DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Group I, claims 1-10 in the reply filed on June 24, 2026 is acknowledged. The traversal is on the ground(s) that the present claims are directed to a single inventive concept deserving full and substantive consideration on the merits. This is not found persuasive because as described in the requirement for restriction/election mailed on May 21, 2026, Groups I and II are related as process of making and product made. The product of Group I may be made by another and materially different process than that of Group II (mixing fibers, powder, and binder to form an agglomerate), therefore Groups I and II are distinct.
The requirement is still deemed proper and is therefore made FINAL.
Newly submitted claims 19-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Group I (claims 1-10) and Group III (claims 19-20) are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP 806.05(h). In the instant case the product of Group I can be used as a filter or a friction material, rather than forming a part or coating which requires flowability as in Group III.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 19-20 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on June 24, 2026 have been entered into the file. Currently claims 19-20 are new, claims 17-18 are cancelled, and claims 11-16 and 19-20 are withdrawn, resulting in claims 1-10 pending for examination.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Zhang (CN 103058698)1,2.
With respect to claims 1-2, 4, and 7, Zhang discloses a core-shell structure boron carbide/carbon fiber composite ceramic which has a core of carbon fiber reinforcement material and an outer layer of dense boron carbide ceramic (paragraph [0008]). The boron carbide is applied to the fiber in the form of a powder (paragraph [0028]).
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Grassi (US 5254295).
With respect to claim 1, Grassi discloses reinforced powder particles formed by a matrix material surrounding and encapsulating a portion of thin elongate whisker reinforcement members (col. 2, lines 6, 15-20). The matrix material is formed of powder matrix particles (col. 2, lines 26-36).
With respect to claim 2, Grassi discloses all the limitations of claim 1 above. Fig. 1 of Grassi further shows that the reinforced powder particles form a core-shell configuration. The particles are described as a matrix material encapsulating the whiskers (col. 2, lines 15-20), therefore the whisker (fiber) component forms the core and the matrix (powder) component forms the shell.
It is noted that the instant specification at paragraph [0033] notes that particles with some portion of the fiber component protruding therefrom are considered particles having a core-shell configuration. Therefore even though Fig. 1 of Grassi shows some protruding whiskers, it is interpreted as meeting the requirements of the claim.
With respect to claim 3, Grassi discloses all the limitations of claim 1 above. Grassi teaches the claimed invention above but does not expressly teach wherein the plurality of particles has a flowability defined by a Carr index of less than 25. It is reasonable to presume that the flowability of the particles is inherent to Grassi. Support for said presumption is found in that the specification as filed at paragraph [0040] further states that is has been found that the use of micron scale particle components (average particle size in the range of 1-1000 microns) with nanoscale fiber components (average length and diameter less than 1000 nm) results in composite particles exhibiting greatly enhanced flowability. According to paragraph [0043], the average powder size is preferably in a range of about 10nm-100 microns. Paragraph [0046] of the specification further states that the formation of cohesive agglomerates reduces the flowability and paragraph [0066] states that particles which still exhibit some dampness/tackiness after drying could have reduced flowability. Paragraph [0030] states that the flowability allows the materials to be used as powder feedstock for a variety of manufacturing methods.
Similarly, Grassi describes matrix powder with particle sizes of 0.5 and 3 microns (col. 2, lines 50-54) and whiskers with a length of 70-90 microns and a diameter of about 3 microns (col. 3, lines 1-2). During processing, the reinforced particles are dried in a spray dried at a time and temperature sufficient to evaporate all of the free moisture form the discrete droplets (col. 3, lines 19-33). Upon collection, the reinforcement particles are separate, nonagglomerated, free flowing powder particles suitable for direct use in thermal spray or dry processing applications (col. 3, lines 43-46).
Since Grassi teaches the use of the same size constituents as the invention, a similar drying method as the invention, and similar end uses as the invention, the reinforced powder particles of Grassi are expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claim 4, Grassi discloses all the limitations of claim 1 above. Grassi further discloses the matrix particle component may comprise alumina, zirconia, or other ceramic materials (col. 2, lines 29-32).
