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 1-18 in the reply filed on 04/13/026 is acknowledged.
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 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.
Claim(s) 1-18 is/are rejected under 35 U.S.C. 102(a) (10as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over US20120321851A1.
Regarding claims 1 - 6, US20120321851A1 discloses a wear resistant member comprising a ceramic sintered body, the ceramic sintered body comprising:
silicon nitride,
10 to 3500 ppm by mass of an Fe component in terms of Fe element,
more than 1000 ppm to 2000 ppm by mass of a Ca component in terms of Ca element, and
1 to 2000 ppm by mass of a Mg component in terms of Mg element,
wherein
a β-phase ratio of silicon nitride crystal grains is 95% or more,
a maximum longer diameter of the silicon nitride crystal grains is 40 μm or less,
a grain boundary phase comprises an amount of the Ca component that is below a detection limit of XRD, and
each of dispersions in hardness, fracture toughness and density of the wear resistant member is within a range of ±10%. See claim 1
Each of the material powder mixtures was wet pulverized (blended and ground) in ethyl alcohol using silicon nitride balls as a grinding medium for 48 hours and was then dried to prepare uniform material powder mixtures. Further, an organic binder was added to each of the uniform material powder mixtures thereby to prepare blended-granulated powders. See [0145].
The ceramic sintered body is sintered in the primary sintering step so as to obtain a relative density of 80 to 98% or less which is lower than that of a sintered body manufactured by conventional manufacturing method. Thereafter, the sintered body is further sintered in the secondary sintering step so as to mainly increase the relative density of the sintered body. As a result, the dispersions in hardness and fracture toughness of the silicon nitride sintered body (wear resistant member) can be suppressed to within a range of ±10%. See [0115].
Although the prior art is silent about the Raman spectroscopy performance, 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).
In the alterative, 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 7, although the prior art is silent about the flexural strength, 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).
In the alterative, 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 8 - 9, the wear resistant device of the present invention comprises, for example, a bearing using the wear resistant member as rolling balls, or a device comprising this bearing. See [0065].
Regarding claim 10, although the prior art is silent about the rolling life, 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).
In the alterative, 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 11-12, although the prior art is silent about the peak performance, 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).
In the alterative, 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 13-14, the wear resistant device of the present invention comprises, for example, a bearing using the wear resistant member as rolling balls, or a device comprising this bearing. See [0065].
Regarding claims 15-16, although the prior art is silent about the peak performance, 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).
In the alterative, 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 17-18, the wear resistant device of the present invention comprises, for example, a bearing using the wear resistant member as rolling balls, or a device comprising this bearing. See [0065].
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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