3DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
The reply filed on August 26, 2025 has been entered into the prosecution for the application. Currently, claims 1-4, 14-17, and 21-22 are pending. Claims 1-4, 15, and 17 have been amended. Claims 21 and 22 are new. Claims 5-13 and 18-20 have been cancelled.
In view of the amendments to claims 2-4, 15, and 17, the previous rejection of those claims under 25 U.S.C. 112(b) is withdrawn.
All prior art grounds of rejection are withdrawn.
Applicant’s amendments necessitated the new ground(s) of rejection.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 3,772,041 to Tochon (hereinafter “Tochon”).
Regarding claim 1, Tochon teaches a metal oxide composition for use in ceramic bodies (refractory vitroceramics, Col. 3, line 30) comprising:
Component
Claim 1
(wt%)
Tochon
(Table 1, Col. 1, lines 50-54) (wt%)
Al2O3
about 5 – about 40
20 – 50
SiO2
about 10 – about 25
16 – 38
ZrO2
about 15 – about 35
6 – 15
Further, Tochon teaches that the metal oxide composition comprises 10–35 wt% CaO, and that “the CaO may be replaced by MgO provided the CaO remains superior to 10 percent, the molar ratio of MgO to CaO remains inferior to 0.15, and the MgO content does not exceed 3 percent by weight of the mass of the glass” (Col. 1, lines 53, 56-60). So, one of ordinary skill in the art, selecting components from within the ranges taught by Tochon, could prepare a metal oxide composition comprising, for example, 21 wt% CaO and 3 wt% MgO (3/21 = 0.143 < 0.15), which would have proportions of CaO and MgO falling within the recited ranges of claim 1. Thus, Tochon teaches a metal oxide composition with component ranges that lie within or overlap the component ranges of the claimed invention. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05). Tochon teaches wherein the metal oxide composition comprises zirconium silicate (zircon sand) (Col. 1, line 64).
Claim(s) 1 and 21-22 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. No. 6,514,892 to Kasai et al. (hereinafter “Kasai”).
Regarding claim 1, Kasai teaches a metal oxide composition for use in ceramic bodies (transparent ceramic microspheres, Abstract) comprising one or more crystalline metal oxides or crystalline mixed metal oxides of Al, Ca, Mg, Si, and Zr (Col. 5, lines 49-52). Kasai teaches wherein the metal oxide composition comprises the following components and component ranges:
Component
Claim 1 (wt%)
Kasai (wt%)
Al2O3
about 5 – about 40
about 26 – about 55 (Col. 6, line 64)
SiO2
about 10 – about 25
about 10 – about 30 (Col. 7, line 18)
ZrO2
about 15 – about 35
about 20 – about 35 (Col. 6, line 51)
Thus, for each of Al2O3, SiO2, and ZrO2, Kasai teaches a preferred range that overlaps or lies within the claimed range in claim 1. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Moreover, Kasai teaches that the metal oxide composition, in some embodiments, comprises “at least one of either zinc oxide or an oxide of an alkaline earth metal (particularly, calcium and magnesium). Calcium and magnesium oxides are particularly useful” (Col. 7, lines 20-23). Kasai teaches that the “the total content of zinc oxide and alkaline earth oxide is at least about 0.1% by weight and no greater than about 30% by weight” (Col. 7, lines 23-26). From these teachings, one of ordinary skill in the art would have found it obvious to include in the metal oxide composition both CaO and MgO within the claimed ranges as recited in claim 1. For instance, Kasai discloses example embodiments in which the content of CaO and MgO falls within the respective claimed ranges of both components (see, e.g., Table 7, Sample Nos. 54 and 57-58).
PNG
media_image1.png
257
650
media_image1.png
Greyscale
Table 7 from Kasai
Thus, for each of the oxide components listed in claims 1, Kasai teaches a range that overlaps or lies within the claimed range in claim 1. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05). Kasai teaches wherein the metal oxide composition comprises zirconium silicate (Col. 9, line 11).
