatentable
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`over PG’605 in view of US’363, and further in view of Otani et al (US 5,049,074,
`
`thereafter US’074).
`
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`PG’605 in View of US"363 and US’O74 is applied to the
`
`
`claim 40 for the same reason as stated in the previous rejection
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`dated 2/6/2015.
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`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.
`
`

`

`Application/Control Number: 13/408,824
`
`Page 4
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`Art Unit: 1733
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`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
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`double patenting as being unpatentable over claims 1-20 of copending application No.
`
`10/521,424, updated as US 7,560,001 B2.
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`Claims 1—20 0:
`
`copending application No. 10/521,424,
`
`
`updated as US 7,560,001 32,
`
`
`is applied to the claims 37—51 :or
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`the same reason as stated in the previous rejection dated
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`2/6/2015.
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`Response to Arguments
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`Applicant’s arguments with respect to claims 37-51 have been considered but
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`they are not persuasive.
`
`The Applicant argued that:
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`1, Regarding the 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 (PG’605) in view of Scruggs et al
`
`(US’363), the Examiner failed to state a prima facie case of obviousness. None of the
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`references, alone or in any permissible combination teach, suggest or motivate a
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`method of manufacturing an object as claimed. The office has failed to establish a prima
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`facie case of obviousness since the references fail to teach each and every element of
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`

`

`Application/Control Number: 13/408,824
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`Page 5
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`Art Unit: 1733
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`the claim; there is no motivation to combine Horton, Jr et al (PG’605) with Scruggs et al
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`(US’363).
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`2, Lin et al (US’443) does not cure deficiencies of Horton, Jr et al (PG’605) in
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`view of Scruggs et al (US’363).
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`3, Otani et al (US’074)does not cure deficiencies of Horton, Jr et al (PG’605) in
`
`view of Scruggs et al (US’363).
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`4, different annealing temperature may affect the yield strength (Fig.17 of the
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`instant specification).
`
`In response,
`
`Regarding the arguments 1-3, it is noted that Horton, Jr et al (PG’605) teaches
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`arc cast Zr-32.5Cu-5Ti-1OA| alloy into a water-cooled copper mold to obtain amorphous
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`article manufacturing by process steps including: providing feed stock, heating, shaping,
`
`and mold quenching, which cover all of the essential process steps as recited in the
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`instant claims. Scruggs et al (US’363) teaches solid die-cast process to heating the
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`alloy at a temperature such that their viscosity is greater than a specific point.
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`Therefore, it would have been obvious to one of ordinary skill in the art at the time the
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`invention was made to apply the heating process as demonstrated by US’363 in the
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`process of PG’605 in order to obtain the desired solid die-cast articles with their
`
`viscosity is greater than a specific point (Col.2, lines 8-37 of US'363). To obtain a
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`desired viscosity as disclosed by Scruggs et al (US’363) provides good motivation for
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`the combination of Horton, Jr et al (PG’605) with Scruggs et al (US’363).
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`

`

`Application/Control Number: 13/408,824
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`Page 6
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`Art Unit: 1733
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`Conclusion
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`THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time
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`policy as set forth in 37 CFR 1.136(a).
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`A shortened statutory period for reply to this final action is set to expire THREE
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`MONTHS from the mailing date of this action.
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`In the event a first reply is filed within
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`TWO MONTHS of the mailing date of this final action and the advisory action is not
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`mailed until after the end of the THREE-MONTH shortened statutory period, then the
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`shortened statutory period will expire on the date the advisory action is mailed, and any
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`extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of
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`the advisory action.
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`In no event, however, will the statutory period for reply expire later
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`than SIX MONTHS from the mailing date of this final action.
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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 -270-1 884.
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`The examiner can normally be reached on M-F, 7:30-5:00 EST.
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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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`

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`Application/Control Number: 13/408,824
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`Page 7
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`Art Unit: 1733
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`Information regarding the status of an application may be obtained from the
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`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.
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`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.
`
`/Jie Yang/
`Primary Examiner, Art Unit 1733
`
`