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 .
Claim 1 has been amended. Claims 1-8 are pending in the instant application. Claims 5-8 remain withdrawn. Claims 1-4 are under examination on the merits.
Response to Amendment
The Amendment by Applicants’ representative Chao Gao on 02/20/2026 has been entered.
Response to Arguments/Amendments
Claim rejection under 35 U.S.C.§112(b)
In response to Examiner’s interpretation of the term “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less” of claim 1 as an indication of a deviation degree of homogeneity of the claimed ceramic thermal spray particles having the content of Yb2O3 with 2 mass% or more and 7.0 mass% or less deviation from a deviation degree of homogeneity of a complete homogenous solid solution (i.e., 0 mass% deviation) with respect to the total mass of the ceramic thermal spray particles comprising ZrO2 and Yb2O3, Applicant stated that the Examiner’s interpretation of the term “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less” is incorrect. Accordingly, the Examiner withdraws the interpretation, and interprets the term based on Applicant’s response.
Specifically, Applicant states that "Standard deviation" in the context of amount refers to the statistical variation in the amount of a specific component across multiple samples. Simply, the standard deviation is found by the following method: 1. Measure the amount of an ingredient over several samples; 2. Calculate the average (mean) amount of the ingredient from the several samples; and 3. Determine the standard deviation in the amount, which is how much individual measurements differ from the calculated mean (see p. 4-5 of REMARKS). Applicant explains that in the present application, para. [0018] of the specification teaches the method of determining the standard deviation - specifically, "a cross-section of a sample for observation obtained by cutting the heat-resistant member 10 is randomly analyzed at 10 points by an electron probe microanalyzer. The contents of Yb2O3 and the contents of ZrO2 are calculated from each of the obtained contents (at %) of Yb and Zr. The average value of the obtained contents of Yb2O3 is set as the content of Yb2O3. In addition, the average value of the obtained contents of ZrO2 is set as the content of ZrO2. Likewise, the standard deviation of Yb2O3 and the standard deviation of ZrO2 can also be evaluated.". However, one ordinary skilled in the art would have not known what the limitation “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less” of claim 1 really tells about the content of Yb2O3, because it is not clear how much standard deviation of the method of determining the standard deviation disclosed by Applicant’s specification [0018] would have brought in to the contents (at %) of Yb and/or Zr. Is the standard deviation of content of Yb2O3 obtained by analyzing a single sample 10 times, or analyzing 10 different samples? In addition, how the cross-section of a sample was cut, and randomly analyzed? Does randomly analyzing at 10 points provide sufficient sampling size to give a meaningful measurement for the standard deviation of content of Yb2O3 at 2 mass% or more and 7.0 mass% or less? Without clearly description of the method of measuring “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”, one ordinary skilled in the art would have not known what the standard deviation of content of Yb2O3 is introduced by the described method. In addition, a method of measuring standard deviation of content of Yb2O3 is not a claimed limitation. Therefore, the metes and bound of claim 1 are not clear. Accordingly, claim 1 is indefinite. Claims 2-4 depending on claim 1 are also indefinite. The rejection is maintained.
Claim rejection under 35 U.S.C.§102(a)(1)
Applicant amended claim 1 by further limiting “the ceramic thermal spray particles are hollow”. In addition, Applicant argued that Torigoe (`the `109 publication) does not disclose that by making the ceramic thermal spray particles hollow, the porosity of the ceramic layer is improved. Indeed, as explained above, Torigoe (`the `109 publication) never teaches hollow ceramic thermal spray particles. However, Applicant fails to respond to the analysis in the previous Office action (pages 5-6) “it seems that the claimed ceramic thermal spray particles of claim 1 are prepared by a substantially the same method as one disclosed by the `109 publication. Specifically, Applicant’s specification discloses the ceramic thermal spray particles are prepared by mixing ZrO2, Yb2O3, water and surfactant using a bead mill to obtain a slurry; followed by spray-drying to obtain a powder and heated in a heat-treating furnace at 1450 °C. See FIG. 3
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and paragraph [0041-0046] of Applicant’s specification. A substantially identical manufacturing method is also disclosed in Example 1 and FIG. 2
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of the `109 publication.” One ordinary skilled in the art would have known that when the slurry is dried by spray dryer, a spherical shape is formed. The slurry is gradually dried and solidified from the outer side in dry air in spray dryer, and moisture is evaporated from gasps of the raw material particles. As a result, hollow ceramic thermal spray particles can be formed. Therefore, the added limitation “the ceramic thermal spray particles are hollow” is an inherited or inevitable property of the ceramic thermal spray particles produced by both the process of the `109 publication (FIG. 2) and the process of Applicant’s specification (FIG. 3). The claimed products and the 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). Therefore, Applicant’s amendment and argument are not sufficient to overcome the rejection. The rejection is maintained.
