DETAILED ACTION
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. This Office Action is responsive to the amendment filed on 05/14/2026.
3. Claims 1-4, 6-11 are pending. Claims 1-4, 6-11 are under examination on the merits. Claim 1 is amended. Claim 5 is cancelled.
4. The objections and rejections not addressed below are deemed withdrawn.
5. Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive, thus claims 1-4, 6-11 stand rejected as set forth in Office action dated 02/25/2026 and further discussed in the Response to Arguments below.
Claim Rejections - 35 USC § 103
6. 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.
7. Claims 1-4, 5-11 are rejected under 35 U.S.C. 103 as being unpatentable over Okayama et al. (US Pub. No. 2014/0171288 A1, hereinafter “’288”).
Regarding claim 1: ‘288 teaches a cordierite sintered body (Page 1, [0002]) comprising: a main crystal phase of cordierite, a sub crystal phase of alumina, mullite, and sapphirine, and an amorphous phase including Ca at the grain boundaries, wherein the crystal phase ratio of the main crystal phase is 95 mass% to 97.5 mass%, the crystal phase ratio of the sub crystal phase is 2.5 mass% to 5 mass%, and the content of Ca in the total amount is 0.4 mass% to 0.6 mass% as calculated for CaO (Page 1, [0009]). ‘288 teaches the synthetic cordierite powder, aluminum oxide powder, calcium carbonate powder, and powder containing a transition metal element are prepared, and these powders are weighed (Page 3, [0029]; Page 3, [0036], Example 1) and granules thereof are obtained by way of a slurry (Page 3, [0030]; Page 3, [0036], Example 1). The cordierite sintered body is obtained by firing at 1410°C in the atmosphere, followed by hot isostatic pressing at 1300°C while applying a pressure of 150 MPa (Page 3, [0037], Example 1). Furthermore, it can be understood that the amounts of CaO in the starting material in the sintered bodies of Samples Nos. 4, 5, 7-9, 12, and 13 of Table 1 and Table 2 are 0.2 to 0.9 mass% (Page 4, Table 1 & Table 2). The amount of MgO is at least approximately 13.1 mass% (calculated from the fact that the amount of MgO in cordierite (2MgO-2Al2O3.5SiO2) is 13.78 mass%), the amount of Al2O3 is approximately 37.8 mass% or less (calculated from the fact that the amount of Al2O3 in cordierite (2MgO-2Al2O3.5SiO2) is 34.86 mass%), and that the contents of manganese, chromium and iron, as calculated for the oxides, are 0.2 to 0.5 mass%, the four-point bending strength is 170 to 257 MPa, and the thermal conductivity is 4.0 to 4.5 W/m-K (Page 4, Table 2). ‘288 does not expressly teach a total content of iron, nickel, chromium, and manganese is 0.1 mass% or less in terms of oxide, a porosity is 3.0 vol% or less, and a Weibull coefficient is 9.5 or more.
However, ‘288 teaches in order to obtain colored cordierite ceramic, a powder containing Cr, Mn, Fe, Co, Ni, Cu, and the like serving as a raw material powder may be added to the primary raw material (Page 3, [0033]). Thus, ‘288 disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of
transition metal elements such as Cr, Mn, Fe, Co, Ni, and Cu (variables) in the cordierite sintered body (affect) can effectively control a color tone having good visibility and antifouling property (property) (Page 2, [0023]), establishing that the type and amount of the transition metal elements, and the color tone having good visibility and antifouling property are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."), and the controlling the color tone having good visibility and antifouling property is recognized as a result-effective variable before determining that optimum ranges of said variable might be characterized as routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
It is submitted that that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. 5 Appeal2017-008153 Application 14/465,917 Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.
Pertaining to porosity and a Weibull coefficient, however, since ‘288 discloses the identical or substantially identical cordierite sintered body composition that falls within the numerical ranges specified in the recited claim 1 of the present application, and further, since the sintering temperature and the temperature and pressure conditions of the densification by the subsequent hot isotropic pressing are approximately the same for the cordierite sintered bodies of as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e., porosity and Weibull coefficient, would be the same as claimed (i.e., a porosity is 3.0 vol% or less, and a Weibull coefficient is 9.5 or more). If there is any difference between the product of ‘288 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claim 2: ‘288 discloses the cordierite sintered body (Page 1, [0002]), wherein the content of the calcium is 0.09 mass% or more and 1.80 mass% or less in terms of oxide (Page 1, [0009]).
Regarding claim 3: ‘288 discloses the cordierite sintered body (Page 1, [0002]), wherein the amount of Al2O3 is approximately 37.8 mass% or less (calculated from the fact that the amount of Al2O3 in cordierite (2MgO-2Al2O3.5SiO2) is 34.86 mass%) (Page 4, Table 1 & Table 2).
Regarding claim 4: ‘288 discloses the cordierite sintered body (Page 1, [0002]), wherein a content of titanium is 0.5 mass% or less in terms of oxide (0.0 mass%, Page 4, Table 1 & Table 2).
Regarding claim 6: ‘288 discloses the cordierite sintered body (Page 1, [0002]), wherein a content of an alkali metal is 0.30 mass% or less in terms of oxide (0.0 mass%, Page 4, Table 1 & Table 2).
Regarding claim 7: ‘288 discloses the cordierite sintered body, wherein a thermal conductivity is 30 4.0 W/(m·K) or more (Page 4, Table 1 & Table 2).
