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 .
Drawings
The drawings are objected to because the drawings are blurry and the text is illegible. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 8 is 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 8 claims the molded product is sintered with a sintering agent to obtain the sintered body, and wherein the sintering agent comprises 1% to 4% by weight of zinc oxide (ZnO) and 1% to 10% by weight of lead oxide (PbO), based on a total amount of the antiferroelectric.
The closest prior art is Biaolin in view of Shengguo. Biaolin in view of Shengguo does not disclose or make obvious the molded product is sintered with a sintering agent to obtain the sintered body, and wherein the sintering agent comprises 1% to 4% by weight of zinc oxide (ZnO) and 1% to 10% by weight of lead oxide (PbO), based on a total amount of the antiferroelectric.
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) 1-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biaolin et al. (CN112062578A, hereinafter referred to as Biaolin).
Regarding claim 1, Biaolin makes obvious an antiferroelectric comprising: PbxLa1-x([Zr1-ySny]zTi1-z)O3 composition wherein X is in a range of 0.86 to 0.90, Y is in a range of 0.52 to 0.56, and Z is in a range of 0.84 to 0.88 (see Biaolin at claim 1 of the original Chinese document, disclosing PbxLa (1-x)(ZrySnzTi(1-yz))O3 , wherein 0<x<1, 0<y<1, 0 <z<1.6, which overlaps with 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 (see MPEP 2144.05).
Regarding claim 2, Biaolin makes obvious a density of the antiferroelectric is in a range of 7.5 g/cm3 to 8.0 g/cm3. While Biaolin does not explicitly disclose the density of the antiferroelectric, the density is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established (see MPEP 2112.01(I) first paragraph).
Regarding claim 3, Biaolin makes obvious a permittivity of the antiferroelectric is in a range of 900 to 1000. While Biaolin does not explicitly disclose the permittivity of the antiferroelectric, the permittivity is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Regarding claim 4, Biaolin makes obvious a breakdown voltage of the antiferroelectric is in a range of 9.5 kV/mm to 10.5 kV/mm. While Biaolin does not explicitly disclose the breakdown voltage of the antiferroelectric, the breakdown voltage is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Regarding claim 5, Biaolin makes obvious a sintering temperature of the antiferroelectric is in a range of 900°C to 1100°C. While Biaolin does not explicitly disclose the sintering temperature of the antiferroelectric, the sintering temperature is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Claim(s) 6-7 and 9-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biaolin in view of Shengguo et al. (CN108929112A, hereinafter referred to as Shengguo). Shengguo is directed towards a Pb0.94La0.06(Zr0.95~xSnxTi0.05)0.985O3 (see Shengguo at the Abstract of the machine translation).
Regarding claim 6, Biaolin does not disclose the method of manufacturing the antiferroelectric by a calcining/sintering process, however, Shengguo discloses a method of manufacturing a ceramic by preparing a precursor mixture of PbO/La2O3/ZrO2/TiO2/SnO2 then calcining (see Shennguo at claim 4 of the machine translation) then compacting and sintering the casting slurry (see Shennguo at claim 4 of the machine translation).
Therefore, it would have been obvious to a person having ordinary skill in the arts before the effective filing date of the claimed invention when practicing the invention of Biaolin to use the method disclosed by Shengguo with a reasonable expectation of successfully producing a PbLaZrSnTiO3 based ceramic as taught by both Biaolin and Shennguo.
Regarding claim 7, Examiner notes the claimed ranges disclosed by Biaolin overlap with the claimed ranges as detailed by the rejection of claim 1 above, and therefore, the precursor wt.% ranges would naturally overlap inherently.
Regarding claim 9, while Biaolin in view of Shengguo does not explicitly disclose the density of the antiferroelectric is 7.5 g/cm3 to 8.0 g/cm3, the density is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Regarding claim 10, while Biaolin in view of Shengguo does not explicitly disclose a permittivity of the antiferroelectric is in a range of 900 to 1000, the permittivity is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Regarding claim 11, while Biaolin in view of Shengguo does not explicitly disclose a breakdown voltage of the antiferroelectric is in a range of 9.5 kV/mm to 10.5 kV/mm, the breakdown voltage is a function of the composition, and the composition of Biaolin is substantially identical to the instantly claimed composition such that this property would be inherently present.
Regarding claim 12, Biaolin in view of Shengguo discloses a sintering temperature of the antiferroelectric is in a range of 900°C to 1100°C (see Shengguo at (see Shengguo at page 3 from the machine translation, disclosing sintering at 1100°C).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Biaolin in view of Engel et al. (DE102012106425A, hereinafter referred to as Engel). Engel at the claims from the machine translation discloses a capacitor made from an antiferroelectric.