Claim rejection under 35 U.S.C.§103(a)
Applicants’ amendments and arguments have been fully considered, but not sufficient to overcome the rejection based on the similar articulation above. The 103(a) rejection is maintained, and revised as following.
The following rejections are necessitated by the amendment filed 02/20/2026:
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, claim 1 contains a phrase “a standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”. Applicant’s specification does not define the term “a standard deviation of content of Yb2O3”. Instead, Applicant’s specification [0060] disclosed the measurement was performed using the following method: “The obtained ceramic thermal spray particles were embedded in a resin and cut. After cutting, the cross-section was polished, and the polished cross-section was randomly analyzed at 10 points by an electron probe microanalyzer. The contents of Yb2O3 and the contents of ZrO2 were calculated from each of the obtained contents (at %) of Yb and Zr obtained by the point analysis to obtain a standard deviation.” However, said method does not specify how much ceramic thermal spray particles were embedded in a resin, and what is the size of area of the polished cross-section randomly analyzed at 10 points by an electron probe microanalyzer. The present application of the specification [0018] teaches the method of determining the standard deviation - specifically, "a cross-section of a sample for observation obtained by cutting the heat-resistant member 10 is randomly analyzed at 10 points by an electron probe microanalyzer. The contents of Yb2O3 and the contents of ZrO2 are calculated from each of the obtained contents (at %) of Yb and Zr. The average value of the obtained contents of Yb2O3 is set as the content of Yb2O3. In addition, the average value of the obtained contents of ZrO2 is set as the content of ZrO2. Likewise, the standard deviation of Yb2O3 and the standard deviation of ZrO2 can also be evaluated.".
According to Wikipedia, in statistics, the standard deviation is a measure of the amount of variation of the values of a variable about its mean. A low standard deviation indicates that the values tend to be close to the mean (also called the expected value) of the set, while a high standard deviation indicates that the values are spread out over a wider range. The standard deviation is commonly used in the determination of what constitutes an outlier and what does not. One ordinary skilled in the art would have not known what the limitation “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less” of claim 1 really tells about the content of Yb2O3, because it is not clear how much standard deviation the method of determining the standard deviation disclosed by Applicant’s specification would have brought in to the contents (at %) of Yb and/or Zr. Specifically, is the standard deviation of content of Yb2O3 obtained by analyzing a single sample 10 times, or analyzing 10 different samples at which cross-section of a sample? In addition, how the cross-section of a sample was cut, and randomly analyzed? Does randomly analyzing at 10 points provide sufficient sampling size to give a meaningful measurement for the standard deviation of content of Yb2O3 at 2 mass% or more and 7.0 mass% or less? Without clearly description of the method of measuring “standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”, one ordinary skilled in the art would have not known what the standard deviation of content of Yb2O3 is introduced by the described method. In addition, a method of measuring standard deviation of content of Yb2O3 is not a claimed limitation. Therefore, the metes and bound of claim 1 are not clear. Accordingly, claim 1 is indefinite. Claims 2-4 depending on claim 1 are also indefinite.
Claim Rejections - 35 USC § 102 (revised)
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 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.
Claims 1-2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 20050221109 A1 (“the `109 publication”) to Torigoe et al.
Applicant’s claim 1 is drawn to ceramic thermal spray particles comprising ZrO2 and Yb2O3, wherein a standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less, and the ceramic thermal spray particles are hollow.
