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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/08/2026 has been entered.
Response to Amendment
This office action is in response to the RCE filed on 04/08/2026.
Claims 1-7, 9-10 and 12-17 are presently pending; claims 8 and 11 are canceled; claims 1-3, 13-14 and 17 are withdrawn; claim 4 is amended; claims 4-7, 9-10, 12 and 15-16 are under examination.
The objection to claim 4 is withdrawn in light of the amendments to the claims.
The rejections of claims 4-7, 9-10, 12 and 15-16 under 35 U.S.C 112(b) and of claim 16 under 35 U.S.C. 112(d) are withdrawn in light of the amendments to the claims.
The 35 U.S.C. 103 rejections of claims 4-7, 9 and 12 over PANZARELLA in view of SUN and HOFIUS, claim 10 over PANZARELLA in view of SUN, HOFIUS and ASANO, and claim 16 over PANZARELLA in view of SUN, HOFIUS and MOHRI are maintained; the 35 U.S.C. 103 rejection of claim 15 over PANZARELLA in view of SUN and HOFIUS is withdrawn in light of the amendments to the claims.
New grounds of rejection are present herein in light of the amendments to the claims.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 4-7, 9-10, 12 and 15-16 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With respect to claim 4, claim 4 depends from withdrawn claim 1, which recites “the area of a [0001] face in the crystal structure of the α-alumina particles represents 15 to 20% of the total crystal face area”, and claim 4 as amended further recites “wherein the total area of all [0001] faces in the polyhedral crystal structure represents 15-20% of the total crystal face area”. As such, while the specification discloses that the area of a [0001] face in the crystal structure of the α-alumina particles represents 15 to 20% of the total crystal face area, Applicant has clarified in arguments that this limitation of the invention refers the total area of all [0001] faces, not just the area of “a [0001] face”; the Examiner has been unable to locate any disclosure that would support a crystal structure wherein both the area of a (one) [0001] face is 15 to 20% of the total area and the total combined area of all [0001] faces is 15 to 20% of the total area as now claimed by amended claim 4.
Claims 5-7, 9-10, 12 and 15-16 are included herein as each depends from a claim which is rejected for the reasons set forth above.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 4-7, 9 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Panzarella, et al. (U.S. Pub. No. 2013/0074418-A1) (hereinafter, “PANZARELLA”; it is noted that PANZARELLA incorporates Bauer (U.S. Pat. No. 4,797,139-A) (hereinafter, “BAUER”) by reference, therefore the disclosure of BAUER is considered part of the disclosure of PANZARELLA; see MPEP 2163.07(b)) in view of Sun, et al. (CN-101327943-A) (hereinafter, “SUN”; citations herein refer to the machine translation provided with a previous office action) and Hofius (WO-2014/102249-A1) (hereinafter, “HOFIUS”).
Regarding claim 4, PANZARELLA teaches a method for preparing an abrasive comprising α-alumina particles having a polyhedral crystal structure (see PANZARELLA at Abstract and paragraphs [0022], [0049] and [0068]),
wherein the α-alumina particles have an average diameter (D50) overlapping with and thereby rendering obvious the claimed range of 300 nm to 10 μm (see PANZARELLA at paragraph [0050], teaching an average crystal size of up to 800 nm);
and the amount of α-alumina particles is 85 to 100% on the basis of the total weight (see PANZARELLA at paragraphs [0099] and [0101], teaching abrasive particulate material comprising 98.7% α-alumina),
the method comprising:
(S1) reacting by mixing an aqueous solution containing one or more aluminum salts (see PANZARELLA at paragraphs [0022], [0028] and [0039], teaching a suspension or slurry comprising a boehmite precursor such as aluminum trihydroxide (i.e., aluminum trihydrate), which is an aluminum salt, and water as the liquid carrier, and referring to the process of BAUER; see BAUER at col. 3, lines 36-39 and col. 6, lines 45-52, teaching using an aluminum salt as the boehmite precursor, e.g., an aqueous dispersion of alumina trihydrate)
with an aqueous solution containing a pH adjusting agent (see PANZARELLA at paragraphs [0028] and [0030]-[0031], teaching adding an acid or base pH adjusting agent during the formation of the boehmite particulate material, e.g., ammonia or potassium hydroxide; see BAUER at col. 6, lines 45-52, teaching using a 15% ammonia solution (i.e., an aqueous solution) as the pH adjusting agent),