Regarding claim 13, Biaolin does not disclose a capacitor. Because Engel is directed towards an antiferroelectric used to make a capacitor, it would have been obvious to a person having ordinary skill in the arts when practicing the antiferroelectric composition invention of Biaolin to form a capacitor as taught by Engel with a reasonable expectation of success.
Response to Arguments
Applicant’s arguments concerning the objections to the claim numbering, the 112(a) and 112(b) rejections from the nonfinal rejection dated 08/19/2025, see page 5 of the Remarks, filed 11/05/2025, have been fully considered and are persuasive. The objection to the claims numbering, 112(a), and 112(b) rejection of claims 1-13 have been withdrawn.
Applicant's arguments filed 11/05/2025 concerning the 103 rejections have been fully considered but they are not persuasive. At page 6 of the Remarks, Applicant argues the claimed X, Y, and Z values of claim 1 are optimized to have the ability to operate at high temperatures, large size, and weight, with a reduction in dielectric constant at high voltages, excellent shrinkage, density, dielectric constant, and breakdown voltage. Examiner notes this appears to be a “criticality of the claimed range” argument per MPEP 2144.05(III)(A). Examiner notes for such an argument to be convincing, Applicant must provide data to demonstrate the claimed range is critical by providing unexpected results across the entire claimed range, the unexpected results are not present directly above and below the claimed range, and that the unexpected results are actually unexpected (see MPEP 716.02(d). In the instant case, Applicant appears to have not met these three burdens, and has provided unsupported arguments which cannot be found convincing. Arguments presented by the applicant cannot take the place of evidence in the record (see MPEP 716.01(c)).
At the last paragraph of page 6 to the first paragraph of page 7, Applicant argues that Biaolin does not disclose or suggest optimized formula within the claimed range. Examiner notes this is not the correct analysis, and therefore is not convincing. Per MPEP 2144.05, a prima facie case of obviousness is established because the prior art range overlaps with the claimed range. Applicant is provided paths towards overcoming this rejection such as amending the claims, or successfully establishing the criteria in 2144.05 to overcome an overlapping range prima facie obviousness rejection. However, a prima facie obviousness rejection due to overlapping ranges does not require specific examples within the claimed range or “specific optimized formula within the range”. These are not legally relevant to establishing a prima facie obviousness rejection due to overlapping ranges, and as such Applicant’s arguments are not convincing.
At the second, third, and fourth paragraphs of page 7 to the first paragraph of page 8 of the Remarks, Applicant argues MPEP 2131.03, which is directed towards determinations which must be made as to anticipation. Examiner notes this section is wholly irrelevant to the instant rejections, as anticipation corresponds to 102 rejection, and the above rejections are 103 obviousness rejections. As such, this argument is immaterial to the question of patentability and is not convincing.
At the second paragraph of page 8, Applicant argues against the inherency rejection by stating that applicant appreciated properties of the claimed antiferroelectric which the prior art does not appreciate. Examiner notes this is not sufficient to overcome an inherency rejection, and is immaterial to the question of patentability, because the prior art discloses the structure as claimed. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art's functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977) (see MPEP 2112(I)). It is noted, “Mere recognition of latent properties in the prior art does not render nonobvious an otherwise known invention. In re Wiseman, 596 F.2d 1019, 201 USPQ 658 (CCPA 1979).” See MPEP 2145 II. Further, the fact that applicant has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). As such, Applicant’s arguments are not convincing.
At the last two paragraphs of page 8, Applicant argues that specific examples of Biaolin are different from the claimed composition. Examiner notes this is immaterial to the question of patentability because the rejections are not based on any specific examples of Biaolin. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123(II)).
At the last paragraph of page 8 to the first paragraph of page 9, Applicant argues that Example 4 and Fig. 5 of the instant application establish an optimal Sn molar ratio to obtain beneficial properties, and thus claim 1 should be allowed over Biaolin. Examiner notes Figs. 5A and 5B appear to show some variability of relative permittivity, breakdown voltage, bulk density, and shrinkage as it relates to Sncontent, however, the graphs span from 0.52-0.58 for Fig. 5A and 0.52-0.55 for Fig. 5B while claim 1 claims Sn from 0.52-0.56, and therefore, the alleged unexpected results are not commensurate in scope with the claimed range. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range (see MPEP 716.02(d)). Likewise, Example 4 has an Sn value of 0.54, which is not commensurate in scope with the range of 0.52-0.56, and therefore cannot be found convincing even if the properties alleged are found to be unexpected, which Examiner notes has not been established.
However, Examiner notes the rejection of claim 8 has been withdrawn for the reasons noted above.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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