Claim interpretation: Claim 1 is interpreted as ceramic thermal spray particles comprising ZrO2 and Yb2O3, and the ceramic thermal spray particles are hollow.
Example 1 of the `109 publication [0081] discloses a ZrO2-Yb2O3 compound powder used in a thermal barrier coating, and a method of preparing said ZrO2-Yb2O3 compound powder through a diffusion heat treatment at the temperature of 1450 °C, and Yb2O3 addition quantity (wt%) from 16%-35% in Samples 8-13 of TABLE 1 and Samples 22-27 of TABLE 2; and Yb2O3 addition quantity (wt%) 16% in Samples 28-36 of TABLE 3. FIG. 2 of the `109 publication [0035 and 0056] discloses steps of a manufacturing process of thermal spraying powders used for manufacturing a ceramics layer of the thermal barrier coating
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The `109 publication is silent on the limitation “a standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”. Because the meaning of the limitation is not clear (see the 112(b) rejection above), it is difficult to apply the prior art to the claimed limitation preciously. On the other hand, it seems that the claimed ceramic thermal spray particles of claim 1 are prepared by a substantially the same method as one disclosed by the `109 publication. Specifically, Applicant’s specification discloses the ceramic thermal spray particles are prepared by mixing ZrO2, Yb2O3, water and surfactant using a bead mill to obtain a slurry; followed by spray-drying to obtain a powder and heated in a heat-treating furnace at 1450 °C. See FIG. 3
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and paragraph [0041-0046] of Applicant’s specification. The same manufacturing method is also disclosed in Example 1 and FIG. 2 of the `109 publication.” One ordinary skilled in the art would have known that when the slurry is dried by spray dryer, a spherical shape is formed. The slurry is gradually dried and solidified from the outer side in dry air in spray dryer, and moisture is evaporated from gasps of the raw material particles. As a result, hollow ceramic thermal spray particles can be formed. Therefore, the added limitation “the ceramic thermal spray particles are hollow” is an inherited property of the ceramic thermal spray particles produced by both the process of the `109 publication (FIG. 2) and the process of Applicant’s specification (FIG. 3). 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). Therefore, Applicant’s amendment and argument are not sufficient to overcome the rejection. Based on the evidence provided hereby, the Office has established that the `109 publication anticipates Applicant's claims 1-2.
Alternatively, claims 1-4 are also subject to the following 103(a) rejection:
Claim Rejections - 35 USC § 103(a)
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) 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.
This application currently names joint inventors. In considering patentability of the claims under pre-AIA 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of pre-AIA 35 U.S.C. 103(c) and potential pre-AIA 35 U.S.C. 102(e), (f) or (g) prior art under pre-AIA 35 U.S.C. 103(a).
Claims 1-4 are rejected under 35 U.S.C. 103 (a) as unpatentable over the `109 publication in view of U.S. Patent No. 8,088,699 (“the `699 patent”) to Marlin et al., and Huang et al., Coating (2017), v.7, 150 (1-13).
Determination of the scope and content of the prior art (MPEP §2141.01)
Example 1 of the `109 publication [0081] discloses a ZrO2-Yb2O3 compound powder used in a thermal barrier coating, and a method of preparing said ZrO2-Yb2O3 compound powder through a diffusion heat treatment at the temperature of 1450 °C, and Yb2O3 addition quantity (wt%) from 16%-35% in Samples 8-13 of TABLE 1 and Samples 22-27 of TABLE 2; and Yb2O3 addition quantity (wt%) 16% in Samples 28-36 of TABLE 3. FIG. 2 of the `109 publication [0035 and 0056] discloses steps of a manufacturing process of thermal spraying powders used for manufacturing a ceramics layer of the thermal barrier coating
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The `109 publication is silent on the limitation “a standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”. Because the meaning of the limitation is not clear (see the 112(b) rejection above), it is difficult to apply the prior art to the claimed limitation preciously. On the other hand, it seems that the claimed ceramic thermal spray particles of claim 1 are prepared by a substantially the same method as one disclosed by the `109 publication. Specifically, Applicant’s specification discloses the ceramic thermal spray particles are prepared by mixing ZrO2, Yb2O3, water and surfactant using a bead mill to obtain a slurry; followed by spray-drying to obtain a powder and heated in a heat-treating furnace at 1450 °C. See FIG. 3
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and paragraph [0041-0046] of Applicant’s specification. The same manufacturing method is also disclosed in Example 1 and FIG. 2
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of the `109 publication.”
