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 .
Status of Claims
Responsive to the amendment filed 23 July 2025 claims 1 and 17 are amended. Claims 1-21 are currently under examination.
Status of Previous Rejections
Responsive to the amendment filed 23 July 2025, new grounds of rejection are presented.
Claim Objections
Claim 17 is objected to because of the following informalities: the word “growh” in the claim is an obvious typographical error. Appropriate correction is required.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-21 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), 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 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 1 requires the step of “controlling a growth time during which the nanostructures are formed near the interface without agitation while the temperature is maintained in accordance with a target size of the nanostructures.” In the specification, a means is presented for controlling the growth time (“Growth Time-Controlled Nanostructure Size”), which is agitation. The specification states “Agitation is optional and may be omitted for the fabrication of nanocomposites by an interface-controlled method for convenience of mass manufacturing.” No other means of “controlling a growth time” is disclosed in the specification other than the agitation. Applicant now has combined the embodiment with the growth time control (disclosed as using agitation) with the embodiment that excludes agitation. The combination of features of using agitation and also not having agitation is not described and is new matter.
Each of claims 2-21 depends from claim 1 and is not disclosed.
Claim 17 requires agitating the molten metal after the controlled growth time. This feature is not described at any place in the specification and is new matter. While agitation is described, it is explicitly described as being the means by which the time during which the nanostructures remain at the interface is controlled. A step of agitation after controlling growth time without agitation is not described or implied in the specification. The claimed invention now includes a discrete step of agitation after the controlled growth time when this was not disclosed in the specification.
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 1-21 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 requires the step of “controlling a growth time during which the nanostructures are formed near the interface without agitation while the temperature is maintained in accordance with a target size of the nanostructures.” In the specification, a means is presented for controlling the growth time (“Growth Time-Controlled Nanostructure Size”), which is agitation. The specification states “Agitation is optional and may be omitted for the fabrication of nanocomposites by an interface-controlled method for convenience of mass manufacturing.” No other means of “controlling a growth time” is disclosed in the specification other than the agitation. Applicant now has combined the embodiment with the growth time control (disclosed as using agitation) with the embodiment that excludes agitation. The combination of features of using agitation and also not having agitation is not clear. The point of infringement of claim 1 now cannot be determined. What is included or excluded from the required claim step of “controlling a growth time?”
Each of claims 2-21 depends from claim 1 and is indefinite.
Claim Rejections - 35 USC § 102/103
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
Claim(s) 1-10, 12-16 and 18-21 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 6,290,748A (hereinafter “Jha”).
Jha teaches a method of manufacturing an aluminum composite containing TiB2 reinforcement (see title). Jha teaches that a fluoride containing flux is added to the surface of the molten metal (see Fig 1 and cols 6-7). Jha teaches that size of the structures created is controlled to be either 50-100 nm or coarser than 100 nm (see col 7). Jha teaches that the temperature is maintained; literally that “The liquid metal processing isotherm chosen between 700° and 1000° C. which could be predetermined from the liquidus temperature and the known casting temperature of a specific alloy composition.” (see col 6). Jha teaches that multiple salts are used (cols 6-7), meeting the limitation of a salt and a diluent. Jha does not teach to agitate or stir, reading on where the agitation is omitted.
Regarding claim 2, Jha teaches “The liquid metal processing isotherm chosen between 700° and 1000° C. which could be predetermined from the liquidus temperature and the known casting temperature of a specific alloy composition.” (see col 6). Jha teaches that multiple salts are used (cols 6-7).
Regarding claim 3, Jha teaches a continuous metal casting scheme (See fig 1 and col 6).
Regarding claim 4, Jha teaches “The liquid metal processing isotherm chosen between 700° and 1000° C. which could be predetermined from the liquidus temperature and the known casting temperature of a specific alloy composition.” (see col 6). Jha teaches that multiple salts are used (cols 6-7).
Regarding claim 5, Jha teaches that the elements react to form TiB2 (see cols 6-7).
Regarding claim 6, Jha teaches “The liquid metal processing isotherm chosen between 700° and 1000° C. which could be predetermined from the liquidus temperature and the known casting temperature of a specific alloy composition.” (see col 6). Jha teaches that multiple salts are used (cols 6-7).
Regarding claims 7-9, Jha teaches fluoride salts (See cols 6-7).
Regarding claim 10, Jha teaches graphite (see col 8).
