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 .
Response to Amendment
The amendment filed 02 April 2025 has been entered.
Claims 1-19 remain pending in the application, wherein claims 1-7 have been withdrawn, claim 12 is amended, and claims 15-19 are new.
Support for new claims 15-19 is found in p. 7 (first and second paragraphs) and in p. 12 (third and fourth paragraph) of the instant specification.
Claim Rejections - 35 USC § 112
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 8-14 are rejected under 35 U.S.C. 112(a) 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 or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 8 recites the limitation of a first material comprising silicon carbide primary particles and another step in which a layer of a material based on silicon carbide primary particles.
Claim 12 recites diamond particles embedded in a silicon carbide primary particles.
However, the instant specification does not disclose these materials as having silicon carbide primary particles. Applicant argues, see p. 6 of remarks filed 19 November 2024, that paragraph 0016 of the instant specification provides support in the statement of “when a material based on silicon carbide is employed as compare to, for example materials with no silicon carbide primary particles…” (it is noted that this statement is the only mention of silicon carbide primary particles in the instant specification). However, making a comparison to (other) materials with no silicon carbide primary particles is not considered to be a disclosure that the instant application includes silicon carbide primary particles.
Claims 9-11 and 13-14 are rejected as they depend on a rejected claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 8-12 are rejected under 35 U.S.C. 103 as being unpatentable over Findley (US PGPub. No. 2015/0301281, previously cited) in view of Chang et al. (US PGPub. No. 2018/0087134, previously cited).
Claim 8: Findley teaches a 3-D printed object made with polycrystalline diamond surrounded by silicon carbide (i.e. a silicon carbide component) (paragraphs 0004-0005). An object is 3-D printed by depositing a layer of ceramic powder, then depositing a layer of pre-ceramic polymer onto the layer of ceramic powder, followed by additional layers of alternating ceramic and pre-ceramic polymer to form the shape of the desired 3-D object (paragraph 0026). The ceramic powder may be any one or a mixture of detonation nanodiamond (“DND”) powder silicon carbide powder (i.e. silicon carbide primary particles), etc. (paragraph 0031), and multiple ceramic powders and pre-ceramic polymers may be used to produce objects having different properties (paragraph 0045) such as in different layers (paragraph 0046) or in difference sections of the object (paragraph 0047). Findley teaches that poly(methylsilyne) may be used for the pre-ceramic polymer, which pyrolyzes to form silicon carbide when heated to decomposition temperatures (paragraph 0038). Findley teaches that, for example, poly(methylsilyne) may react to form silicon carbide such that the object may be composed of cubic crystal structure detonation nanodiamonds within a silicon carbide matrix if ceramic powder is comprised of DND, and poly(methylsilyne) will react to form silicon carbide bonded to silicon carbide powder to form an object of polycrystalline silicon carbide if the ceramic powder comprises silicon carbide powder (paragraph 0038). The printed layers are baked or heated at a temperature at or above the decomposition temperature (i.e. a temperature at which the pre-ceramic polymer will pyrolyze, as disclosed by Findley in paragraph 0036) and below the sintering temperature of the ceramic powder (paragraph 0039), or alternatively optical photo-pyrolysis can be used to pyrolyze each entire printed layer of pre-ceramic polymer to convert the material layer-by-layer. Findley teaches that different pre-ceramic polymers and nanoparticles powders separately or in addition to diamond forming pre-ceramic polymer and diamond nanoparticle powder may be used so that the properties of a printed object could be varied to meet various design objectives (paragraph 0023) (i.e. it would have been obvious to one of ordinary skill in the art before the effective filing date to nanoparticle powder, such as the above mentioned silicon carbide, without diamond nanoparticle powder for some layers, such as for the recited another step, as a matter of design choice). Since the ceramic powder (i.e. the above outlined DND silicon carbide; i.e. a material based on silicon carbide that includes diamond particles) is layered on pre-ceramic polymer and subsequently pre-ceramic polymer is layered on top of the ceramic powder (i.e. the pre-ceramic polymer pyrolyzes to form silicon carbide), this is considered to teach a silicon carbide component having a first and second layer of silicon carbide based material where at least one of the first and second layers includes diamond particles, and further where another layer of silicon carbide material may be deposited that contains no diamond particles as a matter of design choice based on the disclosure in paragraph 0023 of Findley, as outlined above. Findley depicts an example embodiment of a printed wiring board that can be printed using a 3-D printer (paragraph 0014), which has fins (i.e. at least one macroscopically structure surface) and interconnects (i.e. interior structures) (Fig. 7). As outlined above, Findley teaches that, for example, poly(methylsilyne) may react to form silicon carbide such that the object may be composed of cubic crystal structure detonation nanodiamonds within a silicon carbide matrix if ceramic powder is comprised of DND. The DND can have a diameter between 2 and 20 nm, but may be processed to obtain a powder of nanodiamonds having diameters of 4 to 5 nm, and ceramic powder may be less than 30 nm (paragraph 0031). These sizes do not overlap the instantly claimed ranges. However, Findley does not provide particular reasons for the disclosed sizes, and therefore one of ordinary skill in the art may consider other known sizes of nanodiamond powder.
