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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 3rd, 2025 has been entered.
Response to Arguments
Applicant’s arguments, see Page 5, line 6 - Page 6, line 3 of Remarks, filed December 3rd, 2025, with respect to the rejection of claims 1, 4, and 6 under 35 U.S.C. 103 have been fully considered but are not persuasive. Applicant alleges that there is no teaching or suggestion in Lu as to which chelating agent among many would be suitable for use in the method of the claimed invention. This is not found persuasive because a reference that clearly names a claimed species teaches that species no matter how many other species are additionally claimed. See MPEP 2131.02.II. Rationale for why glycidyl methacrylate taught by Lu would have been considered to be a suitable chelating agent is provided on Page 5, line 1 - Page 6, line 42-3 of the Office Action dated January June 4th, 2025. Referencing the number of possible alternatives taught by Lu does not rebut the presented rationale. Applicant further cites case law regarding improper hindsight reasoning but does not connect the cited case law to the issue of obviousness of claim 1 over Ding in view of Lu. 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). Absent a convincing showing of criticality of glycidyl methacrylate, it is an obvious option as a suitable chelating agent and an alternative to citric acid.
Applicant’s arguments, see Page 6, line 4 - Page 7, line 10 of Remarks, filed December 3rd, 2025, with respect to the rejection of claim 9 under 35 U.S.C. 103 have been fully considered but are not persuasive. As Applicant repeats the argument over Lu here, the above response with respect to the obviousness of incorporating glycidyl methacrylate in claims 1, 4, and 6 is equally applicable to claim 9. Regarding the incorporation of Liu into the rejection, Applicant alleges that the Examiner used impermissible hindsight reasoning but does not point out a particular error in the Examiner’s finding of obviousness. Rationale for incorporating Liu into the rejection of claim 9 was provided on Page 6, line 15 - Page 7, line 18 of the Office Action dated June 4th, 2025.
Election/Restrictions
In a previous communication received November 15th, 2024, Applicant elected cerium as a metal from amongst the metal species recited in claim 1. This election is considered to also apply to the new claim 13. Examination of claim 13 is accordingly limited to cerium selected as a metal ion.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claims 1, 4, and 6 are rejected under 35 U.S.C. 103 as being unpatentable over Ding (CN 108840678 A) (the machine translation of record is referenced below) in view of Lu (TW 201127483 A) (the machine translation of record is referenced below).
Regarding claim 1, Ding teaches a method (Ding, [0058]-[0071]) of making a sol-gel (Ding, [0034]), the method comprising:
combining a metal ion (Ding, [0059], Ce3+ in Ce(NO3)3·6H2O) with a chelating agent (Ding, [0059], citric acid) and a solvent to form a sol mixture (Ding, [0059], reactants placed into a first solution, implying the presence of a solvent), wherein the metal ion is cerium (Ding, [0059], cerium in cerium nitrate hexahydrate);
processing the sol mixture to form a single phase organic-inorganic sol-gel (Ding, [0062], gel ball); and
fabricating a ceramic microsphere from the organic-inorganic sol-gel (Ding, [0066]).
Ding teaches that the chelating agent is citric acid (Ding, [0059]), which differs from the claimed glycidyl methacrylate or the hydrolyzed form of glycidyl methacrylate (glycerol methacrylate). However, Lu teaches an analogous method for preparing a ceramic by sol-gel (Lu, [006]), wherein glycidyl methacrylate is taught to be a suitable chelating agent alongside a list of alternatives including citric acid (Lu, [0019]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted the citric acid of Ding with the glycidyl methacrylate taught by Lu. Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II. In the instant case, glycidyl methacrylate is known for the same purpose as citric acid as a chelating agent in ceramic sol-gel processing, as taught by Lu (Lu, [006], [0019]). Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, selection of glycidyl methacrylate would be obvious based upon its suitability for the intended use as a chelating agent in ceramic sol-gel processing, as taught by Lu (Lu, [006], [0019]).
Regarding claim 4, modified Ding renders the method according to claim 1 obvious, as discussed above, wherein the metal is cerium (Ding, [0059], cerium in cerium nitrate hexahydrate).
Regarding claim 6, modified Ding renders the method according to claim 1 obvious, as discussed above, further comprising sintering (Ding, Fig. 7, [0066], sintered, and baked at 600°C for 3 hours in air atmosphere to obtain ceria ceramic microspheres).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ding (CN 108840678 A) (see the machine translation of record) in view of Lu (TW 201127483 A) (see the machine translation of record) as applied to claims 1, 4, and 6 above, and further in view of Liu (CN 113735607 A) (the machine translation of record is referenced below).
