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 § 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.
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 1-5 and 8-13 above are rejected under 35 U.S.C. 103 as being unpatentable over Marlin (US 2008/0028685).
Regarding claims 1-2
Marlin discloses a mixture produced in an arc furnace of molten aluminum oxide/zirconium oxide granules having the following chemical composition in percent by weight:
ZrO2 + HfO2: 40-45.5 %, the zirconium dioxide being present in the mixture predominantly in its tetragonal allotropic form, i.e., up to 100 wt % of the ZrO2;
Al2O3: 46-58 %
SiO2 < 0.8 %
Y2O3: 0.1-1.2 %
TiO2: 0.1-3 %.
The level of impurities (excluding residual carbon) varies between 0.3 and 0.8 wt %, while the residual carbon expressed as C, is present typically in a concentration range of 300-1900 ppm i.e., 0.03-0.19 wt % (abstract, claims 14, 20 and 26; and paras 0035-0038, and 0060-0061; and table 1).
With respect to the amounts of Al2O3, Y2O3, TiO2 and C, as the amounts of the reference overlap the claimed amounts, the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
With respect to the amount of SiO2 the reference discloses less than 0.8 wt % while the instant invention claims more than 0.8 wt %. However there is not such a difference that the skilled artisan would expect a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
With respect to the limitation on the ratio of raw materials this is a product-by-process limitations, and does not add to the patentability of a composition claim unless it can be shown that the processed used will result in a materially different process.
Regarding claims 3-4 and 8-9
The difference in less than 0.8 and more than 1.0 wt %, or even 1.1 wt %, is not so great that one skilled in the art would expect a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Regarding claims 5 and 10-13
Marlin disclose Y2O3: 0.1-1.2 % and TiO2: 0.1-3 %. As such the ratio of TiO2 to Y2O3 overlaps the claimed range, and the subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made to have selected the overlapping portion of the range disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness. In re Malagari, 182 U.S.P.Q. 549.
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Marlin (US 2008/0028685), as applied to claims 1-5 and 8-13 above, in view of Dazza et al. (US 2006/0272221).
Regarding claim 6
Marlin discloses mixing the components, melting until liquid, quenching, milling (i.e., crushing), and optionally classifying (i.e., sieving) by grit size (paras 0026-0030).
Although Marlin does not disclose the use of both baddeleyite and zircon sand, Dazza which teaches near identical methods and compositions discloses that such abrasive grains can be made by using 120 kg zircon sand to 195 kg baddeleyite (i.e., 1.65:1 baddeleyite to zircon sand ratio) (Table 1, example 5). As such it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention to add to the teachings of Marlin by using a 1.65:1 ratio of baddeleyite to zircon sand in the composition with a reasonable expectation of success.
Regarding claim 7
1:65:1 is not so far from 1:5:1 that the skilled artisan would have expected a difference in properties, and a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. Titanium Metals Corp. v. Banner, 778 F.2d 775, 227 USPQ 773 (Fed. Cir. 1985).
Response to Arguments
Applicants argue against the claim objections.
Applicants amendments to the claims are sufficient to overcome this rejection and it has been withdrawn.
Applicants argue against the prior art rejections.
Applicants argue that the instant invention achieves surprising results. This is not persuasive as applicants have not comparted the closest prior art, and even show an example (G with 0.72) outside of the claimed range but within the range of the reference (i.e., less than 0.8) that has these surprising results.
Applicants argue that TiO2 and Y2O3 as stabilizers improve the performance. While this may be true it is not persuasive as the reference also has these additives.
Applicants argue that marlin fails to disclose Y2O3 or TiO2. This is not persuasive as Marlin clearly discloses these additives in claim 20.
Applicants argue that instant invention requires more than 0.8 SiO2 where the reference uses less than 0.8. While this may be true applicants have failed to demonstrate any evidence of new or unexpected results from the use of more than 0.8 SiO2 relative to less than 0.8 SiO2.
The remaining arguments have been fully considered but are not persuasive for the same reasons given 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 JAMES E MCDONOUGH whose telephone number is (571)272-6398. The examiner can normally be reached Mon-Fri 10-10.
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JAMES E. MCDONOUGH
Examiner
Art Unit 1734
/JAMES E MCDONOUGH/Primary Examiner, Art Unit 1734