and then filtering and drying them to obtain a pseudo-boehmite precursor powder of structural formula 1 as claimed (see PANZARELLA at paragraphs [0022]-[0023] and [0028]-[0029], teaching ultrafiltration and heat treatment (drying) to evaporate and remove liquid content from the boehmite particles, and that boehmite (including pseudoboehmite) has a particular and identifiable crystal structure; this structure is structural formula 1 as claimed, as discussed in Applicant’s specification on pg. 5);
(S2) wet mixing the precursor powder in a dispersion medium (see PANZARELLA at paragraph [0037] and [0095], teaching that other intermediate processes can be taken before calcination of the boehmite particulate material, and the boehmite particulate material may be added to a liquid carrier to form a slurry); and
(S3) filtering and drying the product of step (S2) and then calcining it at 800 to 1000 °C (see PANZARELLA at paragraph [0033], teaching a calcining temperature of at least 800 °C and not greater than 1000 °C) for an amount of time overlapping with and thereby rendering obvious the claimed range of 2 to 5 hours (see PANZARELLA at paragraph [0035], teaching calcining for 10 minutes to 4 hours), thereby obtaining a powder of α-alumina particles having a polyhedral morphology (see PANZARELLA at paragraphs [0029], [0032], [0050], [0067]-[0068] and [0097], teaching filtering and drying the boehmite particulate material prior to calcining it and forming α-alumina particles having a polyhedral crystal structure)
wherein the total area of all [0001] faces in the polyhedral shape represents 15 to 20% of the total polyhedral face area. PANZARELLA explicitly teaches embodiments wherein the total area of all [0001] faces falls within this range; for example, PANZARELLA teaches that in the polyhedral crystals shown in Fig. 4, the end faces 402 and 404 (i.e., the basal planes, [0001] faces) can be hexagon-shaped instead of triangle-shaped, and teaches a primary aspect ratio of 2:1 (see PANZARELLA at Fig. 4 and paragraphs [0069]-[0071] and [0076]). In these crystals, the aspect ratio is the length of the rectangular faces between the hexagonal faces (L) divided by the longest length across the hexagon, i.e., a corner to an opposite corner (D); for L = 2 and D = 1, each side in a regular hexagon has a length of 0.5, the area of each hexagonal face is
3
3
2
(
0.5
)
2
, and the area of each rectangular face is (0.5)*2. This is a total area of the [0001] hexagonal base faces of 1.3 and a total crystal surface area of 7.3, i.e., the total area of all [0001] faces in this embodiment is about 18% of the total polyhedral face area.
As set forth in MPEP § 2144.05, 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)).
However, PANZARELLA fails to explicitly teach (i) that the α-alumina particles have a bulk density of 0.2 to 0.5 g/mL, (ii) mixing the precursor powder with a fluorine-based mineralizer in the dispersion medium, wherein the fluorine-based mineralizer is in an amount of 0.5 to 1.5 wt% relative to the weight of the precursor powder, then filtering and drying the product formed before calcining it, or (iii) calcining at a rate of 3 to 15 °C/min.
In regard to (i) above, SUN teaches a method for preparing an abrasive α-alumina submicron powder having a bulk density of 0.5 g/cm3, i.e., 0.5 g/mL (see SUN at Abstract and paragraph 13).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to use α-alumina particles having a bulk density of 0.5 g/cm3 as taught by SUN (see SUN at paragraph 13) in the abrasive of PANZARELLA. One of ordinary skill in the art could have used α-alumina particles having a bulk density of 0.5 mg/L with a reasonable expectation of success, yielding the predictable result of forming an abrasive material which is useful in polishing applications (see SUN at paragraphs 4 and 13-14; see PANZARELLA at paragraphs [0005]-[0006]).
In regard to (ii) above, SUN further teaches adding a fluorine-based mineralizer to the pseudo-boehmite powder in an amount of up to 0.5% by weight prior to calcining in order to obtain a higher quality product (see SUN at paragraphs 10-12, 16 and 37). However, SUN fails to explicitly mention that the precursor powder and fluorine-based mineralizer are added to a dispersion medium.
