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 .
Election/Restrictions
Applicant’s election without traverse of group I, claims 1-8 and 14 in the reply filed on 03/05/2026 is acknowledged.
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 1-8 and 14 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.
Regarding claim 1, it is not clear that “a content of the cerium is less than 8.0% by mass” is based on what?
Regarding claim 8, it is not clear that “1.5 to 2.8 mol% of Y2O3” and “8 to 12 mol% of CeO2” are based on what?
The term “close” in claim 14 is a relative term which renders the claim indefinite. The term “close” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claim Rejections - 35 USC § 102
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 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.
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 text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
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.
Claim(s) 1-5, 7-8 and 14 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US5419827.
Regarding claim 1, US5418827.discloses a sintered zirconia ceramic, consisting essentially of:
(a) grains(crystalline) of partially stabilized zirconia consisting essentially of:
(i) 1.5-7.0% by mole of a stabilizer, wherein more than 70% by mole of said stabilizer is yttrium oxide, the remainder is at least one compound selected from the group consisting of ytterbium oxide, calcium oxide, and cerium oxide; and
(ii) as the remainder, zirconium oxide and unavoidable impurities; and
(b) grain boundaries including a glass phase containing:
(i) 0.01-2.0% by weight of MgO based on the sum of said zirconium oxide and said stabilizer;
(ii) 0.1-30% by weight of Al2O3 based on the sum of said zirconium oxide and said stabilizer; and
(iii) 0.3-3.0% by weight of SiO2 based on the sum of said zirconium oxide and said stabilizer. See claim 1; col. 2, lines45-52 and col. 7, line 28.
After the mole to mass the claimed conversion, the prior art disclose the claimed content range.
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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
In the alterative, the reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 2, the sintering aids that provide MgO, Al2O3, and SiO2 ingredients are disclosed below. Obviously MgO powders, Al2 O3 powders, and SiO2 powders can be favorably used as sintering aids. A mixture of these powders is also favorable. Moreover, any compounds that give such oxide ingredients upon heating can be used also. Any of such suitable powders is homogeneously mixed with powders of zirconia ceramics precursors. Col. 4, lines 53-60. Thus, cerium is in a central part.
Regarding claim 3, starting materials for the stabilizer include not only oxide ingredients themselves, such as yttrium oxide, ytterbium oxide, calcium oxide, and other rare earth oxides, but also other compounds that give appropriate oxides upon heating, such as corresponding carbonates, nitrates, chlorides, acetates, oxalates, etc. When oxide powders are used, those having a BET specific surface area ranging from 4 to 20 m2 /g are preferable, considering the particle sizes of the zirconia ceramics precursors. Furthermore, Al2O3 has an average particle size of about 1 μm. See example 4. “About” permits some tolerance.
Regarding claim 4, the sintered zirconia ceramic comprises 0.1-30% by weight of Al2 O3 based on the sum of said zirconium oxide and said stabilizer. The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 5, the sintered zirconia ceramic comprises 0.3-3.0% by weight of SiO2 based on the sum of said zirconium oxide and said stabilizer. The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 7, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). The claimed properties are deemed to naturally flow from the structure in the prior art , since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 8, 1.5-7.0% by mole of a stabilizer, wherein more than 70% by mole of said stabilizer is yttrium oxide, the remainder is at least one compound selected from the group consisting of ytterbium oxide, calcium oxide, and cerium oxide. The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 12, the sintering aids that provide MgO, Al2 O3, and SiO2 ingredients are disclosed below. Obviously MgO powders, Al2 O3 powders, and SiO2 powders can be favorably used as sintering aids. A mixture of these powders is also favorable. Moreover, any compounds that give such oxide ingredients upon heating can be used also. Any of such suitable powders is homogeneously mixed with powders of zirconia ceramics precursors. Col. 4, lines 53-60. Thus, the cerium is located in an end region that is close to the grain boundary part.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
Prosecution Insights