DETAILED 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 6, 2026 has been entered.
Response to Amendment
The reply filed on May 6, 2026 has been entered into the prosecution for the application. Currently, claims 1-3 and 5-20 are pending, with claims 5-19 having been withdrawn without traverse in response to a requirement for restriction. Claim 1 has been amended.
All prior art grounds of rejection are withdrawn.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(s) 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2010/0012484 to Citti et al. (hereinafter “Citti”) in view of WO 2014/016423 A1 to Poilly (hereinafter “Poilly”), with evidence, as to claim 1, from U.S. Pat. No. 6,380,113 to Kim et al. (hereinafter “Kim”).
Regarding claim 1, Citti teaches a zirconia ceramic (sintered zirconia product, ¶ 0001, Abstract) comprising, in weight percentages on the basis of oxides, 74-96 wt% ZrO2, 1.7-17 wt% SiO2, and 0.5-1.5 wt% Al2O3 (¶ 0130); expressed in terms of claim 1, these percentages correspond to ranges of 54.8-71.1 wt% Zr (the Zr atom being approximately 74.0% of the mass of the ZrO2 molecule); 0.79-7.95 wt% Si (Si being 46.7% of the mass of SiO2); and 0.26-0.79 wt% Al (Al being 52.9% of the mass of Al2O3). All of these ranges substantially overlap or lie within the claimed ranges for these elements in claim 1. (Citti teaches that the raw materials containing zirconia may also contain small amounts of HfO2, generally less than 2% by weight, as is known in the art [¶ 0081]; this factor does not significantly affect the range for Zr set forth above.)
Further, Citti teaches that the zirconia ceramic comprises 0.4 to 10 wt% Y2O3 as a preferred stabilizer (see p. 6, Table 1, column 7; and see ¶¶ 0093-0094, teaching 0.4 wt% as the lower bound for Y2O3 stabilizer); this range corresponds to a range of 0.3-7.87 wt% Y (the Y atoms being 78.7% of the mass of Y2O3), overlapping the recited range for Y in claim 1.
Citti teaches that the zirconia ceramic comprises 0.4 to 6 wt% of Nb2O5 and/or Ta2O5 (see p. 6, Table 1, columns 8 and 9). Within that taught range and with an eye to the examples shown in Table 1, it would have been a straightforward matter for one or ordinary skill in the art to select a quantity of Nb2O5 and/or Ta2O5 such that the zirconia ceramic comprises 0.34-2.8 wt% of M, wherein M comprises at least one of Nb or Ta. For instance, Example 8 in Table 1 includes 2.2 wt% Nb2O5, which corresponds to 1.54 wt% Nb (since Nb is approximately 69.9% of the mass of Nb2O5), within the recited range of 0.34-2.8 wt% in claim 1.
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First portion of Table 1 from Citti
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). Here, it would have been obvious to one of ordinary skill in the art to select amounts of component materials from within the ranges taught by Citti to produce a zirconia ceramic with weight percentages of Zr, Y, Al, Si, and M (where M is at least one of Nb or Ta) that are within the recited ranges of claim 1. For example, a zirconia ceramic comprising 84.26 wt% ZrO2, 2.21 wt% SiO2, 0.78 wt% Al2O3, and 6 wt% Y2O3 (like in Example 2 of Table 1), and further comprising 2.2 wt% Nb2O5 (like in Example 8 of Table 1), would have weight percentages of Zr, Y, Al, Si, and M of 62.4 wt% Zr, 4.72 wt% Y, 1.03 wt% Si, 0.41 wt% Al, and 1.54 wt% M (M in this case being Nb)—all values within the recited ranges of claim 1. Thus, one of ordinary skill in the art, given the teachings of Citti, would have found it obvious to produce a zirconia ceramic with the above proportions or something close to them, with a reasonable expectation of success in producing a suitable zirconia ceramic, given the evidence of similar selected amounts in the Examples of Citti.
Citti teaches that the zirconia ceramic is a multiphase product (¶ 0022) that includes zirconia (¶¶ 0079-0080), zirconium silicate (i.e., zircon) (¶ 0076), and alumina (¶¶ 0032, 0105). Citti teaches embodiments in which the total content of zirconium silicate is at least 5 wt% (¶ 0076), or, for example, 6.4 wt% (see Example 2 in Table 1), and Citti further teaches that the total content of alumina is preferably greater than 0.5 wt% and preferably 1.5 wt% or less (¶ 0105); combining the low and high ends of these taught amounts gives a total content of alumina and zirconium silicate of between 5.5 wt% and 7.9 wt%, both within the recited range of 0.2-12 wt% in claim 1. Citti teaches that the total content of zirconia in the zirconia ceramic is 74-96 wt% (¶ 0130); one of ordinary skill in the art would find it obvious to select an amount of zirconia from near the upper end of that range (say, about 90 wt%, as in numerous Examples in Table 1), thereby producing a zirconia ceramic wherein the content of zirconia is within the range of 84-99.3 wt%. As the zirconia ceramic includes Y2O3 as a zirconia stabilizer (¶¶ 0093-0094) and Nb2O5 or Ta2O5 as a dopant (¶¶ 0083, 0133; Table 1), one of ordinary skill in the art would reasonably expect that the zirconia comprises a solid solution of zirconia formed with yttrium oxide and MxOy; Nb2O5 and Ta2O5 both satisfy the formula MxOy, wherein x satisfies 1≤x≤3 and y satisfies 3≤y≤6.
