Attorney Docket No. P10162USD1
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`REMARKS
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`This paper is submitted in response to the Office action mailed on February 6, 2015.
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`After entry of this Amendment and Response, claims 37-51 will be pending. No amendments
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`have been made to the claims.
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`I.
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`Claim Rejections Under 35 U.S.C. § 103
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`The Examiner rejected claims 37-39, 41, 44-47 and 50-51 under 35 U.S.C. § 103(a) as
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`being obvious over Horton, Jr. et al. (US. Patent Publication No. 2002/0162605; hereinafter
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`“Horton”) in view of Scruggs et al. (US. Patent No. 5,711,363; hereinafter “Scruggs”). For at
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`least the following reasons, the Applicant respectfully disagrees with these rejections.
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`The Examiner acknowledges that Horton “does not specify heating the feedstock around
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`the glass transition temperature with reaching to a viscous fluid regime as recited in the instant
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`claims.” Office Action, at p. 5. However, the Examiner alleges that Scruggs teaches solid die-
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`cast process to heating the alloy at a temperature such that their viscosity is greater than a
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`specific point.” Id. The Examiner concludes that “it would have been obvious to one of ordinary
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`skill in the art at the time the invention was made to apply the heating process as demonstrated
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`by US'363 [Scruggs] in the process of PG'605 [Horton] in order to obtain the desired solid die-
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`cast articles.” Id.
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`Applicant respectfully traverses the § 103(a) rejections because the Examiner failed to
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`state a prima facie case of obviousness.
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`In particular, Applicant respectfully asserts that none
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`of the references, alone or in any permissible combination teach, suggest or motivate a method
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`of manufacturing an object for placement into a region comprising, inter alia, heating the
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`feedstock around the glass transition temperature of the bulk solidifying amorphous alloy to
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`reach a viscous fluid regime and form a moldable alloy and quenching the object at a cooling
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`rate sufficient to ensure that the bulk solidifying amorphous alloy has a substantially amorphous
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`atomic structure having an elastic strain limit of around 1.2% or more, said bulk-solidifying
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`amorphous alloy having a composition that is free from Ni. See, e.g., KSR International
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`Company v. Teleflex, Inc., 127 S. Ct. 1727, 1741 (2007) (requiring "some articulated reasoning
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`with some rational underpinning to support the legal conclusion of obviousness.”). Applicant
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`respectfully submits the office has failed to establish a prima facie case of obviousness for the
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`reasons detailed below.
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`Attorney Docket No. P10162USD1
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`In this light, Applicant notes that none of the references, alone or in any permissible
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`combination, teach a method of manufacturing an object for placement into a region comprising,
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`inter alia, heating the feedstock around the glass transition temperature of the bulk solidifying
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`amorphous alloy to reach a viscous fluid regime and form a moldable alloy and quenching the
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`object at a cooling rate sufficient to ensure that the bulk solidifying amorphous alloy has a
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`substantially amorphous atomic structure having an elastic strain limit of around 1.2% or more,
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`said bulk-solidifying amorphous alloy having a composition that is free from Ni. Rather, Horton
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`uses an arc casting, where the alloy is heated above the melting temperature (Tm) and
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`Scruggs’ casting methods are related to alloys that do not preclude Nickel and in fact contain
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`Nickel in substantial amounts. Accordingly, a prima facie case of obviousness has not been
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`established, at least for the reason that the references fail to teach each and every element of
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`the claims.
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`Moreover, Applicant respectfully submits there is no motivation to combine Horton with
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`Scruggs because one of skill in art would recognize the unpredictable nature of extrapolating
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`methods of manufacturing an object comprising alloys of differing compositions, i.e. alloys
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`comprising Nickel verses alloys in the absence of Nickel, particularly when specific alloy
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`properties are desired. Notably, Scruggs is silent regarding the elastic strain limits of the alloys
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`obtained by their methods.
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`In contrast, Applicant’s disclosure requires object comprising alloys
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`without Nickel and an elastic strain limit of around 1.2% or more. As the Examiner is no doubt
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`aware, "[b]oth the suggestion and the reasonable expectation of success must be founded in
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`the prior art, and not in the applicant's disclosure." In re Vaeck, 947 F.2d 488, 493 (Fed. Cir.
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`1991) (prior art did not suggest the combination or convey to those of ordinary skill in the art a
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`reasonable expectation of success of making it). Applicant respectfully notes the "[r]easonable
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`expectation of success is assessed from the perspective of the person of ordinary skill in the
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`art." Id.
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`In the absence of hindsight, there is no articulate reasoning with some rational
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`underpinning to combine Horton and Scruggs with any reasonable expectation of success to
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`support a legal conclusion of obviousness.
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`The Examiner rejected claim 40 under 35 U.S.C. § 103(a) as being obvious over Horton
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`in view of Scruggs, and further in view of Lin et al. (US. Patent No. 5,797,443; hereinafter “Lin”).
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`For at least the following reasons, the Assignee respectfully disagrees with these rejections.
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`

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`Attorney Docket No. P10162USD1
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`Claim 40 depends from claim 37, which should now be allowable. Lin does not cure
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`deficiencies of Horton and Scruggs, therefore, claim 40 should be allowable over Horton in view
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`of Scruggs and further in view of Lin.
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`The Examiner rejected claims 42, 43, 48 and 49 under 35 U.S.C. § 103(a) as being
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`obvious over Scruggs in view of Otani et al. (US. Patent No. 5,049,074; hereinafter “Otani”).
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`For at least the following reasons, the Assignee respectfully disagrees with these rejections.
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`Claims 42, 43, 48, and 49 depend from claims 37 or 45, which should now be allowable.
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`Otani does not cure deficiencies of Horton and Scruggs, therefore, claims 42, 43, 48, and 49
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`should be allowable over Horton in view of Scruggs and further in view of Otani.
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`In light of the above remarks, Applicant respectfully submits the Office has failed to
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`establish a prima facie case of obviousness. Accordingly, Applicant respectfully requests
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`withdrawal of the rejections on this basis.
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`||.
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`Double Patenting
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`Claims 37-51 are rejected on the grounds of non-statutory double patenting as being
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`unpatentable over claims 1-20 of US. Patent No. 7,560,001. Applicant respectfully submits that
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`the double patenting rejection be held abeyance under indication of allowable claims over cited
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`art.
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`I".
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`Conclusion
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`The Assignee thanks the Examiner for his thorough review of the application. The
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`Assignee respectfully submits the present application is in condition for allowance and
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`respectfully requests the issuance of a Notice of Allowability as soon as practicable.
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`This Amendment is submitted contemporaneously with a petition for a three-month
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`extension of time in accordance with 37 CFR § 1.136(a). Payment by credit card in the amount
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`of $1,400 is being made with this filing. The Assignee believes no further fees or petitions are
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`required. However, if any such petitions or fees are necessary, please consider this a request
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`therefor and authorization to charge Deposit Account No. 504621 accordingly.
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`

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`Attorney Docket No. P10162USD1
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`If the Examiner should require any additional information or amendment, please contact
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`the undersigned attorney.
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`Dated: August 5, 2015
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`Respectfully submitted,
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`/Aiah Singh/
`Ajay Singh, Registration No. 63,351
`Attorney for Assignee
`USPTO Customer No. 130551
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`Brownstein Hyatt Farber Schreck, LLP
`410 Seventeenth Street
`Suite 2200
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`Denver, Colorado 80202
`Phone: 303-223-1100
`Fax: 303-223-1111
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`018042\0032\12234048.1
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