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 .
This application is in response to preliminary amendment filed on 06/21/2024.
Claims 1-20 are pending. Applicant has elected Group I, claims 1-13, 16-20, during the telephone interview on 09/08/2026. Claims 14-15 are withdrawn as non-elected Group II claims.
Election/Restriction
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I - Claims 1-13 and 16-20 drawn to a process for preparing alpha alumina.
Group II- Claims 14-15 drawn to a composition comprising alpha alumina particulates.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of alpha-alumina particulates, this technical feature is not a special technical feature as it does not make a contribution over the prior art of Drumm (US Patent No.: 7022305 B2) and Adair et al (US Patent No.: 5759213) which discloses alpha alumina (Col.1 lines 65-67 thru Col.2 lines 1-62, examples of Drumm and Col.3 lines 21 thru col.4 lines 1-5, lines 20-35 of Adair) and further Adair discloses having polyhedron having at least 12 faces (i.e., 14 faces, Col.5 lines 20-26).
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be amended in compliance with 37 CFR 1.48(b) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. Any amendment of inventorship must be accompanied by a request under 37 CFR 1.48(b) and by the fee required under 37 CFR 1.17(i).
A telephone call was made to Attorney Benjamin D. Levitas on 09/08/2026 to request an oral election to above restriction requirement and applicant has elected Group I, claims 1-13 and 16-20.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of a species or invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention or species may be made with or without traverse. To preserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable on the elected invention or species.
Should applicant traverse on the ground that the inventions have unity of invention (37 CFR 1.475(a)), applicant must provide reasons in support thereof. Applicant may submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. Where such evidence or admission is provided by applicant, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103(a) of the other invention.
Applicant is reminded that upon the cancellation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
Applicant is reminded of the proper content of an abstract of the disclosure.
A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains. The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure. If the patent is in the nature of an improvement in an old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement. The abstract should also mention by way of example any preferred modifications or alternatives.
Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps.
Extensive mechanical and design details of an apparatus should not be included in the abstract. The abstract should be in narrative form and generally limited to a single paragraph within the range of 50 to 150 words in length.
See MPEP § 608.01(b) for guidelines for the preparation of patent abstracts.
Currently abstract is less than 50 words in length. It is suggested to have the abstract within the range of 50 to 150 words in length.
Claim Objections
Claims 1,3,6,16 are objected to because of the following informalities:
In order to ensure proper antecedent basis and to provide clarity in the claim, it is suggested to amend “the solution of (c)” to “the mixture of step (c)" in claim 1 line 6.
In order to provide clarity in the claim, it is suggested to amend “used” to “used in step (b)" in claim 1 line 7.
In order to ensure proper antecedent basis in the claim, it is suggested to amend “solvent” to “the solvent” in Claim 3 line 2.
In order to ensure proper antecedent basis in the claim, it is suggested to amend “the pH” to “a pH” in claim 6 line 2.
In order to ensure proper antecedent basis in the claim, it is suggested to amend “the pH” to “a pH” in claim 16 line 1.
Appropriate corrections are 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.
Claims 10 and 12 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.
Claim 10 recites “DIN ISO 18748” is not clear asto what “DIN ISO 18748” means and is also not clear from applicant specification. Clarification is requested.
Claim 12 recites “the reactor treats the reactants” lacks the antecedent basis and not clear asto how the reactor is treating the reactants as there is no mention of reactor treating the reactants in claim 1 which claim 12 depends on and further claim 1 only mention the process of preparing alpha alumina with steps a-d and does not require any reactor nor any reactants. Clarification is requested. For examining purpose, examiner has interpreted as treating the solution (c) at a temperature and pressure for a time of between 5 ms and 50 days.
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.
Claims 1-13 and 16-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Drumm et al (US Patent No.: 7022305) in view of Adair et al (US Patent No.: 5759213).
Regarding Claims 1-4, 7, 9, 11-13, 19 and 20, Drumm discloses a method for preparing alpha alumina comprising, providing aluminum precursor such as aluminum nitrate, aluminum chloride (reads on claims 1 and 2 for aluminum precursor) dissolved in deionized water (i.e., solvent, reads on claim 1 and 3) and base such as sodium hydroxide or potassium hydroxide or ammonia, urea (reads on base, reads on claims 1 and 4). Precipitation or ripening is usually carried out at temperature from 50 to 100°C for 20 to 145 hours (reads on claims 1, 7, 9, 19). Drumm discloses thermally treating at temperature from 150-500°C and calcination at temperatures from 700-975°C from one to 3 hours (reads also on claims 11 and 20 for temperature and claim 12 for time between 5ms and 50 days, see Col.1 lines 65-67 thru Col.2 lines 1-61, examples). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Drumm does not explicitly disclose or suggest treating the precipitated solution at pressure above the critical point of the solvent used.
However, Adair discloses a method for producing alpha alumina particles comprising by precipitation of slowly adding KOH solution (reads on base) to aqueous aluminum nitrate (reads on aluminum precursor) with rapid stirring to attain desired pH value of the solution to promote formation of alpha alumina. The precipitated aluminum hydrous oxide is then washed by repeated cycle of centrifugation and redispersion in deionized water and then methanol (reads on solvent) and then the suspension is heated to approximately 70°C and kept until methanol residual is evaporated from the suspension. Then suspension is then placed in a pressure vessel equipped with magnetic stirring. Then treating the suspension at an elevated temperature and pressure of 4MPa and 6 MPa (equivalent to 40 to 60 bar, reads on pressure) from several hours to 24 hours (reads also on claims 11 and 20 for pressure of 10 bar to 500 bar and claim 12 for time between 5ms and 50 days, Col.3 lines 21 thru col.4 lines 1-5, lines 20-35). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, it would have been obvious to one of the ordinary skill in the art at before the effective filing date of applicant invention to modify the method of Drumm to include the pressure in particular to 40 to 60 bar of Adair which would provide desired size and morphology in the alpha-alumina particles as taught by Adair (Col.2 lines 13-14).
Further Regarding claim 13, notwithstanding the method steps taught by Drumm and Adair, the process limitations of the instant claims are not considered to provide any structural definition over the prior art. “[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). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Regarding Claims 5 and 17, Drumm discloses mixture temperature is 85°C (see example 1). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 6 and 16, Drumm discloses a pH 4.8+-0.1 (see example 1). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claims 8 and 18, Adair discloses stirred at rate of 240 rpm (Col.3 lines 62-65). As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 10, Since Drumm in view of Adair discloses the process for preparing the alpha alumina process as disclosed above substantially identical to presently claimed invention therefore step (c) is aged until the mixture is transparent is expected unless otherwise unexpected results are shown by applicant.
Conclusion
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/SMITA S PATEL/Primary Examiner, Art Unit 1732 09/27/2026
