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 of group I, claims 1-2 in the reply filed on is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Groups I-III lack unity of invention because even though the inventions of these groups require the technical feature of a corrosion-resistant refractory material, wherein the phase of the refractory material comprises corundum and one or two or more selected from the group consisting of: CA6, C2M2A14, CM2A8 and ZrO2 , this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of “Study of microstructure and properties of corundum-calcium hexaluminate composite aggregate” to Fu et al. Fu et a. discloses a composite comprising a corundum phase and a CA6 phase. See page 436; Microstructure of composite aggregate.
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 1-12 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 claims 2 - 5, 8 - 10, and 12, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d). For the examination, limitation(s) following the phrase are not considered.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 2 - 5, 8 - 10, and 12 recite an initial broad recitation, and the claims also recite ranges following the phrase ”preferably”, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
The term “high” in claims 9 and 11 is a relative term which renders the claim indefinite. The term “high” 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.
The term “light” in claim 9 is a relative term which renders the claim indefinite. The term “light” 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.
The term “fine” in claims 6-7 and 9-10 is a relative term which renders the claim indefinite. The term “fine” 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.
Regarding claims 1-12, acronyms should always be defined in the claim as their BRI can change with time.
Claim 4 recites the refractory material comprises Al2O3, CaO, ZrO2 and MgO but then recites a range for MgO includes and a range of ZrO2 includes zero. It is unclear how the material can comprise MgO while also containing 0% of MgO. It is unclear how the material can comprise ZrO2 while also containing 0% of ZrO2.
Claim 8 recites the fine powder comprises ZrO2 and MgO but then recites a a range of ZrO2 includes zero. It is unclear how the material can comprise ZrO2 while also containing 0% of ZrO2.
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 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) 1-12 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 “Study of microstructure and properties of corundum-calcium hexaluminate composite aggregate” to Fu et al.
Regarding clam 1, Fu et a. disclose a composite comprising a corundum phase and a CA6 phase. See page 436; Microstructure of composite aggregate.
Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
Although the prior art is silent about the corrosion-resistant properties, the claimed properties are deemed to naturally flow from the structure in the prior art, since the prior art combination 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 clams 2 - 4, Fu et a. disclose α-Al2O3 micro powder, CaCO3 powder and carbohydrate polymers were mixed, added appropriate amount of water into mixture. Milled the mixture by planetary ball mill for 0.5h, pulled the slurry into mould, molded, solidified, mold released, then dried at 110°C for 24h, sintered at 1830°C for 3h at last.
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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).
Regarding claim 5, Fu et al. disclose the bulk density.
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Regarding claims 6-12, it is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
Claim(s) 1-12 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 EP 1 178 023 A1( filed by applicant on 11/17/2023).
Regarding claims 1-12, EP 1 178 023 A1 discloses a high density refractory material contains at least about 90 wt.% calcium hexaluminate and white fused
corundum. See abstract, [0022] and [0027].
Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658
Although the prior art is silent about the corrosion-resistant properties, the claimed properties are deemed to naturally flow from the structure in the prior art, since the prior art combination 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 3, a sintering aid comprising not more than about 1 wt.% . See claim 1.Regarding claim 4, Thealuminasourcecomprisesabout83-97wt.% of the mixture on an Al2O3 basis, preferably about 86-95 wt.%, more preferably about 89-93.5 wt.%, and most preferably about 90-93 wt.%. The calcium oxide source comprises about 3-17 wt.% of the mixture on a CaO basis, preferably about5-14wt.%,more preferably about 6.5-11 wt.% and most preferably about 7-10 wt.%.The sintering aidcomprisesabout0.01-1wt.% of the mixture, preferably about 0.1-0.7 wt.%, and optimally about 0.2-0.6 wt.%. See [0014].
Regarding claim 5, density of the fired pellets was determined by two different methods, the water displacement method (Archimedes principal) and by caliper measurement. Both methods revealed a high sintered density of about 3.25 g/cm3, about 96% of theoretical density. Apparent porosity was about 4.54%. See [0026].
Regarding claims 6-12, it is noted that claims are product-by-process claims. Eventhough product-by- process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 77F.2d 695, 698,227 USPQ 964,966 (Fed. Cir. 1985) (citations omitted).
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 1-4, 6-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claimsof copending Application No. 18290391 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the applications disclose a refractory material comprises corundum and CA6.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1- 12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4,8, 11-13 and 15 of copending Application No. 18290389(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the applications disclose a refractory material comprises refractory material comprises corundum and one or two or more selected from the group consisting of: CA6, CMA, and ZrO2
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13of copending Application No. 18/29039(reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both the applications disclosea refractory material, wherein the phase of the refractory material comprises corundum and one or two or more selected from the group consisting of: CA6, C2M2A14, CM2A8 and ZrO2.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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