Regarding claims 21 and 22, Kasai teaches a metal oxide composition for use in ceramic bodies (transparent ceramic microspheres, Abstract) comprising one or more crystalline metal oxides or crystalline mixed metal oxides of Al, Ca, Mg, Si, and Zr (Col. 5, lines 49-52). Kasai teaches wherein the metal oxide composition comprises the following components and component ranges:
Component
Claim 21 (wt%)
Claim 22 (wt%)
Kasai (wt%)
Al2O3
10 – 30
12 – 25
25 – 65 (Col. 6, line 63)
SiO2
10 – 16
12 – 15
10 – 30 (Col. 7, line 18)
ZrO2
20 – 30
22 – 28
20 – 35 (Col. 6, line 51)
Thus, for each of Al2O3, SiO2, and ZrO2, Kasai teaches a range that overlaps the claimed range in claim 21 and claim 22. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Moreover, Kasai teaches that the metal oxide composition, in some embodiments, comprises “at least one of either zinc oxide or an oxide of an alkaline earth metal (particularly, calcium and magnesium). Calcium and magnesium oxides are particularly useful” (Col. 7, lines 20-23). Kasai teaches that the “the total content of zinc oxide and alkaline earth oxide is at least about 0.1% by weight and no greater than about 30% by weight” (Col. 7, lines 23-26). From these teachings, one of ordinary skill in the art would have found it obvious to include in the metal oxide composition both CaO and MgO within the claimed ranges as recited in claims 21 and 22. For instance, Kasai discloses example embodiments in which the content of CaO and MgO falls within the respective claimed ranges of both components (see, e.g., Table 7, Sample Nos. 53 and 56). Thus, for each of the oxide components listed in claims 1, Kasai teaches a range that overlaps or lies within the claimed range in claim 1. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Claim(s) 2-4 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over EP 3459919 A1 to Beneventi et al. (hereinafter “Beneventi”) in view of Tochon, with evidence, as to claims 2-4, from WO 2014/016423 A1 to Poilly (hereinafter “Poilly”).
Regarding claims 2-4, Beneventi teaches a zircon-metal oxide-containing whitener-opacifier for use in ceramic bodies: see ¶ 0015, teaching a mixture for a ceramic construction material that includes zirconium silicate (zircon); ¶0014, teaching that the mixture includes metal oxides; ¶ 0008, teaching that the ceramic construction material has a white value of preferably more than 68, and thus serves as a whitener; it is well known in the art that zirconium silicate functions as an opacifier, as evidenced by Poilly (p. 1, lines 13-14). Beneventi teaches that the mixture comprises zirconium silicate (¶ 0015) blended with between 5 and 30 wt% of a frit comprising metal oxides (¶ 0014); Beneventi’s taught range for metal oxide composition thus overlaps the 10-90 wt% range in claim 2, the 20-30 wt% range in claim 3, and the 30-90 wt% range in claim 4. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Beneventi teaches that the zircon-metal oxide-containing whitener-opacifier comprises a metal oxide composition (frit), and Beneventi further teaches that the metal oxide composition (frit) may comprise a composition of calcia, magnesia, alumina, and silica (CMAS) and/or a composition of calcia, zirconia, alumina, and silica (CZAS) (¶ 0014). However, Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1.
Tochon teaches the metal oxide composition of claim 1, as set forth above (see p. 3).
It would have been obvious to one of ordinary skill in the art to modify Beneventi by substituting the metal oxide composition of Tochon in the zircon-metal oxide-containing whitener-opacifier mixture of Beneventi, replacing the metal oxide composition frit taught by Beneventi. One of ordinary skill in the art would have found it obvious to substitute the metal oxide composition of Tochon for the CMAS or CZAS frits taught by Beneventi (see Beneventi at ¶ 0014), with predictable results and a high probability of success in producing a suitable a zircon-metal oxide-containing whitener-opacifier. See MPEP 2143(I)(B). While Beneventi teaches including frit compositions that include magnesia or zirconia (i.e., CMAS or CZAS, see Beneventi at ¶ 0014), including the metal oxide composition taught by Tochon allows one of ordinary skill in the art to take advantage of beneficial qualities of both oxides, such as the good mechanical resistance provided by magnesia (see Tochon at Col. 6, lines 42-45).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by including the metal oxide composition taught by Tochon, thereby producing a zircon-metal oxide-containing whitener-opacifier reading on claims 2, 3, and 4.