In regard to (ii) and (iii) above, HOFIUS teaches a method for preparing an abrasive comprising α-alumina particles (see HOFIUS at Abstract and paragraph [00115]) comprising reacting an aluminum salt (e.g., aluminum trihydroxide or aluminum nitrate) and a pH adjusting additive to form an alumina precursor (see HOFIUS at paragraphs [0087], [0089], [00107] and [00114]) and then adding to a dispersion medium (e.g., water, alcohols or organic liquids) the precursor powder together with a fluorine-based mineralizer (e.g., NaF or AlF3) used in an amount of, e.g., 0.5 wt%, and stirring them (see HOFIUS at paragraphs [0091], [00136]-[00139], [00162], [00165] and [00167]). HOFIUS teaches that using such a mineralizer can result in a higher calcination degree and promote the transition to alpha alumina (see HOFIUS at paragraphs [0091], [00136]-[00137]). HOFIUS also teaches that control of crystal growth can be achieved by the content of the mineralizer additive, the temperature and the temperature ramp (see HOFIUS at paragraphs [0046] and [0081]), and teaches using a common calcination temperature ramp rate in the range of from about 10 to about 1500 °C/hour, i.e., about 0.3 to 25 °C/min (see HOFIUS at paragraphs [0046] and [00108]), which overlaps with the claimed range.
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of PANZARELLA by including an intermediate step of adding the dried and filtered boehmite particulate material to a dispersion medium with a fluorine-based mineralizer such as NaF or AlF3, used in an amount of 0.5 wt% relative to the weight of the precursor powder, and wet mixing them, prior to calcining the material as taught by SUN and HOFIUS (see SUN at paragraphs 10-12, 16 and 37; see HOFIUS at paragraphs [0091], [00136]-[00139], [00162], [00165] and [00167]), resulting in a method wherein the product of step S2 as claimed is formed. One of ordinary skill in the art would have been motivated to include this step for the benefit of increasing the calcination degree, promoting the transition to alpha alumina and forming a higher quality product, as taught by SUN and HOFIUS (see SUN at paragraph 16; see HOFIUS at [0091], [00136]-[00137]). One of ordinary skill would have found it obvious to filter and dry the product of step S2 as claimed, as PANZARELLA teaches filtration and drying after intermediate processes and prior to calcining (see PANZARELLA at paragraphs [0022]-[0023], [0028]-[0029], [0032] and [0097]).
One of ordinary skill in the art would also have found it obvious to use a temperature ramp rate within of 0.3 to 25 °C/min in the method of PANZARELLA in view of SUN and HOFIUS, as HOFIUS teaches temperature ramp as is common in the calcination of alumina (see HOFIUS at paragraph [0046]). As set forth in MPEP § 2144.05, 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)). One of ordinary skill in the art would also find it obvious to vary the temperature ramp, including rates of 3 to 15 °C/min, in order to achieve desired crystal growth, as HOFIUS explicitly teaches that the rate of temperature increase is a result-effective variable which may be optimized by one of ordinary skill in the art (see HOFIUS at paragraphs [0046] and [0081]). MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II).
Regarding claim 5, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4.
PANZARELLA fails to explicitly teach that the aluminum salt used in step (S1) is aluminum sulfate (A12(SO4)3.4~18H2O), aluminum nitrate (Al(NO3)3.9H2O), aluminum acetate (Al(CHCOO)3OH) or mixtures thereof.
HOFIUS teaches a method for preparing an abrasive comprising α-alumina particles (see HOFIUS at Abstract and paragraph [00115]) comprising reacting an aluminum salt such as aluminum trihydroxide or aluminum nitrate to form an alumina precursor (see HOFIUS at paragraphs [0087], [0089], [00107] and [00114]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to further modify the method of PANZARELLA in view of SUN and HOFIUS by simply substituting the aluminum trihydroxide precursor (see PANZARELLA at paragraphs [0022], [0028] and [0039]; see BAUER at col. 3, lines 36-39 and col. 6, lines 45-52) with an aluminum nitrate precursor as taught by HOFIUS, as HOFIUS teaches that either of these aluminum salts can be used to form an alpha alumina precursor material (see HOFIUS at paragraphs [0087], [0089], [00107] and [00114]). One of ordinary skill in the art could have made such a substitution with a reasonable expectation of success, yielding the predictable result of forming a boehmite precursor which can be calcined to produce alpha alumina.
Regarding claim 6, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4, wherein the pH adjusting agent used in step (S1) comprises sodium carbonate (Na2CO3), sodium hydroxide (NaOH), potassium hydroxide (KOH), calcium carbonate (CaCO3) or a mixture thereof (see PANZARELLA at paragraph [0031], teaching potassium hydroxide).