In a related field of endeavor, Chang teaches a polycrystalline diamond compact (PDC) containing thermally stable diamond (TSP), such as a cutter in an earth-boring bit (paragraph 0001). Chang teaches a gradient interfacial layer (i.e. a component) between a TSP table and a substrate containing varying amounts of a material having a low CTE in order to control residual stresses from differing CTEs (paragraph 0015). The gradient interfacial layer (i.e. a component) may have a plurality of sublayers (paragraph 0018) (i.e. the component is multilayered), where the diamond concentration in the gradient interfacial layer adjacent the TSP table may be 50% or greater by volume, or even 80% or greater by volume (paragraph 0021) and the proportion generally decreases within the gradient interfacial layer from the portion that is or will be attached to the TSP table toward the portion that is or will be attached to the substrate (paragraph 0020). Chang teaches that typically an additive manufacturing method may be used to form a gradient interfacial layer as this allows the sequential formation of separate sublayers (paragraph 0034). Chang teaches that diamond grains in different sublayers or in the same sublayer may include a relatively larger size and a relatively smaller size (paragraph 0024). A relatively larger size of diamond grains may include various sizes ranging from 8-100 µm and relatively smaller sizes may include various sizes from 30 µm down to less than 0.5 µm or less than 0.1 µm (i.e. less than 500 nm or less than 100 nm) (paragraph 0024). These ranges overlap the instantly claimed particle sizes for diamond particles, and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges disclosed in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented. The limitation of particle size being as determined by laser diffractometry is acknowledged, but is considered a product-by-process limitation of how to determine particle size and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the instantly claimed particle size. In this respect, Chang teaches diamond grain size may be determined by passing the diamond grains through one or more sizing sieves or by any other method (paragraph 0024), and regardless of how it is measured, the disclosed diamond grain size (i.e. particle size of diamond particles) outlined above overlaps the instantly claimed ranges. See MPEP § 2144.05.
As Findley and Chang both teach an object based on silicon carbide and containing nanodiamonds or diamond particles that may be 3-D printed or other made by additive manufacturing, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the object of Findley to include where the diamond powder may contain various sizes, such as ranging from 8-100 µm and from 30 µm down to less than 0.5 µm or less than 0.1 µm, and may have a gradient, as taught by Chang, and one would have had a reasonable expectation of success.
Claim 9: Findley teaches that a circuit board or other 3-D printed object may be substantially composed of polycrystalline diamond (paragraph 0055) by using poly(hydridocarbyne) as the pre-ceramic polymer (i.e. substantially 100% diamond particles) (paragraphs 0036 and 0065) or that the ceramic powder can comprise silicon carbide powder and poly(methylsilyne) as the pre-ceramic polymer will form a 3-D object of polycrystalline silicon carbide (i.e. substantially 100% silicon carbide) (paragraph 0038). Other objects may have some portions made with diamond particles and other portions using silicon carbide (paragraph 0047). This renders as obvious to one of ordinary skill in the art that the object may have a concentration of diamond particles from 0-100% and values in between, which overlaps the instantly claimed range. See MPEP § 2144.05.
Change teaches where the diamond concentration in the gradient interfacial layer adjacent the TSP table may be 50% or greater by volume (paragraph 0021), which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 10: Findley teaches that polycrystalline diamond can be formed by pyrolysis and annealing of poly(hydridocarbyne) pre-ceramic polymer with DND ceramic powder (paragraph 0036). Objects may have some portions made with diamond particles and other portions using silicon carbide (paragraph 0047). The DND can have a diameter between 2 and 20 nm, but may be processed to obtain a powder of nanodiamonds having diameters of 4 to 5 nm (paragraph 0031). These render as obvious to one of ordinary skill in the art that polycrystalline diamond formed by pyrolysis would not necessarily have the same diameter as nanodiamond powder that has been processed to obtain diameters of 4-5 nm (i.e. the particle size of the diamond particles varies over the total volume of the component).
