DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
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.
Regarding claim 1, it is unclear if the first range for monoclinic zirconia of greater than 10% and less than or equal to 15% is measured differently than the range of monoclinic zirconia that is less than or equal to 15%. It is also unclear if the first range of 10% up to and including 15% is only for when CeO2 is greater than or equal to 0.1% and less than or equal to 1.7% or if it is for all the ranges of CeO2. Additionally, it is unclear if the statement “with the proviso that” in the fourth line from the bottom of the page 2 applies to the all the limitations above or if it is present only when a specific condition is met. Regarding the ranges for Y2O3 and CeO2 in the third line from the bottom of page 2, the compounds do not have a lower limit, which makes the ranges broader than the ranges cited previously in the claim. Further, it is unclear why the last line limits monoclinic zirconia to 10% up to and including 15% when it appears the claim already limits the range of monoclinic zirconia.
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.
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.
Note that the terminal disclaimer filed May 26, 2026 was disapproved, see outgoing document dated June 2, 2026.
Response to Arguments
Applicant's arguments filed May 26, 2026 have been fully considered but they are not persuasive.
Regarding the rejections under 35 U.S.C. 112, Applicant argues that the current amendments overcome the rejection. Examiner notes that for the above stated reasons, claims 1-10 remain rejected under 35 U.S.C. 112.
Regarding the double patenting rejections, Examiner notes the terminal disclaimer was disapproved, see outgoing document dated June 2, 2026.
Regarding the rejections under 35 U.S.C. 103 over Niwa, Applicant argues that based on the disclosure of Niwa, the probability of selecting the claimed ranges in the claimed amounts does not rise to a level of obviousness. Additionally, Applicant argues that the selected ranges of claim 1 are not arbitrary. Specifically, Applicant notes that Table 2 of Applicant’s specification shows improved wear resistance based on the amounts of Y2O3 and CeO2 whereas Applicant’s comparative example 2 shows higher wear. Lastly, Applicant argues that the preferred examples of Niwa do not provide motivation for including ceria and teach away from the claimed upper limit of alumina. As such, Applicant requests the withdrawal of the rejections over Niwa under 35 U.S.C. 103. Examiner respectfully disagrees.
Regarding the probability of selecting the claimed components in the claimed amounts, Examiner notes that all of the ranges disclosed in the references overlap the ranges of the components in the claimed composition, see above discussion. As such, as discussed above and previously, a prima facie case of obviousness exists; see MPEP 2144.05 I. While Applicant argues that the disclosure provides a large number of combinations, the rejection is not based on optimization of a variable; see MPEP 2144.05 II A. Note that when the rejection is based on optimization, one factor that may weigh against maintaining the rejection is where applicant establishes that the prior art disclosures of the variable is within a range so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art; see MPEP 2144.05 III D.
Applicant may rebut a prima facie case of obviousness by showing the criticality of the claimed range or that the prior art teaches away from the claimed invention; see MPEP 2144.05 III A. & B. To the extent Applicant argues the reference teaches away from the claimed invention, Examiner notes that “disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments”; see MPEP 2123.
Further, in order to show criticality of the claimed range, "objective evidence of nonobviousness must be commensurate in scope with the claims"; see MPEP 716.02(d). The examples cited from Applicant’s specification are made using a specific method and with a specific grain size, both of which are not claimed. Given the claims do not include these limitations, Applicant’s argument of criticality is not commensurate in scope with the claims. Additionally, Applicant should compare a sufficient number of tests both inside and outside the claimed range; see MPEP 716.02(d) II. The comparative examples only provide on example above the claimed range and nothing below for Y2O3 and only examples below the claimed range with nothing above for CeO2. Similarly, the inventive examples do not show the unexpected result as across the entire claimed range. Lastly, any assertion of unexpected results must be compared with the closest prior art, see MPEP 716.02(e). Applicant has failed to provide a comparison between the claimed range and the closest prior art.
Given the disclosed ranges overlap the claimed ranges, that Applicant has not provided sufficient evidence of criticality or of teaching away and that the rejection is not based on optimization (i.e. broadness of the range is not a consideration in determining if the rejection is proper), Examiner respectfully maintains the rejections under 35 U.S.C. 103 over Niwa.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, M. Veronica Ewald can be reached at (571)272-8519. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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