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 .
Response to Amendment
The reply filed on September 16, 2025 has been entered into the prosecution for the application. Currently, claims 1-3 and 5-20 are pending. Claims 5-19 are withdrawn. Claim 4 has been cancelled. Claims 1 and 20 have been amended.
The prior rejection of claim 4 under 35 U.S.C. 112(b) is rendered moot by the cancellation of that claim.
The prior rejection of claim 20 under 35 U.S.C. 112(b) is withdrawn in view of the amendments to that claim.
All prior art grounds of rejection are withdrawn.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.
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 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 September 16, 2025 have been fully considered but they are not persuasive.
On page 8 of the Remarks submitted with the reply filed September 16, 2025 (hereinafter “Remarks”), Applicant states that “Citti is completely silent on any relationship between alumina and zirconium silicate” (emphasis in original). In the new ground of rejection, the secondary reference Poilly does discuss the relationship between alumina and zirconium silicate and explicitly teaches a number of potential weight ratios of alumina to zirconium silicate (see Poilly at p. 11). The new ground of rejection looks to Poilly to suggest modifying Citti so that the weight ratio of alumina to zirconium silicate falls within the claimed range of the amended claim 1.
Applicant notes that, “among 30 examples listed in Table 1 of Citti, only a single example 2 has a 6.4% zircon,” all the other examples in Table 1 exhibiting zircon values of 15 wt% or higher (Remarks at p. 9). Applicant also observes that, “among the 30 examples listed in Table 1 of Citti, only a single example 26 has a 2.45% Al2O3,” all other examples having less than 1 wt% alumina (Remarks at p. 9). On the basis of these facts and the fact that none of the described example embodiments in Citti has a weight ratio of alumina to zirconium silicate within the claimed range, Applicant argues that Citti does not render obvious a zirconia ceramic according to the amended claim 1 (Remarks at p. 9). However, disclosed examples and preferred embodiments (like the examples in Table 1 of Citti) “do not constitute a teaching away from a broader disclosure or nonpreferred embodiments” (MPEP 2123). A prior art reference is prior art for all that it teaches (MPEP 2121.01). Here, Citti, as modified by Poilly, teaches ranges for the content of alumina and zirconium silicate that support the claimed weight ratio, and Poilly explicitly teaches weight ratios within the claimed range. It is true that only one example embodiment of Citti has less than 15 wt% zirconium silicate. One is enough. Moreover, Citti teaches a range for the content of zirconium silicate (at least 5 wt%), and thus Citti enables that full range. The same rationale applies to the content of alumina. The present case is readily distinguished from In re Baird (see Remarks at p. 9), as the 30 examples in Citti are not really comparable in scale to the “millions of compounds” in Baird. Further, Applicant’s implicit argument that Citti teaches away from the claimed weight ratio range (or “indicates a preference leading away from” the claimed range) is countered by the teachings of Poilly, which explicitly teaches overlapping weight ratio ranges and identifies the weight ratio of alumina to zirconium silicate as a result-effective variable.
Applicant asserts that “Citti does not even mention any tetragonal zirconia” (Remarks at p. 10). However, as explained above in the rejection of claim 1 (see p. 6), 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 Kim at Col. 3, lines 61-67).
Applicant’s remaining arguments with respect to claim(s) 1-3 and 20 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
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
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