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 1-7 in the reply filed on September 11th, 2026 is acknowledged.
Claims 8-9 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on September 11th, 2026.
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.
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.
Claims 1-3, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Ozaki (U.S. 2012/0171450 A1).
Regarding claim 1, Ozaki teaches a high-purity fine-grained alumina powder (Ozaki, [0040]) comprising alumina particles having an average particle size of 0.1 μm or more and 1.0 μm or less (Ozaki, [0040]), which overlaps with the claimed range of D50 ≤ 0.20 μm, and a BET specific surface area (SBET) satisfying the relationship 0.1 x 10-6 m3/g ≤ D50 x SBET ≤ 10 x 10-6 m3/g (Ozaki, [0040], SBET is 1 m2/g to 10 m2/g, and D50 is 0.1 μm to 1.0 μm), which overlaps with the claimed range of D50 x SBET ≤ 2.0 x 10-6 m3/g, the alumina particles having a content of each of sodium (Na), silicon (Si), iron (Fe), and calcium (Ca) of 10 ppm or less (Ozaki, [0040]).
Ozaki’s average particle size is measured on a mass basis (Ozaki, [0103], rather than on a volume basis measured at a cumulative volume of 50% in a volume particle size distribution as claimed. However, absent any evidence to the contrary, the value of average particle size measured by Ozaki is presumed to be consistent with a D50 measured using a volume particle size distribution.
Additionally, it would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the D50 and D50 x SBET values because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 2, Ozaki renders the high-purity fine-grained alumina powder according to claim 1 obvious, as discussed above, wherein the particle size (D50) and the BET specific surface area satisfy the relationships 0.1 μm ≤ D50 ≤ 1.0 μm (Ozaki, [0040], see discussion of claim 1 regarding the equivalence of Ozaki’s measurement with D50) and 0.1 x 10-6 m3/g ≤ D50 x SBET ≤ 10 x 10-6 m3/g (Ozaki, [0040], SBET is 1 m2/g to 10 m2/g, and D50 is 0.1 μm to 1.0 μm), which overlap with the claimed ranges of D50 ≤ 0.17 μm and D50 x SBET ≤ 1.8 x 10-6 m3/g, respectively.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portions of the D50 and D50 x SBET values because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 3, Ozaki renders the alumina powder according to claim 1 obvious, as discussed above, wherein the alumina powder satisfies the relationship 0.1 x 10-6 m3/g ≤ D50 x SBET ≤ 10 x 10-6 m3/g (Ozaki, [0040], SBET is 1 m2/g to 10 m2/g, and D50 is 0.1 μm to 1.0 μm, see discussion of claim 1 regarding the equivalence of Ozaki’s measurement with D50), which overlaps with the claimed range of D50 x SBET ≤ 2.0 x 10-6 m3/g.
It would have been obvious to one of ordinary skill in the art before the
effective filing date of the invention to have selected the overlapping portion of the D50 x SBET values because selection of overlapping portions of ranges has been held to be a prima facie case of obviousness. See MPEP § 2144.05.I.
Regarding claim 5, Ozaki renders the alumina powder according to claim 1 obvious, as discussed above, wherein the alumina powder has a pressurized bulk density (GD) of 2.39 to 3.98 g/cm3 (Ozaki, [0099], [0014], relative density of 60% or more).
Regarding claim 7, Ozaki renders the alumina powder according to claim 1 obvious, as discussed above, wherein the alumina powder has an α-phase content of approximately 100% (Ozaki, [0040] explicitly teaches that the alumina powder is α-alumina having a high purity. Non-α phases are discussed separately outside of the context of the α-alumina powder, e.g., in Paragraph [0062]).
Allowable Subject Matter
Claims 4 and 6 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Ozaki (U.S. 2012/0171450 A1) is considered to be the closest prior art to the instant claims.
Regarding claim 4, Ozaki renders the alumina powder according to claim 1 obvious, as discussed above, but is silent to characteristics of an X-ray diffraction profile, including full width at half maximum (FWHM) values. The FWHM values of an XRD profile of Ozaki’s alumina powder cannot be determined, and there is no teaching or suggestion of modifying Ozaki’s alumina powder such that an XRD peak would have a FWHM of 0.240° or less. Even if there was a motivation to modify Ozaki’s alumina powder, the FWHM of its XRD pattern could not reasonably be decoupled from its D50 or SBET values such that the ranges recited in claim 1 could be expected to continue to be met after modification. The claim therefore contains allowable subject matter.
Regarding claim 6, the claimed relationship between D10, D90, and D50, (D90 – D10)/D50 ≤ 1.5, is not taught or suggested in the cited prior art.
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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