DETAILED ACTION
The claims 115-129 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 statements (IDS) submitted on 03/30/2023, 04/16/2024, 04/30/2024, and 07/01/2025 are 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 115-129 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 115 contains a limitation to a silica amount in a grain boundary given in atoms/nm2. Silica is a compound made up of multiple atoms, and thus it is not clear how its concentration in the grain boundary area is actually measured in order to be given in this uncommon unit. Further, even a thin grain boundary phase in a sintered material necessarily exists in three dimensions, and thus claiming the concentration per nm2 (area) is unclear. This indefiniteness in terms of what silica content is actually being measured and claimed at the grain boundary is not remedied by the instant Specification, because this indicates that “excess” silica in the grain boundary is measured as compared to silica in the bulk grain. However, no content for bulk grain silica is claimed or disclosed, and so how this is meant to be the basis for representing the grain boundary silica is ambiguous. The metes and bounds of claim 115 are thus unclear and the claim is indefinite under USC 112.
Claim 115 is further indefinite because it is not clear if the reference to at least one pore being comprised by at least one surface is meant necessarily to refer to an open pore, or if a closed pore at some surface depth would also meet the claim limitation. The lack of definitive limitation to said depth renders the claim indefinite.
Claim 122 is indefinite for substantially the same reason as discussed above for claim 115 - it is not clear if the reference to at least one pore being comprised by at least one surface is meant necessarily to refer to an open pore, or if a closed pore at some surface depth would also meet the claim limitation. The lack of definitive limitation to said depth renders the claim indefinite.
Claim 123 is indefinite because it contains only limitations to further processing steps that are described as optional. It is thus unclear if the claim necessitates further process limitations at all, and if therefore the claim properly further limits the claim from which it depends.
Claims 116-121 and 124-129 are also rejected under USC 112 as depending from the above rejected claims and therefore containing the indefinite limitations therein.
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.
Claims 115-116, 118-119, and 121 are rejected under 35 U.S.C. 103 as being unpatentable over Hamada (US 7932202 B2).
Regarding claim 115, Hamada teaches a sintered Y2O3 body and process for producing the same. The sintered body is corrosion resistant and has a high density. Hamada teaches embodiments wherein the density is 4.98 g/cm3 or greater (see Table 2), and further teaches an embodiment wherein the total impurity content is 37 ppm (see Table 1). This indicates that the density and impurity content ranges taught by Hamada each overlap and thus render obvious the minimum and maximum value limitations of the instant claim.
The Hamada yttria body comprises silica in ppm amounts (ibid.) This would be a source of grain boundary silica necessarily forming according to processing conditions. The specified amount of grain boundary silica in terms of atoms/nm2 seemingly results from the purity of the starting yttria powder and the sintering parameters. As shown above, Hamada teaches a purity level equivalent to that of the instant claims, indicating an equivalent silica content in the yttria powder. Hamada teaches sintering at 1500-2000 °C. This temperature range overlaps that of the instant disclosure, and thus one of ordinary skill would have arrived at a temperature that is the same as that used in the instantly disclosed process through routine optimization and experimentation with the Hamada range.
Because Hamada teaches sintering a starting powder having equivalent impurity concentration at the same temperature as is instantly disclosed, the resultant sintered article would necessarily have equivalent grain boundary phase properties. This could be represented in the same manner as the instant claim in terms of atoms/nm2, though not disclosed as such by Hamada. The equivalent sintered article would thus have 1-10 atoms/nm2 SiO2 in a grain boundary. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Hamada teaches that the inventive yttria article has a high density, but less than the 5.010 g/cm3 theoretical density. This indicates the presence of at least some pores. These pores would be expected to be uniformly distributed, indicating at least one surface with at least one pore. The Hamada body is equivalently composed to that of the instant claims and is formed from starting particulate with a sub-micron mean size. Hamada teaches that any organic additives are removed during processing, and thus would not be present during sintering for excess pore formation (see column 16, lines 35-45). This small size and equivalent processing and composition indicate that no pore over 5 µm would be expected to form. The further pore size limitation of the instant claim is thus obvious from the Hamada teachings, and claim 115 is not patentably distinct over the prior art of record.
