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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-14 in the reply filed on 06/17/2026 is acknowledged.
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.
Claims 1-14 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.
The term “high-performance zirconia” or “so called high-performance zirconia” in claims 1, 5,8, and 11 is a relative term which renders the claim indefinite. The term ““high-performance zirconia” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 1, the high-performance zirconia content can not be over 97.5%.
Regarding claim 1, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3, it is not clear that the “this list” means which list.
Regarding claim 4, the phrase "preferably" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the term “lightly” in claim 5 is a relative term which renders the claim indefinite. The term “lightly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claim 14, the term in the parathesis is indefinite. It is not clear that the limitation in the parathesis is meant to be a part of the claim or not.
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 2 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 1 recites the pigments are present at between 2.5% and 20% by weight. 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 5 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 1 recites “an yttrium oxide-doped zirconia, the molar percentage of yttrium oxide relative to the zirconia being less than 2.7%”. 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 6 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 1 recites that the article has an L* component greater than 40 in the CIELAB colour space. 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 8 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 1 recites that a zirconia doped with one or more oxides selected from an yttrium oxide, a cerium oxide, a magnesium oxide and a calcium oxide, and reinforced with an alumina, the percentage by weight of the aluminarelative to the doped zirconia being between 8 and 18% 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 11 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 1 recites “an yttrium oxide-doped zirconia, the molar percentage of yttrium oxide relative to the zirconia being less than 2.7%”. 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 hich 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) 1-6, 9.and 11-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5059562(US’562).
Regarding claims 1-2 and 13, US’562 discloses colored, partially stabilized zirconia ceramics containing a colorant component and a stabilizer. when the surface of the colored zirconia ceramics of the present invention is polished, a mirror surface having a deep gloss can be obtained and the polished ceramics can be used for various decorative articles, for example, a watch case, a dial plate, a tie pin, a buckler, a bracelet, a ring, a button, a pendant, a spike and the like. See col. 9, line 39.
The colorant component is an oxide of an element of the group IVa, Va VIa, VIIa or VIIIa of the periodic table, and for example, there can be mentioned oxides ( pigment) of Cr, Co, Fe, Ti, Mn, V and Ni. These oxidesmay be reduced to oxides of a lower order, carbides or elementary metals by reduction in a reducing atmosphere containing carbon. Known stabilizers such as Y2O3, MgO, CaO and CeO2 can be used, See col. 3, lines 10-15 and col. 4, lines 23-26 and 56-58.
The metal oxide as the colorant component and the amount of the metal oxide is 0.1 to 10 parts by weight and the amount of ZrO2 is 90 to 99.9 parts by weight. See col. 4, lines 23-26.
In the case where Y2O3alone is incorporated, the amount is adjusted so Y2O3 is contained in an amount of 2 to 7 mole % in the sintered body. See col. 4, lines 60-63.
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP2144.05).
The Examiner respectfully submits that although the prior art does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art , since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 3-4, the colorant component is an oxide of an element of the group IVa, Va VIa, VIIa or VIIIa of the periodic table, and for example, there can be mentioned oxides of Cr, Co, Fe, Ti, Mn, V and Ni. These oxides may be reduced to oxides of a lower order, carbides or elementary metals by reduction in a reducing atmosphere containing carbon. Known stabilizers such as Y2O3, MgO, CaO and CeO2 can be used. The metal oxide as the colorant component and the amount of the metal oxide is 0.1 to 10 parts by weight and the amount of ZrO2 is 90 to 99.9 parts by weight. Black color can be obtained. See col. 3, lines 10-15; col. 4, lines 23-26, 56-63.
Regarding claim 5, the amount of Y2O3 is contained in an amount of 2 to 7 mole % in the sintered body. See col. 4, lines 60-63.
Regarding claim 6, the Examiner respectfully submits that although the prior art does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art , since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claim 9, the colorant component is an oxide of an element of the group IVa, Va VIa, VIIa or VIIIa of the periodic table, and for example, there can be mentioned oxides of Cr, Co, Fe, Ti, Mn, V and Ni. These oxides may be reduced to oxides of a lower order, carbides or elementary metals by reduction in a reducing atmosphere containing carbon. See col. 3, lines 10-15. The colorant component and the amount of the metal oxide is 0.1 to 10 parts by weight and the amount of ZrO2 is 90 to 99.9 parts by weight. See col. 4, lines 23-26.
Regarding claim 11, Y2O3 is contained in an amount of 2 to 7 mole % in the sintered body. See col. 4, lines 60-63.
Regarding claim 12, the Examiner respectfully submits that although the prior art does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art , since the prior art teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim(s) 7-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5059562(US’562), as applied to claim 1,3 above, and further in view of US20210403387A1.
US’562 discloses the colored ceramic set forth above, but it is silent about the ceramic comprising Al. US’562 discloses that the colorant component and the amount of the metal oxide is 0.1 to 10 parts by weight and the amount of ZrO2 is 90 to 99.9 parts by weight. See col. 4, lines 23-26. Known stabilizers such as Y2O3, MgO, CaO and CeO2 can be used, See col. 3, lines 10-15 and col. 4, lines 23-26 and 56-58.
US20210403387A1 discloses colored zirconia and in which the coloring agent is one or more elements selected from the group consisting of manganese (Mn), iron (Fe), cobalt (Co), nickel (Ni), copper (Cu), titanium (Ti), zinc (Zn), aluminum (Al), lanthanum (La), praseodymium (Pr), neodymium (Nd), europium (Eu), gadolium (Gd), terbium (Tb), dysprosium (Dy), holmium (Ho), erbium (Er) and ytterbium (Yb). See [0016].
Thus, it would have been obvious to one of ordinary skill in the art to use Al motivated by the fact that US20210403387A1 discloses a colored zirconia and in which the coloring agent is one or more elements selected from the group consisting of manganese (Mn), iron (Fe), cobalt (Co), nickel (Ni), copper (Cu), titanium (Ti), zinc (Zn), aluminum (Al), lanthanum (La), praseodymium (Pr), neodymium (Nd), europium (Eu), gadolium (Gd), terbium (Tb), dysprosium (Dy), holmium (Ho), erbium (Er) and ytterbium (Yb). It is known in the art to substitute one known compound to another for the same purpose is within the skill of the ordinary skill in the art. Furthermore, a part of Al2O3 can be treated as a reinforcer. See [0016].
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over US5059562(US’562), as applied to claim 1 above, and further in view of CN114599765
US’562 disclose the colored ceramic set forth above and the ceramics can be used for various decorative articles, for example, a watch case, a dial plate, a tie pin, a buckler, a bracelet, a ring, a button, a pendant, a spike and the like. See page 13, last paragraph.
CN114599765 discloses that the stabilized zirconia sintered body of the present embodiment can be used as an industrial part, a cosmetic part, or a dental material. More specifically, it can be used for jewelry, clock parts, clock dials, artificial teeth, molded parts, wear-resistant parts, drug-resistant parts, and the like.
Thus, it would have been obvious to one of ordinary skill in the art to use the claimed ceramic in clock dial motivated by the fact that CN114599765 discloses that the stabilized zirconia sintered body of the present embodiment can be used as an industrial part, a cosmetic part, or a dental material. More specifically, it can be used for jewelry, clock parts, clock dials, artificial teeth, molded parts, wear-resistant parts, drug-resistant parts, and the like. Expanding the application of the ceramic material is within the skill of the ordinary skill in the art.
Conclusion
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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