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 with traverse of Group I, claims 1 – 13, in the reply filed on 23 April 2026 is acknowledged. The traversal is on the ground(s) that Jorge (US 2015/0299880 A1) does not teach the open porosity claimed. This is not found persuasive because Jorge’s range overlaps the claimed open porosity. Further discussion of Jorge’s open porosity is provided later in this Office Action.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14 – 31 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 23 April 2026.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 7, 10, 12, and 13 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
MPEP § 2163.05, III, states the following in relevant part:
With respect to changing numerical range limitations, the analysis must take into account which ranges one skilled in the art would consider inherently supported by the discussion in the original disclosure. In the decision in In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976), the ranges described in the original specification included a range of "25%- 60%" and specific examples of "36%" and "50%." A corresponding new claim limitation to "at least 35%" did not meet the description requirement because the phrase "at least" had no upper limit and caused the claim to read literally on embodiments outside the "25% to 60%" range, however a limitation to "between 35% and 60%" did meet the description requirement.
While this passage relates to the amendment of claim limitations, the underlying premise of this passage depends on the interpretation of ranges, namely the interpretation of range with only one endpoint. MPEP § 2173.05(c) states the following regarding open-ended numerical ranges:
Open-ended numerical ranges should be carefully analyzed for definiteness. For example, when an independent claim recites a composition comprising "at least 20% sodium" and a dependent claim sets forth specific amounts of nonsodium ingredients which add up to 100%, apparently to the exclusion of sodium, an ambiguity is created with regard to the "at least" limitation (unless the percentages of the nonsodium ingredients are based on the weight of the nonsodium ingredients). On the other hand, the court held that a composition claimed to have a theoretical content greater than 100% (i.e., 20-80% of A, 20-80% of B and 1-25% of C) was not indefinite simply because the claims may be read in theory to include compositions that are impossible in fact to formulate. It was observed that subject matter which cannot exist in fact can neither anticipate nor infringe a claim. In re Kroekel, 504 F.2d 1143, 183 USPQ 610 (CCPA 1974).
Therefore, interpreting a range with only a single endpoint should be interpreted based on what the reasonable other endpoint should be.
As an example of reasonableness, claim 1 requires SiO2 content to be ≤ 2% by mass. The implied lower endpoint is 0% by mass because negative percentage by mass in this context is non-sensical. Moreover, such an implied endpoint is consistent with claim 1 given the amount of oxides other than Al2O3 and Na2O, which SiO2 falls into, is between 0% and 6% by mass, inclusive.
By contrast, the following claims fail to properly further limit claim 1 as the highlighted ranges include an endpoint outside the scope of claim 1, consistent with MPEP §§ 2163.05, III, and MPEP § 2173.05(c) above:
Regarding claim 7, claim 7 requires the CaO content to be “greater than 0.3%” but claim 1 requires no more than 6% of “oxides other than Al2O3 and Na2O”.
Regarding claim 10, claim 10 requires the open porosity to be “less than 25%” but claim 1 requires “greater than 10%” open porosity.
Regarding claim 12, claim 12 requires the Na2O content to be “less than 2.6%” but claim 1 requires at least 0.26% Na2O.
Regarding claim 13, claim 13 requires the Na2O content to be “greater than 1.6^” but claim 1 requires no more than 4% Na2O.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The examiner recommends amending the above claims such that the endpoint of claim 1, or a narrower endpoint within the scope of the instant specification, be provided in order to avoid interpretations which MPEP §§ 2163.05, III, and MPEP § 2173.05(c) permit for open-ended ranges.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1 – 13 are rejected under 35 U.S.C. 103 as being unpatentable over Jorge (US 2015/0299880 A1).
Regarding claim 1, Jorge discloses a sintered product (“block” of “aluminous material”: e.g. ¶¶ [0014] – [0161]) having:
- the following chemical analysis, as percentage by mass based on the oxides (“composition” using “weight percentage” basis for the “aluminous material”: e.g. ¶¶ [0016] – [0021]):
Al2O3: remainder to 100% (“balance”: e.g. ¶ [0021]),
about 0.2% < Na2O < about 3.5% (e.g. ¶¶ [0142], [0143]),
0% ≤ oxides other than Al2O3 and Na2O ≤ 51%, e.g. 0% ≤ oxides other than Al2O3 and Na2O ≤ 8% (sum total of “oxides that are less reducible than alumina at 1000° C” which are less than 46% of the “aluminous material”, e.g. “less than about 3%”, and “other constituents” which are less than 5% of the “aluminous material”, both of the “oxides that are less reducible than alumina at 1000 °C” and the “other constituents” being optional, i.e. 0%: e.g. ¶¶ [0018], [0020], [0123], [0145]), provided that SiO2 ≤ about 2% (e.g. ¶¶ [0121], [0146]),
- the following crystalline phases, as percentages by mass based on the total amount of crystalline phases:
< about 53% beta-alumina, e.g. less than about 25% beta-alumina (e.g. ¶ [0118]),
less than 20%, e.g. less than 5%, of crystalline phases other than beta-alumina and alpha-alumina (“more than about 80%”, e.g. “more than about 95%”, by weight is alpha-alumina or beta-alumina: e.g. ¶ [0119]),
remainder to 100%: alpha-alumina (e.g. ¶ [0117]),
- an open porosity of less than about 10% (e.g. ¶ [0110]).
