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 .
Election/Restrictions
The Applicant disagrees with the restriction requirement for the reasons stated in the reply filed on August 29, 2025. Please refer to the response filed on 11/03/2025.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
Claim(s) 1, 3 - 5 and 8 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US5372976 (US’976).
Regarding claim 1, US’976 discloses a raw material for the sanitary-ware comprising quartz such as silica stone and pottery stone, alpha- alumina and feldspar. See col. 4, lines 65-68 and col. 5, line 9, lines 43-48.
Each raw material component (such as silica stone, pottery stone, alpha- alumina, and feldspar et al) has a particle size distribution. The portion of the raw material component having a larger size can be treated as a part of the first greenware material. The portion of the raw material component having a smaller size can be treated as a part of the second greenware material. Thus, an average particle diameter (D2) of the second greenware material is smaller than an average particle diameter (D1) of the first greenware material.
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).
The Examiner respectfully submits that although the prior art does not disclose the claimed “a pottery is producible by each of the first greenware material and the second greenware material independently”, the claimed “a pottery is producible by each of the first greenware material and the second greenware material independently” are deemed to naturally flow from the portion of the raw material component having a larger size and the portion of the raw material component having a smaller size, since the prior art teaches an invention with chemical compositions as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
The rationale to modify or combine the prior art does not have to be expressly stated in the prior art; the rationale may be expressly or impliedly contained in the prior art or it may be reasoned from knowledge generally available to one of ordinary skill in the art, established scientific principles, or legal precedent established by prior case law. In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988).
Regarding claim 3, US’976 discloses that it is sufficient to use α-alumina and quartz each having the corresponding particle size range defined above as powdery raw materials. See col. 6, lines 35-37.
Regarding claim 4, it is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process; determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
Regarding claim 5, US’976 discloses a raw material for the sanitary-ware comprising quartz such as silica stone and pottery stone, alpha- alumina and feldspar. See col. 4, lines 65-68 and col. 5, line 9, lines 43-48. US’976 discloses that it is sufficient to use α-alumina and quartz each having the corresponding particle size range defined above as powdery raw materials. Col. 6, lines 35-37.
Regarding claim 8, US’976 discloses that the strength of the material is in general increased as the water absorption percentage decreases. The vitreous China holds substantially high strength even when the water absorption percentage is high to a certain extent and such material is suitably used for the production of articles which may have a high water absorption percentage. Thus, it would have been obvious to one of ordinary skill in the art to adopt a suitable coefficient of water absorption rate to make a desired sanitary product. The raw material is used to make sanitary product and it would be expected that the raw material has the claimed coefficient of water absorption rate. 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).
Claim(s) 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5372976 (US’976) as applied to claim 1 above, and further in view of US20030124359(US’359).
Regarding claims 6-7, US’976 discloses a raw material for the sanitary-ware comprising quartz such as silica stone and pottery stone, alpha- alumina and feldspar. See col. 4, lines 65-68 and col. 5, line 9, lines 43-48.
But it is silent about the claimed shrinkage rate and deformation.
US’359 discloses that a sanitary ware for which it is possible to accurately design the shapes and dimensions of the products after being subjected to firing while maintaining the mechanical strength required to sanitary ware, degradation of the process yield caused by shrinkage and deformation scarcely occurs. The firing shrinkage rate along the lengthwise direction in the firing process is 6% or below; the softening deformation of the body in the firing process is 10 mm or below. See [0041].
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make the raw material having the claimed firing shrinkage rate and the claimed deformation, motivated by the fat that US’359 discloses that it is possible to accurately design the shapes and dimensions of the products after being subjected to firing while maintaining the mechanical strength required to sanitary ware, degradation of the process yield caused by shrinkage and deformation scarcely occurs.
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive.
The Applicant argues that the instant application is drawn to a mixture (blend) of at least the first greenware material and the second greenware material and the US '976 merely discloses a single greenware material.
The examiner respectfully submits that the claims are drawn to a composition not a process of making the “ mixture” or “blend”, which is a product. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
The Applicant argues that US'976 discloses conventional greenware raw materials usable for producing a pottery product, for example, stone-based raw materials such as pottery stone and silica stone, which becomes a skeleton of a pottery; clay which can impart plasticity to a pottery greenware material while the pottery greenware material is molded; and feldspar which acts as a melting agent while a molded body is fired.
The Examiner respectfully submits that US’976 discloses a raw material for the sanitary-ware comprising quartz such as silica stone and pottery stone, alpha- alumina and feldspar. See col. 4, lines 65-68 and col. 5, line 9, lines 43-48. Each raw material component (such as silica stone, pottery stone, alpha- alumina, and feldspar et al) has a particle size distribution. The portion of the raw material component having a larger size can be treated as a part of the first greenware material. The portion of the raw material component having a smaller size can be treated as a part of the second greenware material. Thus, an average particle diameter (D2) of the second greenware material is smaller than an average particle diameter (D1) of the first greenware material.