Regarding claim 7, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4.
PANZARELLA does not explicitly mention that the mixing in step (S1) is performed at room temperature to 95 °C. However, PANZARELLA does not mention applying heat while performing the mixing as claimed in step (S1) (see PANZARELLA at paragraphs [0022]-[0023]; see BAUER at col. 6, lines 45-53), so the mixing would appear to take place at room temperature before heat is applied. Further, PANZARELLA teaches that the temperature of the system during the formation of the boehmite particulate material affects the desired morphology (see PANZARELLA at paragraph [0030]). PANZARELLA therefore explicitly teaches that the temperature at which the mixing in step (S1) is performed is a result-effective variable that may be optimized by one of ordinary skill in the art. MPEP states that “[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 (CCPA 1955)), and that "The normal desire of scientists or artisans to improve upon what is already generally known provides the motivation to determine where in a disclosed set of percentage ranges is the optimum combination of percentages." (Peterson, 315 F.3d at 1330, 65 USPQ2d at 138). See MPEP § 2144.05 (II)
Regarding claim 9, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4, wherein the fluorine-based mineralizer in step (S2) comprises LiF2, AlF3, NaF, NaPF6, K2TiF6 or a mixture thereof (see HOFIUS at paragraphs [00133] and [00137]-[00139], teaching NaF and AlF3).
Regarding claim 12, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4, wherein the powder of α-alumina particles obtained in step (S3) contains 98.5% by weight or more of Al component as determined by XRF (X-ray fluorescence) analysis (see PANZARELLA at paragraphs [0099] and [0101], teaching abrasive particulate material comprising 98.7% α-alumina).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over PANZARELLA in view of SUN and HOFIUS as applied to claim 4 above, and further in view of Asano, et al. (JP-H0741318-A) (hereinafter, “ASANO”; citations herein refer the machine translation provided with a previous office action).
Regarding claim 10, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4, wherein the dispersion medium in step (S2) is an alcohol or organic liquid (see PANZARELLA at paragraph [00167]).
However, PANZARELLA in view of SUN and HOFIUS fails to explicitly mention that the alcohol or organic liquid comprises ethanol, methanol, acetone, isopropyl alcohol or a mixture thereof.
However, ethanol, methanol, acetone and isopropyl alcohol are known alcohols/organic liquids used as solvents/dispersion mediums. For example, ASANO teaches a method for producing α-alumina (see ASANO at Abstract and paragraphs [0016] and [0025]) wherein the dispersing medium may be an organic solvent such as ethyl alcohol (i.e., ethanol) or acetone (see ASANO at Abstract and paragraph [0018]).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the method of PANZARELLA in view of SUN and HOFIUS by selecting ethanol or acetone as the alcohol/organic liquid, as taught by ASANO (see ASANO at paragraph [0018]). One of ordinary skill in the art would could have used ethanol or acetone with a reasonable expectation of success, yielding the predictable result of providing an alcohol/organic liquid in which particles may be dispersed. Further, ASANO teaches that ethanol and acetone are known organic solvents/dispersing mediums in the art, and MPEP § 2144.07 states that “The selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945)”.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over PANZARELLA in view of SUN and HOFIUS as applied to claim 4 above, and further in view of Mohri, et al. (U.S. Pat. No. 6,165,437-A) (hereinafter, “MOHRI”).
Regarding claim 16, as applied to claim 4 above, PANZARELLA in view of SUN and HOFIUS teaches a method according to claim 4, wherein the α-alumina particles obtained in step (S3) have a polyhedral shape (see PANZARELLA at paragraphs [0068]-[0084] and Figs. 4-8, teaching a variety of polyhedral shapes wherein the faces can be, e.g., rectangular, hexagonal, etc.).
However, PANZARELLA in view of SUN and HOFIUS fails to explicitly mention that the shape is a tetradecahedron.
However, it is known in the art to make α-alumina particles having a tetradecahedron shape. For example, MOHRI teaches a method of preparing an abrasive comprising α-alumina particles having a polyhedral shape (see MOHRI at Abstract and col. 4, line 9 - col. 6, line 3) wherein the polyhedral shape having at least 8 faces and a D/H ratio of 0.5 to 3 (see MOHRI at Abstract), e.g., a tetradecahedron having 14 faces (see MOHRI at Table 2 and Figs. 6C, 6E and 6G). MOHRI teaches that alpha alumina particles having this structure are useful as an abrasive and are homogenous and freed from structural strain (see MOHRI at Abstract and col. 3, lines 11-22 and col. 9, lines 28-31).