In at least one embodiment, the “aluminous material” is “substantially 100% of the weight of the block” (e.g. ¶ [0109]), meaning the percentages cited above in Jorge’s disclosure can be considered descriptive of the sintered product.
Jorge’s ranges for the percentage by mass of Na2O and for the open porosity as well as the narrow ranges for the percentage by mass of beta-alumina and the percentage by mass of crystalline phases other than beta-alumina and alpha-alumina overlap the respective claimed range. Additionally, Jorge’s ranges for the percentage by mass of oxides other than Al2O3 and Na2O, the percentage by mass of SiO2, and the broad ranges for the percentage by mass of beta-alumina and the percentage by mass of crystalline phases other than beta-alumina and alpha-alumina encompass the respective claimed ranges.
MPEP § 2144.05, I, states the following in relevant part regarding overlapping ranges (portions of emphasis in bold):
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) (The prior art taught carbon monoxide concentrations of "about 1-5%" while the claim was limited to "more than 5%." The court held that "about 1-5%" allowed for concentrations slightly above 5% thus the ranges overlapped.); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997) (Claim reciting thickness of a protective layer as falling within a range of "50 to 100 Angstroms" considered prima facie obvious in view of prior art reference teaching that "for suitable protection, the thickness of the protective layer should be not less than about 10 nm [i.e., 100 Angstroms]." The court stated that "by stating that ‘suitable protection’ is provided if the protective layer is ‘about’ 100 Angstroms thick, [the prior art reference] directly teaches the use of a thickness within [applicant’s] claimed range."). See also In re Bergen, 120 F.2d 329, 332, 49 USPQ 749, 751-52 (CCPA 1941) (The court found that the overlapping endpoint of the prior art and claimed range was sufficient to support an obviousness rejection, particularly when there was no showing of criticality of the claimed range).
"[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness." In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See also In re Harris, 409 F.3d 1339, 74 USPQ2d 1951 (Fed. Cir. 2005) (claimed alloy held obvious over prior art alloy that taught ranges of weight percentages overlapping, and in most instances completely encompassing, claimed ranges; furthermore, narrower ranges taught by reference overlapped all but one range in claimed invention). However, if the reference’s disclosed range is so broad as to encompass a very large number of possible distinct compositions, this might present a situation analogous to the obviousness of a species when the prior art broadly discloses a genus. Id. See also In re Baird, 16 F.3d 380, 383, 29 USPQ2d 1550, 1552 (Fed. Cir. 1994) ("[a] disclosure of millions of compounds does not render obvious a claim to three compounds, particularly when that disclosure indicates a preference leading away from the claimed compounds."); MPEP § 2144.08; and subsection III.D below for an additional discussion on consideration of prior art disclosures of a broad range.
Therefore, as with Woodruff, Jorge’s range for the open porosity overlaps the range in claim 1 because of “about” modifying the 10% endpoint. By similar analysis, Jorge’s range for the content of SiO2 encompasses the claimed range.
Regarding claim 2, in addition to the limitations of claim 1, Jorge discloses the amount of beta-alumina, as percentage by mass based on the total amount of crystalline phases, is less than 53%, e.g. less than about 25% (e.g. ¶ [0118]).
Jorge’s broad range for the amount of beta-alumina encompasses the claimed range whereas Jorge’s narrow range for the amount of beta-alumina overlaps the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I. 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). See MPEP § 2144.05, I.
Regarding claim 3, in addition to the limitations of claim 2, Jorge discloses the amount of beta-alumina, as percentage by mass based on the total amount of crystalline phases, is less than 53%, e.g. less than about 25% (e.g. ¶ [0118]).
Jorge’s broad range for the amount of beta-alumina encompasses the claimed range whereas Jorge’s narrow range for the amount of beta-alumina overlaps the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I. 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). See MPEP § 2144.05, I.
