DETAILED ACTION
Applicant’s reply, filed 7 May 2026 in response to the requirement for restriction mailed 23 March 2026, has been fully considered. As per Applicant’s election of Group I, claims 16-26 are pending under examination and claims 27-34 are withdrawn (see below).
Election/Restrictions
Applicant’s election without traverse of Group I, claims 16-26, in the reply filed on 7 May 2026 is acknowledged.
Claims 27-34 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7 May 2026.
Claim Rejections - 35 USC § 102/103
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
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 16-26 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Lindner et al (WO 2008/122458; using Clarivate Analytics machine translation for English language citations), or in the alternative, under 35 U.S.C. 103 as obvious over Lindner in view of Omori et al. (US PGPub 2004/0022008).
Regarding claim 16, Lindner teaches piezoelectric, lead-free mixed alkali niobate ceramics having the formula NaxK-y-Li-z(Nb1-wTaw)O3 wherein: 0<x,y,z<1, 0.9<x+y+z<1.1 and 0<w<0.3 (abstract; pg3; Tables 1-2). Lindner teaches the obtained powders are suitable for use as ceramic materials in sensors, actuators, electrodes, and materials requiring high mechanical deflection, voltage control and generation of high electrical voltage (pg2-3) including capacitors, thermistors, etc. (pg6).
Lindner is silent as to the carbon content per BET surface area of the powder being from 10 to 100 ppm/(m2/g).
Lindner teaches a niobate ceramic powder having the claimed general composition and obtained via a substantially similar method. It is held that a chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
In the alternative, Omori teaches that sintered niobium and niobium-tantalum powders suitable for use as capacitor materials should have an amount of nitrogen, carbon, boron and/or sulfur impurity present for the purpose of improving leakage current values ([0051]), wherein the total amount is greater than 50 ppm and less than 200,000 ppm ([0052]) for a powder of average particle size 0.2 to 5 µm and a BET of 0.5 to 15 m2/g ([0052]; [0015]-[0019]). Omori further teaches the carbon can be introduced ([0055]). Omori and Lindner are analogous art and are combinable because they are concerned with the same field of endeavor, namely sintered niobium-tantalum powders suitable for capacitor materials. At the time of filing a person having ordinary skill in the art would have found it obvious to introduce carbon as taught by Omori into the ceramics of Lindner and would have been motivated to do so as Omori teaches such improves leakage current values and capacitance characteristics.
Regarding claim 17, Lindner teaches, or in the alternative Lindner in view of Omori renders obvious, the ceramic materials as set forth above. As noted, Lindner teaches the general formula NaxK-y-Li-z(Nb1-wTaw)O3 wherein: 0<x,y,z<1, 0.9<x+y+z<1.1 and 0<w<0.3 (abstract; pg3; Tables 1-2; see examples 3, 4 and 17).
Regarding claim 18, Lindner teaches, or in the alternative Lindner in view of Omori renders obvious, the ceramic materials as set forth above. Lindner further teaches the resultant sintered and ground powder has a particle size of greater than 0.1 µm to less than 1.5 µm (pg5). Lindner does not specifically teach a BET surface area of 2 to 8 m2/g. However, Omori evidences that the specific surface area is increased as the particle size decreases ([0034]) such that a particle size of 0.2 to less than 5 µm corresponds to a surface area (BET method) of from 0.5 to 15 m2/g ([0016]-[0017]; [0034]; [0037]-[0038]; Table 1).
Regarding claim 19, Lindner teaches, or in the alternative Lindner in view of Omori renders obvious, the ceramic materials as set forth above. As noted, Lindner teaches the powders are lead-free (see above; pg5).
Regarding claims 20-25, Lindner teaches, or in the alternative Lindner in view of Omori renders obvious, the ceramic materials as set forth above. Lindner teaches that stability of the structure leads to improved piezoelectric activity and thermal stability (pg3). While Lindner does not specifically teach stability values in the manner claimed, it is noted Lindner teaches the claimed mixed alkali niobate powders, having the claimed components present in the claimed amounts, and made by a substantially similar process. A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present (see In re Spada, 911 F.2d 705, 15 USPQ2d 1655, (Fed. Cir. 1990); see also In re Best, 562 F.2d 1252, 195 USPQ 430, (CCPA 1977). “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.”; MPEP 2112.01)).
It is further noted that as a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith.” In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972). Since the PTO does not have proper means to conduct experiments, the burden of proof is now shifted to Applicants to show otherwise (see In re Best, 562 F.2d 1252, 195 USPQ 430 (CCPA 1977); see also In re Fitzgerald, 205 USPQ 594 (CCPA 1980)).
Regarding claim 26, Lindner teaches, or in the alternative Lindner in view of Omori renders obvious, the ceramic materials as set forth above. As the claim is a product-by-process claim, patentability of said claim is based on the recited product and does not depend on its method of production. Since the product in claim 26 is the same product disclosed by Lindner, and/or Lindner in view of Omori, the claim is unpatentable if/even though the product was made by a different process (se In re Marosi, 710 F2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983); MPEP 2113).
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JANE L STANLEY whose telephone number is (571)270-3870. The examiner can normally be reached M-F 7:30 AM to 3:30 PM.
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/JANE L STANLEY/ Primary Examiner, Art Unit 1767
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