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 .
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.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim(s) 1-8 and 12-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rabinovitch et al. (US Pub. No. 2007/0182037).
Regarding Claims 1, 5, and 12-15: Rabinovitch et al. teaches a molded ceramic material (article) comprising lanthanide doped YAG (yttrium aluminum garnet, doped member of the aluminum garnet family; oxide) (abstract and [0096]). As YAG also reads on an oxide, the material of Rabinovitch et al. reads on an oxide matrix and doped YAG.
The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, the reference(s) teaches all of the claimed ingredients in the claimed amounts made by a substantially similar process. The original specification does not identify a feature that results in the claimed effect or physical property outside of the presence of the claimed components in the claimed amount. Therefore, the claimed effects and physical properties, i.e. colored, the claimed color space, hardness, and toughness, would naturally arise and be achieved by a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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 MPEP § 2112.01. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching as to how to obtain the claimed properties with only the claimed ingredients.
Regarding Claims 2-3: The YAG of Rabinovitch et al. can be divided arbitrarily such that 30-95% can read on the oxide and 5-70% can read on the doped member of the aluminum garnet family.
Regarding Claim 4: Rabinovitch et al. teaches the dopant (M) can be present in 0.1-5% based on M+Y, and the M+Y present in about 0.6:1 relative to Al, anticipating the claimed range ([0087]-[0088]).
Regarding Claim 6: Rabinovitch et al. teaches the lanthanide may be cerium ([0072]).
Regarding Claim 16: The article of Rabinovitch et al. is capable of being used in a horological casing or in jewelry and therefore reads on such a component.
Regarding Claims 7-8: Claims 7-8 further limit neodymium doping, however, the claims do not require neodymium doping to be present. Therefore, the material of Nikitin et al. still anticipates claims 7-8.
Allowable Subject Matter
Claims 9-11 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant’s arguments, see Pgs. 6-7 of the reply, filed June 8, 2026, with respect to the rejection(s) of claim(s) 1-16 under 102(a)(1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Rabinovitch et al. (US Pub. No. 2007/0182037) as set forth above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PETER F GODENSCHWAGER whose telephone number is (571)270-3302. The examiner can normally be reached 8:30-5:00, M-F EST.
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/PETER F GODENSCHWAGER/Primary Examiner, Art Unit 1767 August 21, 2026
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