Regarding claim 9, modified Ding renders the method according to claim 1 obvious, as discussed above, but does not teach adding a phenolic resin as a carbon source. However, Liu teaches an analogous method for processing cerium oxide by incorporation into a C/SiC composite, wherein phenolic resin is added as a carbon source (Liu, [0011], the mixture undergoes pyrolysis to produce C, which is then infiltrated with Si to produce a C/SiC composite). A reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). See MPEP 2141.01(a).I. In the instant case, Liu is in the same field of endeavor as the claimed invention of cerium-containing ceramics.
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have modified the method of Ding by incorporating the cerium oxide product into the C/SiC composite of Liu, which adds phenolic resin as a carbon source, as Liu teaches that adding cerium oxide to the composite improves the strength of the composite while inhibiting dynamic recrystallization during thermal deformation (Liu, [009]). Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. As Liu does not state a particular limitation of the cerium oxide powder other than it is to be ball-milled (Liu, [0011]), there would be no reason to expect that the cerium oxide produced by Ding would be unsuitable to use as a material to be ball-milled and subsequently incorporated into the C/SiC composite of Liu.
Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ding (CN 108840678 A) (the machine translation of record is referenced below) in view of Durán Carrera (ES 2359550 A1) (the machine translation of record is referenced below).
Regarding claim 13, Ding teaches a method (Ding, [0058]-[0071]) of making a sol-gel (Ding, [0034]), the method comprising:
combining a metal ion (Ding, [0059], Ce3+ in Ce(NO3)3·6H2O) with a chelating agent (Ding, [0059], citric acid) to form a sol mixture (Ding, [0059], reactants placed into a first solution), wherein the metal ion is cerium (Ding, [0059], cerium in cerium nitrate hexahydrate);
processing the sol mixture to form a single phase organic-inorganic sol-gel (Ding, [0062], gel ball); and
fabricating a ceramic microsphere from the organic-inorganic sol-gel (Ding, [0066]).
Ding teaches that the chelating agent is citric acid (Ding, [0059]), which differs from the claimed glycidyl methacrylate or the hydrolyzed form of glycidyl methacrylate (glycerol methacrylate). However, Durán Carrera teaches an analogous method for preparing a cerium ceramic by sol-gel (Durán Carrera, [0030], [0048], [0078]), wherein glycidyl methacrylate is taught to be a suitable chelating agent alongside a list of alternatives including citric acid (Durán Carrera, [0030]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have substituted the citric acid of Ding with a chelating agent including glycidyl methacrylate taught by Durán Carrera. Substitution of equivalents known for the same purpose has been held to be a prima facie case of obviousness. See Smith v. Hayashi, 209 USPQ 754. See also MPEP § 2144.06.II. In the instant case, glycidyl methacrylate is known for the same purpose as citric acid as a component of a chelating agent in ceramic sol-gel processing of cerium, as taught by Durán Carrera (Durán Carrera, [0030], [0048], [0078]). Further, the selection of a known material, which is based upon its suitability for the intended use, is within the ambit of one of ordinary skill in the art. See In re Leshin, 125 USPQ 416 (CCPA 1960), Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945), and MPEP § 2144.07. In the instant case, selection of glycidyl methacrylate would be obvious based upon its suitability for the intended use as a chelating agent component in ceramic sol-gel processing of cerium, as taught by Durán Carrera (Durán Carrera, [0030], [0048], [0078]).
Ding does not teach that an acid is combined with a chelating agent to form the sol mixture. However, Durán Carrera teaches that chelating agents including one or more of a list including glacial acetic acid and glycidyl methacrylate are appropriate for cerium sol-gels (Durán Carrera, [0030], [0048], [0078]).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have selected glacial acetic acid as an additional chelating agent in Ding’s sol-gel mixture alongside glycidyl methacrylate. As above for glycidyl methacrylate, the inclusion of glacial acetic acid was known to be suitable as a chelating agent component for sol-gel processing of cerium (Durán Carrera, [0030], [0048], [0078]). Additionally, a person having ordinary skill in the art would have been motivated to specifically include an acid component in the complexing agent mixture, as Durán Carrera teaches that controlling pH of the mixture improves stability (Durán Carrera, [0049]) and promotes corrosion resistance of the product (Durán Carrera, [0050]). Finally, it has been held that though a specific embodiment is not taught as preferred makes it no less obvious, and that the mere fact that a reference suggests a multitude of possible combinations does not render an individual combination less obvious. See Merck v. Biocraft, 10 USPQ2d 1843 (Fed. Cir. 1985). See also MPEP 2144.08.II.
Regarding claim 14, modified Ding renders the method according to claim 13 obvious, as discussed above, wherein the acid is acetic acid (Durán Carrera, [0030], [0048], [0078]; see the discussion of claim 13 above regarding the obviousness of including glacial acetic acid).
Conclusion
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
/ANTHONY J ZIMMER/Supervisory Patent Examiner, Art Unit 1736