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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/15/2026 has been entered.
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 1-9 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. The independent claims 1, 2 and 9 have been amended to recite “and when the precursor of an alumina sintered compact comprises iron, the content of the iron is 0.14 parts by mass or less as expressed in terms of Fe2O3 based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”; however, the amended independent claims fail to comply with the written description requirement. This is because according to the original disclosure of the present Application under examination, there is no concentration less than 0.03 parts by mass for Fe (see specification, page 7, last paragraph). Applicant has asserted that support for the content of 0.14 parts by mass or less of iron is available in Examples 10-16 and 26-34 as shown in Tables 2 and 3; however, based on said Examples, the concentration of Al2O3 is at least 99.6 mass% not 98% by mass or more as claimed, and the concentrations of Na2O and Y2O3 is, each, 0.09 parts by mass not 0.05-0.70 and 0.01-1.35, respectively, as claimed.
Dependent claims are rejected for depending on rejected base claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
According to the recitation of independent claims 1, 2, and 9, the claimed precursor of an alumina sintered compact comprises aluminum, yttrium, sodium and “at least one metal selected from the group consisting of iron, zinc, cobalt, manganese, copper, niobium, antimony, tungsten, silver, and gallium” as recited in lines 2 to 3 of said claims. Also, said claims, each, recites “the total amount of the at least one metal selected from the foregoing group is 0.02 to 1.55 pars by mass as expressed in terms of oxides thereof based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”; this recitation refers back to the list of the metal recited in lines 2 to 3. Thus, the claimed language, for each independent claim is found indefinite because on one hand, the concentration is 0.02-1.55 parts by mass for a metal such as iron, and on the other hand, the new amendment recites “when the precursor of an alumina sintered compact comprises iron, the content of the iron is 0.14 parts by mass or less as expressed in terms of Fe2O3 based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”. Thus, if the metal is iron, there is contradiction in the claimed language as to its concentration.
The dependent claims are rejected as depending from a rejected base claim.
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.
Claim(s) 1-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over
U.S. Patent No. 6,802,878 to Monroe in view of CN 1188465 to Monroe et al.
(hereinafter Monroe 2ⁿᵈ).
With respect to claim 1, Monroe teaches sintered alpha alumina abrasive
particles comprising alpha alumina, Gd₂O₃, ZnO and a few other metal oxides, and
method of making them (Monroe, Abstract).
In one aspect/embodiment, Monroe teaches a concentration of 55-97% by weight of alpha alumina in the sintered abrasive particles (Monroe, col. 2, lines 5-15). This range, in particular, the 97% by weight, is close to the lower limit of the claimed range of "98.0% by mass or more", and according to MPEP 2144.05 "Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close." Titanium Metals Corp. of America V. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Additionally, Monroe discloses a general concentration of "at least" 60% by
weight of Al2O3 in the alpha abrasive particles (col. 3, lines 10-16), and "at least" 60% includes any and all values above 60% such as 98% or higher. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Thus, the reference is taken to render the claimed concentration of "98.0% by
mass or more" of Al2O3 obvious. This is, especially, in light of the fact that according to MPEP 2123 "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. V. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Furthermore, Monroe teaches the use of 0.2 to 8% by weight, in some
embodiments 1 to 5% by weight, of ZnO in the sintered alpha alumina abrasive particles (Monroe, col. 2, lines 5-15), and both of these ranges overlap with the claimed range of 0.02- .55 parts by mass; ZnO is taken to render the claimed "at least one metal" as recited in lines 2-3 and 9-11 of the claim obvious.
Moreover, Monroe teaches the use of other metal oxides such as yttrium oxide and sodium oxide to alter the physical and/or chemical properties of the sintered alpha alumina abrasive particles (Monroe, col. 6, lines 10-60). Some of the preferred embodiments of the reference teaches a concentration of between 0-3.5% by weight, and most of said embodiments disclose 1.0 to 1.5% by weight of Y2O3 (Monroe, Tables 2 and 6). Therefore, it is reasonable to expect the primary reference renders the claimed concentration of 0.01 to 1.35 for yttrium oxide obvious based on the overlapping ranges as those taught by the specific embodiments, especially in light of the fact that obtaining an optimum and workable range of Y2O3 concentration can be achieved through routine experimentation motivated by the fact that the amount of metal oxides such as yttrium oxide in the initial mixture, i.e. precursor, and/or impregnation composition depends on the desired composition and/or properties of the sintered abrasive particle, as well as on the effect or role said additive may have on or play in the process used to make the abrasive particle (Monroe, col. 6, lines 17-30) and further motivated by the fact that the most of the most preferred embodiments of Monroe, i.e. most of the Examples, are directed to the use of an overlapping range of concentration of Y2O3 compared to what is claimed.