Regarding claim 12, Jha teaches oxides (see col 8).
Regarding claim 13, Jha teaches graphite (see col 8).
Regarding claim 14, Jha teaches addition of multiple components including multiple salts in the crucible (Fig 1 and cols 6-7).
Regarding claims 15-16, Jha teaches fluoride salts (See cols 6-7).
Regarding claim 18, Jha teaches a continuous metal casting scheme (See fig 1 and col 6).
Regarding claim 19, Jha teaches that size of the structures created is controlled to be either 50-100 nm or coarser than 100 nm (see col 7).
Regarding claim 20, Jha does not disclose a standard deviation of a particle size. Jah teaches that the size is controlled to be either 50-100 nm or coarser than 100 nm (see col 7). The properties not disclosed by the prior art would have been inherently present in the prior art. The prior art uses the same method as claimed including the same reactants as claimed in order to create the same Al-TiB2 composite as claimed. The skilled artisan would have expected the same material made with the same ingredients in the same way to have had the same properties. Applicant is directed to MPEP 2112.01.
Regarding claim 21, Jha teaches about 0-60% of reinforcement (See col 12). Jha teaches an example at 5% (col 12), falling in the claimed range and anticipating the range. Applicant is directed to MPEP 2131.03.
Claim(s) 1-8, 10, and 14-21 is/are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by US 5,989,310 A (hereinafter “Chu”). Alternatively, Claim(s) 1-8, 10, and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chu.
Regarding claim 1, it is noted that the metes and bounds of the step of ”controlling a growth time” cannot be determined. Please see discussion above in the rejections under 35 USC 112.
Chu teaches a method of forming ceramic particles in situ in metal (title, abstract). Chu teaches that the method include providing a molten material, and adding a chloride salt containing fine particles to the melt to react them (see Summary of the Invention).
Chu teaches Example 1 in which aluminum is heated to melt, and added in a crucible to a mixture of carbon particles and a reactive salt. Chu teaches that the salt includes 48% NaCl (Example 1), meeting the limitation of a diluent salt. Chu teaches that the salt mixture ensures that the surface of the metal is cleaned from oxide or dross (See col. 4-5). Thus Chu implicitly teaches that the salt is added at a surface of the melt. Further, Chu teaches that following the reaction, salt is skimmed off the surface (see Example 1). The limitation of adding a molten salt over a surface is thus met.
In the alternative, the mere location oaf addition of the salt to the molten metal is not considered to affect the process. The salt would have been understood by the skilled artisan to float atop the molten metal, and thus form an interface. The mere rearrangement of the addition point of the salt does not distinguish over the prior art. Applicant is further directed to MPEP 2144.04 VI C.
Chu teaches that the metal is then stirred and the reaction takes place (Example 1). Chu teaches casting. Chu teaches that fine TiC particles are formed. Chu teaches that the material formed has particles with average diameter of less than 0.3 microns (See col. 6), thus meeting the limitation of being a metal matrix nanocomposite.
Chu teaches that the material is heated to 983 C (Example 1). Thus Chu clearly envisions maintaining the materials at a reaction temperature.
After reaching the required temperature, Chu teaches introducing the stirring of the mixture (“mechanical sting [sic]”) in Example 1. Chu further teaches that the stirring is “vigorous” such that “the salt is finely dispersed” (Example 1 and col 4). This is believed to meet the limitation of controlling a time during which the nanostructures remain at the interface inherently. Chu teaches that this results in a fine dispersion of the salts. The same means (stirring) used to control the structure of the same material reaction product in the same system has the same function inherently.
In the paragraph bridging cols 4-5, Chu teaches “The molten salt used for the process of the present invention enhances the reaction of carbon and the carbide-forming component in the alloy. The molten salt provides that the alloy is cleaned of any oxide or dross and, hence, a fresh surface is available for reaction.” It is believed that the “fresh surface” referred to is the surface of the metal (i.e. upon which the molten salt sits). Chu teaches the same processes used to make the same materials in the same reactions.
Chu teaches that the vigorous stirring brings more carbon into contact with the metal (cols 4-5). Maintaining a reaction and THEN stirring would have been an obvious change in the sequence of the processing steps in order to control the carbon reaction at a desired rate.
Regarding claim 2, Chu teaches that 0.3 micron particles are obtained (see col 6). The limitation of the claim is therefor met.
