DETAILED ACTION
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 1-8 in the reply filed on July 10th, 2026 is acknowledged.
Claims 9-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to nonelected inventions, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on July 10th, 2026.
Claim Interpretation
Claim 7 recites a limitation directed to “low crystalline nano ZrO2/HfO2” in line 2. The Specification states, “Furthermore, the crystallinity of the low crystalline nano MO2 is less than 50%.” on Page 16, line 1. Therefore, “low crystalline nano ZrO2/HfO2” is interpreted to have a crystallinity of less than 50%, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
Specification
The disclosure is objected to because of the following informalities:
On Page 10, lines 15-16, the Specification recites the phrase, “On the contrary, the longer the reaction time;”, which appears to be an incomplete sentence. The sentence should be revised for grammatical correctness. The same phrase should be revised on Page 23, lines 25-26 and on Page 25, lines 16-17 of the Specification.
Appropriate correction is required.
Claim Objections
Claims 1 and 8 are objected to because of the following informalities:
Lines 5-6 of claim 1 appear to use an unconventional character in lieu of a comma after “O”, “H”, “Na”, “K”, “Mg”, “Ca”, and “Li”. This character should be replaced with a comma in each location it is used.
In line 3 of claim 8, “heating treat” should be edited to read, “heat treating”.
Appropriate correction is required.
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.
Claim 5 is 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 5 recites the limitation "the surfactants or modifiers" in line 4. There is insufficient antecedent basis for this limitation in the claim. For assessing the scope and meaning of the claim for prior art purposes, any surfactants or modifiers will be interpreted to read on “the surfactants or modifiers”, as individual claims are given their broadest reasonable interpretation in light of the specification. See MPEP § 2111.
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 8 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Schmidt (U.S. 2009/0004098 A1).
Regarding claim 8, Schmidt teaches a preparation method for crystalline nano ZrO2 (Schmidt, Figs. 1-2, [0018], [0047]-[0049]), wherein the crystalline nano ZrO2 mainly composed of crystalline nano ZrO2 was obtained by heat treating semi-crystalline ZrO2 (Schmidt, [0047]). While Schmidt does not explicitly teach that the semi-crystalline ZrO2 is described in step 4 according to claim 1, this is a product-by-process limitation. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by- process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). MPEP 2113. In the instant case, step 4 of claim 1 describes a product mainly composed of nano ZrO2/HfO2. Schmidt’s semi-crystalline ZrO2 is mainly composed of nano ZrO2 (Schmidt, Fig. 1, [0037], [0047]-[0049]), so it meets the claim limitation of “the product described in step 4 according to claim 1”.
Allowable Subject Matter
Claims 1-7 contain allowable subject matter and would be allowable if all claim objections and the rejection under 112(b)/2nd Paragraph were overcome.
The following is a statement of reasons for the indication of allowable subject matter: Yoshimura (“Hydrothermal synthesis of crystallized nano-particles of rare earth-doped zirconia and hafnia”, 1999), Li (“Electrochemical fabrication of highly ordered ZrO2-HfO2 binary oxides nanotube arrays”, 2014), Dezellus (“On the solubility of Group IV elements (Ti, Zr, Hf) in liquid aluminum below 800°C”, 2014), and Schmidt (U.S. 2009/0004098 A1) are considered to be the closest prior art to the instant claims.
Regarding claim 1 and its dependent claims 2-7, Yoshimura teaches a preparation of nano ZrO2, comprising providing a Zr-Al intermetallic compound (Yoshimura, Table 2, ZrAl3), reacting the compound with water, and collecting the solid products to obtain nano ZrO2 (Yoshimura, ZrO2). Yoshimura does not teach that the ZrAl3 is an alloy also comprising at least one of O, H, Na, K, Mg, Ca, Li, and Si or reacting the ZrAl3 with an alkaline solution. Because there is no solution per se in Yoshimura’s reaction (Yoshimura, Table 2, hydrothermal oxidation at 700°C), Yoshimura does not teach a step of reducing an alkaline concentration and/or temperature of the solution to precipitate the product.
Additionally, Li teaches anodization of a Hf/Zr alloy foil using an alkaline electrolyte solution (Li, Page 4915, Col. 2, Paragraph 3 - Page 4916, Col. 1, Paragraph 1, NH4F), but this reaction does not include an M-T intermetallic compound as claimed and does not decrease the temperature and/or concentration of the solution to precipitate the product.
Finally, Dezellus teaches that ZrAl3 and HfAl3 can each be recovered from an Al matrix by dissolving the Al matrix in 10 wt.% NaOH solution (Dezellus, Page 123, Col. 1, Paragraph 3; Page 124, Col. 2, Paragraph 3). Absent another teaching in the prior art to the contrary, this would not motivate a person having ordinary skill in the art to attempt reacting a Zr- or Hf- based Al intermetallic with an alkaline solution with a reasonable expectation of producing nano ZrO2/HfO2.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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