U.S. Patent Application No.: 13/408,824
`Attorney Reference No.: 069648—0404130
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`REMARKS
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`Claims 37—5 1 are currently pending; claims 37, 45 and 51 have been amended. These
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`amendments are supported by the disclosure on page 10, lines 34—35, of the specification. No
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`new matter has been added. Furthermore, the amendment of claims 37, 45 and 51 do not raise
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`new issue as claims 37, 45 and 51 now recite the limitation “heating the feedstock [or body] to
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`around a glass transition temperature of the bulk solidifying amorphous alloy to reach a viscous
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`fluid regime” and this limitation is substantially the same as the limitation “heating the feedstock
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`[or body] to about a glass transition temperature and only within the supercooled liquid region of
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`the bulk solidifying amorphous alloy.” In view of the following comments, allowance of all the
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`claims pending in the application is respectfully requested.
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`Claim Re'ections Under 35 U.S.C. 112
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`Claims 37, 45 and 51 are rejected under 35 U.S.C. §112, first paragraph, as failing to
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`comply with the written description requirement.
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`This rejection is respectfully traversed and should be withdrawn in light of this
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`Amendment.
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`The Examiner’s position is that the limitation “heating the feedstock to at least above the
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`glass transition temperature and only within the supercooled liquid region of the bulk solidifying
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`amorphous alloy to form a moldable alloy” is not literally supported by the specification. MPEP
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`2163 (I)(B) clear states that “there is no in haec verba requirement” to satisfy the written
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`description requirement. MPEP 2163 (I) (B) states that “newly added claim limitations must be
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`supported in the specification through express, implicit, or inherent disclosure.” Persons of
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`ordinary skill in the art would recognize that in the embodiment shown in Figure 4 “heating the
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`feedstock to at least above the glass transition temperature and only within the supercooled liquid
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`U.S. Patent Application No.: 13/408,824
`Attorney Reference No.: 069648—0404130
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`region of the bulk solidifying amorphous alloy to form a moldable alloy” particularly in light of
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`the statement that “[t]he feedstock is then heated around the glass temperature of the bulk—
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`solidifying amorphous alloy to reach the viscous—fluid regime (Step 2).” See page 10, lines 34—
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`36, of the specification.
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`Also, persons of ordinary skill in the art would recognize that the limitation “heating the
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`feedstock [or body] to around a glass transition temperature of the bulk solidifying amorphous
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`alloy to reach a viscous fluid regime” and is substantially the same as the limitation “heating the
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`feedstock [or body] to about a glass transition temperature and only within the supercooled liquid
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`region of the bulk solidifying amorphous alloy.” Thus, the present Amendment does not raise
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`new issues.
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`Claim Re'ections Under 35 U.S.C. 102
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`Claims 37—5 1 are rejected under 35 U.S.C. §102(a) as being anticipated by WO
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`2004/012620 to Peker et al. (hereinafter “Peker”).
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`Applicant respectfully traverses this rejection.
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`Claims 37—39, 41, 44—47 and 50—51 are rejected under 35 U.S.C. §102(a) as being
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`anticipated by U.S. Publication No. 2002/0162605 to Horton, Jr. et al. (hereinafter “Horton”).
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`Applicant respectfully traverses these rejections.
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`Applicant respectfully submits Examiner did not argue that either Peker or Horton fails to
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`teach the limitation of “heating the feedstock to at least above the glass transition temperature
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`and only within the supercooled liquid region of the bulk solidifying amorphous alloy to form a
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`moldable alloy.” Instead, the Examiner’s position is that this limitation is not literally supported
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`by the specification. Even if the claims might be rejected under 35 USC 112 for lack of support,
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`which Applicant disagree, for a anticipation rejection to stand, the Examiner must show that
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`U.S. Patent Application No.: 13/408,824
`Attorney Reference No.: 069648—0404130
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`Horton teaches all the limitations including those allegedly not supported by the specification,
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`and the Examiner has failed to show.
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`Claim Re'ections under 35 U.S.C. 103
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`Claim 40 is rejected under 35 USC §103(a) as being unpatentable over Horton in view of
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`U.S. Patent No. 5,797,443 to Lin et al. (hereinafter “Lin”).
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`Applicant respectfully traverses this rejection.
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`Claim 40 depends from claim 37, which should now be allowable.
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`Claims 42, 43, 48 and 49 are rejected under 35 USC §103(a) as being unpatentable over
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`Horton in view of U.S. Patent No. 5,049,074 to Otani et al. (hereinafter “Otani”).
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`Applicant respectfully traverses this rejection.
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`Claims 42, 43, 48 and 49 are dependent claims which should now be allowable as the
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`independent claims should be allowable.
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`Claims 37—5 1 are rejected under 35 USC §103(a) as being unpatentable over Peker in
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`view of U.S. Publication No. 2004/02l 1222 to Hosoe.
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`Applicant respectfully traverses this rejection.
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`This rejection should be withdrawn in light of the attached Joint Katz Declaration of
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`common inventors who are inventors on both the present application and Peker.
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`Double Patenting
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`Claims 37—5 1 are rejected on the ground of non—statutory double patenting as being
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`unpatentable over claims l—20 of U.S. Patent No. 7,560,001. Applicants respectfully submit that
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`the double patenting rejection be held in abeyance under indication of allowable claims over the
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`cited prior art.
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`US. Patent Application No.: 13/408,824
`Attorney Reference No.: 069648—0404130
`
`CONCLUSION
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`In the event that there are any fees due with respect to the filing of this paper, please
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`charge Counsel’s Deposit Account No. 03—3975.
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`Date: September 11, 2014
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`Respectfully submitted,
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`By:
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`/Raj S. DaVé/
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`Raj S. Dave
`Registration No. 42,465
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`Customer No.: 98648
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`Pillsbury Winthrop Shaw Pittman LLP
`PO. Box 10500
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`McLean, Virginia 22102
`Main: (703) 770—7900
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`Fax: (703) 770—7901
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`