Chang teaches the gradient interfacial layer may have a plurality of sublayers (paragraph 0018) (i.e. the component is multilayered), where the diamond concentration in the gradient interfacial layer adjacent the TSP table may be 50% or greater by volume, or even 80% or greater by volume (paragraph 0021) and the proportion generally decreases within the gradient interfacial layer from the portion that is or will be attached to the TSP table toward the portion that is or will be attached to the substrate (paragraph 0020).
Claim 11: Chang teaches that diamond grains in different sublayers or in the same sublayer may include a relatively larger size and a relatively smaller size (paragraph 0024). A relatively larger size of diamond grains may include various sizes ranging from 8-100 µm and relatively smaller sizes may include various sizes from 30 µm down to less than 0.5 µm or less than 0.1 µm (i.e. less than 500 nm or less than 100 nm) (paragraph 0024). These ranges overlap the instantly claimed particle sizes for diamond particles. See MPEP § 2144.05. The limitation of particle size being as determined by laser diffractometry is acknowledged, but is considered a product-by-process limitation of how to determine particle size and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the instantly claimed particle size. In this respect, Chang teaches diamond grain size may be determined by passing the diamond grains through one or more sizing sieves or by any other method (paragraph 0024), and regardless of how it is measured, the disclosed diamond grain size (i.e. particle size of diamond particles) outlined above overlaps the instantly claimed ranges. See MPEP § 2144.05.
Claim 12: The limitations of claim 12 are recited in claim 8, outlined above, except the limitations regarding at least one macroscopically structured surface. In this regard, Findley teaches an object (i.e. a component) that is 3-D printed by depositing a layer of ceramic powder, then depositing a layer of pre-ceramic polymer onto the layer of ceramic powder, followed by additional layers of alternating ceramic and pre-ceramic polymer to form the shape of the desired 3-D object (paragraph 0026) (i.e. the component is multilayered and formed by an additive manufacturing method). Findley depicts an example embodiment of a printed wiring board that can be printed using a 3-D printer (paragraph 0014), which has fins (i.e. at least one macroscopically structure surface having protrusions) and interconnects (i.e. interior structures) (Fig. 7).
Claim 13: Chang teaches that diamond grains in different sublayers or in the same sublayer may include a relatively larger size and a relatively smaller size (paragraph 0024). A relatively larger size of diamond grains may include various sizes ranging from 8-100 µm and relatively smaller sizes may include various sizes from 30 µm down to less than 0.5 µm or less than 0.1 µm (i.e. less than 500 nm or less than 100 nm) (paragraph 0024). These ranges overlap the instantly claimed particle sizes for diamond particles. See MPEP § 2144.05. The limitation of particle size being as determined by laser diffractometry is acknowledged, but is considered a product-by-process limitation of how to determine particle size and is not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the instantly claimed particle size. In this respect, Chang teaches diamond grain size may be determined by passing the diamond grains through one or more sizing sieves or by any other method (paragraph 0024), and regardless of how it is measured, the disclosed diamond grain size (i.e. particle size of diamond particles) outlined above overlaps the instantly claimed ranges. See MPEP § 2144.05.
Claim 14: Findley teaches an object is 3-D printed by depositing a layer of ceramic powder, then depositing a layer of pre-ceramic polymer onto the layer of ceramic powder, followed by additional layers of alternating ceramic and pre-ceramic polymer to form the shape of the desired 3-D object (paragraph 0026).
Chang teaches an additive manufacturing method may be used to form a gradient interfacial layer as this allows the sequential formation of separate sublayers (paragraph 0034) and where suitable methods of forming sublayers of gradient interfacial layer include 3D printing (paragraph 0034), binder jetting, material jetting, selective laser sintering, etc. (paragraph 0036).
Claim 15: The recited limitation of a “second material comprising silicon carbide includes diamond particles” is considered to be where a second layer of at least one second material comprising silicon carbide is present in the resulting product (based on claim 8 reciting a step, i.e. product-by-process, in which a second layer of at least one second material comprising silicon carbide is deposited). In this respect, Findley teaches that different pre-ceramic polymers and nanoparticle powders separately or in addition to diamond forming pre-ceramic polymer and diamond nanoparticle powder may be used (paragraph 0023) and specifically the object (i.e. a layer within the object) may have cubic crystal structure detonation nanodiamonds within a silicon carbide matrix if ceramic powder is DND (and if poly(methylsilyne) is used for pre-ceramic polymer) or the object (i.e. a layer within the object) will have polycrystalline silicon carbide if the ceramic powder includes silicon carbide powder and using the same pre-ceramic polymer (paragraph 0038).
