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.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
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 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 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Niwa et al. (US 2001/0039237).
Regarding claim 1, Niwa discloses a zirconia containing ceramic ball manufactured through firing a green body, which corresponds to a zirconia sintered bead, see abstract. Additionally, the reference discloses that one or more species of Ca, Y, Ce and Mg are incorporated into the zirconia ceramic phase in a total amount of 1.4 to 4 mol% as reduced to oxides, i.e. CaO, Y2O3, CeO2, and MgO, respectively [0041-0043]. The reference further discloses that the zirconia containing ceramic ball contains the zirconia ceramic phase in an amount from 60% by volume or more (including 100% by volume) [0041]. The reference further discloses the zirconia containing ceramic material as comprising a cubic system phase and a tetragonal system phase, which corresponds to a stabilized crystalline phase, see Niwa [0039] and claim 7.
Note that based on the disclosed volume content of zirconia as well as the mole % of Ca, Y and Ce, the reference is considered to render obvious the claimed ranges for the components of the bead composition; see MPEP 2144.05 I “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Further note that the total range of Ca, Y and Ce is considered to render the individual claimed ranges for each component as well as the ZrO2 + HfO2 + Y2O3 + CeO2 remainder to 100% and the other oxides of less than or equal to 5%; see MPEP 2144.05 I.
While the reference does not specifically disclose the mass percentages of the crystalline phases, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure given the similar composition and method of making; see Niwa abstract and [0041-0043] and Applicant’s specification pages 2-4. Note that 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; see MPEP 2112.01 I.
Regarding claim 2, based on the disclosed volume content of zirconia as well as the mole % of Ca, Y and Ce, the reference is considered to render obvious the claimed ranges for the components of the bead composition; see above discussion and MPEP 2144.05 I. Further note that the total range of Ca, Y and Ce is considered to render the individual claimed ranges for each component as well as the ZrO2 + HfO2 + Y2O3 + CeO2 remainder to 100% and the other oxides of less than or equal to 5%, see MPEP 2144.05 I.
Regarding claim 3, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure given the similar composition and method of making, see above discussion and MPEP 2112.01 I.
Regarding claim 4, the reference does not disclose the sintered ceramic as containing an amorphous phase, see entire document. Alternatively, given the similar composition and method of making, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure, see above discussion and MPEP 2112.01 I.
Regarding claim 5, the reference renders obvious zirconia stabilized with Y2O3 and CeO2 [0041-0043].
Regarding claims 6 and 7, the reference discloses the average grain size as 0.3 to 2 microns, which overlaps the claimed range [0056]; see MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
Applicant argues that Niwa does not suggest the present claim 1. Specifically, Applicant calculates the probability of selecting both stabilizers together and in amounts that satisfy the claimed range as well as the claimed amounts of zirconia and alumina as about 0.0045%. Applicant further argues that the selected components are not arbitrary and result in improved wear resistance. Additionally, Applicant notes that the preferred features of Niwa are not according to present claim 1. As such, Applicant request that the rejections under 35 U.S.C. 103 over Niwa be withdrawn. Examiner respectfully disagrees.
As discussed above and previously, overlapping ranges are considered a prima facie case of obviousness, absent a showing of criticality or a showing that the prior art teaches away from the claimed range; see MPEP 2144.05. Further, disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments, see MPEP 2123. To the extent Applicant argues criticality, Applicant should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range, see MPEP 716.02(c)(II). Note that Applicant has not provided a sufficient number of tests both inside and outside the range, see Table 1 of Applicant’s specification. Further, in order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). Note that the disclosed example in Applicant’s specification are made using a specific process that is not claimed. As such, Applicant arguments of criticality are not commensurate in scope with the claims.
For the above reasons, the rejections under 35 U.S.C. over Niwa are respectfully maintained.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/ Primary Examiner, Art Unit 1783
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