With respect to claims 5 and 7, Grassi discloses all the limitations of claims 1 and 4 above. Grassi further discloses the reinforcement particles may be silicon carbide whiskers, zirconia fibers, aluminum oxide fibers, tungsten carbide, or other ceramic fibers which may provide improved physical properties to composite materials (col. 2, lines 32-36).
Claim(s) 1-5 and 7-9 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Fujita (US 2013/0338292).
With respect to claims 1 and 4, Fujita discloses an alumina composite which includes an inorganic material at least partially embedded inside single-crystal α-alumina particles which constitute alumina particles (paragraph [0010]). The inorganic material is a filamentous material (paragraph [0011]).
With respect to claim 2, Fujita discloses all the limitations of claim 1 above. Figs. 2-8 of Fujita further show that the alumina composite forms a core-shell configuration. The inorganic fiber material is described as being at least partially embedded in the alumina particles (paragraphs [0010]-[0011]), therefore the fiber component forms the core and the matrix powder component forms the shell.
It is noted that the instant specification at paragraph [0033] notes that particles with some portion of the fiber component protruding therefrom are considered particles having a core-shell configuration. Therefore even though Fig. 2 of Fujita shows some protruding whiskers, it is interpreted as meeting the requirements of the claim.
With respect to claim 3, Fujita discloses all the limitations of claim 1 above. Fujita teaches the claimed invention above but does not expressly teach wherein the plurality of particles has a flowability defined by a Carr index of less than 25. It is reasonable to presume that the flowability of the particles is inherent to Fujita. Support for said presumption is found in that the specification as filed at paragraph [0040] further states that is has been found that the use of micron scale particle components (average particle size in the range of 1-1000 microns) with nanoscale fiber components (average length and diameter less than 1000 nm) results in composite particles exhibiting greatly enhanced flowability. According to paragraph [0043], the average powder size is preferably in a range of about 10nm-100 microns. Paragraph [0046] of the specification further states that the formation of cohesive agglomerates reduces the flowability and paragraph [0066] states that particles which still exhibit some dampness/tackiness after drying could have reduced flowability. Paragraph [0030] states that the flowability allows the materials to be used as powder feedstock for a variety of manufacturing methods.
Similarly, Fujita teaches the average particle diameter of the alumina particles is 0.1-100 microns (paragraph [0013]) and the carbon nanotubes have diameters of 1 nm or several tens of nanometers (paragraph [0039]). The particles may be spray dried (paragraph [0038]). Since Fujita teaches the use of the same size constituents as the invention and a similar drying method as the invention, the alumina composite particles of Fujita are expected to have the same properties as the claimed invention. See MPEP 2112.
With respect to claims 5 and 7, Fujita teaches all the limitations of claims 1 and 4 above. Fujita further teaches the inorganic material may include silicon carbide whiskers or silicon nitride whiskers (paragraph [0039]).
With respect to claims 8-9, Fujita teaches all the limitations of claim 1 above. Fujita further teaches the average particle diameter of the alumina particles is 0.1 to 100 microns (paragraph [0013]). Examples 1 and 5 have a particle diameter of 8.3 microns, Example 2 of 1.5 microns, Examples 3 and 4 of 1.2 microns, and Example 7 of 4/6 microns (Table 2).
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as being unpatentable over, Fujita (US 2013/0338292).
With respect to claim 10, Fujita teaches all the limitations of claim 1 above. Fujita further teaches carbon fiber content in the particles ranging from 1.5-4.7 wt% (Table 2). Since the carbon fibers are encapsulated in a single crystal alumina particle, it is reasonable to presume that the weight percentages are representative of the volume percentages. In the alternative it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a volume ratio of carbon fibers to alumina sufficient to provide the desired reinforcement of the alumina.
Claim Rejections - 35 USC § 103
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi (US 5254295) as applied to claim 1 above.
