DETAILED ACTION
The claims 1-12 and 14 are pending and presented for the examination.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 07/25/2024 is being considered by the examiner.
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 1-12 and 14 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 1 recites that the claimed ceramic substrate comprises “further components.” The open-ended nature of this limitation renders unclear the intended coverage of claim 1. The wording does not make clear if the ceramic substrate necessarily must include these “further components”, and if so, if they can be literally any two or more additional components. Alternatively, the claim could be interpreted as meaning that optional “further components” may be present; this interpretation is supported by the dependent claim 2 limitation that indicates an upper bound for “further components.” This latter interpretation is assumed for purposes of examination on merits. Because of these ambiguities, the metes and bounds of claim 1 are unclear and the claim is indefinite under USC 112.
Claims 2-12 and 14 are also indefinite as depending from independent claim 1 and thus containing the indefinite limitations therein.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-7 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nishimoto et al (WO 2019208438 A1).
Regarding claim 1, Nishimoto et al teaches a ceramic substrate that contains alumina crystalline particles (grains) and zirconia crystalline particles (grains), wherein the alumina content is 70-95 mass%, and the combined content of zirconia and its stabilizing components is 5-30 mass% (see Abstract). The ZrO2 is stabilized with 1-5 mol% Y2O3. Nishimoto et al teaches that the inventive ceramic substrate can further comprise SiO2 as a sintering aid.
Nishimoto et al teaches that the alumina component in the inventive substrate has a particle size of 1.2-1.9 μm, and the ZrO2 component in said substrate has a particle size of 0.4-0.7 μm (see claims 1-2). In the context of Nishimoto et al, these particle sizes are understood to be grain sizes, as they are measured based on the substrate after firing/sintering. As can be seen, each of the two aforementioned grain size ranges overlaps the corresponding range of the instant claim. Nishimoto et al further teaches an embodiment wherein the Al--2O3 grain size is 1.46 µm and thus within the range of the instant claim (see example 2), and further teaches an embodiment wherein the ZrO2 grain size is 0.70 µm and thus within the range of the instant claim (see example 15). Nishimoto et al therefore does not teach a single embodiment wherein the grain size limitations of each aforementioned components are both met. However, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to establish prima facie obviousness. See MPEP 2144.05.
One of ordinary skill would have had motivation to form ceramic substrates having grain sizes selected from within the inventive ranges through routine optimization and experimentation, due to the ordinary desire to use the teachings as they are presented to form various compositions therewith. Thus, each limitation of instant claim 1 is met by the Nishimoto et al teachings, and the claim is obvious and not patentably distinct over the prior art of record.
Regarding claim 2, Nishimoto et al teaches an embodiment comprising alumina and stabilized zirconia in a weight ratio of 90:10. The amount of Y2O3 is 1-5 mol% based on the content of ZrO2, as for the aforementioned 10 parts by weight ZrO2, this would result in an amount of yttria based on the overall weight of the substrate that is approximately 0.1-0.5%. This range overlaps and thus renders obvious the yttria content range of the instant claim, and a composition meeting this further compositional limitation would be arrived at through routine optimization and experimentation with the range for stabilizer amount. The content of the SiO2 sintering aid is taught to be 0.1-2.0 parts by mass. This range also overlaps and thus renders obvious the corresponding range of instant claim 2. The stabilizer component can be yttria alone, and thus the Nishimoto et al ceramic substrate is free of hafnia. No other components are present in amounts of 0.6 wt% or greater; as such, each limitation of claim 1 is met by the teachings of the prior art of record, and the claim is not patentably distinct.
Regarding claim 3, Nishimoto et al teaches embodiments wherein the bending strength is 650 MPa or greater.
Regarding claim 4, Nishimoto et al teaches embodiments wherein the thermal conductivity of the inventive ceramic is 22 W/m·K or greater.
Regarding claim 5, Nishimoto et al does not teach a modulus of elasticity of the inventive ceramic substrate. However, as discussed above, the Nishimoto et al ceramic is compositional equivalent to that of the instant claims, and has an equivalent structure as evidenced by the equivalent grain sizes. This equivalent ceramic would therefore necessarily have equivalent properties to that of the instant claims, and would have an elastic modulus of 310 GPa or greater. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 6, Nishimoto et al does not teach a fracture toughness of the inventive ceramic substrate. However, as discussed above, the Nishimoto et al ceramic is compositional equivalent to that of the instant claims, and has an equivalent structure as evidenced by the equivalent grain sizes. This equivalent ceramic would therefore necessarily have equivalent properties to that of the instant claims, and would have a fracture toughness of 3-5 MPa m1/2. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 7, the claim differs from Nishimoto et al as applied above because Nishimoto et al does not teach a surface roughness of the inventive ceramic substrate. However, as above, the equivalent material of the prior art of record would necessarily have equivalent properties, and thus the further surface roughness limitation of instant claim 7 is necessarily met by the Nishimoto et al teachings.
Regarding claim 14, the Nishimoto et al ceramic substrate is a part of an electronic component.
Allowable Subject Matter
Claims 8-12 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. The prior art, either alone or in combination, fails to teach or suggest a method wherein multiple alumina and zirconia powders having the limitations of instant claim 8 are mixed and processed according to all method steps therein so as to result in a ceramic substrate meeting each limitation of instant claim 1.
Conclusion
12. No claim is allowed.
13. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
14. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber 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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/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW30 September 2026
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