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 an amendment filed on 04/23/2026.
Claims 7, 9-17 are pending. Applicant has cancelled claims 1-6, 8 and amended claims 7, 9-17.
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, 9-10, 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 discloses aluminum compound in amount of 10% by mass or more in terms of Al2O3, molybdenum compound in an amount of 20 mass% or more in terms of MoO3(see claim 18) but does not disclose molar ratio of Mo/Al in amount of 0.01 to 0.2.
However, since ‘715 disclose aluminum compound in amount of 10% by mass or more in terms of Al2O3, Mo compound in an amount of 20 mass% or more in terms of MoO3, therefore a prima facie case of obviousness exists for presently claimed limitation of molar ratio of Mo/Al in amount of 0.01 to 0.2, 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).
‘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 9 and 12, ‘715 discloses 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/K in amount of 0.1 to 5 of claims 9 and 12. However, since ‘715 disclose 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 for presently claimed limitation of molar ratio in amount of 0.1 to 5, 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, 9-17 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, 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). 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). Further, 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).
Response to Arguments
7. Applicant’s arguments, see applicant remarks on pages 5-10, filed on 04/23/2026 with respect to the rejections of Claims 7 and 9-17 under 35 U.S.C. § 103 over Liu et. al. (JP2019523745) is not persuasive and therefore the rejections have been maintained.
Applicant arguments related to (I-VI) in that mainly Liu does not recognize aluminum hydroxide as a result-effective variable for particle size control and that Liu discloses broad genus of aluminum compounds including aluminum hydroxide and further argues that Liu fails to teach or suggest the claimed specific combination of aluminum hydroxide, Mo/Al ratio of 0.01-0.2 and particle size either individually or combination. In addition, Applicant further argues that particle growth primarily to potassium assisted flux chemistry, not aluminum selection and Mo/Al ratio of 0.01-0.2 combination with aluminum hydroxide, a coupled flux-growth regime.
However, examiner traverse the applicant’s argument and the fact remains that Liu does disclose the method of producing alumina particles comprising firing aluminum compound that includes aluminum hydroxide in presence of Mo and K compounds and the a molar ratio of Mo/Al in range from 0.01-3.0, more preferably 0.05 to 0.5 which overlaps claimed range and further discloses an average particle diameter of the alumina particle is 5 nm to 10,000 um (paragraphs 0001, 0011, 0025, 0030, 0032, overlaps claimed range of less than20 um) therefore applicant argument is not persuasive. Applicant must look at the whole reference for what it teaches whether preferred embodiment or non-preferred embodiment. In addition, claim is directed to “comprising” which can include additional steps or features of process steps. Further, the applicant is reminded that presented argument (e.g. features from applicant’s remarks such as aluminum compound is critical or preferred for controlling alumina particle size aluminum hydroxide undergoes dehydration during heating to form transition alumina, which affects the formation and distribution of alumina nuclei which impacts crystal growth behavior within flux system, claimed Mo/Al less than equal to 0.2 range, the relative amount of fluxing agent is reduced, resulting in improved post-firing handling including easier separation of alumina particles from flux matrix) in the remark is not considered unless stated expressively in the claim language. In response to applicant's argument that the references fail to show certain features of applicant's invention as discussed above, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In addition, while applicant pointed to the different processes of making alumina particles between the present invention and the cited prior art, the fact remains, applicant has not provided sufficient evidence, i.e., data, to show criticality regarding the presently claimed process and given that Liu meets the requirements of the claimed alumina particles production, therefore Liu clearly meets the requirements of the present invention. Therefore the rejection is maintained..
Further, amendment to abstract overcome specification objection of record.
Further, amendment to the claims overcomes claim objections of record.
Further, amendment to the claims overcomes the 112(b) rejections of record.
Further, Double patenting rejection is maintained as applicant has not filed terminal disclaimer.
Conclusion
8. THIS ACTION IS MADE FINAL. 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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/SMITA S PATEL/Primary Examiner, Art Unit 1732 06/27/2026
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