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 § 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).
Response to Arguments
Applicant's arguments filed 06/15/2026 have been fully considered but they are not persuasive.
The applicant argues that the Amended claim 1 recites a ceramic comprising "aluminum oxide as matrix material in an amount of from 92.0% to < 99.0%" and "spinel in a proportion of 8.0%-1.0%."Huang discloses that "MgO forms a thin layer of magnesia-alumina spinel (MgO-A12O3) solid solution at the Al2O3 surface." Huang is silent regarding the proportion of spinel in the final ceramic product. The formation of a "thin layer" of spinel at grain boundaries is not the same as disclosing spinel in a proportion of1.0%-8.0% by weight as required by amended claim 1. The Examiner has not provided any calculation or evidence demonstrating that Huang's "thin layer" of spinel would result in the claimed weight percentage range.
The Examiner respectfully submits that the amended claims fail to disclose the weight percentage is based on what. Furthermore, 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). 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 applicant argues that the present application discloses that the claimed proportion of spinel provides specific technical advantages. Huang does not teach or render obvious each and every element of amended claim 1.
The Examiner respectfully submits that the applicant must compare the instant application with the closest art. Evidence of unexpected results must be commensurate in scope with the subject matter claimed. In re Linder 173 USPQ 356.. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside (i.e. as well as the upper and lower limits) the claimed range to show the criticality of the claimed range. In re Hill 284 F.2d 955, 128 USPQ 197 (CCPA 1960). Further more any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merk & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
The applicant argues that the combined teaching of Huang and Evans discloses a compact of reactive alumina and spinel, and that "the use of the reactive alumina reduces the pore size." However, neither Huang nor Evans teaches or suggests the specific limitation that "90% of pores are smaller than 5 pm" as recited in claim 6. The Examiner's assertion that reactive alumina "reduces pore size" is conclusory and does not establish that the specific pore size distribution claimed would be achieved. The specification teaches that this fine pore distribution results from the specific ceramic composition, noting that "the typical average pore diameter here is, at <5 pm, significantly smaller than in the case of other cast CHS materials (typically from 5 pm to 20 gm).
The Examiner respectfully submits that 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. The use of the reactive alumina reduces the pore size. The prior art combination discloses a substantial similar composition. It has been held that “ 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).
Because the rejection of the independent claim is proper, the rejection of the deepened claims stand.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHUANGYI ABU ALI whose telephone number is (571)272-6453. The examiner can normally be reached Monday - Friday, 8:00 am- 5:00 pm.
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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