Therefore, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the method of PANZARELLA in view of SUN and HOFIUS by forming α-alumina having a tetradecahedron shape as taught by MOHRI (see MOHRI at Abstract, Table 2 and 6C, 6E and 6G). One of ordinary skill in the art could have selected a tetradecahedral shape with a reasonable expectation of success, yielding the predictable result of forming an α-alumina that is useful as an abrasive. Further, one of ordinary skill in the art would have been motivated to make this modification for the benefit of providing α-alumina particles that are homogenous and freed from structural strain as taught by MOHRI (see MOHRI at Abstract and col. 11-22 and col. 9, lines 28-31).
Allowable Subject Matter
Claim 15 would be allowable if rewritten to overcome the rejection under 35 U.S.C. 112(a) set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: the prior art of record fails to teach nor would one of ordinary skill in the art have considered it obvious to include in the method of claim 4 a step of obtaining α-alumina particles having both a polyhedral morphology wherein the total area of all [0001] faces in the polyhedral shape represents 15 to 20% of the total polyhedral face area and a ratio of the average diameter to thickness that is 1.
The subject matter of claim 15 is allowable over the closest prior art, PANZARELLA, for the following reasons:
As discussed in the rejection above, PANZARELLA discloses a method for preparing an abrasive comprising α-alumina particles having a polyhedral crystal structure, an average diameter of up to 800 nm, and an amount of α-alumina particles of 98.7% on the basis of total weight (see PANZARELLA at Abstract and paragraphs [0022], [0049]-[0050], [0068], [0099] and [0101]), the method comprising:
(S1) reacting by mixing an aqueous solution containing one or more aluminum salts with an aqueous solution containing a pH adjusting agent and then filtering and drying them to obtain a pseudo-boehmite precursor powder of structural formula 1 as claimed (see PANZARELLA at paragraphs [0022]-[0023], [0028]-[0031], and [0039]; see BAUER at col. 3, lines 36-39 and col. 6, lines 45-52),
(S2) wet mixing the precursor powder in a dispersion medium (see PANZARELLA at paragraph [0037] and [0095]); and
(S3) filtering and drying the product of step (S2) and then calcining it at 800 to 1000 °C for 10 minutes to 4 hours, thereby obtaining a powder of α-alumina particles having a polyhedral morphology (see PANZARELLA at paragraphs [0029], [0032]-[0033] and [0035], [0050], [0067]-[0068] and [0097]),
wherein the total area of all [0001] faces in the polyhedral shape represents, e.g., about 18% of the total polyhedral face area (see PANZARELLA at Fig. 4 and paragraphs [0069]-[0071] and [0076]).
PANZARELLA also discloses that the primary aspect ratio of the crystals (i.e., a ratio of the average diameter to thickness) can be 1:1 (see PANZARELLA at paragraphs [0068]-[0071], [0076] and [0080]-[0081] and Figs. 4 and 6-7); however, PANZARELLA does not disclose or suggest a method wherein the polyhedral crystals have a total area of all [0001] faces of 15 to 20% of the total polyhedral face area and wherein the ratio of average diameter to thickness is 1 (e.g., in the example discussed in the rejection above, a primary aspect ratio of 2:1 is used; if a primary aspect ratio of 1:1 were used, the total [0001] area would not fall within the claimed range). PANZARELLA provides no teaching, suggestion, or motivation to adjust the shape/dimensions to form a crystal having both the claimed total [0001] face area and the claimed ratio of average diameter to thickness recited by claim 15.
Thus, it is clear that PANZARELLA, either alone or in combination, fails to disclose or suggest the method of claim 15. The prior art as a whole fails to disclose or render obvious the subject matter of claim 15.
Response to Arguments
Applicant's arguments filed 04/08/2026 have been fully considered but they are not persuasive.
Applicant argues:
“Panzarella’s “cube-like” structures do not have a total area of all [0001] faces that represents 15-20% of the total crystal face area… there is no teaching in Panzarella that any of the faces of the cube-like shape/structure… are oriented along the [0001] crystallographic plane” (see Remarks at pg. 5).