Regarding claim 3, Chu teaches casting as mass production technique (col 4).
Regarding claim 4, Chu teaches heating to melt (Example 1).
Regarding claim 5, Chu teaches that the titanium in aluminum reacts (see Example 1).
Regarding claim 6, Chu teaches heating to melt (Example 1).
Regarding claim 7-8, Chu teaches metal halide salts (See Example 1).
Regarding claim 10, Chu teaches a carbon source (see Example 1, Summary).
Regarding claim 14, Chu teaches combining the salts and carbon (Example 1).
Regarding claim 15-16, Chu teaches NaCl (Example 1).
Regarding claim 17, Chu teaches stirring (Example 1).
Regarding claim 18, Chu teaches cooling (Example 1).
Regarding claim 19, Chu teaches less than 0.3 microns average (col. 6), falling in the claimed range.
Regarding claim 20, Chu teaches less than 0.3 microns average (col. 6), falling in the claimed range. The description of the particles meets the limitation of standard deviation of less than about 50% of the average because Chu teaches that these are uniformly dispersed, finely sized particles.
Regarding claim 21, Chu teaches that the mixture includes 222 grams carbon per 1.5 kg of metal (Example 1). The composition of Chu thus falls into the claimed compositional range, meeting the range. The same materials as claimed, processed in the same method as claimed, yields the same properties as claimed.
Claim(s) 1-9 and 14-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Li et al., Nano-TiB2 reinforced ultrafine-grained pure Al produced by flux-assisted synthesis and asymmetrical rolling, J. Mater. Res., Vol. 29, No. 21, Nov 14, 2014 (hereinafter “Li”).
Alternatively, Claim(s) 1-9 and 14-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li et al., Nano-TiB2 reinforced ultrafine-grained pure Al produced by flux-assisted synthesis and asymmetrical rolling, J. Mater. Res., Vol. 29, No. 21, Nov 14, 2014 (hereinafter “Li”), in view of CN108796251A (provided by applicant; hereinafter “Maiteli”).
Regarding claim 1, it is noted that the metes and bounds of the step of ”controlling a growth time” cannot be determined. Please see discussion above in the rejections under 35 USC 112.
Regarding claim 1, Li teaches a method of preparing ultrafine grained aluminum composites (see abstract). Li teaches providing a first molten metal Al, and providing a mixed salt (see II. A. Material processing (FAS and ASR) on pp. 2515-2516). Li teaches that the salt and the metal react to form particulates in a metal matrix. Although Li does not describe that the salt is present at a surface of the aluminum, this is considered to be an inherent part of the process. Li teaches that a cylindrical crucible is used with a stirring paddle (Table I). There is no special means of adding salts described or implied, meaning that the skilled artisan understands it is added to the crucible at a surface. Applicant is directed to MPEP 2112.
Li teaches that the metal is maintained at temperature and reacts (see II. A. Material processing (FAS and ASR) on pp. 2515-2516). Li teaches that the particulates formed are nanoparticulates (see 2. TEM analysis and Fig 3). The same materials disclosed by applicant reacted in the same way disclosed by applicant to form the same nanoparticulates described by applicant, thus the limitation of forming adjacent an interface is considered met. Because Li teaches that the metal is maintained at temperature and reacts the limitation of “maintaining” is also considered to be met. In the alternative, the formation location of the particulates would have been immaterial to the process, and the products are the same. The mere specification of a location of the interface is insufficient to distinguish over the prior art process.
Li teaches that the metal is stirred during the reaction (See A. Material processing (FAS and ASR). The stirring meets the limitation of controlling a time during which the nanostructures remain near the interface. The same step applied to the same materials used in the same reaction would have had the same effects as claimed inherently.
Li teaches that two kinds of salts are added (see II. A. Material processing (FAS and ASR) on pp. 2515-2516), meeting the limitation of a set of reactants and a diluting salt. Further than this, Li teaches that during the natural course of the reaction of the salts with the metal, the salts K3AlF6 and KalF4 are formed (see II. A. Material processing (FAS and ASR) on pp. 2515-2516). Li teaches that these are present on the surface of the melt as slag. Thus the same diluting salts disclosed by applicant are explicitly described as being provided by the process of Li, on the surface.
