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 .
This action is responsive to Applicant’s response to election/restriction filed 07/06/2026.
Claims 1-12 are currently pending.
The Drawings filed 12/06/2023 are approved by the examiner.
The IDS statement filed 12/07/2023 has been considered. An initialed copy accompanies this action.
Applicant’s election without traverse of Group I, claims 1-5, in the reply filed on 07/06/2026 is acknowledged.
Claims 6-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
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 3 and 5 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.
Claim 3 recites the limitation “wherein the iron oxide is Fe2O3 and the coating layer has a hercynite structure represented by formula of AlFe2O3” which is indefinite for at least two reasons.
Note the parent claim recite the coating layer is composed of iron oxide and aluminum oxide, construed to mean the coating layer comprises both iron oxide and aluminum oxide. The aluminum oxide is presumed to be Al2O3. This means the scope of claim 3 is effectively the coating layer comprises both Fe2O3 and Al2O3. It is seriously unclear how Fe2O3 and Al2O3 is represented by [a] formula AlFe2O3. The stoichiometry does not match and does not make sense. Fe2O3 and Al2O3 have the metals in the 3+ state whereas the formula has metals with an average 2+ state (Al is 3+, meaning the 2 atoms of Fe have an average 1.5+ charge). How can Fe2O3, i.e., iron (III) oxide, (and aluminum oxide) be present in AlFe2O3?
The claim is also unclear because, even if the stoichiometry of the formula and particular compounds thereof made sense, it is unclear how AlFe2O3 constitutes a hercynite structure. Search of the prior art revealed hercynite structures are of the formula FeO.Al2O3, i.e., FeAl2O4 or ferrous aluminate, not AlFe2O3:
Baldwin (“The formation and decomposition of hercynite (FeO.Al2O3)”, Journal of the Iron and Steel Institute, London, 179, 142-146, 1955, abstract only) is a cited reference of interest that hercynite has the formula FeO.Al2O3 (i.e., FeAl2O4) from the combination of ferrous oxide (i.e., FeO) and alumina (i.e., Al2O3).
Lumsden et al. (US 2,932,566 A) is a cited reference of interest that hercynite is ferrous aluminate of the formula FeAl2O4 (col. 2 lines 65-67 and col. 3 line 19).
Carrier (US 4,256,722 A) is a cited reference of interest that hercynite is a spinel of the formula FeO.Al2O3 (col. 1 lines 65-66), i.e., FeAl2O4.
It is unclear how the recited formula AlFe2O3 represents a hercynite structure because AlFe2O3 is not the formula for hercynite. It is unclear whether the term is represented by an erroneous formula (i.e., the AlFe2O3 formula is an error for some other formula) or is being in a manner contrary to or inconsistent with its ordinary meaning without clearly redefining the term (i.e., the specification does not clearly redefine the term).
The prior art evidence of a hercynite structure further renders the claims indefinite because it is unclear how the coating layer has a hercynite structure with Fe2O3 therein when hercynite structures contain FeO without Fe2O3.
There is a great deal of confusion and uncertainty as to the proper interpretation of claim 3 due to the aforementioned issues, and a person of ordinary skill in the art would not be apprised as to the scope of the invention. Where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art. As stated in In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims. See MPEP 2173.06.
In claim 5, the term “particle size” lacks sufficient antecedent basis which renders the term and its following limitation indefinite. Note that parent claim 1 does not positively recite or imply the presence of particles. For purposes of further examination the claim will be construed as meaning the thermal transfer media has (i.e., is present) a particle size of 100 to 1,000 micrometers.
Appropriate correction/clarification is required.
Claim Rejections - 35 USC § 102 & 103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed 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.
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Pridatko et al. (RU 2098553 C1).
Pridatko et al. teach grains of sand, e.g., quartz (i.e., silica) sand, having a core and a shell covering it where the shell contains silicon oxide, alumina (i.e., aluminum oxide), and iron oxide (see the paragraph beginning with the sentence “When implementing this method, the following is observed.” on p.2 of the English language machine translation of the reference. This precisely describes a particle comprising a silica sand (quartz, i.e., SiO2/silica, is sand) and a coating layer composed of/comprising iron oxide and aluminum oxide coated on the core.
The claimed preamble limitations that the composition is a thermal transfer media for a concentrating solar power system is merely an intended use that does not patentably distinguish beyond the structure recited in the body of the claim (i.e., silica core and a coating layer comprising iron+aluminum oxides on the core).
The reference teaches the exact structure as claimed such that the claimed bulk density and true densities are presumed inherent of the disclosed particles.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Pridatko et al. (RU 2098553 C1) as applied to claims 1 and 4 above, and as evidenced by or further in view of Choo et al. (“Coating effects of nano-sized particles onto sand surfaces: small strain stiffness and contact mode of iron oxide-coated sands”, J. Geotech. Geoenviron. Eng., 2015, 141(1), 04014077).
The disclosure of Pridatko et al. is relied upon a set forth above. The reference teaches grains of sand amounting to the claimed core/coating layer structure, but fails to teach the claimed particle size of 100 to 1,000 micrometers.
However, Choo et al. teach sand particle sizes typically range from 0.11 to 0.72 mm, i.e., 110 to 720 micrometers, in diameter (abstract). Accordingly, one of ordinary skill in the art would regard Pridatko et al.’s grains of sand as intrinsically meeting the claimed particle size as Choo et al. serves as extrinsic evidence grains of sands typically have such a particle size. Alternatively, at the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to provide a particle size overlapping/within that claimed as taught by Choo et al. to Pridatko et al.’s grains of sand because Choo et al. serves as extrinsic evidence grains of sands typically have or can be obviously adjusted to have such a particle size with a reasonable expectation of success.