Regarding claim 14, Beneventi teaches a ceramic composition formed by providing a green ceramic body including a metal oxide composition and firing the green ceramic body to form the ceramic composition (see ¶ 0025, teaching formation of a green blank, i.e. green ceramic body; ¶ 0014, teaching including a metal oxide composition; ¶ 0028, teaching firing the green ceramic body to form a ceramic composition). However, Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1.
Tochon teaches the metal oxide composition of claim 1, as set forth above (p. 7). One of ordinary skill in the art would have found it obvious to modify Beneventi by substituting the metal oxide composition of Tochon in the green ceramic body of Beneventi, replacing the metal oxide composition frit taught by Beneventi. Motivation to do so would be the same as set forth above with regard to claims 2-4 (see pp. 9-10). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by including the metal oxide composition taught by Tochon, thereby producing a ceramic composition reading on every limitation of claim 14.
Regarding claim 15, Beneventi teaches a ceramic composition comprising between 5 and 25 wt% zirconium silicate (¶ 0015) and between 5 and 20 wt% metal oxide composition (frit) (¶ 0014). If the zirconium silicate and the metal oxide composition together are considered as constituting the zircon-metal oxide-containing whitener-opacifier (see discussion regarding claim 2, p. 8 above), then it would be a matter of routine experimentation and optimization for one of ordinary skill in the art to select quantities of zirconium silicate and metal oxide composition from within the taught ranges to produce a ceramic composition comprising the zircon-metal oxide-containing whitener-opacifier in an amount from about 0.1 wt% to about 20 wt%. For instance, Example 1 of Beneventi teaches a ceramic composition mixture comprising 10 wt% zirconium silicate and 12 wt% CMAS frit (Col. 8, Table 1), for a total zircon-metal oxide-containing whitener-opacifier of 22 wt%, which is about 20 wt%. Further, the ratio of metal oxide composition to zirconium silicate in Example 1 (12:10) means that the zircon-metal oxide-containing whitener-opacifier comprises 54 wt% metal oxide composition, which is within the range recited in claim 2 and incorporated into claim 15. Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1. However, Tochon teaches the metal oxide composition of claim 1, as set forth above (see p. 3), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by substituting for the CMAS frit the metal oxide composition taught by Tochon, for the reasons set forth above in regards to claims 2-4.
Regarding claim 16, Beneventi as modified by Tochon teaches that the ceramic composition is characterized by a whiteness (L*-value) of 92 or greater (see Beneventi at ¶ 0008, claim 1), which substantially overlaps the recited range of 87-97 in claim 16. Beneventi as modified by Tochon does not explicitly teach a stain mark (ΔE) of 1.40-4.75. However, Beneventi as modified by Tochon does teach wherein the ceramic composition exhibits “a stain resistance class of at least 4, preferably 5, measured according to the ISO 10545-14 standard” (Beneventi at ¶ 0018), and Beneventi as modified by Tochon further teaches that the ceramic composition “has a water absorption level of less than 0.5%, or preferably less than 0.2%, or even more preferably less than 0.1%” (Beneventi at ¶ 0009), thereby indicating a low porosity. Given the compositional similarity of the ceramic composition of the claimed invention and the ceramic composition of Beneventi as modified by Tochon, and given the low porosity of the prior art ceramic composition (see ¶ 0057 of the present Specification for the relationship between porosity and stain mark) and the reported stain resistance properties of the prior art ceramic composition, one of ordinary skill in the art would reasonably expect that the ceramic composition of Beneventi as modified by Tochon would inherently exhibit a stain mark (ΔE) of 1.40-4.75, since products of identical composition are presumed not to have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 17, Beneventi as modified by Tochon teaches wherein the ceramic composition comprises a zircon-metal oxide-containing whitener-opacifier for use in ceramic bodies, consisting of zirconium silicate blended with from 10-90 wt% of the metal oxide composition, and wherein the zircon-metal oxide-containing whitener-opacifier is in an amount from 0.1 wt% to 20 wt% (see Beneventi at ¶ 0014, teaching a mixture including zirconium silicate blended with between 5 and 30 wt% of a frit comprising metal oxides; together, the zirconium silicate and frit constitute zircon-metal oxide-containing whitener-opacifier; ¶ 0015, teaching a proportion of zirconium silicate of between 10 wt% and 20 wt%; at the lower end of the two ranges, the zirconium silicate and metal oxide frit combine for 15 wt%, within the recited range of claim 17).