Monroe discloses the use of sodium oxide, and although the primary reference discloses that such a metal oxide alters the physical and chemical properties of the abrasive particle (Monroe, col. 6, lines 17-54), the primary reference is silent as to the specific concentration of this metal oxide.
Monroe 2nd, also, directed to sintered abrasive particles of high concentration of alpha alumina, wherein Na2O is disclosed as an oxide modifier whose presence in said abrasive particles offers significant advantages as a sintering aid to enhance
densification of the particles (Monroe 2ⁿᵈ, [0009]-[0011], and [0065] in page 21),
discloses the use of 0.01-1.0 wt% of Na₂O (Monroe 2nd, [0011] and [0065]).
Additionally, Monroe 2ⁿᵈ discloses the presence/use of other metal oxides such as
yttrium oxide, and the fact that the abrasive grains are of alpha alumina ceramic
abrasive containing about 85.0-99.6 wt% of Al2O3 (Monroe 2nd, [0009]-[0011] and
[0066]). Therefore, Monroe 2ⁿᵈ is from the same field of art and endeavor.
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Monroe, the primary reference who teaches the use of Na₂O, to utilize a concentration of about 0.01-1.0 wt% of Na₂O, as that taught by Monroe 2nd, with the aim of increasing the density of the abrasive grains. It is noted Monroe 2ⁿᵈ clearly implies that the use of higher concentrations of Na₂O may have detrimental effect (Monroe 2ⁿᵈ, [0065]). Thus, Monroe 2nd teaches and recognizes the use of small concentration of sodium oxide.
It is noted that Monroe, the primary reference, teaches a method of
manufacturing sintered alpha alumina abrasive particles and discloses the use of
precursor of the components such as precursor for alumina (Monroe, col. 4, lines 62-67), precursor of the metal oxide additives (Monroe, col. 6, lines 1-2 and 30-35; and col. 11, lines 9-20) as well as the initial/precursor composition which would eventually result in the sintered alumina abrasive particles (Monroe, cols. 4-12).
With respect to the new amendment of “when the precursor of an alumina sintered compact comprises iron, the content of the iron is 0.14 parts by mass or less as expressed in terms of Fe2O3 based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”, it is noted that the limitation of 0.14 parts by mass or less of Fe2O3 is not required based on the language of the amendment.
With respect to claim 2, Monroe teaches sintered alpha alumina abrasive
particles comprising alpha alumina, Gd₂O₃, ZnO and a few other metal oxides, and
method of making them (Monroe, Abstract).
In one aspect/embodiment, Monroe teaches a concentration of 55-97% by weight of alpha alumina in the sintered abrasive particles (Monroe, col. 2, lines 5-15). This range, in particular, the 97% by weight, is close to the lower limit of the claimed range of "98.0% by mass or more", and according to MPEP 2144.05 "Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close." Titanium Metals Corp. of America V. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Additionally, Monroe discloses a general concentration of "at least" 60% by
weight of Al2O3 in the alpha abrasive particles (col. 3, lines 10-16), and "at least" 60% includes any and all values above 60%. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Thus, the reference is taken to render the claimed concentration of "98.0% by
mass or more" of an oxide of aluminum obvious. This is, especially, in light of the fact that according to MPEP 2123 "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. V. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Furthermore, Monroe teaches the use of 0.2 to 8% by weight, in some
embodiments 1 to 5% by weight, of ZnO in the sintered alpha alumina abrasive particles (Monroe, col. 2, lines 5-15), and both of these ranges overlap with the claimed range of 0.02- 1.55 parts by mass; ZnO is taken to render the claimed "at least one metal" as recited in lines 2-3 and 9-11 of the claim obvious.
