DETAILED ACTION
This action is in response to the amendments and remarks filed 01/16/2026, in which claims 1-2 and 9 have been amended, claims 17-18 have been newly added, claims 1-18 are pending, claims 10-16 are withdrawn as directed to a non-elected invention and claims 1-9 and 17-18 are ready for examination.
Claim Interpretation
The terms “D50” and D90” are defined by the specification at [0023] as follows:
D50 is defined as the diameter of the particles, wherein the portion of particles with diameters smaller than or equal to this value is 50 % with respect to the total number of particles
D90 is defined as the diameter of the particles, wherein the portion of particles with diameters smaller than or equal to this value is 90 % with respect to the total number of particles
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 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.
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 1-7 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over CN 104587846 B (hereinafter “Li”).
Regarding Claim 1 Li discloses a ceramic filtration element comprising:
a support structure; and
a filtration layer (the support is immersed in slurry to create a layer) comprising at least first particles (ceramic aggregate particles) and second particles (sintering aide) selected from “glass phase, silicon-containing inorganic substances, feldspar and clay; and the silicon-containing inorganic substances are silicon powder or silicon oxide”; (i.e. a group consisting of oxide ceramic particles), (pg. 2, para starting “1)…”);
wherein the first particles have a particle size D50 diameter of 30-50 micron (Claim 5, pg. 2 para. starting “The ceramic aggregate particles in the step 1)…”);
wherein the second particles have a particle size of less than 500-mesh (i.e. less than about 20 micron) (pg. 4, para. starting “1) Excellent sintering aid:…”);
thus wherein the first and second particles differ in at least D50 diameters, and
a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 2.5 and greater.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 2 Li discloses the ceramic filtration element according to claim 1, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including metal carbides and metal oxides; and a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 2.5 and greater (supra).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 3 Li discloses the ceramic filtration element according to claim 1, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including SiC, and
the second particles (sintering aide) are selected from “glass phase, silicon-containing inorganic substances, feldspar and clay; and the silicon-containing inorganic substances are silicon powder or silicon oxide”; (i.e. a group consisting of oxide ceramic particles), (pg. 2, para starting “1)…”); thus including SiO2.
Regarding Claim 4 Li discloses the ceramic filtration element according to claim 1, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including Al2O3, and
the second particles (sintering aide) are selected from “glass phase, silicon-containing inorganic substances, feldspar and clay; and the silicon-containing inorganic substances are silicon powder or silicon oxide”; (i.e. a group consisting of oxide ceramic particles), (pg. 2, para starting “1)…”); thus including SiO2.
Regarding Claim 5 Li discloses the ceramic filtration element according to claim 1, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including SiC, and
the second particles (sintering aide) are selected from “glass phase, silicon-containing inorganic substances, feldspar and clay; and the silicon-containing inorganic substances are silicon powder or silicon oxide”; (i.e. a group consisting of oxide ceramic particles), (pg. 2, para starting “1)…”); thus including Al2O3 (i.e. in feldspar).
Regarding Claim 6 Li discloses the ceramic filtration element according to claim 1, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including Al2O3, and
the second particles (sintering aide) are selected from “glass phase, silicon-containing inorganic substances, feldspar and clay; and the silicon-containing inorganic substances are silicon powder or silicon oxide”; (i.e. a group consisting of oxide ceramic particles), (pg. 2, para starting “1)…”); thus including Al2O3 (i.e. in feldspar).
Regarding Claim 7 Li discloses the ceramic filtration element according to claim 1, wherein the filtration layer comprising 40-65 parts of ceramic aggregate particles and 5-10 parts of sintering aid (pg. 2, para starting “1)…”) and thus wherein the second particle is present in an amount of from 7-20 wt% based on a total weight of the first and second particles.
Regarding Claim 17 Li discloses the ceramic filtration element according to claim 2, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including metal carbides; and a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 2.5 and greater (supra).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 18 Li discloses the ceramic filtration element according to claim 2, wherein the first particles (ceramic aggregate particles ) are selected from “silicon carbide aggregate particles, alumina aggregate particles, mullite aggregate particles, cordierite aggregate particles and one or more mixtures in any proportion” (pg. 2, para starting “The ceramic aggregate particles in the step 1) adopt…”), thus including metal oxides; and a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 2.5 and greater (supra).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Claims 1-3, 5, 7-8 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over CN 102718494 B (hereinafter “Deng”).
