DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission on 06/23/2026 has been entered. Upon entering the submission, claim 1 has been amended. New claims 9 and 10 are added. Claims 1-10 are pending. Claims 5-8 remain withdrawn. Claims 1-4 and 9-10 are under examination on the merits.
Response to RCE Submission
The Amendment by Applicants’ representative Chao Gao on 06/23/2026 has been entered.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§112(b)
Applicant amended claim 1 by further defining a standard deviation of a content of Yb2O3 “measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle” is 2 mass% or more and 7.0 mass% or less. In addition, Applicant stated that the limitation at issue is directed to defining the degree of compositional homogeneity within a particle. The recited range of 2 mass% to 7.0 mass% requires that the Yb2O3 content be neither fully homogeneous nor excessively heterogeneous across the cross-section of a single particle. See page 6 in the last paragraph of Applicant’s REMARK.
Applicant’s statement regarding the limitation is acknowledged. Actually, Applicant’s current interpretation of the limitation “wherein a standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle is 2 mass% or more and 7.0 mass% or less” is the same interpretation made by the examiner in the 1st Office action on the merits on 11/21/2025 as following:
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However, Applicant disagreed with the examiner’s interpretation, see page 4 of REMARKS filed 02/20/2026 shown as following:
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Applicant’s response to the statement is required to clarify the record.
In addition, amended claim 1 contains a new phrase “measured at a plurality of randomly selected points” wherein the term “a plurality of” is not defined. Applicant’s specification also does not describe the term “a plurality of”.
According to dictionary of Merriam-Webster, plurality means the state of being plural, which contains more than one or more than one kind or class. However, it is not clear how many times the measurements are randomly performed for selecting points to obtain the standard deviation of a content of Yb2O3 to meet the claimed limitation of 2 mass% or more and 7.0 mass% or less. It should be noted that the standard deviation of the content of Yb2O3 relates to the number of randomly selected points. Since amended claim 1 fails to define the term “a plurality of”, the meaning of the claimed limitation “2 mass% or more and 7.0 mass% or less” is not clear. Therefore, claim 1 is indefinite. Claims 2-4 depending on claim 1 are rejected, accordingly. The rejection is maintained.
Claim rejection under 35 U.S.C.§102(a)(1)
Applicant amended claim 1 by further limiting “wherein a standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle is 2 mass% or more and 7.0 mass% or less, and the ceramic thermal spray particles are hollow”. In addition, Applicant argued that the specification teaches that "[w]hen the bead mill is used, a mixing time is, for example, 8 hours to 10 hours. When the mixing time is excessively long, the standard deviation of content of Yb2O3 is less than 2 mass%, and the thermal conductivity of the ceramic layer increases. When the mixing time is short, the standard deviation exceeds 7 mass%, and the thermal cycle durability of the ceramic layer decreases." See para. [0036] of the specification. The mixing times in the specification examples are consistent with this range. Applicant further argued although Torigoe (`the `109 publication) teaches a ball mill in para. [0054], it does not disclose the mixing time in its mixing process. Therefore, it cannot be said that the standard deviation of the content of Yb2O3 in Torigoe necessarily (inherently) satisfies the claimed range.
Applicant’s amendment and argument have been fully considered and found sufficient to overcome the rejection. The rejection is hereby withdrawn.
Claim rejection under 35 U.S.C.§103(a)
Applicant’s argument is on the ground that as explained in para. [0036] of the specification, mixing time must be appropriately controlled because "[w]hen the mixing time is excessively long, the standard deviation of content of Yb2O3 is less than 2 mass%, and the thermal conductivity of the ceramic layer 23 increases; when the mixing time is short, the standard deviation exceeds 7 mass%, and the thermal cycle durability of the ceramic layer decreases." Applicant argued that as explained above, Torigoe (`the `109 publication) fails to teach the mixing time specified in the present claims. Similarly, Marlin also does not disclose any mixing time. Therefore, even if Marlin discloses a standard deviation of an oxide component, it would not be obvious to a person having ordinary skill in the art to select an appropriate mixing time to modify Torigoe to arrive at the presently required standard deviation of content of Yb2O3. In other words, Marlin fails to remedy the deficiencies of Torigoe with respect to how to control the presently required standard deviation of content of Yb2O3. Huang clearly fails to remedy the deficiencies of Torigoe and Marlin above. In addition, Applicant argued under 102(a) rejection that although in Comparative Examples 1 and 2 of the present specification, the Yb2O3 content is 16 mass%, which is within the content taught in Torigoe, mixing was carried out using a bead mill for 15 hours. As a result, the standard deviation of content of Yb2O3 relative to the total mass of the ceramic thermal spray particles was +0.2 mass% in Comparative Example 1 and mass% in Comparative Example 2, both of which are outside the claimed range. These results demonstrate that, unless an appropriate mixing time is selected, even when the contents of ZrO2 and Yb2O3 are the same as those in the present application, the standard deviation of content of Yb2O3 cannot be controlled within the range of 2 mass% to 7.0 mass%, as required by claim 1.