Alternatively, the addition of a diluting salt is known in the art. Maiteli teaches a metal matrix nanocomposite based on molten metal processing (see title, abstract). Maiteli teaches that nanoparticles are added to a melt of aluminum (see [0021]-[0027]). Maiteli teaches that addition of a salt can assist in dissolving the surface oxide film on the molten metal (see [0021]-[0027] and [0036]). Maiteli teaches that this may be a fluoride salt ([0027] or Embodiment 1).
It would have been an obvious matter to a skilled artisan at time of invention to have practiced the invention of Li, and further to have added fluoride salt as taught by Xu, in order to dissolve a surface oxide (cited above). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Regarding claim 2, Li teaches that nanometer particles are obtained (see Fig 3). The limitation of the claim is therefor met.
Regarding claim 3, Li teaches that the method is used for mass production techniques (see I. Introduction).
Regarding claim 4, Li teaches heating (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 4-6, Li teaches heating (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 7, Li teaches metal containing salts (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 8, Li teaches metal containing halide salts (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 9, Li teaches boron containing salts (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 14, Li teaches that two kinds of salts are added (see II. A. Material processing (FAS and ASR) on pp. 2515-2516), meeting the limitation of a set of reactants and a diluting salt. Further than this, Li teaches that during the natural course of the reaction of the salts with the metal, the salts K3AlF6 and KalF4 are formed (see II. A. Material processing (FAS and ASR) on pp. 2515-2516). Li teaches that these are present on the surface of the melt as slag. Thus the same diluting salts disclosed by applicant are explicitly described as being provided by the process of Li, on the surface.
Alternatively, the addition of a diluting salt is known in the art. Maiteli teaches a metal matrix nanocomposite based on molten metal processing (see title, abstract). Maiteli teaches that nanoparticles are added to a melt of aluminum (see [0021]-[0027]). Maiteli teaches that addition of a salt can assist in dissolving the surface oxide film on the molten metal (see [0021]-[0027] and [0036]). Maiteli teaches that this may be a fluoride salt ([0027] or Embodiment 1).
It would have been an obvious matter to a skilled artisan at time of invention to have practiced the invention of Li, and further to have added fluoride salt as taught by Xu, in order to dissolve a surface oxide (cited above). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Regarding claim 15-16, Li teaches metal containing fluoride salts are added (see II. A. Material processing (FAS and ASR) on pp. 2515-2516). Further than this, Li teaches that during the natural course of the reaction of the salts with the metal, the salts K3AlF6 and KalF4 are formed (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 17, Li teaches agitation (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 18, Li teaches cooling (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
Regarding claim 19, Li teaches that the nanoparticles fall in the size range (Fig 3).
Regarding claim 20, Li teaches a distribution meeting the claimed limitation (See Fig 3).
Regarding claim 21, Li teaches 5% reinforcement (see II. A. Material processing (FAS and ASR) on pp. 2515-2516).
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.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (or Li in view of Maiteli) as applied to claim 7 above, and further in view of US 3436212 A (hereinafter “Hess”).
Li or Li in view of Maiteli do not teach that the reactive mixture include silica salt. Li teaches that the process is flux assisted synthesis of a ultrafine grained composite (see abstract or II. A. Material processing (FAS and ASR) on pp. 2515-2516), but teaches other salts are used.
Hess teaches fluxes used for treating aluminum (see title). Hess teaches that flux is commonly used to treat aluminum as known in the art (col 1). Hess teaches that an inventive flux includes a salt mixture having potassium fluorosilicate (col 1). Hess teaches that the flux reduces loss from dross and does not introduce contaminants (col 1).
It would have been obvious to one of ordinary skill in the art at time of invention to have practiced the method of Li (or Li modified by Maiteli), and further to have used with the flux the flux composition of Hess, because Hess teaches that the flux reduces loss from dross and does not introduce contaminants (col 1). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Claim(s) 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chu as applied to claim 7 above, and further in view of US 3436212 A (hereinafter “Hess”).
Chu does not teach that the reactive mixture include silica salt. Chu teaches a mixture of various salts is used such as chloride salts (Example 1).
Hess teaches fluxes used for treating aluminum (see title). Hess teaches that flux is commonly used to treat aluminum as known in the art (col 1). Hess teaches that an inventive flux includes a salt mixture having potassium fluorosilicate (col 1). Hess teaches that the flux reduces loss from dross and does not introduce contaminants (col 1).
