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 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 15 isrejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 15 recites “cerim oxide” it appears this should be “cerium oxide” (see claim 11).
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-9 and 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brodkin et al. US 2016/0095798.
Brodkin et al. teaches a method for preparing pre-ceramic body comprising the following steps:
providing a dispersion of crystalline metal oxide particles having a mean size of 20 nm or less [0079];
introducing the dispersion into a mold and forming a wet body by pressure filtration of the dispersion in the mold [0080]
demolding the molded body;
forming green body by drying wet body in a humidity controlled environment (e.g greater than 85% [0085]);
shaping the green body (Figure 4);
debinding the green body [0080]
pre-sintering the green body at up to 850°C
shaping the presintered body (Figure 4); and
sintering at temperatures lower than 1200°C (figure 4)[0080].
Note since the body is drying during demolding, it would have been obvious to one of ordinary skill in the art at the time of the invention to control the humidity of the environment during that process to prevent cracking as disclosed [0080].
The reference also discloses that binders and dispersants may be added to suspension [0079], that the molded article can have dimensions up to 23mm [0085] and that Y2O3 can be added to the zirconia at e.g. 3 or 5.3 mole %[0042].
With respect to claimed ingredient amounts and process parameters, where 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. In this particular case it is submitted that it would be obvious to one of ordinary skill in the art to determine these values. In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II A
Claim(s) 10,11 and 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 2692311.
EP 2692311 discloses a pre-sintered body of zirconium oxide having:
- an average grain size less than 100 nm,
- a density of 30 to 95% of theoretical density
- an average pore size of 10 to 100nm,
- x,y and z dimensions of at least 5mm [0197],
- additions of 3.8 to 8 mole % yttria with guidance on optimizing amount [0198],
- coloring agents,
-no lanthanum oxide.
Note that since the claimed gradient is very broad and essentially undefined any minute variation in the product would meet this limitation.
In the case where the claimed ranges "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). MPEP 2144.05 I.
Regarding the claimed physical properties of the material (e.g. hardness, bending strength), since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Claim(s) 23 is/are rejected under 35 U.S.C. 103 as being unpatentable over EP 2692311 as applied to claim 10,11 and 24 above, and further in view of WO 2008/083282.
EP 2692311 also discloses a green body comprising
crystalline zirconium oxide particles having a mean size of 2-50nm [0133],
having a density of between 30% and 95% relative to the theoretical density [0197] determined from the pre-sintered body porosity, and
a thickness of more than or equal to 5 mm.
‘311 does not discuss cracks in the green body so it is submitted that this limitation is met.
WO 2008/083282 discloses a zirconia green body having particles less than 50nm and pores less than 30nm. In the case where the claimed ranges "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). MPEP 2144.05 I.
Claim(s) 17,18,20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Brodkin et al. (US 7,655,586).
Brodkin et al. discloses a ceramic body of crystalline zirconium oxide having:
- an average grain size of 100-400 nm [claim 16],
- a density of more than 95% theoretical density [claim 16],
- a mean pore size not exceeding the crystallite size of about 20 nm [claim 16].
Brodkin et al. also discloses Y2O3 present as a sintering aid (col. 6, line 22). Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). MPEP 2144.05 II.
In the case where the claimed ranges "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). MPEP 2144.05 I.
Regarding the claimed physical properties of the material (e.g. bending strength, opalescence, transmittance), since the composition of the reference is the same as those claimed herein it follows that the material discussed above would inherently possess the properties recited in the claims. See MPEP 2112.
It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Products of identical composition may not have mutually exclusive properties. In re Spada 15 USPQ2d 1655,1658 (Fed. Circ. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER A FIORILLA whose telephone number is (571)272-1187. The examiner can normally be reached M-TH 6am-4pm.
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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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/CHRISTOPHER A FIORILLA/Primary Examiner, Art Unit 1731