Applicant’s argument is found persuasive. In addition, the examiner has considered the disclosures of FIG. 5. Specifically, FIG. 5 discloses the claimed ceramic thermal spray particles comprising ZrO2 and Yb2O3, wherein a standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle is 2 mass% or more and 7.0 mass% or less, and the ceramic thermal spray particles (EXAMPLES 1-4) demonstrate unexpected result of the lower thermal conductivity comparing with the CPMPARETIVE SAMPLES 1-3 having the standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle outside the range of 2 mass% or more and 7.0 mass% or less. The present specification [0006-0007] discloses that a thermal barrier coating having a lower thermal conductivity than a thermal barrier coating that is formed of the ceramic thermal spray particles manufactured by the prior art of PTL1 is required to solve the technical problem, and the present disclosure provide ceramic thermal spray particles and a method for forming a thermal barrier coating layer, in which a thermal barrier coating having a low thermal conductivity and excellent thermal cycle durability can be formed has been made to solve the problems. The unexpected result disclosed in FIG. 5 by the claimed ceramic thermal spray particles solve the technical problem. Therefore, claim 1 is drawn to ceramic thermal spray particles comprising ZrO2 and Yb2O3 with criticality of a standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle is 2 mass% or more and 7.0 mass% or less. This criticality is not disclosed by the previously cited prior art references. Therefore, the rejection is hereby withdrawn. See MPEP§2144.05(III)(A) “Showing that the range is critical”.
The following rejections are necessitated by the amendment filed 06/23/2026:
Claim Rejections - 35 USC § 112 (New)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-4 are rejected under 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Specifically, claim 1 is amended to include the phrase “a standard deviation of a content of Yb2O3 measured at a plurality of randomly selected points within a cross-section of a ceramic thermal spray particle is 2 mass% or more and 7.0 mass% or less”, wherein the term “a plurality of” is not disclosed in the original disclosure. Therefore, the amendment introduces NEW MATTER.
To overcome the rejection, Applicant needs to specifically point out the support of the amended term in the original disclosure or remove the new matter.
Claim Rejections - 35 USC § 112 (revised)
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 1-4 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 pre-AIA the applicant regards as the invention.
Specifically, amended claim 1 contains a new phrase “measured at a plurality of randomly selected points” wherein the term “a plurality of” is not defined. Applicant’s specification also does not describe the term “a plurality of”. According to dictionary of Merriam-Webster, plurality means the state of being plural, which contains more than one or more than one kind or class. However, it is not clear how many times the measurements are randomly performed for selecting points to obtain the standard deviation of a content of Yb2O3 to meet the claimed limitation of 2 mass% or more and 7.0 mass% or less. It should be noted that the standard deviation of the content of Yb2O3 relates to the number of randomly selected points. Since amended claim 1 fails to define the term “a plurality of”, the meaning of the claimed limitation “2 mass% or more and 7.0 mass% or less” is not clear. Therefore, claim 1 is indefinite. Claims 2-4 depending on claim 1 are rejected, accordingly.
Claim Objection
Claim 9 is objected to as being dependent upon a rejected base claim 1 but would be allowable if rewritten in independent form including all the limitations of the base claim and any intervening claims.
Conclusions
Claim 10 is allowed.
Claim 9 is objected to.
Claims 1-4 are rejected.
Claims 5-8 are withdrawn.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Yong L. Chu, whose telephone number is (571)272-5759. The examiner can normally be reached on M-F 8:30am-5:00pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber R. Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/YONG L CHU/Primary Examiner, Art Unit 1731
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