Claim 16: The first layer being deposited in the form of a slip is considered a product-by-process limitation and therefore is not limited by the recited steps but instead is limited by the resulting structure. See MPEP § 2113. In this respect, Findley teaches the use of a 3-D printer using a roller and print head (paragraph 0026) and also teaches that any appropriate system or method of depositing layers of ceramic powder may be utilized (paragraph 0029).
Chang teaches that sublayers may be 3D printed (paragraph 0034) via various methods (paragraph 0036). If the object is not formed as a separate component instead of directly on a substrate, the first layer should be sufficiently coherent to withstand transport or handling (paragraph 0032). The sublayers may be formed from a material containing diamond powder or grit, a catalyst to cause bonding between grains, and a sacrificial binder (paragraph 0020), and the material may be applied by binder jetting, material jetting, powder bed fusion, direct energy deposition, sheet lamination, material extrusion, etc. (paragraph 0036). At least binder jetting, sheet lamination, and material extrusion methods, in view of being sufficiently coherent, is considered to teach the material (e.g. the first layer) may be applied as a slip (i.e. conventionally considered to be as a continuous deposition as opposed to deposition in non-continuous spots, although it is noted that the instant application does not define this term).
Claim 17: The second layer being deposited in the form of a powder is considered a product-by-process limitation and therefore is not limited by the recited steps but instead is limited by the resulting structure. See MPEP § 2113. In this respect, Findley teaches the use of a 3-D printer using a roller and print head (paragraph 0026) and also teaches that any appropriate system or method of depositing layers of ceramic powder (i.e. in the form of a powder) may be utilized (paragraph 0029).
Chang teaches that sublayers may be 3D printed (paragraph 0034) via various methods (paragraph 0036). If the object is not formed as a separate component instead of directly on a substrate, the first layer should be sufficiently coherent to withstand transport or handling (paragraph 0032). The sublayers may be formed from a material containing diamond powder or grit, a catalyst to cause bonding between grains, and a sacrificial binder (paragraph 0020) (i.e. even though other materials are present, the material includes a powder).
Claim 18: Chang teaches that the gradient interfacial layer (i.e. a component) may have a plurality of sublayers (paragraph 0018) (i.e. the component is multilayered), where the diamond concentration in the gradient interfacial layer adjacent the TSP table may be 50% or greater by volume, or even 80% or greater by volume (paragraph 0021) and the proportion generally decreases within the gradient interfacial layer from the portion that is or will be attached to the TSP table toward the portion that is or will be attached to the substrate (paragraph 0020). Chang teaches that typically an additive manufacturing method may be used to form a gradient interfacial layer as this allows the sequential formation of separate sublayers (paragraph 0034). This is considered to teach a higher concentration of diamond particles in at least one layer closer to a surface as compared to an interior layer.
Claim 19: Chang teaches that diamond grain size may vary from sublayer to sublayer (of the gradient interfacial layer) (paragraph 0024), which is considered to teach a gradient in the component with respect to the particle size of the diamond particles.
Response to Arguments
The amendment to claim 12 has overcome the indefiniteness previously set forth in the Office Action mailed 10 December 2024. The rejection under 35 U.S.C. 112(b) has been withdrawn.
Applicant's arguments, filed 02 April 2025, have been fully considered but they are not persuasive for the following reasons:
Applicant argues, see p. 6-7, regarding the rejection under 35 U.S.C. 112(a), that the inclusion of primary particles is implicit due to the statement (i.e. the only sentence in the instant specification that mentions primary particles) of “improved mold stability can be achieved also for larger-sized components when a material based on silicon carbide is employed as compared to, for example, materials with no silicon carbide primary particles” (p. 4 of the instant specification). This statement does not indicate that the material must be applied as silicon carbide primary particles as the statement is “when a material based on silicon carbide is employed”. Applicant further argues that the comparison would be meaningless if the material did not contain silicon carbide primary particles; however, since the entire disclosure except for this one statement of an example comparison is directed to “a material based on silicon carbide”, then the statement also easily could have been construed as a comparison to a material that does not contain silicon carbide (primary or otherwise). Furthermore, Applicant’s argument appears to emphasize that the material must be deposited as a primary particle. This aspect is not disclosed. The statement regarding silicon carbide primary particles (i.e. as outlined above from p. 4 of the instant specification) compares to “for example, materials with no silicon carbide primary particles” but silicon carbide that has formed (e.g. by pyrolysis) would be silicon carbide primary (i.e. initially formed) particles. No other distinction is made in the instant specification as to what constitutes silicon carbide primary particles, when they are formed, or how they are formed. Furthermore, Findley discloses that silicon carbide particles may also be used with poly(methylsilyne) (i.e. pre-ceramic) to form silicon carbide bonded to silicon carbide powder resulting in a 3-D object of polycrystalline silicon carbide (paragraph 0038), which renders the initial inclusion of silicon carbide particles as being an obvious modification.