Regarding claim 8: The disclosure of ‘288 is adequately set forth in paragraph above and is incorporated herein by reference. ‘288 discloses that there is little color variation upon checking by visual inspection, and since, in the method for producing a starting material powder, the present application and ‘288 have in common that a starting material slurry is ball milled, the cordierite sintered body by ‘288 satisfy the features of claim 8 (Page 4, [0041]). ‘288 is silent regarding the number of foreign particles containing the element M2 and having an equivalent circle diameter of 5 µm or more is 150/cm2 or less.
However, since ‘288 discloses the identical or substantially identical cordierite sintered body composition that falls within the numerical ranges specified in the recited claim 1 of the present application, and further, since the sintering temperature and the temperature and pressure conditions of the densification by the subsequent hot isotropic pressing are approximately the same for the cordierite sintered bodies of as the recited claimed, one of ordinary skill in the art before the effective filing date of the claimed invention, would have expected that the claimed effects and physical properties, i.e., foreign particles, would be the same as claimed (i.e., the number of foreign particles containing the element M2 and having an equivalent circle diameter of 5 µm or more is 150/cm2 or less). If there is any difference between the product of ‘288 and the product of the instant claims the difference would have been minor and obvious. “Products of identical chemical composition cannot have mutually exclusive properties.” 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(I). Absent an objective showing to the contrary, the addition of the claimed physical properties to the claim language fails to provide patentable distinction over the prior art.
"Where ... the claimed and prior art products are identical or substantially identical ... the PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his claimed product." In re Best, 562 F.2d 1252, 1255 (CCPA 1977) (citations and footnote omitted). The mere recitation of a property or characteristic not disclosed by the prior art does not necessarily confer patentability to a composition or a method of using that composition. See In re Skoner, 51 7 F .2d 94 7, 950 ( CCP A 1975).
Regarding claims 9-10: The disclosure of ‘288 is adequately set forth in paragraph above and is incorporated herein by reference. ‘288 teaches a method for producing the cordierite sintered body, the method comprising: preparing a synthetic cordierite powder, an aluminum oxide powder, a calcium carbonate powder, and a transition metal element (Page 3, [0029]; Page 3, [0036], Example 1). ‘288 does not expressly teach a method for producing the cordierite sintered body, the method comprising: preparing a molded body using a raw material powder, and heating the molded body, wherein as the raw material powder, a mixed powder comprising a cordierite powder produced by an electric melting method, a mullite powder, and a magnesia powder is used, and the mixed powder further comprises a calcium oxide powder.
However, when preparing a starting material for a cordierite sintered body, in addition to the cordierite powder, a person skilled in the art could easily use, as the starting materials, oxides or the like comprising the element group M1 specified in the present application. Furthermore, ceramic starting material powders in general, not just cordierite powders, produced by electric melting methods are generally commercially available, and thus could be selected as appropriate by a person skilled in the art.
Regarding claim 11: The disclosure of ‘288 is adequately set forth in paragraph above and is incorporated herein by reference. ‘288 does not expressly teach the method for producing a cordierite sintered body, wherein the cordierite powder is subjected to magnetic separation before use.
However, the magnetic separation of the ceramic starting material powder before use is merely a well-known and common practice, and could be addressed as appropriate by a person skilled in the art.
Response to Arguments
8. Applicant's arguments filed 05/14/2026 have been fully considered but they are not persuasive,
In response to the Applicant’s argument that a total content of iron, nickel, chromium, and manganese is 0.1 mass% or less in terms of oxide.
The examiner respectfully disagrees. It is axiomatic that a reference must be considered in its entirety, and it is well established that the disclosure of a reference is not limited to specific working examples contained therein. In re Fracalossi, 681 F.2d 792, 794 n.1, 215 USPQ 569, 570 n.1 (C.C.P.A. 1982). A reference must be considered for everything it teaches by way of technology. EWP Corp. v. Reliance Universal Inc., 755 F.2d 898, 907, 225 USPQ 20, 25 (Fed. Cir.), cert. denied, 474 U.S. 843 (1985). A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also > Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). ‘288 teaches in order to obtain colored cordierite ceramic, a powder containing Cr, Mn, Fe, Co, Ni, Cu, and the like serving as a raw material powder may be added to the primary raw material (Page 3, [0033]). Thus, ‘288 disclosure would have indicated to one of ordinary skill in the art before the effective filing date of the claimed invention that the amount of transition metal elements such as Cr, Mn, Fe, Co, Ni, and Cu (variables) in the cordierite sintered body (affect) can effectively control a color tone having good visibility and antifouling property (property) (Page 2, [0023]), establishing that the type and amount of the transition metal elements, and the color tone having good visibility and antifouling property are result-effective variables. In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) ("A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective."), and the controlling the color tone having good visibility and antifouling property is recognized as a result-effective variable before determining that optimum ranges of said variable might be characterized as routine experimentation. In re Boesch, 617 F.2d 272, 276 (CCPA 1980) ("[D]iscovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art."); In re Aller, 220 F.2d 454, 456 (CCPA 1955) ("[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.").
It is submitted that that generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. In re Woodruff, 919 F.2d 1575, 1578 (Fed. 5 Appeal2017-008153 Application 14/465,917 Cir. 1990) (indicating that in cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range.
9. 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 extension fee 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 date of this final action.
Examiner Information
10. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bijan Ahvazi, Ph.D. whose telephone number is (571) 270-3449. The examiner can normally be reached on Mon-Fri 9.00 A.M. -7 P.M..
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Del Sole can be reached on 571-272-1130. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bijan Ahvazi/
Primary Examiner, Art Unit 1763
05/26/2026
bijan.ahvazi@uspto.gov
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