DETAILED ACTION
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Claims 6-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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, 14 and 15 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claims are amended to include an element of yttrium and optionally one or more metal elements of Ca, Mg, Al and rare earth elements. However, the originally specification discloses the rare earth element being yttrium and does not disclose the rare earth element being both yttrium and another rare earth element (para. 0020 and para. 0065, Example 1). The Wands factors include among other factors: The amount of direction provided by the inventor; and The existence of working examples. Here, the direction provided by the inventor is that the rare earth element being yttrium (para. 0055 & 0056), and the working examples (Table 1 of the instant specification) provide only yttrium as the rare earth element. Therefore, the claims which include yttrium and another rare earth element would require the more than reasonable experimentations to arrive at the product as claimed. Therefore, while the original disclosure enable only a coating comprising one of Ca, Mg, Al and Y, the coating which include Y and optionally another rare earth element as presented in the claims would not assure a result in the particle size and the BET surface area within the claimed range without undue experimentations.
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 1-5 and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over MUROI (US-2007/0179041).
Claims 1-2: Muroi teaches a zirconia particle coated with a stabilizing agent
comprising elements rare earth, calcium, or magnesium (Muroi, para. 0023). Muroi defines “stabilizing agent” as “to refer to an oxide, such as YO, CeO, CaO and MgO (para. 0055), and “rare earth metal' as “to refer to a group of metal elements comprising SC, Y and the lanthanide elements” (para. 0056). As yttrium is spelled out as the rare earth element in the definition, the POSITA would have found it obvious to select yttrium as the rare earth element. The zirconia has an average particle size of 15-30 nm (Muroi, para. 0021 and 0062), which is well within the claimed range of 3-50 nm. Muroi does not report the specific surface area of the coated zirconia; however, the average particle size of the particles in the coating is less than 10 nm (para. 0066) and the volume of the coating is less than 20 vol% of the coated zirconia (para 0067). Therefore, it is necessary that the specific surface area of the zirconia particles of Muroi falls within the claimed range of 20 to 500 m2/g.
In addition, the SSA directly corresponds to average particle size as stated by Muroi as follows:
“ This is consistent with the particle size observed in FIG. 1 (c) being comparable to the value derived from a measurement of the BET surface area…” (para. 0073) and in Example 1, the average size of the nano-sized particles of zirconia is about 20 nm with a relatively wide size distribution ranging approximately between 5 and 50 nm and the BET surface area of the nano-sized zirconia particles is 54 m2/g. Therefore, it is necessary that the specific surface area of the zirconia particles of Muroi falls within the claimed range of 20 to 500 m2/g.
Claims 3-4: The coating comprises an rare-earth metal oxide, calcium oxide or
magnesium oxide (Muroi, para. 0023).
Claim 5: The coated zirconia particles comprise 20 vol% of the coating material
(Muroi, para. 0015-0017).
Claims 14-15: Muroi also teaches a dispersion comprising the coated zirconia
particles in a dispersant (Muroi, para. 0018-0020).
Response to Arguments
Applicant argues that Muroi fails to teach SSA of the coated zirconia. However, the average particle size of the zirconia is from 15-30 nm (para. 0063), which is well within the claimed range of 10-50 nm, and the coating particles forming the coating over the zirconia has an average particle size of less than 10 nm (para. 0066); therefore, it can be seen that the coated zirconia is necessarily between 20-500 m2/g.
Applicant argues that the particle size may be the same but the BET surface area varies as shown in Table 1. The particle size and BET surface area are not directly linearly related. However, it is known that they are corresponding with each other as stated by Muroi in paragraph 0073. And because the particle size of zirconia is disclosed as between 15-30 nm and the coating particles are less than 10 nm in particle size (Muroi, para. 0063 and 0066), the BET surface area of the coated zirconia necessarily falls between 20-500 m2/g.
Applicant's arguments filed November 12, 2025 have been fully considered but they are not persuasive for the reasons discussed above.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HOA (Holly) LE whose telephone number is (571)272-1511. The examiner can normally be reached Monday to Friday, 10:00 am to 7:00 pm.
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HOA (Holly) LE
Primary Examiner
Art Unit 1788
/HOA (Holly) LE/Primary Examiner, Art Unit 1788
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