Claim(s) 2-4 and 14-17 are rejected under 35 U.S.C. 103 as being unpatentable over Beneventi in view of Kasai, with evidence, as to claims 2-4, from Poilly.
Regarding claims 2-4, Beneventi teaches a zircon-metal oxide-containing whitener-opacifier for use in ceramic bodies: see ¶ 0015, teaching a mixture for a ceramic construction material that includes zirconium silicate (zircon); ¶0014, teaching that the mixture includes metal oxides; ¶ 0008, teaching that the ceramic construction material has a white value of preferably more than 68, and thus serves as a whitener; it is well known in the art that zirconium silicate functions as an opacifier, as evidenced by Poilly (p. 1, lines 13-14). Beneventi teaches that the mixture comprises zirconium silicate (¶ 0015) blended with between 5 and 30 wt% of a frit comprising metal oxides (¶ 0014); Beneventi’s taught range for metal oxide composition thus overlaps the 10-90 wt% range in claim 2, the 20-30 wt% range in claim 3, and the 30-90 wt% range in claim 4. In a case where claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (see MPEP 2144.05).
Beneventi teaches that the zircon-metal oxide-containing whitener-opacifier comprises a metal oxide composition (frit), and Beneventi further teaches that the metal oxide composition (frit) may comprise a composition of calcia, magnesia, alumina, and silica (CMAS) and/or a composition of calcia, zirconia, alumina, and silica (CZAS) (¶ 0014). However, Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1.
Kasai teaches the metal oxide composition of claim 1, as set forth above (see p. 4).
It would have been obvious to one of ordinary skill in the art to modify Beneventi by substituting the metal oxide composition of Kasai in the zircon-metal oxide-containing whitener-opacifier mixture of Beneventi, replacing the metal oxide composition frit taught by Beneventi. One of ordinary skill in the art would have found it obvious to substitute the metal oxide composition of Kasai for the CMAS or CZAS frits taught by Beneventi (see Beneventi at ¶ 0014), with predictable results and a high probability of success in producing a suitable a zircon-metal oxide-containing whitener-opacifier. See MPEP 2143(I)(B). While Beneventi teaches including frit compositions that include magnesia or zirconia (i.e., CMAS or CZAS, see Beneventi at ¶ 0014), including the metal oxide composition taught by Kasai allows one of ordinary skill in the art to take advantage of beneficial qualities of the Kasai composition, such as reduced crystal size and high hardness level (see Kasai at Col. 7, lines 43-49).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by including the metal oxide composition taught by Kasai, thereby producing a zircon-metal oxide-containing whitener-opacifier reading on claims 2, 3, and 4.
Regarding claim 14, Beneventi teaches a ceramic composition formed by providing a green ceramic body including a metal oxide composition and firing the green ceramic body to form the ceramic composition (see ¶ 0025, teaching formation of a green blank, i.e. green ceramic body; ¶ 0014, teaching including a metal oxide composition; ¶ 0028, teaching firing the green ceramic body to form a ceramic composition). However, Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1.
Kasai teaches the metal oxide composition of claim 1, as set forth above (p. 4). One of ordinary skill in the art would have found it obvious to modify Beneventi by substituting the metal oxide composition of Kasai in the green ceramic body of Beneventi, replacing the metal oxide composition frit taught by Beneventi. Motivation to do so would be the same as set forth above with regard to claims 2-4 (see p. 12). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by including the metal oxide composition taught by Kasai, thereby producing a ceramic composition reading on every limitation of claim 14.
