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 Objections
Claims 5, 7, and 8 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claim 5 is directed towards ZrO2-reinforced mullite fibers according to claim 1, characterised in that the crystalline ZrO2 has grain sizes in the range from 10 to 60 nm.
Claim 7 is directed towards ZrO2-reinforced mullite fibers according to claim 1, characterised in that a residual phase consists of crystalline Al2O3.
Claim 8 is directed towards ZrO2-reinforced mullite fibers according to claim 1, characterised in that they have a breaking load of at least 12.0 N and/or a breaking elongation of at least 1.5% 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.
The closest prior art is Heya et al. (CN104086200B with reference to the machine translation, hereinafter referred to as Heya).
Concerning claim 5, Heya 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 Heya does not disclose or make obvious the grain size of the ZrO2.
Concerning claim 7, Heya does not disclose or make obvious ZrO2-reinforced mullite fibers characterised in that the residual phase contains Al2O3 or consists thereof. Heya 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, Heya 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 Heya does not disclose or make obvious the breaking load or breaking elongation.
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 Heya et al. (CN104086200B with reference to the machine translation, hereinafter referred to as Heya).
Regarding claim 1, Heya discloses ZrO2-reinforced mullite fibers (See Heya at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heya at the first paragraph of the third page, disclosing the second oxide phase ... is one of … ZrO2.), in the form of endless filaments (See Heya at the Abstract, disclosing mullite continuous fibers. Examiner notes continuous corresponds with endless), characterised in that they contain at least 0.1 wt.% of crystalline ZrO2 (See Heya at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heya 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 Heya at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heya 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, Heya discloses ZrO2-reinforced mullite fibers characterised in that the fibers have a diameter in the range of > 5 µm (see Heya at the fourth paragraph of page 3, disclosing the average diameter of the polycrystalline mullite continuous fiber … is 6-11µm.).
Regarding claim 4, Heya discloses ZrO2-reinforced mullite fibers characterised in that they contain at least 85 wt.% (See Heya at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heya 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, Heya discloses ZrO2-reinforced mullite fibers characterised in that they contain, based on the total amount of Al2O3 and SiO2, 71 to 80% by weight of a calculated Al2O3 content in the mullite phase. (see Heya 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 Heya.
Regarding claim 3, Heya makes obvious ZrO2-reinforced mullite fibers characterised in that they contain 3 to 15 wt.% (See Heya at the Abstract, disclosing mullite continuous fibers … 0~2 wt.% oxide second phase is added. See also Heya 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).
Response to Arguments
Applicant's arguments concerning the 102 rejection of claims 1-2, 4, and 6 as well as the 103 rejection of claim 3 filed 07/06/2026 have been fully considered but they are not persuasive. At pages 6-7 of the Remarks, Applicant argues that claim 1 has been amended such that the fibers must be endless, while Heya at embodiment one has a length of 30 to 60 cm, at embodiment two has a length of 20 to 50 cm, at embodiment three has a length of 30 to 70 cm, at embodiment four has a length of 40 to 55 cm, and at embodiment five has a length of 35 to 60 cm, and therefore because the lengths of embodiments 1-5 of Heya have a finite value, they are not endless, and therefore claim 1is not obvious in view of Heya. Examiner respectfully disagrees with this conclusion for two reasons.
First, [0023] of the instant PGPub defines endless as fiber of practically unlimited length, however, it is highly unlikely that the fibers can stretch from here to the planet Neptune; such fibers have some finite length by virtue of existing here on Earth. Looking at the instant specification PGPub, [0062] defines a clamping length of the fibers at 10cm, at [0061] a clamping length of 25mm. While the clamping lengths do not necessarily limit the length of the fibers, they give some idea of the scale of the fibers. A scale of mm to cm is not truly infinite, which agrees with the logic of fibers that exist on Earth and have some defined finite length. The length of embodiments 1-5 of Heya are also on the scale of cm, and therefore appear comparative in scale.
Additionally, and more importantly, Embodiments 1-5 of Heya are not used to form the basis of the rejections above. As such, embodiments 1-5 of Heya are not relevant to the instant question of patentability. The prior art is not limited to specific examples, but may be used for all that it teaches. The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain (see MPEP 2123(I)). In the instant case, the rejections are based upon the Abstract of Heya which explicitly states the fibers are continuous. Examiner notes that linguistically, continuous and endless have the same functional meaning, and that a continuous fiber would naturally read on an endless fiber. Embodiments 1-5 do not serve to limit the scope of “continuous” as stated by the Abstract of Heya because specific examples and preferred embodiments do not constitute a teaching away from the broader disclosures of the prior art. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)).
As such, it is not convincing that the fibers of Heya must be between the lengths of Embodiments 1-5, it is not convincing that the claimed fibers are infinite in length and bound by no measurements, and it is not convincing that the continuous fibers of Heya do not read on the endless fibers of claim 1.
Applicant’s arguments concerning the 112(b) rejection of claims 2-8, see the Remarks at page 6, filed 07/06/2026, have been fully considered and are persuasive. The 112(b) rejection of claims 2-8 has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 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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CAMERON K MILLER
Examiner
Art Unit 1731
/CAMERON K MILLER/Examiner, Art Unit 1731
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