The Applicant argues that the Japanese Examiner, and also the Chinese Examiner in charge of examining the corresponding Japanese application and Chinese application have each appropriately understood and interpreted that the claimed pottery greenware material as recited in independent claim 1 is related to a blend of at least a first greenware material and a second greenware material.
The Examiner respectfully submits that the application is under US practice and examination. The examiner respectfully submits that the claims are drawn to a composition not a process of making the “mixture” or “blend”, which is a product. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
The Applicant argues that the US '976 reference does not disclose or suggest a technical idea for creating a novel pottery greenware material by mixing (blending) at least two different conventional greenware materials, let alone those each of which can produce a pottery independently.
The Applicant argues that the US '976 reference neither discloses nor indicates such a problem to be solved as discussed in paragraphs [00111- [00121 of the specification of the present application, i.e., to provide a pottery greenware material by which a pottery having both excellent productivity and quality can be produced with a high degree of freedom depending on an intended use thereof.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., excellent productivity, high degree of freedom and quality) 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).
The Applicant argues that the Table 1 and the examples of US’976 are failed to discloses the claimed feature.
The Examiner respectfully submits that a reference is not limited to the teaching in its preferred embodiment (A reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In re Opprecht 12 USPQ 2d 1235, 1236 (CAFC 1989); In re Bode USPQ 12; In re Lamberti 192 USPQ 278; In re Bozek 163 USPQ 545, 549 (CCPA 1969); In re Van Mater 144 USPQ 421; In re Jacoby 135 USPQ 317; In re LeGrice 133 USPQ 365; In re Preda 159 USPQ 342 (CCPA 1968). In addition, "A reference can be used for all it realistically teaches and is not limited to the disclosure in its preferred embodiments" See In re Van Marter, 144 USPQ 421). Furthermore, It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
The Applicant argues that the US '976 reference discloses a greenware material that is not a blend of at least two greenware materials, but merely a single greenware material; and the US'976 reference does not expressly or inherently disclose, or suggest a technical idea of creating a novel pottery greenware material by blending at least two greenware materials, let alone those each of which can produce a pottery independently.
The Examiner respectfully submits that the claims are drawn to a composition not a process of making the “ mixture” or “blend”, which is a product. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted). Furthermore, It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980).
The Applicant argues that the US '976 reference does not disclose or suggest any pottery greenware material comprising, as three essential raw materials thereof, pottery stone, alumina and quartz sand; the US '976 reference merely incidentally discloses some Examples corresponding to the second greenware material comprised in the claimed invention, but there exists no greenware material corresponding to the first greenware material comprised in the claimed invention, among all of the working Examples 1-32 provided in the US '976 reference; and a skilled person in the art would never be able to produce the claimed invention no matter what blend of any two greenware materials among Examples 1-32 provided in the US '976 reference are selected by the skilled person.
The Examiner respectfully submits that US’976 discloses a raw material for the sanitary-ware comprising quartz such as silica stone and pottery stone, alpha- alumina and feldspar. See col. 4, lines 65-68 and col. 5, line 9, lines 43-48. that a reference is not limited to the teaching in its preferred embodiment (A reference is good not only for what it teaches but also for what one of ordinary skill might reasonably infer from the teachings. In re Opprecht 12 USPQ 2d 1235, 1236 (CAFC 1989); In re Bode USPQ 12; In re Lamberti 192 USPQ 278; In re Bozek 163 USPQ 545, 549 (CCPA 1969); In re Van Mater 144 USPQ 421; In re Jacoby 135 USPQ 317; In re LeGrice 133 USPQ 365; In re Preda 159 USPQ 342 (CCPA 1968). In addition, "A reference can be used for all it realistically teaches and is not limited to the disclosure in its preferred embodiments" See In re Van Marter, 144 USPQ 421). Furthermore, It is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980)
The Applicant argues that the greenware disclosed in the US '976 reference is a single greenware material, a skilled person in the art would have no motivation to divide the single greenware material into two greenware materials - a first greenware material and a second greenware material - as required by the claimed invention.
The Examiner respectfully submits that the instant claims are drawn to a composition (blend or mixture) not a separated a first greenware material and a separated a second greenware material.
The Applicant respectfully argues that it is impossible for a person of ordinary skill in the art to find or obtain "a pottery greenware material comprising a first greenware material and a second greenware material" as defined in the claimed invention based on the entire disclosures of US '976 reference.
In response to Applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the Applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The Applicant argues that the claimed invention has been created to solve novel problems found by the Applicant, and exhibits meritorious effects, as described in paragraphs [0011]-[0012] and [0014]-[0018] of the specification of the present application and US '976 reference does not disclose or point out such novel problems solved by the claimed invention, and/or meritorious effects achieved by the claimed invention.
In response to Applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which Applicant relies (i.e., excellent productivity, high degree of freedom and quality) 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). The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
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 SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached at (571)270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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