Regarding claim 116, as discussed above, the small starting particle size and equivalent processing and composition taught by Hamada indicate that no pore over 4 µm would be expected to form. The further pore size limitation of the instant claim is thus obvious from the Hamada teachings, and claim 116 is not patentably distinct over the prior art of record.
Regarding claim 118, as discussed above, as discussed above, the small starting particle size and equivalent processing and composition taught by Hamada would necessarily lead to a pore size distribution that is also equivalent. Thus, the Hamada yttria sintered article would have a D95 size of 1.5 µm or less, and would meet the further limitations of the instant claim 118.
Regarding claim 119, as discussed above, as discussed above, the small starting particle size and equivalent processing and composition taught by Hamada would necessarily lead to a pore size distribution that is also equivalent. Therefore, porosity is equivalently low and there would exist at least one surface that is occupied by pores in an amount of less than 0.15%.
Regarding claim 121, Hamada teaches that an objective of the inventive sintered yttria body is to minimize and difference between surface grain size and grain size in the depth of the body. This indicates that Hamada teaches that uniformity of the body is desirable. As there is nothing to indicate that the sintering process of Hamada would lead to density variance, one of ordinary skill would have understood that the Hamada density is also uniform, and a yttria body having density variance of 3% or less along at least one dimension is obvious from the teachings of the prior art of record.
Claim 117 is rejected under 35 U.S.C. 103 as being unpatentable over Hamada (US 7932202 B2) in view of American Elements – Yttrium Oxide publication.
Regarding claim 117, Hamada teaches that impurity levels of various metals and carbon are minimized to ppm levels, with upper values taught for each. As discussed above, Hamada teaches an embodiment wherein the total impurity level is 37 ppm. Hamada does not specify an embodiment wherein the total impurity level is 35 ppm or less. However, it is clear from the Hamada teachings that it would be desirable to minimize impurity content, thus providing one of ordinary skill in the art with motivation to decrease these levels to as low a value as possible. The teachings of the American Elements – Yttrium Oxide publication would show a skilled artisan that the purity levels of the yttrium powder used can be 99.999%, with the resultant impurity levels being 10 ppm. This document shows that such highly pure powders were known and available at the time of the instant filing. Thus, when consulting the teaching of Hamada indicating the desirability of low impurity levels, one would have been enabled by the American Elements document to be able to choose impurity levels taught therein, said impurity levels also meeting the further limitations of claim 117. Said claim is thus obvious and not patentably distinct over the prior art of record.
Claim 120 is rejected under 35 U.S.C. 103 as being unpatentable over Hamada (US 7932202 B2) in view of Okamoto et al (US 8158544 B2).
Regarding claim 120, the claim differs from Hamada as applied above because Hamada teaches a sintered article with a size of 60 mm diameter, 50 mm thickness, but does not teach an article having a dimension of 100-600 nm. However, it would have been obvious to one of ordinary skill in the art to modify Hamada in view of Okamoto in order to produce yttria articles having the sizes taught therein. Okamoto et la teaches a similarly composed yttria sintered body for use in the same semiconductor production application. Okamoto provides a size of 300 mm in diameter for a yttria sintered body, so as to correspond to the size of the silicon wafer (see column 16, lines 25-35). As this is the same purpose for which the Hamada sintered body is to be used, one would have had motivation to consult Okamoto for an appropriate size for the sintered body, there not being a specific teaching in this regard in Hamada. One would have had a reasonable expectation of success in the modification because Hamada and Okamoto et al are drawn to sintered yttria articles used in the same applications. Each limitation of claim 120 is therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Allowable Subject Matter
Claims 122-129 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action.
Conclusion
14. No claim is allowed.
15. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
16. 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
NSW22 January 2026