Regarding Claim 1 Deng discloses a ceramic filtration element comprising:
a support structure (of SiC); and
a filtration layer (the coating of the filter membrane compound) comprising at least first particles (SiC powder) and second particles (vitrified bonding which comprises “65wt% potassic feldspar, 12wt% kaolin, 23wt% quartz”) including oxide ceramic particles,
wherein the average grain diameter of SiC powder is 23 μm,
wherein the average grain diameter the vitrified bonding is 0.1 ~ 3 μm; (pg. 3, Embodiment mono); wherein average grain diameter is not specifically disclosed to be the D50 but it would have been obvious to supply a particle distribution wherein the average grain diameter is also the D50, including one with a monodisperse particle size of the grain diameter when a particle size is called for without requiring a specific distribution of particle sizes;
thus wherein the first and second particles differ in at least D50 diameters, and
a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 23:3 to 23:0.1; i.e. 7.6-2300.
Regarding Claim 2 Deng discloses the ceramic filtration element according to claim 1, wherein the first particles are metal carbide (SiC, supra); and the ratio Y is in a range of 7.6-2300 (supra). Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claims 3 and 5 Deng discloses the ceramic filtration element according to claim 1, wherein the first particles are SiC, and the second particles comprise SiO2 (quartz) and Al2O3 (in feldspar).
Regarding Claim 7 Deng discloses the ceramic filtration element according to claim 1, wherein for the "filter membrane compound" SiC powder and vitrified bonding is mixed in the mass ratio of 10:0.5 ~ 3.3 (pg. 2 para. starting “4, …”), thus the second particle is present in an amount from 4.7 wt.-% to 23 wt.-% based on a total weight of the first and second particles.
Regarding Claim 8 Deng discloses the ceramic filtration element according to claim 1, average grain diameter the vitrified bonding (the second particles) is 0.1 ~ 3 μm, and thus have a diameter D50 (supra) of from 100 nm to 3000 nm.
While the D90 is not disclosed, it would have been obvious to use monodisperse particles when a particle size is called for without requiring a specific distribution of particle sizes, and therefore it would have been obvious to use a D90 the same as the D50, so the D90 would be 100 nm to 3000 nm.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 17 Deng discloses the ceramic filtration element according to claim 2, wherein the first particles are metal carbide (SiC, supra); and the ratio Y is in a range of 7.6-2300 (supra).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Claims 1-9 and 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over US 2004/0038105 Al (hereinafter “Hennige”).
Regarding Claim 1 Hennige discloses a ceramic cation/proton-conducting membrane (i.e. an ion filtration element) comprising:
a support structure (i.e. at least one perforate and pervious support); and
a filtration layer (on and inside the support of the composite material there is at least one inorganic component) comprising particles selected from TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , B4 C, SiC,Fe3O4 , Si3N4 , BN, SiP, nitrides, wherein “at least one inorganic component is present in a particle size fraction having a particle size of from 1 to 250 nm or having a particle size of from 260 to 10,000 nm” and wherein “[i]t may also be advantageous if the composite material has at least two particle size fractions of at least two inorganic components. The particle size ratio may be from 1:1 to 1:10,000, preferably from 1:1 to 1:100. The proportion of the particle size fractions in the composite material may preferably be from 0.01:1 to 1:0.01.”; [0020]-[0026], and therefore comprises at least first particles and second particles selected from a group consisting of oxide ceramic particles, wherein the first and second particles differ in at least D50 diameters (i.e. wherein it is obvious to use larger first particles being the 260-10,000 nm and smaller second particles being the 1-250 nm particles), and a ratio (Y) of a particle size of the first particles 01 (D50) and a particle size of the second particles 02 (D50) is in a range of 1 to 10,000, or preferably 1:100.
Wherein the particle size disclosed is not specifically disclosed to be the D50 but it would have been obvious to supply a particle distribution wherein the particle size is also the D50, including one with a monodisperse particle size of the grain diameter when a particle size is called for without requiring a specific distribution of particle sizes.
Regarding Claim 2 Hennige discloses the ceramic filtration element according to claim 1, wherein the first particles are selected from particles selected from TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , B4 C, SiC,Fe3O4 , Si3N4 , BN, SiP, nitrides” [0024]-[0026], thus including metal carbides, metal nitrides and metal oxides; and wherein the ratio Y is in a range of 1 to 10,000, or preferably 1:100 (supra, [0026]).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 3-6 Hennige discloses the ceramic filtration element according to claim 1, wherein the first particles and second particles are selected from particles selected from TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , B4 C, SiC,Fe3O4 , Si3N4 , BN, SiP, nitrides” [0024]-[0026], and thus may comprise
the first particle being Al2O3 , SiO2 , ZrO2 , Y2O3 , SiC, Fe3O4 , and/or Si3N4; and
the second particle being TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , SiC, and/or Fe3O4.