Moreover, Monroe teaches the use of other metal oxides such as yttrium oxide and sodium oxide to alter the physical and/or chemical properties of the sintered alpha alumina abrasive particles (Monroe, col. 6, lines 10-60). Some of the preferred embodiments of the reference teaches a concentration of between 0-3.5% by weight, and most of said embodiments disclose 1.0 to 1.5% by weight of Y2O3 (Monroe, Tables 2 and 6). Therefore, it is reasonable to expect the primary reference renders the claimed concentration of 0.01 to 1.35 for yttrium oxide obvious based on overlapping ranges, especially in light of the fact that obtaining an optimum and workable range of yttrium oxide concentration can be achieved through routine experimentation motivated by the fact that the amount of metal oxides such as yttrium oxide in the initial mixture, i.e. precursor, and/or impregnation composition depends on the desired composition and/or properties of the sintered abrasive particle, as well as on the effect or role the additive may have on or play in the process used to make the abrasive particle (Monroe, col. 6, lines 17-30) and further motivated by the fact that the most of the most preferred embodiments of Monroe, i.e. most of the Examples, are directed to the use of an overlapping range of concentration of yttrium oxide compared to what is claimed.
Monroe discloses the use of sodium oxide, and although the primary reference discloses that such a metal oxide alters the physical and chemical properties of the abrasive particle (Monroe, col. 6, lines 17-54), the primary reference is silent as to the specific concentration of this metal oxide.
Monroe 2nd, also, directed to sintered abrasive particles of high concentration of alpha alumina, wherein Na2O is disclosed as an oxide modifier whose presence in said abrasive particles offers significant advantages as a sintering aid to enhance
densification of the particles (Monroe 2nd, [0009]-[0011], and [0065] in page 21),
discloses the use of 0.01-1.0 wt% of Na₂O (Monroe 2nd, [0011] and [0065]).
Additionally, Monroe 2ⁿᵈ discloses the presence/use of other metal oxides such as
yttrium oxide, and the fact that the abrasive grains are of alpha alumina ceramic
abrasive containing about 85.0-99.6 wt% of Al2O3 (Monroe 2nd, [0009]-[0011] and
[0066]). Therefore, Monroe 2ⁿᵈ is from the same field of art and endeavor.
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Monroe, the primary reference who teaches the use of Na₂O, to utilize a concentration of about 0.01-1.0 wt% of Na₂O, as that taught by Monroe 2nd, with the aim of increasing the density of the abrasive grains. It is noted Monroe 2ⁿᵈ clearly implies that the use of higher concentrations of Na₂O may have detrimental effect (Monroe 2ⁿᵈ, [0065]).
It is noted that Monroe, the primary reference, teaches a method of
manufacturing sintered alpha alumina abrasive particles and discloses the use of
precursor of the components such as precursor for alumina (Monroe, col. 4, lines 62-67), precursor of the metal oxide additives (Monroe, col. 6, lines 1-2 and 30-35; and col. 11, lines 9-20) as well as the initial/precursor composition which would eventually result in the sintered alumina abrasive particles (Monroe, cols. 4-12).
Furthermore, Monroe, the primary reference, is seen to broadly renders the use of yttrium acetate tetrahydrate obvious due to the fact that the reference, specifically, discloses the use of metal salt as the precursor for metal oxide modifier additives such as yttrium oxide, and discloses metal acetates as an example of such salts (Monroe, col. 6, lines 1-35) which would broadly render the use of a yttrium acetate tetrahydrate obvious (Monroe, col. 7, line 9). It is important to note that Monroe 2nd, also, teaches the use of metal acetates as a precursor to modifiers and/or additives (Monroe 2nd, [0064] and [0081]).
With respect to the new amendment of “when the precursor of an alumina sintered compact comprises iron, the content of the iron is 0.14 parts by mass or less as expressed in terms of Fe2O3 based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”, it is noted that the limitation of 0.14 parts by mass or less of Fe2O3 is not required based on the language of the amendment.
With respect to claim 3, the combination of references renders the claim obvious; this is, in particular, because as detailed out above, Monroe, the primary reference, is directed to sintered alpha alumina abrasive particles (Monroe, throughout the reference, for example, abstract; col. 2, lines 5-27).
With respect to claim 4, the combination of references renders the claim obvious; this is, in particular, because Monroe, i.e. the primary reference, discloses a method for manufacturing sintered alpha alumina abrasive particles (Monroe, cols. 4-11) which includes the formation of a precursor by forming a dispersion of the precursor of alumina and adding other components, forming precursor particles and firing them.
With respect to claim 5, the combination of references renders the claim obvious this is, in particular, because Monroe, i.e. the primary reference, teaches a method involving the use of boehmite, i.e. precursor for alpha alumina (Monroe, col. 2, lines 65-67), and impregnating the precursor particles with a source of metal oxides of materials such as ZnO, yttrium oxide, sodium oxide, a few more or a combination thereof, wherein the source could be in the form of oxide and/or metal salt (Monroe, col. 2, lines 27-63; col. 6, line 1 to col. 7, line 14).