Ascertainment of the difference between the prior art and the claims (MPEP §2141.02)
The differences between claim 1 and the `109 publication is that the prior art is silent on the limitation “a standard deviation of content of Yb2O3 is 2 mass% or more and 7.0 mass% or less”; and the limitation “the ceramic thermal spray particles are hollow”.
Finding of prima facie obviousness--rational and motivation (MPEP §2142-2413)
However, claim 1 would have been obvious over the `109 publication because the claimed the ceramic thermal spray particles of claim 1 are prepared by a substantially the same method as one disclosed by the `109 publication.
In terms of the limitation “the ceramic thermal spray particles are hollow”, one ordinary skilled in the art would have known that when the slurry is dried by spray dryer, a spherical shape is formed. The slurry is gradually dried and solidified from the outer side in dry air in spray dryer, and moisture is evaporated from gasps of the raw material particles. As a result, hollow ceramic thermal spray particles can be formed. Therefore, the added limitation “the ceramic thermal spray particles are hollow” is an inherited property of the ceramic thermal spray particles produced by both the process of the `109 publication (FIG. 2) and the process of Applicant’s specification (FIG. 3). 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).
In addition, the `699 patent describes providing powders that can be used for thermal spraying (note column 3, lines 30-40), where the powder can be made from various oxides and have various amounts of each oxide in the powder (note column 9, line 1 to column 10, line 20, Table 3), and to have variation/homogeneity of the powder controlled within the powder within a standard deviation (note column 6, lines 50-60, column 8, lines 25-30), which example deviations for various oxides of less than 4%, or less than 15% (note column 8, lines 25-40), overlapping the claimed range. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the `109 publication to optimize the homogeneity of the distribution of the oxide content of the powders, including of the Yb2O3 as suggested by the `699 patent to provide a consistent powder of multiple oxides, since the `109 publication is providing thermal spray powder with multiple oxides and the `699 patent indicates that when providing thermal spray powder of multiple oxides it is known to provide a controlled homogeneity for the powder of the oxide contents in amounts overlapping that claimed, and it would have been obvious to optimize for the specific material used giving values in the claimed range. Based on the evidence provided hereby, the Office has established that the `109 publication in view of the `699 patent would have rendered Applicant's claim 1 obvious.
In terms of claim 2, wherein the content of Yb2O3 is 16 mass% or more by mass% with respect to a total mass of the ceramic thermal spray particles, Example 1 of the `109 publication [0081] discloses a ZrO2-Yb2O3 compound powder and Yb2O3 addition quantity (wt%) from 16%-35% in Samples 8-13 of TABLE 1 and Samples 22-27 of TABLE 2; and Yb2O3 addition quantity (wt%) 16% in Samples 28-36 of TABLE 3.
In terms of claims 3-4, the `109 publication does not teach a cumulative particle size d10 of the ceramic thermal spray particles is 40 μm or more; nor the cumulative particle size d10 is 45 μm or more. However, claims 3-4 would have been obvious over the `109 publication because the claimed the ceramic thermal spray particles of claim 1 are prepared by a substantially the same method as one disclosed by the `109 publication. 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).
In addition, Huang et al. teaches effect of particle size on the thermal shock resistance of plasma-sprayed yttria-stabilized zirconia ZrO2-Yb2O3 compound (YSZ) coating having the particle size ranging 45-60 μm in Figure (1b), Figure (2a-b) and Figure (3a-b). One ordinary skilled in the art would have been motivated to optimizing the cumulative particle size d10 of the ceramic thermal spray particles to 40 μm or more to improve the ceramic thermal spray particles performance properties as plasma-sprayed coating material. Therefore, the `109 publication in view of Huang et al. would have rendered claims 3-4 obvious.
Conclusions
Claims 1-4 are rejected.
Claims 5-8 are withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
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.
/YONG L CHU/Primary Examiner, Art Unit 1731