Claims 1, 2, and 4 are rejected under 35 U.S.C. 103 as being unpatentable over Cai et al. (US 2014/0275326 A1).
As to claim 1, Cai et al. teach a material having a core made of a core material and a shell made of a shell material where the shell material coats or covers at least a portion of the core (abstract). The shell may partially or entirely cover the surface of the core (para. 0013). Suitable materials for the core material and shell material include, among others, SiO2, Al2O3, and Fe2O3 or mixtures thereof (para. 0014).
While Cai et al. fail to precisely teach a core comprising silica and a coating layer/shell composed of iron oxide and aluminum oxide as claimed, the claimed limitations are nevertheless obvious over the cited teachings of the reference under a prima facie case of obviousness. At the time of the effective filing date it would have been obvious to a person of ordinary skill in the art to arrive at a core comprising silica and a coating layer/shell composed of iron oxide and aluminum oxide from the cited teachings of the reference as the reference teaches selecting the materials of the core and shell that encompass silica sand (quartz, i.e., SiO2/silica, is sand) as the core and a mixture of Al2O3 and Fe2O3 as the shell coated on the core in order to obtain a dental filler material with a very reasonable expectation of success.
The claimed preamble limitations that the composition is a thermal transfer media for a concentrating solar power system is merely an intended use that does not patentably distinguish beyond the structure recited in the body of the claim (i.e., silica core and a coating layer of iron+aluminum oxides on the core).
As to claim 2, the reference encompasses the claimed ratio of parts by weight of the oxide components. Cai et al. teach the shell material may have a particle size, i.e., thickness, of about 1 nm to 300 nm whereas the core material has a size of about 300 nm to about 2 micrometers (para. 0011-0012) meaning there may be a substantially larger amount of the core material than the shell material. The sizes are provided to provide good polishability of the filler and the core and shell materials are picked to improve the wear resistance and mechanical strength of a composite of the filler as well (para. 0019). Accordingly, at the time of the effective filing date it would have been obvious to vary and tailor the relative size (and thus the weight amount) of the (SiO2) core to shell in order to tailor the polishability of the filler while also vary and tailor the relative amount of the components of the shell (Al2O3 and Fe2O3) in order to improve wear resistance and mechanical strength with a reasonable expectation of success.
As to claim 4, while the reference fails to teach the bulk density and true density of the filler, the claimed densities would flow naturally from the cited teachings of the reference as the reference encompasses a silica core with an iron oxide and aluminum oxide shell coating material coated thereon as claimed, present as a filler material (i.e., particulate).
Claims 1 and 4 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Todea et al. (“Synthesis and characterization of composite SiO2-Al2O3-Fe2O3 core-shell microspheres”, Journal of Sol-Gel Science and Technology, 2020, 96, 395-404).
Todea et al. teach microspheres with a diameter around/above 1 micrometer with a SiO2 core and (100-x)Al2O3∙Fe2O3 (x = 0, 5, and 10 mol%) shell (abstract). See also Fig. 1. This precisely describes a particle comprising a silica sand (quartz, i.e., SiO2/silica, is sand) and a coating layer composed of iron oxide and aluminum oxide coated on the core.
The claimed preamble limitations that the composition is a thermal transfer media for a concentrating solar power system is merely an intended use that does not patentably distinguish beyond the structure recited in the body of the claim (i.e., silica core and a coating layer of iron+aluminum oxides on the core).
The reference teaches the exact structure as claimed such that the claimed bulk density and true densities are presumed inherent of the disclosed particles.
Prior Art Cited But Not Applied
The following prior art is made of record and not relied upon but is considered pertinent to Applicant's disclosure:
Odan et al. (JP 63-020367 A) teach a silica particle with an average particle size of 1 to 8 micrometers having a hematite particle layer formed on the surface thereof (abstract). Hematite is Fe2O3, an iron oxide. While the reference teaches particles comprising a silica core and a coating layer composed of iron oxide coated on the core, Odan et al. fail to teach or suggest the additional presence of aluminum oxide in the coating layer as claimed.
Pastorelli (EP 2049606 B1) teaches a quartzous silica useful as a white pigment present as particle grains of 0.06-0.5 mm (i.e., 60-500 micrometers) with the composition comprising SiO2 => 99.00%, Fe2O3 =< 0.015%, and Al2O3 =< 0.20% (abstract, para. 0006, 0040). However, Pastorelli fails to teach or suggest the particle grains specifically have the claimed core-shell structure of a silica core and a shell/coating layer of the Al2O3 and Fe2O3 coated on the core. Pastorelli's structure amounts to particles having the disclosed composition throughout the entire particle and fails to teach or suggest (or provide any further motivation to modify) the iron oxide and the aluminum oxide are present as a distinct coating layer coated on an underlying silica core, as claimed.
The remaining references listed on Forms 892 and 1449 have been reviewed by the examiner and are considered to be cumulative to or less material than the prior art references relied upon or discussed above.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW R DIAZ whose telephone number is 571-270-0324. The examiner can normally be reached Monday-Friday 9:00a-5:00p EST.
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/MATTHEW R DIAZ/Primary Examiner, Art Unit 1761
/M.R.D./
July 16, 2026
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