“the cited references do not provide any motivation for attempting to prepare α-alumina particles having the amended facet-control feature. There is certainly no reasonable expectation of success for one of ordinary skill in the art to make particles with the claimed controlled morphology… without having the specific morphology as a goal” (see Remarks at pg. 8).
“none of the cited references teach or suggest a method that produces α-alumina particles having the amended facet-control feature of claim 4, which is visually demonstrated by the cited references themselves. Below an embodiment of the method of claim 4… is contrasted with embodiments of Panzarella (Fig. 2B)” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is non-obvious because the “cube-like” structures do not have a total area of all [0001] faces that represents 15-20% of the total crystal face area (i.e., the “facet-control feature”), the Examiner respectfully disagrees. As discussed in the rejection of claim 4 above, PANZARELLA explicitly discloses embodiments other than the cube-like structures, such as crystals with hexagonal basal planes ([0001] faces), which would have a total [0001] area as claimed of 15-20%. Additionally, as set forth in MPEP § 2123, "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." In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the cited references do not disclose or suggest or motivate… (i) the use of a pseudo-boehmite precursor of structural formula 1; (ii) wet mixing with a fluorine-based mineralizer in a dispersion medium; and (iii) filtering and drying prior to calcination” (see Remarks at pg. 7).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the references do not disclose, suggest or motivate the listed features, the Examiner respectfully disagrees; as set forth in the rejection above, these features are explicitly disclosed by the cited references. PANZARELLA explicitly discloses the use of pseudo-boehmite precursor (the structure of pseudo-boehmite is structural formula 1) and filtering and drying prior to calcination, and HOFIUS explicitly discloses wet mixing with a fluorine-based mineralizer in a dispersion medium.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“Panzarella does not disclose mixing a fluorine-based mineralizer with a pseudo-boehmite precursor powder in a dispersion medium. Hofius applies a slurry of precursor and fluoride compound directly onto a porous support and proceeds directly to calcination, without isolating and drying a free-standing powder prior to calcination. Sun employs a different approach with significantly lower additive content and without any teaching of wet mixing of a pseudo-boehmite precursor in a dispersion medium” (see Remarks at pg. 7).
“Hofius expressly states that “the thermal calcination, at high temperatures, of loose particulates tends to result in the formation of aggregates and/or agglomerates”… This teaching would affirmatively discourage one of ordinary skill in the art from applying the claimed process - which involves calcination of a loose dried powder - with any expectation of achieving the well-defined, facet-controlled morphology” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). As set forth in the rejections above, PANZARELLA discloses mixing pseudo-boehmite precursor powder in a dispersion medium, isolating/drying the powder prior to calcination, and obtaining particles having the claimed facet-controlled morphology, and HOFIUS discloses wet mixing the precursor powder with a fluorine-based mineralizer in a dispersion medium. It is the combination of the references which renders the claimed invention obvious.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the rejection improperly combines references that are directed to fundamentally different technical approaches and objectives” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant's argument that the references are directed to different technical approaches/objectives, i.e., are nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor's endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). The references must be analogous art to the claimed invention, not to each other. All references are in the same field as the claimed invention.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“There is no teaching or suggestion in the cited references that would motivate one of ordinary skill in the art to combine the teachings… to arrive at the claimed invention” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant' s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, as discussed in the rejection above, one of ordinary skill could have used particles having a bulk density of 0.5 g/cm3 as taught by SUN with a reasonable expectation of success yielding predictable results; it would be obvious to select a temperature ramp rate within the claimed range as HOFIUS teaches these rates are common in the calcination of alumina and explicitly teaches that the rate of temperature increase is a result-effective variable which may be optimized by one of ordinary skill in the art; and one of ordinary skill would have been motivated to add the step of wet mixing with a fluoride-based mineralizer in an amount of 0.5 wt% prior to calcining based on the explicit teachings in SUN and HOFIUS that this will provide a higher quality product and provide a higher calcination degree and promote the transition to alpha alumina, and that control of crystal growth can be achieved by the content of the mineralizer additive.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“the rejection relies on impermissible hindsight reconstruction using the instant application’s disclosure as a roadmap” (see Remarks at pg. 8).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
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).
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“When Al(OH)3 was used as a raw material instead of the pseudo-boehmite precursor of structural formula 1… The polyhedral facet-controlled morphology with the claimed [0001] face ratio was not achieved. This demonstrates that the specific pseudo-boehmite precursor of structural formula 1 cannot be substituted by the Al(OH)3 or aluminum trihydroxide-based precursors disclosed in the cited references” (see Remarks at pg. 9).
