DETAILED ACTION
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 1-11, in the reply filed on Mary 26, 2026 is acknowledged.
Claims 12-18 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method and product, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 26, 2026.
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 1-11 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.
The term “high purity dense” in claim 1 is a relative term which renders the claim indefinite. The term “high purity dense” 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. Note that the specification does not provide a definition or a standard for determining if the material is high purity and dense. Further, claims 2-14 are rejected as indefinite for depending from an indefinite claim.
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, 7, 8 and 11 recite a broad recitation for chemical composition, density, material and sintering strength and also recite a narrower statement of the range/limitation; see the limitations following the “preferably” language. 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. Note that withdrawn claims 14 and 17 also use “preferably” language.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 3 has a phase content of CA6 up to 100%. It is unclear how CA6 can be present at 100% given claim 1 from which claim 3 depends requires CA6 and at least one other material. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
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 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.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Gnauck et al. (EP 1178023).
Regarding claim 1, Gnauck discloses a high density refractory material containing calcium hexaluminate and corundum [0001 and 0022].
Regarding claim 2, the reference discloses the refractory material has a CA6 phase content of greater than about 40%, which overlaps the claimed range [0019]; see MPEP 2144.05 I regarding overlapping ranges. Note that since the CA6 is greater than 40% of the refractory material, and preferably greater than 60%, 80% or 90%, the reference is considered to render obvious corundum present in an amount overlapping the claimed range [0019]; see MPEP 2144.05 I.
Regarding claim 3, the reference discloses the material includes a sintering add present in an amount from 0.01 to 1 wt% of the mixture, which overlaps the claimed range [0010 & 0014]; see MPEP 2144.05 I.
Regarding claim 4, the reference discloses the material comprises Al2O3 and CaO with ranges that overlap the claimed ranges [0014]; see MPEP 2144.05 I regarding overlapping ranges.
Regarding claim 5, the reference discloses the density as 3.25 g/cm3, which is within the claimed range [0026].
Claims 6-11 define the product by how the product was made, mixing a granular material and fine powder and then subjecting the mixture to hot-pressed sintering to obtain the thermal-insulating refractory material. Thus claims 6-11 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a refractory material. The reference suggests such a product.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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