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 Application
Claims 1-11 are pending and presented for examination. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 21 May 2026 has been entered.
Response to Arguments
Applicant’s remarks dated 21 May 2026 (hereinafter, “Remarks at __”) are acknowledged and entered.
The objection to claim 9 is WITHDRAWN as the formulae have been removed.
The rejection of claim 10 under 35 U.S.C. 103 over Dukes is MAINTAINED and updated below to reflect the instant amendment.
The traversal is that “the resultant product is not subjected to any secondary treatment, in particular is not fractionated. This is not possible with Dukes.” (Remarks at 4). This conclusionary statement lacks any actual fact finding with respect to what Dukes disclosed. Furthermore, the instant invention actually performs secondary processing, Instant Specification at [0034] states “The thermally treated silicon carbide is optionally size-reduced in order to break up any baked-on material or caking”, if Applicants are arguing that the SiC of Dukes cannot be fractionated then that would be of interest to expound upon. But clearly as claimed, all that Dukes needs to meet the amended claim is that it not be broken because of the heating, and this is not something Dukes discloses as occurring. Applicants also argue that the claimed SIC particle “enlarge and are thusly usable again for a series of applications.”, but Applicants do not positively recite what this particle size is and nor is this value actually disclosed in the Instant Specification. Dukes can have particle diameters of 0.1-100 microns (Dukes at [0021]).
The rejection of claim 10 under 35 U.S.C. 102(a)(1) over Land is MAINTAINED and updated below to reflect the instant amendment.
The traversal is similar to that made against Dukes, namely that the heating step imparts this ability for it to be small and not easily broken up, but none of this is actually supported in the Instant Specification and testing data to show such versus Land (or Dukes) was ever submitted. Any discussion of secondary treatment or an affect of the heating temperature is immaterial until it can be shown that there is an actual effect of such versus Land.
Claim Rejections - 35 USC § 102
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 10 and 11 are rejected under 35 U.S.C. 102(a)(1) over Land.
Regarding claim 10, Land discloses SiC comprising a purity of at least 99.9% (Land at [0096]), a density of 0.5-1.5 g/cc (vs. 3.1 g/cc for the true density which is 16-48% proportional density, [[0115]) and a grain size of less than 100 microns ([0116]). The claim further requires that the final product reaches its purity by by means of an oxygen-free atmosphere of >1700 C for at least 8 minutes. It is not seen exactly how this heating affects the final product in a material way outside of the final purity and to what effect the starting material properties do not carry over versus those of the final product, nor is it apparent how the purity of the starting SiC matters and as such these are not being given any patentable weight. Land discloses a boule that is formed and this is meets the purity of the final product. It also meets the particle size of <100 nm which would also meet the “single fraction” requirement, though the Office cannot test to confirm this is the case, absent evidence to the contrary. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Turning to claim 11, claim 11 differs from claim 10 in that it explicitly states the starting material has not undergone a “first chemical purification” and does not claim that the thermally treated SiC “remains in a single fraction and may be size reduced to break up caking”. “Example 11f” sets forth a SiC having <20 ppm”, this is deposited this way so the starting material clearly has a starting purity >98% and a final purity much higher so no starting chemical purification step is even necessary. The rejection of claim 10 is hereby incorporated by reference in its entirety.
Claim Rejections - 35 USC § 103
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dukes.
Claims 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dukes.
Regarding claim 10, Dukes discloses a silicon carbide product having a density of 1.5-2.8 g/cc (true density of SiC is 3.1 g/cc so this results in a proportional density of 48.3-90.3% (Dukes at [0022], which overlaps that of the starting material of 20-50% which is prima facie obvious, see MPEP 2144.05), a grain size of less than 100 microns (due to the particle size between 0.1 and 100 microns, [0021] so the grain size is less than 100 microns) and a purity of 99.999% [0182]). The claim further requires that the final product reaches its purity by by means of an oxygen-free atmosphere of >1700 C for at least 8 minutes. It is not seen exactly how this heating affects the final product in a material way outside of the final purity and to what effect the starting material properties do not carry over versus those of the final product, nor is it apparent how the purity of the starting SiC matters. Dukes heats to 1750 C in Ar (“Example 12a”)and does not disclose that a single fraction is not formed and does not disclose that there is an inability to reduce/break up caking though the Office cannot test for this. See MPEP 2112 V, "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency' under 35 U.S.C. 102, on prima facie obviousness' under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same." The burden of proof is similar to that required with respect to product-by-process claims. In re Fitzgerald, 619 F.2d 67, 70, 205 USPQ 594, 596 (CCPA 1980) (quoting In re Best, 562 F.2d 1252, 1255, 195 USPQ 430,433-34 (CCPA 1977))".
Turning to claim 11, claim 11 differs from claim 10 in that it explicitly states the starting material has not undergone a “first chemical purification” and does not claim that the thermally treated SiC “remains in a single fraction and may be size reduced to break up caking”. Dukes discloses that in “Example 11” that the material is made in a clean room so high purity of >98% is already present. The rejection of claim 10 is hereby incorporated by reference in its entirety.
Conclusion
Claims 1-9 are allowed. Claims 10 and 11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RICHARD M RUMP whose telephone number is (571)270-5848. The examiner can normally be reached Monday-Thursday 06:45 AM to 04:45 PM.
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RICHARD M. RUMP
Primary Examiner
Art Unit 1759
/RICHARD M RUMP/Primary Examiner, Art Unit 1759
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