“using Al(OH)3 as a starting material… varying the AlF3 content from 100:0.2 to 100:5.0 produced only amorphous or plate-like particles - not the polyhedral facet-controlled morphology” (see Remarks at pg. 10).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is non-obvious because the facet-controlled morphology cannot be achieved without pseudo-boehmite precursor, the Examiner respectfully disagrees. As discussed in the rejection above, PANZARELLA teaches both crystals having the claimed morphology and the use of pseudo-boehmite precursor.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Applicant argues:
“dry mixing with the fluorine-based mineralizer… failed to produce the claimed facet-control feature… Examples 1-4, in which pseudo-boehmite was wet mixed with AlF3 in ethanol at ratios of 100:05 to 100:1.5, consistently produced the claimed facet-control feature… This stark contrast demonstrates that the wet mixing step in a dispersion medium… is critical and non-obvious” (see Remarks at pg. 9-10).
“the presently claimed method achieves unexpected results… the superior and unexpected technical effect of the claimed invention is demonstrated, for example, through Experimental Example 2 and Table 4. As shown in Table 4 of the instant specification, the α-alumina particles of Example 1 - having a tetradecagonal (14-face) polyhedral crystal structure with a [0001] face area of 15-20%, D50 of 2.23 μm, and bulk density of 0.35 g/mL, according to claim 4… achieved a polishing rate of 7,192 Å/min, compared to 2,303 Å/min for a spherical commercial product… and 3,408 Å/min for an amorphous commercial product… This represents a polishing rate improvement of approximately 3.1-fold and 2.1-fold, respectively - a result that is unexpected and non-obvious from the prior art” (see Remarks at pg. 10-11).
However, for at least the following reasons the Examiner finds these arguments unpersuasive:
In response to Applicant’s argument that the present invention is non-obvious because the claimed facet-control feature by dry mixing with fluorine-based mineralizer so wet mixing is a critical and non-obvious step, and because Table 4 shows that the claimed invention achieves unexpected results of improved polishing rate compared to a spherical or amorphous commercial product, the Examiner respectfully disagrees. Arguments regarding unexpected results are discussed in MPEP 716.02. As discussed in the rejection above, HOFIUS explicitly teaches wet mixing with a fluorine mineralizer; PANZARELLA explicitly discloses embodiments having a total [0001] area of 15-20%. The product of PANZARELLA is α-alumina crystals with polyhedral morphology, not a spherical or amorphous product, so it is not clear how comparison to results achieved by a spherical or amorphous product is relevant. PANZARELLA also explicitly teaches that the invention is directed to abrasive particulate materials having particular shapes, that alpha alumina is the hardest phase of polycrystalline alumina and provides a desirably high material removal rate, and that samples formed according to disclosed embodiments demonstrated significant improvements in grinding performance (see PANZARELLA at paragraphs [0003], [0006], [0037], [0068] and [0103]); HOFIUS explicitly teaches that particles exhibiting sharp edges further promote the removal ability of the particulate while it is being used as a slurry-based lapping agent, and that affecting the grain’s shape and size by crystal growth control, the ability of polishing is improved (see HOFIUS at paragraphs [0080] and [00221]). The results of polyhedral crystalline α-alumina particles having a better polishing rate than amorphous or spherical particles is expected from the prior art. Additionally, the results described by Applicant are not commensurate in scope with the claimed invention. The results described by Applicant in regard to the fluorine-based mineralizer are only for methods wherein AlF3 is mixed with ethanol, and are not commensurate in scope with the broad method of claim 4 which can utilize any fluorine-based mineralizer in any dispersion medium. The results described by Applicant in regard to the improved polishing rate are only for α-alumina particles having a tetradecagonal shape, a D50 of 2.23 μm, and a bulk density of 0.35 g/mL, and are not commensurate in scope with the broad method of claim 4 wherein the crystals can have any polyhedral shape, a D50 of 300 nm to 10 μm, and a bulk density of 0.2 to 0.5 g/mL; these results also only show improvement compared to using amorphous or spherical particles.
Therefore, for at least these reasons, the Examiner finds Applicant’s arguments unpersuasive.
Conclusion
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/S.C.C./Examiner, Art Unit 1731
/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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