Regarding claim 15, Beneventi teaches a ceramic composition comprising between 5 and 25 wt% zirconium silicate (¶ 0015) and between 5 and 20 wt% metal oxide composition (frit) (¶ 0014). If the zirconium silicate and the metal oxide composition together are considered as constituting the zircon-metal oxide-containing whitener-opacifier (see discussion regarding claim 2, p. 11 above), then it would be a matter of routine experimentation and optimization for one of ordinary skill in the art to select quantities of zirconium silicate and metal oxide composition from within the taught ranges to produce a ceramic composition comprising the zircon-metal oxide-containing whitener-opacifier in an amount from about 0.1 wt% to about 20 wt%. For instance, Example 1 of Beneventi teaches a ceramic composition mixture comprising 10 wt% zirconium silicate and 12 wt% CMAS frit (Col. 8, Table 1), for a total zircon-metal oxide-containing whitener-opacifier of 22 wt%, which is about 20 wt%. Further, the ratio of metal oxide composition to zirconium silicate in Example 1 (12:10) means that the zircon-metal oxide-containing whitener-opacifier comprises 54 wt% metal oxide composition, which is within the range recited in claim 2 and incorporated into claim 15. Beneventi does not explicitly teach that the metal oxide composition is the metal oxide composition of claim 1. However, Kasai teaches the metal oxide composition of claim 1, as set forth above (see p. 4), and it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Beneventi by substituting for the CMAS frit the metal oxide composition taught by Kasai, for the reasons set forth above in regards to claims 2-4.
Regarding claim 16, Beneventi as modified by Kasai teaches that the ceramic composition is characterized by a whiteness (L*-value) of 92 or greater (see Beneventi at ¶ 0008, claim 1), which substantially overlaps the recited range of 87-97 in claim 16. Beneventi as modified by Kasai does not explicitly teach a stain mark (ΔE) of 1.40-4.75. However, Beneventi as modified by Kasai does teach wherein the ceramic composition exhibits “a stain resistance class of at least 4, preferably 5, measured according to the ISO 10545-14 standard” (Beneventi at ¶ 0018), and Beneventi as modified by Kasai further teaches that the ceramic composition “has a water absorption level of less than 0.5%, or preferably less than 0.2%, or even more preferably less than 0.1%” (Beneventi at ¶ 0009), thereby indicating a low porosity. Given the compositional similarity of the ceramic composition of the claimed invention and the ceramic composition of Beneventi as modified by Kasai, and given the low porosity of the prior art ceramic composition (see ¶ 0057 of the present Specification for the relationship between porosity and stain mark) and the reported stain resistance properties of the prior art ceramic composition, one of ordinary skill in the art would reasonably expect that the ceramic composition of Beneventi as modified by Kasai would inherently exhibit a stain mark (ΔE) of 1.40-4.75, since products of identical composition are presumed not to have mutually exclusive properties. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of obviousness has been established (see MPEP 2112.01(I), first paragraph).
Regarding claim 17, Beneventi as modified by Kasai teaches wherein the ceramic composition comprises a zircon-metal oxide-containing whitener-opacifier for use in ceramic bodies, consisting of zirconium silicate blended with from 10-90 wt% of the metal oxide composition, and wherein the zircon-metal oxide-containing whitener-opacifier is in an amount from 0.1 wt% to 20 wt% (see Beneventi at ¶ 0014, teaching a mixture including zirconium silicate blended with between 5 and 30 wt% of a frit comprising metal oxides; together, the zirconium silicate and frit constitute zircon-metal oxide-containing whitener-opacifier; ¶ 0015, teaching a proportion of zirconium silicate of between 10 wt% and 20 wt%; at the lower end of the two ranges, the zirconium silicate and metal oxide frit combine for 15 wt%, within the recited range of claim 17).
Response to Arguments
Applicant’s arguments filed August 26, 2025 have been fully considered but they are not persuasive.
On page 9 of the Remarks submitted with the reply filed August 26, 2025 (hereinafter “Remarks”), Applicant asserts that Tochon does not teach or suggest “a metal oxide composition comprising zirconium silicate, and mixed metal oxides of Al, Mg and Ca as required by base claim 1.” However, as set forth above (see p. 3), Tochon teaches wherein the composition includes “zircon sand” (Col. 1, line 64), which necessarily includes zircon, or zirconium silicate. Tochon also teaches that the composition includes Al in an amount of 20-50 wt% measured as Al2O3 (see Table 1). Further, Tochon teaches that the composition includes Ca and that “the CaO may be replaced by MgO provided the CaO remains superior to 10 percent, the molar ratio of MgO to CaO remains inferior to 0.15, and the MgO content does not exceed 3 percent by weight of the mass of the glass” (Col. 1, lines 53, 56-60; claim 1); thus, Tochon clearly teaches wherein the composition includes both Ca and Mg. Applicant points out that the example embodiments disclosed by Tochon do not include both MgO and CaO (Remarks at p. 9). However, a prior art reference is prior art for all that it teaches (MPEP 2121.01), and disclosed examples and preferred embodiments “do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123). Here, as noted above, Tochon clearly teaches that “the CaO may be replaced by MgO provided the CaO remains superior to 10 percent…” (Col. 1, lines 56-57), and thus the broader disclosure of Tochon clearly contemplates compositions that include both CaO and MgO, even if none of the described example embodiments feature such a combination.
