DETAILED ACTION
The claims 1-20 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/27/2023 is being considered by the examiner.
Claim Rejections - 35 USC § 112
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 1-20 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.
Claim 1 contains, in line 6, the limitation “the BaTiO3-based crystal particles […]”, however this is the first mention of crystal particles, since previous mentions are of BaTiO3-based crystalline particles. As such, there is not proper antecedent basis for the limitation to crystal particles.
Claim 1 is further indefinite because the limitation to a “substituted amount of one mol of the Ba with the alkaline earth metal element of 0.01 to 0.10 mol” is unclear. The intended limitation is likely better stated as “wherein the substituted amount of the alkaline earth metal element is 0.01-0.10 mol per 1 mol of the Ba.” This would clarify the amount of alkaline earth metal element, and that said amount is based on 1 mol of the barium in the BaTiO3. As written, the metes and bounds of the claimed composition are indefinite.
Claim 2 is indefinite for substantially the same reasons as discussed for claim 1 above. The limitation “substituted amount of one mol of the Ba with the rare earth element of 0.001 to 0.010 mol” is unclear, and should be rewritten to show that 0.001-0.010 moles rare earth element are substituted on the Ba site per 1 mol Ba.
Claims 3-20 are also rejected under USC 112 as depending from claim 1 and thus containing the indefinite limitations therein.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12, and 15-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-18 and 20 of copending Application No. 17/643,483 in view of Katsu et al (WO 2015012057 A1).
Regarding claim 1, copending claim 1 of the ‘483 application is drawn to a ceramic body composed mainly of BaTiO---3-based crystalline particles being substituted with at least one rare earth element, and wherein a Ba6Ti17O40- crystalline particulate component is present in an amount of 1.0-10.0 wt%. This range substantially overlaps and therefore renders obvious the range of the instant claim for the Ba6Ti17O40- component. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
The copending ‘483 claim 1 does not contain a limitation to an alkaline earth element substitution on the Ba site. However, such an alkaline earth substitution was known in the art at the time of the instant filing, and as such this difference between the ‘483 claim and the instant claim 1 is not patentably distinguishing. It would have been obvious to one of ordinary skill in the art to modify a ceramic body as instantly disclosed in view of Katsu et al in order to use the alkaline earth metal substitution taught therein. Katsu et al teaches an electronic component comprising a ceramic substrate having a perovskite structured substrate with a composition based on BaTiO3, with B being substituted by a rare earth and also with Ca in an amount of 0-30 mol% (see Abstract). Examples are taught wherein the Ca content falls within the 1-10 mol% range of the instant claim (see paragraph 0035 Table). Katsu et al teaches that the Ca substitution taught therein leads to maximum current flow ability and good electrical properties. This would provide one of ordinary skill in the art with motivation to also use this known substitution with a ceramic such as that claimed instantly. Thus, the differences between the instant claim 1 and the copending ‘483 claims are shown to be obvious over the prior art of record. The claim is thus rejected for double patenting.
Regarding claim 2, copending ‘483 claim 2 discloses a rare earth element substitution amount of 0.001 to 0.010 moles per 1 mole Ba.
Regarding claim 3, copending ‘483 claim discloses a ration (Ba+RE)/Ti of 1.005-1.050. As discussed above, obvious modification in view of Katsu et al would lead to an amount of Ca substitution equivalent to that of the instant claim. This would be included with the overlapping amount of rare earth disclosed in the copending claim, and the resultant ratio with the Ti content would thus be also overlapping the range of the copending claim. The instant claim 3 is therefore not patentably distinct from the copending claims of the ‘483 application.
Regarding claim 4, copending ‘483 claim 4 discloses La as the rare earth element and Katsu et al teaches Ca as the substituted alkaline earth metal element.
Regarding claim 5, copending ‘483 claim 5 discloses crystalline particles having a lattice volume of 64.000 to 64.3650 cubic Angstroms. As above, this overlapping range to that of the instant claim is obviousness-rendering, and the instant claim 5 is therefore not patentably distinct over the copending claims.
Regarding claim 6, copending ‘483 claim 6 discloses an average crystal grain size of 5-200 µm. As above, this overlapping range to that of the instant claim is obviousness-rendering, and the instant claim 6 is therefore not patentably distinct over the copending claims.
Regarding claim 7, copending ‘483 claim 7 discloses an open porosity of 5.0% or less.
Regarding claim 8, copending ‘483 claim 8 discloses a bulk density of 5.35 g/cm3 or more.
Regarding claim 9, copending ‘483 claim 9 discloses BaCO3 crystalline particles in an amount of 2.0 wt% or less. This overlapping range renders obvious the range of the instant claim 9, and the claim is therefore not patentably distinct.
Regarding claim 10, copending ‘483 claim 10 discloses a Pb content of 0.01 wt% or less.
Regarding claim 11, copending ‘483 claim 11 discloses an alkali metal content of 0.01 wt% or less.
Regarding claim 12, copending ‘483 claim 13 discloses a volume resistivity of 30 Ω·cm or less.
This is a provisional nonstatutory double patenting rejection.
Regarding claim 15, copending ‘483 claim 14 discloses a ceramic body according to claim 1, wherein the ceramic body has a honeycomb shape comprising: an outer peripheral wall; and a partition wall arranged on an inner side of the outer peripheral wall, the partition wall defining a plurality of cells forming flow paths from a first end face to a second end face.
Regarding claim 16, copending ‘483 claim 15 discloses a ceramic body has an average thickness of the partition wall of from 50 to 130 µm and a cell density of from 15 to 140 cells/cm2.
Regarding claim 17, copending ‘483 claim 16 discloses a method for producing a ceramic body, comprising: a forming step of forming a green body containing a ceramic raw material comprising BaCO3 powder, TiO2 powder, and powder of rare earth nitrate and/or hydroxide to produce a ceramic formed body having a relative density of 60% or more; and a firing step of maintaining the ceramic formed body at a temperature of from 1150 to 1250 °C, and then increasing the temperature to a maximum temperature of from 1360 to 1430 °C at a heating rate of from 20 to 500 °C/hour and maintaining it for 0.5 to 5 hours; wherein the ceramic body is configured of mainly BaTiO3-based crystalline particles in which a part of Ba is substituted with at least one rare earth element, andwherein the ceramic body comprises Ba6Ti27O40 crystalline particles of from 1.0 to 10.0% by mass. As shown above, obvious modification in view of Katsu et al would lead to such a ceramic body also having an alkaline earth metal element substitution.
Regarding claim 18, copending ‘483 claim 17 discloses a retention time at the temperature of from 1150 to 1250 °C of 0.5 to 5 hours.
Regarding claim 19, copending ‘483 claim 18 discloses that the firing step comprises maintaining the ceramic formed body at a temperature of 900 to 950 °C for 0.5 to 5 hours.
Regarding claim 20, copending ‘483 claim 20 discloses a heater comprising the claimed body.
Conclusion
9. No claim is allowed.
10. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 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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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW8 January 2026