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 with traverse of Group I, claims 1-10, in the reply filed on January 23, 2026 is acknowledged. The traversal is on the ground(s) that one of ordinary skill in the art would not have been interested in Tsunekawa for the improvement of wear resistance in beads. Additionally, Applicant argues that Tsunekawa is very broad and does not provide motivation towards the specific composition. This is not found persuasive because the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art (i.e. improved wear resistance) cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
Further, regarding the broad disclosure of Tsunekawa, wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality; see MPEP 2144.05 I & II regarding overlapping ranges. Examiner further notes, however, that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see MPEP 2123.
Lastly, as discussed in the restriction requirement, given the technical feature linking the inventions of Groups I-IV does not provide a contribution over the prior art and no single general inventive concept exits, there is in fact a lack of unity among the stated groups; see PCT Rule 13.1 and 13.2.
The requirement is still deemed proper and is therefore made FINAL.
Claims 11-16 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected powder, device and method, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on January 23, 2026.
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 1-10 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 1 recites the broad recitation regarding the amount of Y2O3, CeO2 and monoclinic zirconia, and the claim also recites a proviso regarding those range amounts, which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 2-10 are rejected as indefinite for depending from an indefinite claim.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2 and 3 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claims 2 and 3 require a content of Y2O3 without a lower a limit. Note that claim 2 depends from claim 1, which does have a lower limit for the amount of Y2O3. As such, claims 2 and 3 cannot have an unbounded lower limit. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 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 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.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over Niwa et al. (US 2001/0039237).
Regarding claim 1, Niwa discloses a zirconia containing ceramic ball manufactured through firing a green body, which corresponds to a zirconia sintered bead, see abstract. Additionally, the reference discloses that one or more species of Ca, Y, Ce and Mg are incorporated into the zirconia ceramic phase in a total amount of 1.4 to 4 mol% as reduced to oxides, i.e. CaO, Y2O3, CeO2, and MgO, respectively [0041-0043]. The reference further discloses that the zirconia containing ceramic ball contains the zirconia ceramic phase in an amount from 60% by volume or more (including 100% by volume) [0041]. The reference further discloses the zirconia containing ceramic material as comprising a cubic system phase and a tetragonal system phase, which corresponds to a stabilized crystalline phase, see Niwa [0039] and claim 7.
Note that based on the disclosed volume content of zirconia as well as the mole % of Ca, Y and Ce, the reference is considered to render obvious the claimed ranges for the components of the bead composition; see MPEP 2144.05 I “In the case where the claimed ranges ‘overlap or lie inside ranges disclosed by the prior art’ a prima facie case of obviousness exists.” Further note that the total range of Ca, Y and Ce is considered to render the individual claimed ranges for each component as well as the ZrO2 + HfO2 + Y2O3 + CeO2 remainder to 100% and the other oxides of less than or equal to 5%; see MPEP 2144.05 I.
While the reference does not specifically disclose the mass percentages of the crystalline phases, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure given the similar composition and method of making; see Niwa abstract and [0041-0043] and Applicant’s specification pages 2-4. Note 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; see MPEP 2112.01 I.
Regarding claims 2 and 3, given the reference discloses that one or more species of Ca, Y, Ce and Mg are incorporated into the zirconia ceramic phase in a total amount of 1.4 to 4 mol% as reduced to oxides, i.e. CaO, Y2O3, CeO2, and MgO, respectively, the reference is considered to render obvious the claimed amount of Y2O3 [0041-0043]; see MPEP 2144.05 I.
Regarding claim 4, based on the disclosed volume content of zirconia as well as the mole % of Ca, Y and Ce, the reference is considered to render obvious the claimed ranges for the components of the bead composition; see above discussion and MPEP 2144.05 I. Further note that the total range of Ca, Y and Ce is considered to render the individual claimed ranges for each component as well as the ZrO2 + HfO2 + Y2O3 + CeO2 remainder to 100% and the other oxides of less than or equal to 5%, see MPEP 2144.05 I.
Regarding claim 5, given the reference discloses that one or more species of Ca, Y, Ce and Mg are incorporated into the zirconia ceramic phase in a total amount of 1.4 to 4 mol% as reduced to oxides, i.e. CaO, Y2O3, CeO2, and MgO, respectively, the reference is considered to render obvious the claimed amount of CeO2 [0041-0043]; see MPEP 2144.05 I.
Regarding claim 6, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure given the similar composition and method of making, see above discussion and MPEP 2112.01 I.
Regarding claim 7, the reference does not disclose the sintered ceramic as containing an amorphous phase, see entire document. Alternatively, given the similar composition and method of making, it is expected the disclosed and the claimed zirconia ceramic will have a similar crystalline structure, see above discussion and MPEP 2112.01 I.
Regarding claim 8, the reference renders obvious zirconia stabilized with Y2O3 and CeO2 [0041-0043].
Regarding claims 9 and 10, the reference discloses the average grain size as 0.3 to 2 microns, which overlaps the claimed range [0056]; see MPEP 2144.05 I.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of copending Application No. 17/916,686 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they both claim a sintered bead with similar composition and crystalline phases.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/LAURA A AUER/ Primary Examiner, Art Unit 1783