Applicant asserts that Tochon is “concerned with producing glasses, not ceramic bodies,” and on this basis Applicant argues that a person skilled in the art would not look to Tochon when looking to produce a composition for use in ceramics (Remarks at p. 8). However, a cursory review of Tochon reveals that Tochon is concerned with producing glasses that are then transformed into vitroceramics through crystallizing heat treatment (see Col. 2, lines 21-53), and thus Tochon is very much concerned with ceramic compositions (see Abstract), which naturally are used to create ceramic bodies.
Applicant says that a person of ordinary skill in the art would not seek to use Beneventi to modify Tochon in order to produce a whitening opacifying composition (Remarks at p. 9, lines 1-3). However, the rejection of claims 2-4 and 14-17 is based on using Tochon to modify Beneventi, not Beneventi to modify Tochon (see above, pp. 4-8). Applicant argues that “the purpose of Tochon is to provide translucent and opaque vitroceramics,” which is “significantly distinct” from the whitener/opacifiers of the claimed invention (Remarks at p. 9). However, the rejection of claims 2-4 and 14-17 looks to Tochon as a secondary reference supplying one component in a modified form of the Beneventi composition, and Beneventi is most definitely concerned with a whitener-opacifier.
Applicant further argues (1) that the Tochon and Beneventi references are unrelated and would not have been combined absent impermissible hindsight, and (2) that there is no motivation or suggestion to combine the Tochon and Beneventi references (Remarks at p. 10). These arguments are also unpersuasive. Firstly, Tochon and Beneventi are concerned with closely related inventions, both dealing with ceramic materials based on zirconium silicate. Secondly, even if one were to consider Tochon and Beneventi to be not strictly in the same field of endeavor, nevertheless known work in one field of endeavor may prompt variations of it for use in a different field of endeavor based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art. See MPEP 2143(I)(F). Here, Beneventi expressly contemplates the inclusion of in the whitener-opacifier of a metal oxide composition (frit) that may comprise a composition of calcia, magnesia, alumina, and silica (CMAS) and/or a composition of calcia, zirconia, alumina, and silica (CZAS) (¶ 0014). Beneventi thus supplies a design incentive to look to known work (like Tochon) teaching metal oxide compositions suitable for use as a frit in the larger whitener-opacifier composition of Beneventi. No impermissible hindsight is required. Thirdly, a motivation to combine the references has been outlined above (see p. 5); in short, while Beneventi teaches including frit compositions that include magnesia or zirconia (i.e., CMAS or CZAS, see Beneventi at ¶ 0014), substituting the metal oxide composition of Tochon for the CMAS or CZAS frits taught by Beneventi would allow one of ordinary skill in the art to take advantage of beneficial qualities of both oxides, such as the good mechanical resistance provided by magnesia (see Tochon at Col. 6, lines 42-45), with predictable results and a high probability of success in producing a suitable a zircon-metal oxide-containing whitener-opacifier. See MPEP 2143(I)(B).
Applicant’s remaining arguments with respect to the pending claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Pat. No. 2,083,024 to Kinzie et al. (hereinafter “Kinzie”) teaches a metal oxide composition for use in ceramic bodies comprising Al2O3, SiO2, ZrO2, and “one or more elements of the RO group (ZnO, BaO, CaO, MgO, SrO)” (Col. 1, lines 19-22). Kinzie teaches one particular embodiment (Example C) that comprises 15.00 wt% Al2O3, 15.54 wt% SiO2, and 30.00 wt% ZrO2 (Col. 3, lines 6-8). However, Kinzie does not teach wherein the metal oxide composition comprises Mg in an amount of from 0.5 wt% to 16 wt% measured as MgO. Also, Kinzie does not teach wherein the metal oxide composition comprises Ca in an amount of from 25 wt% to 40 wt% measured as CaO.
Applicant’s amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731