With respect to claim 10, Grassi discloses all the limitations of claim 1 above. Grassi does not explicitly teach the volume ratio of the whiskers to the matrix powder, however Grassi teaches the whiskers provide reinforcement and other improved physical properties (col. 2, lines 32-36) and the matrix particles help avoid segregation of components during subsequent deposition and dry forming (col. 1, lines 42-50). Desirably the reinforcement members extend outwardly from the matric material to promote an interlocking structure in subsequent compaction or deposition of the reinforced powder particles (col. 2, lines 20-25). Grassi further teaches that the matrix and reinforcement components can be separately selected to provide optimized physical properties such as tensile strength, hardness, wear, and ductility (col. 4, lines 9-14).
It therefore would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the volume ratio of whisker to matrix material to include the claimed range. One would have been motivated to provide a reinforced powder particle that has enough whiskers to sufficient reinforcement and interlocking ability as well as enough matrix powder to help avoid segregation of the particles during later processing, while also maintaining the desired tensile strength, hardness, wear, and ductility of the reinforced powder particle. It has been held that, where 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. See MPEP 2144.05(II).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi (US 5254295) as applied to claim 1 above, and further in view of Cochran Jr. (US 4867931).
With respect to claim 6, Grassi discloses all the limitations of claim 1 above.
Grassi is silent as to at least one of the whisker reinforcement members being organic.
Cochran Jr. teaches fiber reinforced hollow microspheres made from fibers in admixture with particles (col. 1, lines 6-16). The reinforcing fibers may be silicon carbide, silicon nitride, carbon, graphite, glass, metals, metal glass fibers and fibers made from organic resins (col. 1, lines 6-16).
Since both Grassi and Cochran Jr. teach particles reinforced by ceramic fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the ceramic whiskers of Grassi with the reinforcing fibers of Cochran Jr., such as fibers made from organic resins, because both ceramic fibers and organic fibers are known in the art as suitable for particle reinforcement and provide the predictable result of a fiber reinforced particle. See MPEP 2143(I)(B).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fujita (US 2013/0338292) as applied to claim 1 above, and further in view of Cochran Jr. (US 4867931).
With respect to claim 6, Fujita teaches all the limitations of claim 1 above.
Fujita is silent as to at least one of the whisker reinforcement members being organic.
Cochran Jr. teaches fiber reinforced hollow microspheres made from fibers in admixture with particles (col. 1, lines 6-16). The reinforcing fibers may be silicon carbide, silicon nitride, carbon, graphite, glass, metals, metal glass fibers and fibers made from organic resins (col. 1, lines 6-16).
Since both Fujita and Cochran Jr. teach particles reinforced by carbon fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the carbon fibers of Fujita with the reinforcing fibers of Cochran Jr., such as fibers made from organic resins, because both carbon fibers and organic fibers are known in the art as suitable for particle reinforcement and provide the predictable result of a fiber reinforced particle. See MPEP 2143(I)(B).
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Grassi (US 5254295) as applied to claim 1 above, and further in view of Lee (KR 2013-0089408)3.
With respect to claims 8-9, Grassi discloses all the limitations of claim 1 above. Grassi further teaches the reinforced powder particles may be used in thermal spray applications (col. 3, lines 43-46).
Grassi is silent as to the reinforced powder particles having a diameter in the range of 1-1000 microns, preferably less than about 100 microns.
Lee teaches thermal spray coating material using a composite ceramic material powder which includes a nitride or a carbide mixed with oxide ceramics (paragraph [0001]). The size of the composite powder is 5-100 microns which is suitable for thermal spraying (paragraph [0032]).
Since both Grassi and Lee teach ceramic composite powder particles for use in thermal spray applications, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the reinforced powder particles of Grassi to have a particle size of 5-100 microns because that size is known in the art as suitable for thermal spraying.
Conclusion
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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Cited in IDS
2 Machine translation used as reference
3 Machine translation used as reference
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