Regarding Claim 7 Hennige discloses the ceramic filtration element according to claim 1, wherein “[t]he proportion of the particle size fractions in the composite material may preferably be from 0.01:1 to 1:0.01” [0026] and thus the second particle is present in an amount of from 1 wt%-99 wt% based on a total weight of the first and second particles.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 8 Hennige discloses the ceramic filtration element according to claim 1, wherein the second particles have a diameter D50 of from 1-250 nm [0025]-[0026], supra. \
While the D90 is not disclosed, it would have been obvious to use monodisperse particles when a particle size is called for without requiring a specific distribution of particle sizes, and therefore it would have been obvious to use a D90 the same as the D50, so the D90 would be 1-250 nm.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 9 Hennige discloses the ceramic filtration element according to claim 1, wherein the first particles have a diameter D50 of from 260-10,000 nm [0025]-[0026], supra.
While the D90 is not disclosed, it would have been obvious to use monodisperse particles when a particle size is called for without requiring a specific distribution of particle sizes, and therefore it would have been obvious to use a D90 the same as the D50, so the D90 would be 260-10,000 nm.
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 17 Hennige discloses the ceramic filtration element according to claim 2, wherein the first particles are selected from particles selected from TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , B4 C, SiC,Fe3O4 , Si3N4 , BN, SiP, nitrides” [0024]-[0026], thus including metal carbides; and wherein the ratio Y is in a range of 1 to 10,000, or preferably 1:100 (supra, [0026]).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Regarding Claim 18 Hennige discloses the ceramic filtration element according to claim 2, wherein the first particles are selected from particles selected from TiO2 , Al2O3 , SiO2 , ZrO2 , Y2O3 , B4 C, SiC,Fe3O4 , Si3N4 , BN, SiP, nitrides” [0024]-[0026], thus including metal oxides; and wherein the ratio Y is in a range of 1 to 10,000, or preferably 1:100 (supra, [0026]).
Since the range(s) disclosed overlaps the range(s) claimed, the range(s) recited in the claim is/are considered prima facie obvious. Overlapping ranges are prima facie evidence of obviousness. It would have been obvious to one having ordinary skill in the art to have selected the portion of the disclosed range(s) that corresponds to the claimed range. See MPEP 2144.05(I).
Response to Amendment
The previous 35 U.S.C. 112(b) rejections of claims 1-9 are withdrawn in view of the Applicants’ arguments and amendments.
Response to Arguments
Applicant's arguments filed 01/16/2026 have been fully considered but they are not persuasive.
In response to Applicants’ argument that the claimed invention possesses unexpected results that demonstrate criticality to the claimed range of particle sizes and ratio between said sizes and therefore overcomes the 103 rejections based on overlapping ranges; the Examiner disagrees. Applicants argue that paragraphs [0017] and [0126] of the instant disclosure support unexpected results for the claimed particle sizes and ratios, including by aiding in the sintering process and allowing a lower temperature sintering. However, the data provided in the instant disclosure are not sufficient to show unexpected results of the claimed invention. Specifically:
It is well settled that evidence presented to rebut a prima facie case of obviousness must be commensurate in scope with the claims to which it pertains and that such evidence which is considerably narrower in scope than claimed subject matter is not sufficient to rebut a prima facie case of obviousness. See 2145 and 716.02(d) which states “[w]hether the unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the "objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support." In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range” and “[t]o establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range”.
1. As rejected, claim 1 is significantly broader than examples in specification. While applicants point to [0017] and [0126] of the instant specification as support for the unexpected results, these paragraphs of text do not provided the kind of data required to support such an argument, mere mention of unexpected results is not sufficient to demonstrate such results. The Examples in the instant disclosure however may provide data which could be used to support an unexpected results, however these examples are much more narrow then what is encompassed by claim 1, which does not even limit the type of first particles. Thus the evidentiary showing is far from being commensurate in scope with the degree of patent protection sought.
2. Applicants have failed to show the results occur over the entire claimed range because they do not show a sufficient number of tests both inside and outside the claimed range.
Thus, at least because of these reasons, the claimed invention is not seen to possess unexpected results and is obvious in view of the cited art.
In response to Applicants’ argument that the claims are obvious over Li, Deng and Hennige because they do not disclose the specific D50, but rather the average particle size without further information on the distribution of particle sizes; the Examiner disagrees. While the Examiner agrees that the references do not disclose the D50 of the particles, and only the average particle size, as noted in the rejections “[w]herein the particle size disclosed is not specifically disclosed to be the D50 but it would have been obvious to supply a particle distribution wherein the particle size is also the D50, including one with a monodisperse particle size of the grain diameter when a particle size is called for without requiring a specific distribution of particle sizes.” Applicants’ disagree with this reasoning, but do not articulate why one of skill in the art would not find a monodisperse particle size as obvious to use when provided with a reference which discloses only an average particle size without requiring a specific size distribution. The Examiner maintains that it would have been obvious to use at least a monodisperse particle size as one of skill in the art is not given direction to a specific particle distribution.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/ERIC J MCCULLOUGH/ Examiner, Art Unit 1773
/BENJAMIN L LEBRON/ Supervisory Patent Examiner, Art Unit 1773
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