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 .
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 and 3-10 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 is amended to recite, “fine particles having an average particle size of 100 nm or less and containing silicon and oxygen”.
Specification, [0025] recites,
“The fine particles 4 included in the binding part 3 may be particles made from an amorphous compound containing silicon, oxygen, and a metallic element other than silicon. The fine particles 4 may be particles made from a crystalline compound containing silicon, oxygen, and a metallic element other than silicon. The fine particles 4 included in the binding part 3 may be particles made from an amorphous compound containing silicon, oxygen, and zirconium. The fine particles 4 may be particles made from a crystalline compound containing silicon, oxygen, and zirconium. Note that the fine particles 4 may contain silicon dioxide that did not react with an aqueous solution containing a metallic element other than silicon.” (emphasis added)
Therefore, while there is support for fine particles being an amorphous or crystalline compound containing silicon, oxygen; an amorphous or crystalline compound containing silicon, oxygen, and zirconium, or silicon dioxide (i.e., a specific compound comprising silicon and oxygen), there is no support to broadly recite the fine particles being any type of fine particles containing silicon and oxygen, as presently claimed.
Regarding dependent claims 3-10, these claims do not remedy the deficiencies of parent claim 1 noted above, and are rejected for the same rationale.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 and 3-10 are rejected under 35 U.S.C. 103 as being unpatentable over Pitts et al. (GB 1434737 A) (Pitts) in view of Okubi et al. (US 5332432 A) (Okubi), and further in view of evidence by Obermeier (“Silica Sol”, 2025).
Regarding claim 1, Pitts teaches refractory articles which are made by bonding together grains or grogs of high melting point inorganic substances such as zircon (Pitts, p. 1, lines 20-25) (i.e., inorganic structure). Pitts further teaches the grains of zircon (zirconium silicate) may be bonded by using as the bonding agent a mixture of a zirconium compound (i.e., a metallic element other than silicon) and a silica sol (Pitts, p. 1, lines 87-90), which is an aqueous, solvent-free, low-odor, colloidal solution of amorphous silicon dioxide as evidenced by Obermeier – 3rd Paragraph (i.e., amorphous silica, silica contains silicon and oxygen) (i.e., the binding part contains an amorphous compound containing silicon, a metallic element other than silicon, and oxygen), i.e., bonding agent bonds the surfaces of the grains of zircon together (i.e., a plurality of zirconium silicate particles; and a binding part that covers a surface of each of the zirconium silicate particles and binds the zirconium silicate particles together).
Further, as Pitts teaches the binding agent comprising a zirconium compound and a silica sol and does not require alkali metal, B, V, Te, P, Bi, Pb, and Zn in the binding agent, it is clear than the binding agent of Pitt contains substantially no alkali metal, B, V, Te, P, Bi, Pb, and Zn.
However, Pitts does not explicitly teach the binding part additionally contains fine particles having an average particle size of 100 nm or less and containing silicon and oxygen.
With respect to the difference, Okubi teaches an inorganic adhesive comprising an aqueous silica sol and an inorganic refractory powder (Okubi, Abstract). Okubi specifically teaches the adhesive comprises a fine powder of silica (i.e., SiO2) having a particle size of from 5 to 400 millimicrons (i.e., 5-400 nm) (Okubi, Col. 3, lines 1-11), which overlaps with the range of the presently claimed.
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).
As Okubi expressly teaches where a conventional adhesive composition comprising only an aqueous silica sol and an inorganic refractory powder is used, the strength of the dried and hardened product would often be lower because of the adsorption of water to the layer so that the hardened adhesive layer would often separate from the substrate substance. As opposed to this, water is hardly absorbed to the hardened product layer to be formed from the adhesive composition of the present invention, such an unfavorable lowering of strength of the hardened product layer does not occur (Okubi, Col. 8, lines 1-11). Additionally, the silica particles stabilize the composition (Okubi, Col. 8, lines 12-18 and 44-60).
Okubi is analogous art as it is drawn to an adhesive material comprising a silica sol and zirconia compound (Okubi, Abstract; claim 3).
In light of the motivation of including fine silica particles as disclosed by Okubi, it therefore would have been obvious to one of ordinary skill in the art to modify the binding agent of Pitts by including fine silica particles in order to increase the strength and stability of the final product, and thereby arrive at the claimed invention.
Regarding claim 3, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, wherein the bonding agent comprising a mixture of a zirconium compound and a silica sol (Pitts, p. 1, lines 87-90) and does not require Ca, Sr, and Ba in the bonding agent, it is clear that the binding agent of Pitt contains substantially no Ca, Sr, and Ba.
Regarding claim 4, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, wherein the bonding agent comprises only a mixture of a zirconium compound and a silica sol (Pitts, p. 1, lines 87-90) (i.e., the metallic element other than silicon is zirconium).