Applicant argues, see p. 7, that silicon carbide pyrolyzed to form silicon carbide would have a different structure than a material initially containing silicon carbide. However, the instant application does not disclose that the material initially contains silicon carbide and does not recite the argued properties. Therefore, these arguments are construed as argument without sufficient supportive evidence. See MPEP § 2145(I). Furthermore, Findley discloses that silicon carbide particles may also be used with poly(methylsilyne) (i.e. pre-ceramic) to form silicon carbide bonded to silicon carbide powder resulting in a 3-D object of polycrystalline silicon carbide (paragraph 0038), which renders the initial inclusion of silicon carbide particles as being an obvious modification.
Applicant argues, see p. 7-8, regarding the second material comprising silicon carbide that includes diamond particles, that the pre-ceramic polymer of Findley merely includes a pre-ceramic polymer. However, Applicant is reminded that the claims are directed to a product and are not limited by the recited processing steps, only the structure implied by the steps. See MPEP § 2113. In this respect, the recited limitation of a “second material comprising silicon carbide includes diamond particles” is considered to be where a second layer of at least one second material comprising silicon carbide is present in the resulting product (based on claim 8 reciting a step in which a second layer of at least one second material comprising silicon carbide is deposited). In this respect, Findley teaches that different pre-ceramic polymers and nanoparticle powders separately or in addition to diamond forming pre-ceramic polymer and diamond nanoparticle powder may be used (paragraph 0023) and specifically the object (i.e. a layer within the object) may have cubic crystal structure detonation nanodiamonds within a silicon carbide matrix if ceramic powder is DND (and if poly(methylsilyne) is used for pre-ceramic polymer) or the object (i.e. a layer within the object) will have polycrystalline silicon carbide if the ceramic powder includes silicon carbide powder and using the same pre-ceramic polymer (paragraph 0038).
Applicant argues, see p. 8, that one would not have a reason to modify the first layer to be deposited in the form of a slip instead of as a powder because the pre-ceramic polymer would soak through the slip whereas Findley teaches in paragraph 0028 that the print head may be configure to precisely control the volume of pre-ceramic polymer so that it does not soak through the most recent layer of ceramic powder. However, the cited paragraph actually states “to ensure that pre-ceramic polymer does not soak through the most recent layer of ceramic powder into previously deposited layers of ceramic powder. In other words, this described control is not stated in particular to the first layer since there would be previously deposited layer(s), whereas claim 16 recites wherein the first layer is deposited in the form of a slip. Furthermore, this argument does not provide a patentable distinction of the first layer deposited in the form of a slip (i.e. a product-by-process limitation) over the first layer deposited by another method, and a product-by-process limitation is not limited by the recited steps but instead is limited by the resulting structure. See MPEP § 2113.
Similarly, Applicant argues, see p. 8, that the second layer is deposited in the form of a powder whereas the pre-ceramic of Findley is dissolved in a solvent. However, this limitation is also a product-by-process limitation and the argument fails to show a patentable distinction to the resulting structure. See MPEP § 2113. Furthermore, Findley teaches that different pre-ceramic polymers and nanoparticle powders separately or in addition to diamond forming pre-ceramic polymer and diamond nanoparticle powder may be used (paragraph 0023) and specifically the object (i.e. a layer within the object) may have cubic crystal structure detonation nanodiamonds within a silicon carbide matrix if ceramic powder is DND (and if poly(methylsilyne) is used for pre-ceramic polymer) or the object (i.e. a layer within the object) will have polycrystalline silicon carbide if the ceramic powder includes silicon carbide powder and using the same pre-ceramic polymer (paragraph 0038).
Applicant argues, see p. 9, that the prior art is silent regarding the instantly claimed relative concentration of diamond particles (instant claim 18) and size gradient of diamond particles (instant claim 19). However, these features are taught or rendered obvious by the teachings of Chang as outlined above.
Conclusion
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
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/KIM S. HORGER/Examiner, Art Unit 1784