Citti teaches embodiments of zirconia ceramic in which the yttrium oxide in the solid solution is of 2-4 mol% (see Example 2 of Table 1, which includes 3.54 mol% Y2O3).
Citti teaches embodiments of zirconia ceramic in which the total content of zirconium silicate is at least 5 wt% (¶ 0076), or, for example, 6.4 wt% (see Example 2 in Table 1), and Citti further teaches that the total content of alumina is greater than 0.2 wt% and 2.5 wt% or less (¶ 0105). However, Citti does not explicitly teach wherein the weight ratio of alumina to zirconium silicate is from 1:1 to 1:5.
Poilly, in the same field of endeavor, teaches a ceramic composition (Abstract) comprising from about 1 -20 wt% alumina and no more than about 10 wt% zirconium silicate (see claim 1). Poilly teaches wherein the weight ratio of alumina to zirconium silicate may vary from about 5:1 to about 1:5 (see p. 11, line 17), provided that the total amount of zirconium silicate in the ceramic composition does not exceed about 10 wt% (p. 11, lines 12-14). Poilly teaches that the weight ratio of alumina to zirconium silicate may be varied for cost reasons (see p. 10, lines 9-11) or to adjust the optical properties of the ceramic composition, such as its opacity (see p. 10, lines 12-26).
One of ordinary skill in the art would have found it obvious to modify Citti by ensuring that the weight ratio of alumina to zirconium silicate is from about 5:1 to about 1:5, as taught by Poilly. Since Citti sets a 2.5 wt% maximum on the content of alumina (see Citti at ¶ 0105) and a 5 wt% minimum on the content of zirconium silicate (see Citti at ¶ 0076), the effective higher end weight ratio of alumina to zirconium silicate in the ceramic composition of Citti is about 1:2. Therefore, Citti as modified by Poilly teaches a weight ratio of alumina to zirconium silicate ranging from about 1:2 to about 1:5, a range which lies within the claimed range in the amended claim 1. One of ordinary skill in the art would have been motivated to modify Citti by adjusting the weight ratio of alumina to zirconium silicate as taught by Poilly in order to adjust the optical properties of the ceramic composition (see Poilly at p. 10). One of ordinary skill in the art, guided by the teachings of Poilly, through routine experimentation and optimization would have arrived at a weight ratio of alumina to zirconium silicate within the claimed range.
Citti as modified by Poilly does not explicitly recite that the zirconia is tetragonal zirconia; however, one of ordinary skill in the art would expect that the zirconia would be in the tetragonal phase, since the addition of alumina to yttria-stabilized zirconia produces a stable tetragonal zirconia solid solution, as evidenced by Kim (see Col. 3, lines 61-67). Citti as modified by Poilly does not explicitly teach wherein an average drop height of the zirconia ceramic is above 30 cm. However, given that Citti as modified by Poilly teaches the zirconia ceramic composition of the claimed invention, one of ordinary skill in the art reasonably would expect that the zirconia ceramic composition of Citti as modified by Poilly by necessity would exhibit the physical properties of the claimed invention, including an average drop height above 30 cm, since products of identical composition are presumed not to have mutually exclusive properties (MPEP 2112.01(II)). 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).
Thus, in view of Citti as modified by Poilly, a zirconia ceramic reading on every limitation of claim 1 would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention.
Regarding claim 2, as noted above (see p. 3), Citti as modified by Poilly teaches the zirconia ceramic comprising 54.8-71.1 wt% Zr; 0.79-7.95 wt% Si; and 0.26-0.79 wt% Al (see Citti at ¶ 0130). Further, Citti as modified by Poilly teaches the zirconia ceramic comprising 0.3-7.87 wt% Y (Citti at ¶ 0093), and Citti as modified by Poilly also teaches the zirconia ceramic comprising 0.4 to 6 wt% of Nb2O5 (Citti, Table 1), which corresponds to 0.28 to 4.19 wt% Nb. Citti as modified by Poilly thus teaches ranges for all of these elements that overlap the recited ranges of claim 2. 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).
