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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-8 in the reply filed on 10/28/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 9-23 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/28/2025.
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.
Claims 2-8 are rejected 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 2 recites the broad recitation > 5µm, and the claim also recites 7 to 13µm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 2 will be interpreted as meaning >5µm unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 3 recites the broad recitation 3 to 15%, and the claim also recites 3 to 10%, and further recites particularly preferably in tetragonal modification which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 3 will be interpreted as meaning 3 to 15% unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 4 recites the broad recitation at least 85%, and the claim also recites 90 to 97.5% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 4 will be interpreted as meaning at least 85% unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 5 recites the broad recitation 10 to 60nm, and the claim also recites 20 to 35nm which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 5 will be interpreted as meaning 10 to 60nm unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 6 recites the broad recitation 71 to 80 wt.%, and the claim also recites 73 to 78 wt.%, and further recites particularly preferably 75 to 78 wt.% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 6 will be interpreted as meaning 71 to 80 wt.% unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 7 recites the broad recitation “the residual phase contains Al2O3”, and the claim also recites “or consists thereof” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 7 will be interpreted as meaning the residual phase contains Al2O3 unless otherwise clarified by Applicant during the course of prosecution.
Claim 7 recites the limitation "the residual phase" in line 2. There is insufficient antecedent basis for this limitation in the claim.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation at least 12.0 N, and the claim also recites preferably of at least 14.0 N, and further recites in particular of at least 15.0N which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 8 will be interpreted as meaning at least 12.0N unless otherwise clarified by Applicant during the course of prosecution.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 8 recites the broad recitation at least 1.5%, and the claim also recites at least 1.6%, and further recites particularly preferably of 2.0+/- 0.3% which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, claim 8 will be interpreted as meaning at least 1.5% unless otherwise clarified by Applicant during the course of prosecution.
Claim Rejections - 35 USC § 102
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(s) 1-2, 4, and 6 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Heyi et al. (CN104086200B with reference to the machine translation, hereinafter referred to as Heyi).
Regarding claim 1, Heyi discloses ZrO2-reinforced mullite fibers (See Heyi at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heyi at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2.), characterised in that they contain at least 0.1 wt.% of crystalline ZrO2 (See Heyi at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heyi at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2.), wherein the ZrO2-reinforced mullite fibers contain at least 80 wt.% of crystalline mullite (See Heyi at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heyi at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2. Examiner notes 0-2 wt.% ZrO2 would correspond with 98-100% mullite.).
Regarding claim 2, Heyi discloses ZrO2-reinforced mullite fibers characterised in that the fibers have a diameter in the range of > 5 µm and in particular in the range of 7 to 13 µm (see Heyi at the fourth paragraph of page 3, disclosing the average diameter of the polycrystalline mullite continuous fiber … is 6-11µm.).
Regarding claim 4, Heyi discloses ZrO2-reinforced mullite fibers characterised in that they contain at least 85 wt.%, and particularly preferably 90 to 97.5 wt.% of crystalline mullite (See Heyi at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heyi at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2. Examiner notes 0-2 wt.% ZrO2 would correspond with 98-100% mullite.).
Regarding claim 6, Heyi discloses ZrO2-reinforced mullite fibers characterised in that they contain, in relation to the total amount of Al2O3 and SiO2, 71 to 80 wt.%, in particular 73 to 78 wt.%, and particularly preferably 75 to 78 wt.% of theoretical Al2O3 proportion in the mullite phase (see Heyi at the third paragraph of page 4, disclosing the mass ratio of Al2O3:SiO2:B2O3 is 72:26:2, which corresponds to 72 wt.% Al2O3, which is within the claimed range.).
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.
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) 3 is/are rejected under 35 U.S.C. 103 as being unpatentable over Heyi.
Regarding claim 3, Heyi makes obvious ZrO2-reinforced mullite fibers characterised in that they contain 3 to 15 wt.%, and preferably from 3 to 10 wt.% of crystalline ZrO2, very particularly preferably in tetragonal modification (See Heyi at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heyi at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2. Examiner notes 2 wt.% ZrO2 is close to touching the claimed range.) A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. (see MPEP 2144.05(I), second paragraph)..
Conclusion
Concerning claim 5, Heyi does not disclose or make obvious ZrO2-reinforced mullite fibers characterised in that the crystalline ZrO2 has grain sizes in the range from 10 to 60 nm, in particular from 20 to 35 nm because Heyi does not disclose or make obvious the grain size of the ZrO2.
Concerning claim 7, Heyi does not disclose or make obvious ZrO2-reinforced mullite fibers characterised in that the residual phase contains Al2O3 or consists thereof. Heyi at the fifth to last paragraph of page 3 discloses the main crystal phase of the fiber is mullite … and no other intermediate phases are produced.
Concerning claim 8, Heyi does not disclose or make obvious ZrO2-reinforced mullite fibers characterised in that they have a breaking load of at least 12.0 N, preferably of at least 14.0 N, and in particular of at least 15.0 N and/or a breaking elongation of at least 1.5%, in particular of at least 1.6%, and particularly preferably of 2.0±0.3%, determined in each case on a fibre bundle of 468 filaments with a thickness of 10 µm at a testing speed of 5 mm/min at a fixed deflection with a diameter of 2.5 mm because Heyi does not disclose or make obvious the breaking load or breaking elongation.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CAMERON K MILLER whose telephone number is (571)272-4616. The examiner can normally be reached M-F 8:00am - 5:00pm EST.
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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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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731