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 .
This application is in response to a response to an application filed on 04/01/2022.
Claims 7-17 are pending. Applicant has cancelled claims 1-6.
Specification
Currently abstract is less than 50 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length.
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
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Claim Objections
Claims 8-17 are objected to because of the following informalities:
Claims 8-17, line 1-It is suggested to amend “The production” to “The alumina particle production” in order to ensure consistency in the claims and ensure proper antecedent basis in the claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 7-17 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 7, line 1 recites “alumina particle” and then claim 7, line 4, claim 10-line 1, Claim 11-line 1, claims 13-14-line 1, claim 15-17-lines 1-recites “alumina particles” lack of antecedent basis regarding inconsistent use of plural and singular in the claims. “Clarification is requested. For examination purpose, examiner has interpreted alumina particle as singular term.
Claims 11, 15-17 recites “are other than hexagonal…and are polyhedral particles” inconsistent use of singular and plural in the claim since claim 7 recites “an alumina particle” which is singular. Clarification is requested.
Claims 11, 15-17 recites “the aluminum oxide particles” lack of antecedent basis and further inconsistent use of singular and plural in the claims for the term “particles” since claim 7-line 1 recites “an alumina particle”. Clarification is requested.
Claims 10 and 13-14, recites “molybdenum” which is not clear if the molybdenum is part of the molybdenum compound of claim 7 or molybdenum as molybdenum element. Clarification is requested. For examination purpose, examiner has interpreted molybdenum as part of molybdenum compound.
Regarding dependent claims 8-9, 12 this claim does not remedy the deficiencies of parent claim 7 as noted above and are rejected for the same rationale.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 7-10, 12-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 17-18 of US Patent No.: 12,552,715 in view of Liu et al (JP 2019523745, machine translation).
Regarding claims 7, 10, 13-14, ‘715 teaches an alumina particle production method substantially similar to applicant’s claimed invention which includes a method for manufacturing the alumina particle comprising of firing the mixture of an aluminum compound containing aluminum element, a molybdenum compound containing molybdenum element, a potassium compound containing potassium element (see claim 17, meet claims 7, 10, 13-14). ‘715 does not explicitly disclose or suggest aluminum compound containing aluminum hydroxide and that an average particle diameter of the alumina particle is 20 um or less.
However, Liu discloses a method for producing alumina particles comprising a calcining an aluminum compound in the presence of molybdenum compound and a potassium compound, the aluminum compound comprising aluminum hydroxide, and an average particle diameter of the alumina particle is 5 nm to 10,000 um (paragraphs 0001, 0011, 0025, 0030, overlaps claimed range of less than 20 um, meets claims 7, 10).
Therefore, it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the invention of ‘715 with Liu to include an average diameter of alumina particle of 5nm to 10,000 um and aluminum hydroxide as aluminum compound which would provide high structural stability at high temperatures as taught by Liu (paragraph 0028).
Regarding claim 8-9 and 12, ‘715 discloses aluminum compound in amount of 10 mass% or more in terms of Al2O3, molybdenum compound in an amount of 20 mass% or more in terms of MoO3and potassium compound in amount of 1 mass% or more in terms of K2O (see claim 18) but does not disclose molar ratio of Mo/Al of 0.01 to 0.2 in terms of Mo atoms in Mo compound and Al atoms in Al compound of claim 8 and molar ratio of Mo/K in amount of 0.1 to 5 in terms of Mo atoms in Mo compound and K atoms in potassium compound of claims 9 and 12. However, since ‘715 disclose Al compound in amount of 10 mass% or more in terms of Al2O3, Mo compound in an amount of 20 mass% or more in terms of MoO3 and K compound in amount of 1 mass% or more in terms of K2O, therefore a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 7-17 are rejected under 35 U.S.C. 103 as being unpatentable Liu et al (JP 2019523745, machine translation, IDS cited reference by applicant).
Regarding claims 7 and 10, Liu discloses a method for producing alumina particles comprising a calcining an aluminum compound in the presence of molybdenum compound and a potassium compound, the aluminum compound comprising aluminum hydroxide, and an average particle diameter of the alumina particle is 5 nm to 10,000 um (paragraphs 0001, 0011, 0025, 0030, overlaps claimed range of less than20 um). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 8, Liu discloses molar ratio of molybdenum atoms in the molybdenum compound to aluminum atoms in the aluminum compound is from 0.01 to 3.0 (paragraph 0032). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 9 and 12, Liu discloses a molar ratio of molybdenum atoms in the molybdenum compound to potassium atoms in the potassium compound is 5 or less (paragraph 0023). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 10 and 13-14, Liu discloses alumina particle containing molybdenum (paragraph 0028, 0015, 0011).
Regarding claims 11, 15-17, Liu discloses alumina particle has other than a hexagonal bipyramidal and has polyhedral particle, with crystal face other than a [001] face as a main crystal face and that the area is 20% or less of total area of the grain (paragraphs 0066-0067) but Lu does not explicitly disclose or suggest area of a largest flat face being one eighth or less of a total surface area of the aluminum oxide particles.
However, given Liu discloses a alumina particle production method substantially similar to presently claimed invention and Liu further disclosing alumina particle has other than a hexagonal bipyramidal and has polyhedral particle, with crystal face other than a [001] face as a main crystal face and that the area is 20% or less of total area of the grain and because the shape and crystal planes of the alumina particle mentioned above are similar (paragraphs 0066-0067), therefore it is clear that the alumina particle taught by Liu would intrinsically have substantially identical property of the area of a largest flat face being one eighth or less of a total surface area of the aluminum oxide particles as presently claimed. 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 either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 03/05/2026