DETAILED ACTION
The claims 1-14 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/05/2023, 09/03/2024, and 01/28/2025 are being considered by the examiner.
Claim Objections
Claim 8 objected to because of the following informalities: the claim is drawn to a wear-resistant member that is “using” the silicon nitride body of claim 1. It is not clear if this is meant to mean that the wear-resistant member is “comprising” the silicon nitride body, and this should be clearly reflected in the language of the limitations. Appropriate correction is required.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imamura et al (US 6846765 B2).
Regarding claim 1, Imamura et al teaches a silicon nitride-based powder having an oxygen content of 0.5 wt% or less, an average particle diameter of 0.2-10 µm, and an aspect ratio is 10 or less (see Abstract). Imamura et al further teaches that a sintered body is produced from the inventive silicon nitride-based powder (see to claim 1), and that the sintered body comprises a grain boundary phase (see Figs. 7(a) and 7(b)). Imamura et al teaches embodiments wherein the size (understood here as referring to major diameter) is 2 µm, the aspect ratio is 5, and the oxygen content is 0.3 wt% (see Table 10). This exemplary Imamura et al powder thus meets each limitation of the instant claim 1. Imamura et al teaches that a sintered body is produced from said powder by mixing, degreasing, and sintering under temperature, pressure, and atmospheric conditions substantially equivalent to those disclosed in the instant Specification as leading to the instantly claimed silicon nitride sintered body (see column 19, lines 35-45). The resultant sintered body taught by Imamura et al would thus also have the compositional (oxygen content) and grain size features of that of the instant claim. The uniform oxygen content and size properties of the Imamura et al sintered body would each be present in any 20x20 µm and 50x50 µm cross section of the sintered body. Each limitation of claim 1 is therefore met by the teachings of the prior art of record, and the claim is anticipated.
Regarding claim 2, Imamura et al teaches an oxygen content of 0.3 wt%.
Regarding claim 3, Imamura et al teaches that the inventive sintered body is produced by mixing and grinding the starting mixture, followed by a sintering process equivalent to that used in the instant Specification. There would be no reason for any difference in oxygen concentration between grains having a size of less than 3 µm as compared to grains having a size not less than 3 µm, and as such the oxygen concentration difference would be less than 0.1 wt% and this further limitation of instant claim 3 is met by the Imamura et al teachings.
Regarding claim 8, Imamura et al teaches that the inventive silicon nitride body is used for wear resistance films (see column 14, lines 15-20). Thus, a wear-resistant member comprising the silicon nitride sintered body that meets each limitation of instant claim 1 is taught by the prior art of record.
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.
Claims 4-7 and 9-14 are rejected under 35 U.S.C. 103 as being unpatentable over Imamura et al (US 6846765 B2).
Regarding claim 4, as discussed above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1. Imamura et al teaches that the silicon nitride substrate comprises 70-100% silicon nitride grains in terms of area ratio on a substrate surface, and thus 0-30% grain boundary phase (see column 8, lines 9-15). The percentage area constituted by the grain boundary phase would closely approximate the amount of said phase in the substrate volume. Further, the Imamura et al range for this component closely overlaps that of the instant claim 4. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05. The further limitations of instant claim 4 are therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Regarding claim 5, Imamura et al teaches a size of 2 µm for the silicon nitride powder, and teaches sintering in an equivalent temperature, pressure, and atmosphere to that used in the instantly disclosed method according to the Specification. There would be no indication to one of ordinary skill in the art that any grains in a 300 x 300 µm area would have a size of 25 µm or greater. Further, the Figs. 1, 3, and 7(a) show no grains having a size of greater than 25 µm. The further limitations of claim 5 are therefore met by the teachings of Imamura et al.