It would have been obvious to one of ordinary skill in the art at time of invention to have practiced the method of Chu, and further to have used with the salts the flux composition of Hess, because Hess teaches that the flux reduces loss from dross and does not introduce contaminants (col 1). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Claim(s) 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chu as applied to claim 1 above, and further in view of Ma and Tjong, Creep behavior of in-situ Al2O3 and TiB2 particulates mixture-reinforced aluminum composites, Materials Science and Engineering A 256 (1998) 120–128 (hereinafter “Ma”).
Chu is applied as stated in the rejections above. Chu does not teach that the reactants includes oxides.
Ma teaches a method of making a aluminum composite reinforced with Al2O3 and TiB2 particulates formed in situ (See title, 2. Experimental). Ma teaches that this is formed by addition of TiO2 and B2O3 to Al, and press reaction (2. Experimental). Ma teaches that this improves creep behavior and strength in general in the aluminum (see p 121).
It would have been obvious to one of ordinary skill in the art at time of invention to have practiced the method of Chu, and further to have used with the reactant materials taught by Ma (cited above), because Ma teaches that Ma teaches that this improves creep behavior and strength in general in the aluminum (see p 121). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Li (or Li in view of Maiteli) as applied to claim 1 above, and further in view of Ma and Tjong, Creep behavior of in-situ Al2O3 and TiB2 particulates mixture-reinforced aluminum composites, Materials Science and Engineering A 256 (1998) 120–128 (hereinafter “Ma”).
Li or Maiteli do not teach that the reactants includes oxides. Li teaches to make a TiB2 reinforced metal matric composite (see II. A. Material processing (FAS and ASR) on pp. 2515-2516 or Fig 3).
Ma teaches a method of making a aluminum composite reinforced with Al2O3 and TiB2 particulates formed in situ (See title, 2. Experimental). Ma teaches that this is formed by addition of TiO2 and B2O3 to Al, and press reaction (2. Experimental). Ma teaches that this improves creep behavior and strength in general in the aluminum (see p 121).
It would have been obvious to one of ordinary skill in the art at time of invention to have practiced the method of Li (or Li modified by Maiteli), and further to have used with the reactant materials taught by Ma (cited above), because Ma teaches that Ma teaches that in situ formed Al2O3 improves creep behavior and strength in general in the aluminum (see p 121). The combination of known elements to yield predictable results would have been prima facie obvious to the skilled artisan.
Response to Arguments
Applicant's arguments filed 23 July 2025 have been fully considered but they are not persuasive.
Applicant argues that the specification provides support for claim 17, including the step of starting agitation after a certain time. Applicant recites paragraphs 0008 and 0012 in support. These arguments are not persuasive. Applicant’s paragraph 0012 does not disclose agitating after any growth time. This feature is simply not disclosed. The agitation would be understood to move the nanoprecipitates away from an interface, but now applicant is seems to argue that the description that the agitation may be omitted provides support for a timed activation of the agitation. If this were an important part of applicant’s invention, this should have been disclosed before now. The claim is new matter.
Applicant argues that the prior art Chu and Li do not teach or fairly suggest the claimed method in which the growth time is controlled without agitation. These arguments are carefully considered, but are not persuasive. Specifically the only means for “controlling a growth time” that is disclosed by applicant is the agitation. Applicant does state that the growth time is a function of the wettability and the temperature (paragraph [0008]). However what is now claimed is an active step of “controlling the growth time.” The only time that a “control” over the growth time is disclosed is at [0012], where applicant discloses that the agitation is what controls growth time, but it may be omitted. No other “control” means is disclosed for growth time. No means of controlling wettability is disclosed. The original claim 1 already included the temperature being maintained, without the controlling the growth time step. If applicant means “controlling a growth time” is achieved merely by maintaining a temperature, then this argument is undermined entirely by applicant’s claim 17. Applicant’s claim 17 includes agitation, disclosed clearly as controlling the growth time. Applicant’s claim 1 now excludes agitation explicitly. Applicant has created a moving goalpost in claim 1, which includes agitation when desired, but excludes agitation only when needed to overcome an anticipation rejection. This invention was not disclosed in the specification. The claim is indefinite and also is new matter.
Because the claim is indefinite, as seeming to both require and also at the same time exclude agitation, it is believed that Li and Chu still read on what is claimed. For this reason the claims are rejected over the prior art.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759
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