Regarding claim 3, Citti as modified by Poilly teaches embodiments of zirconia ceramic in which the total content of zirconium silicate is at least 5 wt% (¶ 0076), or, for example, 6.4 wt% (see Example 2 in Table 1), and Citti as modified by Poilly further teaches that the total content of alumina is preferably greater than 0.5 wt% and preferably 1.5 wt% or less (¶ 0105); combining the low and high ends of these taught amounts gives a total content of alumina and zirconium silicate of between 5.5 wt% and 7.9 wt%, within the recited range of 2-9 wt% in claim 3. Citti as modified by Poilly teaches that the total content of zirconia in the zirconia ceramic is 74-96 wt% (¶ 0130), and Citti as modified by Poilly moreover teaches embodiments (Examples 3 through 6) with zirconia content in the range of 89.92-90.48 wt% (see Table 1); one of ordinary skill in the art would find it obvious to select an amount of zirconia within that narrower range, thereby producing a zirconia ceramic with a wherein the content of zirconia is in the range of 88-97 wt%. 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 20 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Pat. Pub. 2018/0327321 to Gong et al. (hereinafter “Gong”) in view of Citti and Poilly.
Regarding claim 20, Gong teaches a method for preparing a shell (i.e., an electronic product casing) or a decoration (i.e., an ornament) that comprises obtaining and using a zirconia ceramic (¶ 0042; claim 18). However, Gong does not teach that the zirconia ceramic is the zirconia ceramic according to claim 1.
Citti as modified by Poilly (both in the same field of endeavor as Gong) teaches the zirconia ceramic according to claim 1, as set forth above.
It would have obvious to one of ordinary skill in the art to modify Gong by substituting the zirconia ceramic of Citti as modified by Poilly, thereby using the zirconia ceramic of Citti in the preparation of a shell (electronic product casing) or decoration (ornament). One of ordinary skill in the art would be motivated to modify Gong in this way by a desire to take advantage of the corrosion resistance qualities of the zirconia ceramic of Citti as modified by Poilly (see Citti at ¶ 0165).
Response to Arguments
Applicant’s arguments filed May 6, 2026 have been fully considered but they are not persuasive.
On page 8 of the Remarks submitted with the reply filed May 6, 2026 (hereinafter “Remarks”), Applicant states that Citti is “completely silent on any relationship between alumina and zirconium silicate.” This is not dispositive, since the rejection of claim 1 and its dependent claims under section 103 looks to the secondary reference, Poilly (WO 2014/016423 A1), for teaching regarding the desired ratio of alumina to zirconium silicate. Applicant further urges that Citti expresses a “preference” for a ratio of alumina to zirconium silicate (“at least 1:15”) that is far lower than the claimed range recited in claim 1 (Remarks at p. 8). However, “preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123), and Citti’s preference for a ratio outside the claimed range does not constitute a teaching away from other ranges.
Applicant argues that Poilly does not teach the claimed 1:1 to 1:5 range for the ratio of alumina to zirconium silicate because Poilly does not recite that specific range in a list of potential ratio ranges (Remarks at pp. 8-9). In effect, Applicant argues that the ranges taught by Poilly do not render the claimed range obvious because there is no single recited range in the prior art that perfectly overlaps the claimed range. However, perfect overlap of ranges is not the test for obviousness of ranges under Section 103. 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), and even partial overlap is sufficient to establish this prima facie case. Poilly teaches that the weight ratio of alumina to zirconium silicate may vary from “about 1:1 to about 1:2” (see Poilly at p. 11, line 19), a range which falls entirely within the claimed range.
Applicant argues that the Specification of the present Application “mentions the criticality of the claimed range” (Remarks at p. 9). Applicant’s asserted evidence of the criticality of the claimed range is unavailing. Evidence of the criticality of the claimed range may be used to rebut a prima facie case of obviousness when an applicant is claiming a narrow range within a broader range disclosed by the prior art (see MPEP 2144.05(III)(A)); however, when, as here, the prior art explicitly teaches a narrower range that falls within the claimed range, the teaching of the prior art already provides sufficient motivation to one of ordinary skill in the art to select that narrower range. Nor does Poilly’s teaching of other ranges constitute a teaching away from any specific range taught by Poilly (as argued by Applicant; see Remarks at pp. 8-9). Just as “examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (see MPEP 2123), the teaching of other ranges does not constitute a teaching away from a specific taught range that lies within the claimed range, as is the case here.
Applicant argues that Citti and Poilly are “completely silent on” and cannot teach the limitation of yttrium oxide in the solid solution being 2-4 mol%, as recited in amended claim 1 (Remarks at p. 9). However, as noted above (see p. 6), Citti teaches an example embodiment (Example 2) that includes 3.54 mol% Y2O3, an amount within the claimed range (see Table 1).
Applicant’s remaining arguments are unpersuasive for reasons set forth above in the discussion of the rejection of the pending claims under Section 103.
Conclusion
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/P.A.F./Examiner, Art Unit 1731
/JENNIFER A SMITH/Primary Patent Examiner, Art Unit 1731
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