Regarding claim 5, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, wherein in an embodiment the zirconium silicate comprises 80 parts by weight zircon (-52+120 B.S.S. mesh and -120+200 B.S.S. mesh), 20 parts by weight zirconium silicate (50% < 11 μm), and 1.2 parts by weight zirconium/silica sol (Pitts, p. 3, lines 62-70). Therefore, as the weight percentage of the binding agent is significantly smaller than the zircon, it is clear that the volume ratio of the zircon is greater than that of the binding agent.
Regarding claim 6, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, but does not explicitly teach wherein the binder further contains crystalline zirconium silicate.
With respect to the difference, Okubi teaches an inorganic adhesive comprising an aqueous silica sol and an inorganic refractory powder (Okubi, Abstract). Okubi specifically teaches the inorganic refractory material may be a powder of zirconium silicate (Okubi, claim 3), which is taught by Pitts to be crystalline (Pitts, p. 1, lines 63-66).
As Okubi expressly teaches, the combination of the colloidal silica, i.e., silica sol, and the powdery inorganic refractory particles increases the bonds between them in the dried and hardened product which extremely improves the mechanical strength of the hardened product (Okubi, Col. 7, lines 25-33).
In light of the motivation of adding powdered zirconium silicate to the binder as disclosed by Okubi, it therefore would have been obvious to one of ordinary skill in the art to modify the binding agent of Pitts, in view of Okubi, by including the zirconium silicate powder in order to improve the mechanical strength of the hardened product, and thereby arrive at the claimed invention.
Regarding claim 7 and 9, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, wherein the refractory article of Pitts, in view of Okubi, is substantially identical to the claimed inorganic structure and would therefore inherently have a porosity of 20% or less (i.e., claim 7) and a thermal conductivity of 1 W/m K or less (i.e., claim 9).
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).
Regarding claim 8, Pitts, in view of Okubi, teaches the inorganic structure according to claim 1, wherein the bonding material and the particles, i.e., zircon, have a crystalline structure (Pitts, p. 1, lines 58-66).
Regarding claim 10, Pitts teaches the inorganic structure according to claim 1, wherein the mixture of the zircon and bonding agent is poured into a mold (Pitts, p. 2, lines 62-80).
Although there are no disclosures on the thickness of the molded article being 500μm or more as presently claimed, it has long been an axiom of United States patent law that it is not inventive to discover the optimum or workable ranges of result-effective variables by routine experimentation. In re Peterson, 315 F.3d 1325, 1330 (Fed. Cir. 2003) ("The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages."); In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation."). "Only if the 'results of optimizing a variable' are 'unexpectedly good' can a patent be obtained for the claimed critical range." In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (quoting In re Antonie, 559 F.2d 618, 620 (CCPA 1977)).
At the time of the invention, it would have been obvious to one of ordinary skill in the art to vary the thickness of the final refractory article, including over the amounts presently claimed, in order to achieve a desired size (i.e., including thickness) of the fired refractory shaped article, depending on its end use, and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“Applicant respectfully submits that the claimed fine particles have an average
particle size of 100 nm or less. Pitts does not teach an average particle size, much less an average particle size of 100 nm or less.
Further, with respect to the application of MPEP 2144.05 to the claimed limitations, even if the "11 μm" recited in Pitts was considered to be an average particle size, Applicant respectfully submits that the degree of size difference between Pitts and the claimed invention is almost 11,000 nm. Indeed, in view of the 11,000 nm size difference in particles, one having ordinary skill in the art would consider the teachings of Pitts to be non-analogous. Simply put, the scale difference is such that one having ordinary skill in the art would not be motivated to apply Pitts to suggest the claimed invention.
…
To make up for deficiencies of Pitts with respect to crystalline zirconium silicate, the Examiner applied Okubi. However, Okubi does not make up for the deficiencies of Pitts with respect to the claimed fine particles. Therefore, the combined teachings of Pitts and Okubi do not suggest to one having ordinary skill in the art the claimed inorganic structure having the claimed binding part containing fine particles having an average particle size of 100 nm or less and containing silicon and oxygen.”
Remarks, p. 5
The examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Pitts does not expressly teach the claimed fine particles having an average particle size of 100 nm or less. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Pitts does not disclose the entire claimed invention. Rather, Okubi is relied upon to teach claimed elements missing from Pitts. See item #7 above.
Further, while applicant argues Okubi does not make up for the deficiencies of Pitts with respect to the fine particles, it is the examiner’s position that Pitts in combination with Okubi does teach the claimed fine particles. Okubi specifically teaches the adhesive comprises a fine powder of silica (i.e., SiO2) having a particle size of from 5 to 400 millimicrons (i.e., 5-400 nm) (Okubi, Col. 3, lines 1-11), which overlaps with the range of the presently claimed; and wherein these fine particles stabilize and increase the strength of the composition (Okubi, Col. 8, lines 1-18 and 44-60).
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 Catriona Corallo whose telephone number is (571)272-8957. The examiner can normally be reached Monday-Friday, 8am-5pm.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732