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 .
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.
Claims1-7 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.
It is not clear that the limitations in the parathesis is meant to be a part of the claims or not. The Examiner treats the limitations in the parathesis being a part of the claims.
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 7 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 7 is depended from claim 5. Claim 5, which is depended from claim 1, already recites the ceramic product comprising aluminum oxide and spinel. 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.
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, 5 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Effect of doped oxides on the density of alumina ceramic bodies" to HUANG, XIAOJUN (Huang, submitted by applicant 11/01/2023).
Regarding claim 1, Huang discloses in Fig. 1 about the effect of MgO on alumina ceramic compactness. MgO forms a thin layer of magnesia-alumina spinel (MgO: Al₂O₃).
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In the experiment, technical processes such as mixing by ball milling, dry forming, pre-sintering, final sintering and grinding were used to prepare test samples, and the compactness of samples of different formulas was measured. See pages 2-3 and Figure 1.
The instant application discloses that “the powder at least comprises reactive magnesium oxide (MgO) in an amount of from 0.1% to 4.0% in order to form spinel (MgAl2O4) with the aluminum oxide present and from 96.0% to 99.9% of aluminum oxide” in [0012]. Thus, it is reasonable to expect that the prior art discloses at least the overlapping or close range of spinel and alumina contents.
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" or “close” ranges, and overlapping or close ranges have been held to establish prima facie obviousness (MPEP 2144.05).
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). 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).
Regarding claims 5 and 7, Huang discloses in Fig. 1 about the effect of MgO on alumina ceramic compactness. MgO forms a thin layer of magnesia-alumina spinel (MgO: Al₂O₃).
Claim(s) 2 - 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over "Effect of doped oxides on the density of alumina ceramic bodies" to HUANG, XIAOJUN (Huang) as applied to claim 1 above, and further in view of “the Manufacture of alumina as its use in ceramics and related applications” to Evans.
Regarding claims 2 and 3, Huang is silent about the alumina is tabular (alpha) alumina.
Evans discloses that tabular alumina is recrystallized or sintered a-alumina so called because its morphology consists of large, 50-500 µm, flat tablet-shaped crystals of corundum. it has an especially low porosity, high density, low permeability, good chemical inertness, high refractoriness and is especially good for refractory applications. See page 504 regarding tabular alumina.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use the tabula(alpha) alumina in the teaching of Huang, motivated by the fact that Evan discloses that tabular alumina has an especially low porosity, high density, low permeability, good chemical inertness, high refractoriness and is especially good for refractory applications. See page 504 regarding tabular alumina.
Regarding claim 4, Huang is silent about the alumina is reactive alumina.
Evan discloses that reactive alumina is utilized where exceptional strength, wear resistance, temperature resistance, surface finish or chemical inertness are required. See pages 500 and 504 regarding reactive alumina.
Thus, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use the reactive alumina in the teaching of Huang, motivated by the fact that Evan discloses that reactive alumina is utilized where exceptional strength, wear resistance, temperature resistance, surface finish or chemical inertness are required. See pages 500 and 504 regarding reactive alumina. A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. 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 6, combined teaching of Huang and Evan disclose compact of reactive alumina and spinel. The use of the reactive alumina reduces the pore size. 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).
Conclusion
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/SHUANGYI ABU ALI/ Primary Examiner, Art Unit 1731
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