Regarding claim 4, in addition to the limitations of claim 1, Jorge discloses the Na2O content, as percentage by mass based on the oxides, is greater than 0.2% and less than 3.5% (e.g. ¶¶ [0142], [0143]).
Jorge’s range for the Na2O content encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 5, in addition to the limitations of claim 1, Jorge discloses the SiO2 content, as percentage by mass based on the oxides, is less than about 2% (e.g. ¶¶ [0121], [0146]).
Jorge’s range for the SiO2 content encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 6, in addition to the limitations of claim 1, Jorge discloses the content of oxides other than Al2O3 and Na2O, as percentage by mass based on the oxides, is less than 51%, e.g. less than 8% (sum total of “oxides that are less reducible than alumina at 1000° C” which are less than 46% of the “aluminous material”, e.g. “less than about 3%”, and “other constituents” which are less than 5% of the “aluminous material”, both of the “oxides that are less reducible than alumina at 1000 °C” and the “other constituents” being optional, i.e. 0%: e.g. ¶¶ [0018], [0020], [0123], [0145]).
Jorge’s range for the content of oxides other than Al2O3 and Na2O encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Regarding claim 7, in addition to the limitations of claim 1, Jorge discloses the CaO content, as percentage by mass based on the oxides, is greater than 1% (e.g. ¶¶ [0136], [0137]). Jorge’s range for the CaO content is within the claimed range. 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). See MPEP § 2144.05, I.
Regarding claim 8, in addition to the limitations of claim 1, Jorge discloses the amount of amorphous phase present in the sintered product, based on the mass of the sintered product, is less than 6.9% (for instance, 98% of the mass of the “aluminous material” is alumina, and 95% of the alumina takes the form of alpha-alumina and beta-alumina and therefore the “block”, i.e. 100% - 98% * 95% = 6.9%: e.g. ¶¶ [0115], [0119]).
Regarding claim 9, in addition to the limitations of claim 1, Jorge discloses the sintered product is in the form of a sintered concrete (dried preforms are sintered: e.g. ¶¶ [0066], [0081] – [0100], [0111], [0112], [0121]; this is consistent with p. 8 of the instant specification which describes concretes and sintered concretes in particular).
Regarding claim 10, in addition to the limitations of claim 1, Jorge discloses the sintered product has the shape of a block (e.g. ¶¶ [0014], [0022], [0029],[0039], [0049], [0066], [0067], [0070], [0071], [0074], [0080], [0081], [0087], [0088], [0091], [0093] – [0095], [0100], [0101] – [0161]), an open porosity of less than 10% (e.g. ¶¶ [0015], [0110]).
As to the block being more than 1 kg, Jorge discloses the block can have substantially any dimensions (e.g. ¶ [0102]) and thus can equally be considered to have any weight.
As to the block having an apparent density of greater than 2.8 g/cm3 and less than 3.2 g/cm3, as seen in the 35 U.S.C. 103 rejection of claim 1, Jorge’s sintered product contains overlapping materials and an overlapping porosity. Moreover, the porosity, and consequently the density, are controllable to prevent leakage through the sintered product (e.g. to contain corrosive material: e.g. ¶¶ [0008], [0048]).
“[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). See also MPEP § 2144.05, II, A. Accordingly, it would have been obvious to provide the sintered product as a block of more than 1 kg and with an apparent density of greater than 2.8 g/cm3 and less than 3.2 g/cm3 to meet design requirements, e.g. for containing corrosive material.
Regarding claim 11, in addition to the limitations of claim 1, following the discussion of claim 1 for “about”, Jorge’s disclosure of “about 10%” as an upper endpoint for the open porosity is considered to overlap the range of greater than 12%.
Regarding claim 12, in addition to the limitations of claim 1, Jorge discloses the Na2O content, as percentage by mass based on the oxides, is greater than 0.2% and less than 3.5% (e.g. ¶¶ [0142], [0143]).
Jorge’s range for the Na2O content overlaps the claimed range. 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). See MPEP § 2144.05, I.
Regarding claim 13, in addition to the limitations of claim 1, Jorge discloses the Na2O content, as percentage by mass based on the oxides, is greater than 0.2% and less than 3.5% (e.g. ¶¶ [0142], [0143]).
Jorge’s range for the Na2O content overlaps the claimed range. 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). See MPEP § 2144.05, I.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ETHAN A UTT whose telephone number is (571)270-0356. The examiner can normally be reached Monday through Friday, 7:30 A.M. to 5:00 P.M. Central.
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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