With respect to claim 6, the combination of references renders the claim obvious; this is, in particular, because Monroe, the primary reference, recognizes the use of metal salt (Monroe, col. 5, line 30 to column 7, line 14) of the metal oxide additives such as yttrium oxide, and discloses the use of metal salts such as acetate, for example, yttrium acetate (Monroe, col. 7, line 9).
With respect to claim 7, the combination of references renders the claim obvious; this is, in particular, because Monroe, i.e. the primary reference, teaches a sintering temperature of from about 1200°C to about 1650°C (Monroe, col. 11, lines 65-67).
With respect to claim 8, the combination of references renders the claim obvious; this is, in particular, because Monroe, the primary reference, teaches a true (i.e. absolute) density of abrasive particles to be at least 95%, 96%, 97%, or even at least 99% of theoretical density (Monroe, col. 13, lines 1-5). When the true density of abrasive particles fully encompasses the claimed relative density, it is expected of the reference to render the "relative" density of the claimed abrasive particles obvious.
With respect to claim 9, Monroe teaches sintered alpha alumina abrasive
particles comprising alpha alumina, Gd₂O₃, ZnO and a few other metal oxides, and
method of making them (Monroe, Abstract).
In one aspect/embodiment, Monroe teaches a concentration of 55-97% by weight of alpha alumina in the sintered abrasive particles (Monroe, col. 2, lines 5-15). This range, in particular, the 97% by weight, is close to the lower limit of the claimed range of "98.0% by mass or more", and according to MPEP 2144.05 "Similarly, a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close." Titanium Metals Corp. of America V. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Additionally, Monroe discloses a general concentration of "at least" 60% by
weight of Al2O3 in the alpha abrasive particles (col. 3, lines 10-16), and "at least" 60% includes any and all values above 60%. 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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Thus, the reference is taken to render the claimed concentration of "98.0% by
mass or more" of an oxide of aluminum obvious. This is, especially, in light of the fact that according to MPEP 2123 "A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. V. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989).
Furthermore, Monroe teaches the use of 0.2 to 8% by weight, in some
embodiments 1 to 5% by weight, of ZnO in the sintered alpha alumina abrasive
particles (Monroe, col. 2, lines 5-15), and both of these ranges overlap with the claimed range of 0.02- 1.55 parts by mass; ZnO is taken to render the claimed "at least one metal" as recited in lines 2-3 and 9-11 of the claim obvious.
Moreover, Monroe teaches the use of other metal oxides such as yttrium oxide and sodium oxide to alter the physical and/or chemical properties of the sintered alpha alumina abrasive particles (Monroe, col. 6, lines 10-60). Some of the preferred embodiments of the reference teaches a concentration of between 0-3.5% by weight, and most of said embodiments disclose 1.0 to 1.5% by weight of Y2O3 (Monroe, Tables 2 and 6). Therefore, it is reasonable to expect the primary reference renders the claimed concentration of 0.01 to 1.35 for yttrium oxide obvious based on overlapping ranges, especially in light of the fact that obtaining an optimum and workable range of yttrium oxide concentration can be achieved through routine experimentation motivated by the fact that the amount of metal oxides such as yttrium oxide in the initial mixture, i.e. precursor, and/or impregnation composition depends on the desired composition and/or properties of the sintered abrasive particle, as well as on the effect or role the additive may have on or play in the process used to make the abrasive particle (Monroe, col. 6, lines 17-30) and further motivated by the fact that the most of the most preferred embodiments of Monroe, i.e. most of the Examples, are directed to the use of an overlapping range of concentration of yttrium oxide compared to what is claimed.
Monroe discloses the use of sodium oxide, and although the primary reference discloses that such a metal oxide alters the physical and chemical properties of the abrasive particle (Monroe, col. 6, lines 17-54), the primary reference is silent as to the concentration of this metal oxide.
Monroe 2nd, also, directed to sintered abrasive particles of high concentration of alpha alumina, wherein Na₂O is disclosed as an oxide modifier whose presence in said abrasive particles offers significant advantages as a sintering aid to enhance
densification of the particles (Monroe 2nd, [0009]-[0011], and [0065] in page 21),
discloses the use of 0.01-1.0 wt% of Na₂O (Monroe 2nd, [0011] and [0065]).