Regarding claim 6, the claim differs from Imamura et al because the XRD peak intensities at 42.4°, 27.1°, 33.6°, and 36.1° are not taught. However, as shown above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1, and that is sintered in an equivalent temperature, pressure, and atmosphere to that used in the instantly disclosed method according to the Specification. The Imamura et al silicon nitride further has an equivalent content of β-Si3N4. The resultant peak intensities of the Imamura material at the peaks of the instant claim would thus necessarily be equivalent, and the ratio (I42.4°)/(I27.1°+ I33.6°+I36.1°) would necessarily also be equivalent and fall within the range 0.005-0.030. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 7, Imamura et al teaches excellent toughness of the inventive ceramic (see column 13, lines 25-30), but does not quantitatively specify fracture toughness. However, as discussed above, Imamura et al teaches a sintered silicon nitride body that is equivalent to that of the instant claims. It necessarily follows, therefore, that the fracture toughness of said Imamura body would also be equivalent. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 9, Imamura et al teaches that the inventive silicon nitride material may be used in applications such as bearings and rollers (see columns 13-14, lines 65-5). As such, bear balls and bearing rollers comprising the inventive material would have been obvious to one of ordinary skill in the art from the Imamura et al teachings.
Regarding claim 10, as discussed above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1. Imamura et al teaches that the silicon nitride substrate comprises 70-100% silicon nitride grains in terms of area ratio on a substrate surface, and thus 0-30% grain boundary phase (see column 8, lines 9-15). The percentage area constituted by the grain boundary phase would closely approximate the amount of said phase in the substrate volume. Further, the Imamura et al range for this component closely overlaps that of the instant claim 10. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Imamura et al teaches a size of 2 µm for the silicon nitride powder, and teaches sintering in an equivalent temperature, pressure, and atmosphere to that used in the instantly disclosed method according to the Specification. There would be no indication to one of ordinary skill in the art that any grains in a 300 x 300 µm area would have a size of 25 µm or greater. Further, the Figs. 1, 3, and 7(a) show no grains having a size of greater than 25 µm.
The further limitations of instant claim 10 are therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Regarding claim 11, as discussed above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1. Imamura et al teaches that the silicon nitride substrate comprises 70-100% silicon nitride grains in terms of area ratio on a substrate surface, and thus 0-30% grain boundary phase (see column 8, lines 9-15). The percentage area constituted by the grain boundary phase would closely approximate the amount of said phase in the substrate volume. Further, the Imamura et al range for this component closely overlaps that of the instant claim 10. It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
Claim 11 differs from Imamura et al because the XRD peak intensities at 42.4°, 27.1°, 33.6°, and 36.1° are not taught. However, as shown above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1, and that is sintered in an equivalent temperature, pressure, and atmosphere to that used in the instantly disclosed method according to the Specification. The Imamura et al silicon nitride further has an equivalent content of β-Si3N4. The resultant peak intensities of the Imamura material at the peaks of the instant claim would thus necessarily be equivalent, and the ratio (I42.4°)/(I27.1°+ I33.6°+I36.1°) would necessarily also be equivalent and fall within the range 0.005-0.030. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
The further limitations of instant claim 11 are therefore met by the teachings of the prior art of record, and the claim is obvious and not patentably distinct.
Regarding claim 12, the claim differs from Imamura et al because the XRD peak intensities at 42.4°, 27.1°, 33.6°, and 36.1° are not taught. However, as shown above, Imamura et al teaches a silicon nitride-based powder and sintered body produced therefrom that meets each limitation of instant claim 1, and that is sintered in an equivalent temperature, pressure, and atmosphere to that used in the instantly disclosed method according to the Specification. The Imamura et al silicon nitride further has an equivalent content of β-Si3N4. The resultant peak intensities of the Imamura material at the peaks of the instant claim would thus necessarily be equivalent, and the ratio (I42.4°)/(I27.1°+ I33.6°+I36.1°) would necessarily also be equivalent and fall within the range 0.005-0.030. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 13, Imamura et al teaches that the inventive silicon nitride body is used for wear resistance films (see column 14, lines 15-20). Thus, a wear-resistant member comprising the silicon nitride sintered body that meets each limitation of instant claim 12 is rendered obvious and not patentably distinct by the prior art of record.
Regarding claim 14, Imamura et al teaches that the inventive silicon nitride material may be used in applications such as bearings and rollers (see columns 13-14, lines 65-5). As such, bear balls and bearing rollers comprising the inventive material would have been obvious to one of ordinary skill in the art from the Imamura et al teachings.
Conclusion
12. No claim is allowed.
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW6 February 2026