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 07/31/2026 is acknowledged.
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 1-7 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.
It is not clear that the claimed activation energy is refer to what? Activation energy for sintering or crystallization or electrical conductivity or else?
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 Rejections - 35 USC § 103
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.
Claim(s) 1 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by "Preparation, Sintering, and Properties of Translucent Er203-Doped Tetragonal Zirconia" to Duran P et al. (filed by applicant 04/11/2025).
Regarding claim 1, Duran P et al. discloses zirconia stabilized with 3 mole% of erbium with an activation of 270KJ/mole. See abstract. Please note that "50 ppm or less" includes zero.
Claim(s) 1-2, and 7 is/are rejected under 35 U.S.C. 102(a) (1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Enhanced electrical conductivity of ultrafine-grained 8Y2O3 stabilized ZrO2 produced by two-step sintering technique” to Hesabi et al. (filed by applicant on 04/11/2025).
Haesabi et al. disclose 8Y2O3 stabilized ZrO2 has U3O8 content of 30 ppm and TiO2 content of 15 ppm. See table 1.
As for the activation energy, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Claim(s) 1-2 and 5-6 is/are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over CN101698509.
Regarding claims 1-2, CN101698509 discloses zirconia content up to 99.9%( such as zirconia content 92.6%, yttrium oxide content 7.4%, about 5.3 mole%; Embodiment 6), and iron ion content is less than 10ppm, and silicone content is less than 20ppm, and titanium content is less than 10ppm, and sodium ions content is less than 20ppm, and the powder initial size is 10 nanometer to 80 nanometers, specific surface area 6m2/g to 80m2/g. See [0012] and [0023-0024].
As for the activation energy, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Regarding claims 5-6, CN101698509 discloses zirconia content up to 99.9%( such as zirconia content 92.6%, yttrium oxide content 7.4%, about 5.3 mole%; Embodiment 6), and iron ion content is less than 10ppm, and silicone content is less than 20ppm, and titanium content is less than 10ppm, and sodium ions content is less than 20ppm, and the powder initial size is 10 nanometer to 80 nanometers, specific surface area 6m2/g to 80m2/g.
Claim(s) 1-4 is/are rejected under 35 U.S.C. 102(a(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over “Preparation of 8 mol% yttria-stabilized zirconia by an oil flotation-assisted chemical coprecipitation route” to Yao et al.
Regarding claims 1-4, Yao et al. disclose prepareing nanosized 8 mol% yttria-stabilized zirconia (8YSZ) powder. To eliminate chloride ion, it is need to wash the
precipitate for many times with water. The content of chloride in 8YSZ powder prepared by flotation process is 141.4 ppm. In a counterpart process, the 8YSZ powder was prepared by conventional coprecipitation process in which the precursor was respectively laundered with deion water and ethanol for six times, and in this case, the content of chloride is around 107.2 ppm. The level of chloride in both cases is very low. It must be mentioned here that though the precipitate extracted by flotation method was washed just for two times, the content of chloride is almost as low as that of repeatedly washed powder. See page 505, right collum.
As for the activation energy, 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. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990).
In the alternative, the Examiner respectfully submits that although the prior art combination does not disclose the claimed properties, the claimed properties are deemed to naturally flow from the structure in the prior art combination, since the prior art combination teaches an invention with a substantially similar structure and chemical composition as the claimed invention. The burden is on the Applicants to prove otherwise. Furthermore, the Examiner respectfully submits that the U.S. Patent Office is not equipped with analytical instruments to test prior art compositions for the infinite number of ways that a subsequent applicant may present previously unmeasured characteristics. When as here, the prior art appears to contain the substantial ingredients and applicant's own disclosure supports the suitability of the prior art composition as the inventive composition component, the burden is properly shifted to applicant to show otherwise.
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731
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