DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 22, 2026 has been entered.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Election/Restrictions
Claims 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. The election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-5 and 14-15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for yttrium hydroxide being the coating compound for the coated zirconia fine particle, does not reasonably provide enablement for yttrium carbonate being the coating compound. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
As shown in the instant specification at page 29, Table 1: Example 7, which employs yttrium carbonate as the coating compound, shows the resulted tetragonal ratio of 27 mass% which is well below the claimed tetragonal ratio of 72 mass%. It should be noted that there are two values of “tetragonal ratio” listed in Table 1; however, based on Table 2, at page 33, the lowest value of Tetragonal ratio after sintering is 72 mass%; therefore, it appears that by “tetragonal ratio”, it is intended to mean “tetragonal ratio after sintering”. Moreover, in Table 1, in all Examples 1-13 and Comparative Examples 1-2, the only “tetragonal ratio” that has a value below 72 mass% is the Example 6 which is the coated zirconia fine particle of the claimed invention. Additionally, at page 30, last paragraph, the “tetragonal ratio” of Comparative example 2 is described as “64%”, which is the “tetragonal ratio after sintering” (as shown in Table 1). Based on all these descriptions, it appears that by “tetragonal ratio”, it is intended to mean the tetragonal ratio after sintering. Thus, based on this meaning of “tetragonal ratio”, when the coating is yttrium carbonate, the tetragonal ratio after sintering does not meet the claimed value of at least 72 mass%. Accordingly, the value of the tetragonal ratio of at least 72 mass% for coated zirconia with yttrium carbonate coating is not enabled by the disclosure.
Claims 1-5 and 14-15 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.
The new claim feature “tetragonal ratio of the coated zirconia fine particle” renders the claims indefinite because there are two values of “tetragonal ratio” described in the instant specification, and it is unclear which “tetragonal ratio” is being referred to in the instant claims. See instant specification, page 29, Table 1, column 8, the “tetragonal ratio” under “XRD analysis” and column 15, the “tetragonal ratio” under “Sintering evaluation”.
In addition, the tetragonal ratio as described in the claims is questionable because it is unclear how a ratio having a volume with a unit of mass%
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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