Additionally, Monroe 2nd discloses the presence/use of other metal oxides such as
yttrium oxide, and the fact that the abrasive grains are of alpha alumina ceramic
abrasive containing about 85.0-99.6 wt% of Al2O3 (Monroe 2nd, [0009]-[0011] and
[0066]). Therefore, Monroe 2ⁿᵈ is from the same field of art and endeavor.
Thus, it would have been obvious to a person having ordinary skill in the art, prior to the effective filing date of the claimed invention, to have modified Monroe, the primary reference who teaches the use of Na₂O, to utilize a concentration of about 0.01-1.0 wt% of Na₂O, as that taught by Monroe 2nd, with the aim of increasing the density of the abrasive grains. It is noted Monroe 2nd clearly implies that the use of higher concentrations of Na2O may have detrimental effect (Monroe 2ⁿᵈ, [0065]).
Moreover, Monroe, the primary reference, teaches a true (i.e. absolute) density of abrasive particles to be at least 95%, 96%, 97%, or even at least 99% of theoretical density (Monroe, col. 13, lines 1-5). When the true density of abrasive particles fully encompasses the claimed relative density, it is expected of the reference to render the "relative" density of the claimed abrasive particles obvious.
With respect to the new amendment of “when the precursor of an alumina sintered compact comprises iron, the content of the iron is 0.14 parts by mass or less as expressed in terms of Fe2O3 based on 100 parts by mass of the content of aluminum as expressed in terms of Al2O3”, it is noted that the limitation of 0.14 parts by mass or less of Fe2O3 is not required based on the language of the amendment.
Response to Arguments
Applicant's arguments filed 05/15/2026 have been fully considered but they are not persuasive.
Applicant has cited MPEP 2141.02 VI and asserted a reference must be considered in its entirety, i.e. as a whole, including portion that would lead away from the claimed invention; Applicant has, thus, objected to the examiner’s comment, in the previous Office Action, indicating a secondary reference does not need to teach every element taught in a primary reference to be qualified as a reference (Remarks, pages 6 and 7).
The examiner, respectfully, submits 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).
Additionally, 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).
It is important to note Monroe, i.e. the primary references, discloses every claimed components including sodium oxide, but that said reference does not disclose the concentration of said oxide. Monroe even discloses that such a metal oxide, i.e. sodium oxide, alters the physical and chemical properties of the abrasive particle (Monroe, col. 6, lines 17-54). Monroe 2nd was not relied on for adding sodium oxide, as it was already taught by the primary reference, but that Monroe 2nd was used to show that the use of sodium oxide in an alumina sintered material has been known to be in very small concentration, such as 0.01-1.0 wt%.
The examiner, respectfully, disagrees that a secondary reference must teach every element taught in the claims or in a primary reference; if a reference teaches every element of a claim, the rejection is usually a 102 anticipatory rejection. 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, Monroe 2nd teaches that an alkali metal oxide such as sodium oxide would act as a sintering aid by enhancing densification but that it should be avoided in larger concentrations because of causing detrimental effects. Again, it is emphasized that the use of sodium oxide has been taught and recognized in the primary reference due to its ability to alter the chemical and/or physical properties of the resulting abrasive particle/product.
Applicant has, also, asserted Monroe 2nd teaches the use of at least about 0.25 wt% Fe2O3, and asserted the teachings of Monroe in view of Monroe 2nd would not arrive at the claimed range of “0.14 parts by mass or less” (Remarks, page 7).
The examiner, respectfully, submits that irrespective of any other teachings of Monroe 2nd, i.e. the secondary reference, the primary reference does not teach the use of any iron oxide. It is noted that the presence or Fe2O3 is not required in the claimed invention based on the claimed language.
Applicant has, further, cited some of, what Applicant refers to as “effects” of the claimed invention, and asserted the combination of prior art does not suggest such effects. Applicant has, then, concluded one of ordinary skill in the art would not have applied the teachings of Monroe 2nd to Monroe with a reasonable expectation of success (Remarks, page 7).
Considering the fact that the claimed composition and method are rendered obvious by the combination of references, any effect, or what may be considered characteristic, argued to be attributes of the claimed sintered compact, are also expected to be drawn from the precursor material of the combination of references because substantially similar materials/products cannot have mutually exclusive characteristics.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PEGAH PARVINI whose telephone number is (571)272-2639. The examiner can normally be reached Monday-Friday 8:00-5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, AMBER ORLANDO can be reached at 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PEGAH PARVINI/Primary Examiner, Art Unit 1731
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