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 Arguments
Applicant's arguments filed 2/20/26 have been fully considered but they are not persuasive. The double patenting rejections applied in view of 19198839 have been withdrawn because the method claims have been cancelled from that application. Applicant argues that Randall does not explicitly disclose the occurrence of fluxes, however, discovery of a new or unappreciated property within the prior art does not distinguish the instant invention from the cited prior art, see MPEP 2112 I and 2112.01 I. As the process as currently claimed and that of Randall appear to have identical materials and process steps, the fluxes would occur.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 13-25 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 6, 8-11 of U.S. Patent No. 12318841. Although the claims at issue are not identical, they are not patentably distinct from each other.
As to claim 13, 12318841 recites in claim 6, 8, 10 method of forming a densified material, the method comprising: combining a transport phase with an inorganic compound to form a mixture; allowing fluxes to form in the mixture; and applying pressure and temperature to promote mass transport and particle consolidation to a dense and robust polycrystalline body that is a compact.
As to claim 14, 12318841 recites in claim 6, 8, 10 generating the densified material consists essentially of: combining a transport phase with an inorganic compound to form the mixture; adding water to the transport phase before, during, or after combining the transport phase with the inorganic compound; allowing fluxes to form in the mixture; applying pressure and temperature to activate mass transport between grains of inorganic material of the inorganic compound leading to densification; and providing sufficient time to convert an initial particle compact into a dense and robust polycrystalline body.
As to claim 15, 12318841 recites in claim 8 allowing the transport phase to partially solubilize the inorganic compound to form the mixture.
As to claim 16, 12318841 recites in claim 6, further comprising: adding water to the transport phase before, during, or after combining the transport phase with the inorganic compound; and allowing the added water to suppress the melting temperature of the transport phase during the application of pressure and temperature, causing either more rapid transport at elevated temperatures or transport at net lower temperatures.
As to claim 17, 12318841 recites in claim 9 allowing a high-temperature melt of the initially solid transport phase material, melted during the application of pressure and temperature to dissolve precursor material in one location of the compact, and promote nucleation of new crystals in another location of the compact.
As to claim 18, 12318841 recites in claim 10 generating a hydro-flux that spans a regime between flux growth and hydrothermal growth so that an intersection of hydrothermal and flux-based crystal growth in the phase diagram introduces a mass transport phase at temperatures at or near a boiling point of the transport phase, the mass transport phase being a non-aqueous solution.
As to claim 19, 12318841 recites in claim 11 a pressure of 520 MPa.
As to claim 20, 12318841 recites in claim 11: applying temperature comprises applying temperature overlapping a range from 1000C to 300°C.
As to claim 21, 12318841 recites in claim 1, 5: hydrated powders in the transport phase.
As to claim 22, 12318841 recites in claim 1, 5: hydrated acetate powders (would result from the water and acetic acid added) in the transport phase.
As to claim 23, 12318841 recites in claims 1, 6: the transport phase is a solid solution prior to densification as the water can be added in powder form .
As to claim 24, 12318841 recites in claim 7: pressure is applied absent sintering aids.
As to claim 25, 12318841 recites in claim 1, 5, 6: water is added in free or bound state.
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.
Claims 13-25 are rejected under 35 U.S.C. 103 as being unpatentable over Randall et al. (WO 2017058727 A1).
As to claim 13, Randall teaches a method of forming a mixture to be densified via application of pressure and temperature of a cold sintering process (abstract) including: Combining a solvent where mixture of water and other solvents (transport phase) may be used as the solvent [0034], and where the solvent may be mixed directly with a fine inorganic powder [0036] where the inorganic powder is a metal compound in the form of ceramics such as metal oxides [0029], Randall teaches aqueous solvent is heated at boiling point of the solvent and temperatures up to 50-80 C higher than the boiling point [0027] and supersaturates the solubilized species [0032] which is considered to generate a hydro-flux spanning a regime between flux growth and hydrothermal growth as mass transport is present during the process leading to densification [0061-0063] Randall teaches the densification process involved a pressure of 250-750 MPa [0033] (the present specification discloses use of pressure of 530 MPa), and teaches a temperature of 200 C or less [0032] so a similar non-aqueous mass transport phase between grains of inorganic material would also be expected as the system is heated to a temperature at or above the solvent boiling point under the expectation products made by identical methods have the same properties. (See MPEP 2112.01(I)). These dense bodies are noted to be polycrystalline [0050, 0051] and are a compact [0061]. Randall teaches a density of greater than 90% [0037]. Randall teaches the solvent is added in less than 30% by weight [0036] and it is comprised of at least 50% water [0034], in other words the water is added in an overlapping range to 1-20%. Moreover, it has been held that choosing the over lapping portion of the range taught in the prior art is a prima facie case of obviousness, see MPEP 2144.05 I. Randall teaches the aqueous medium serves as transient solvent (which is considered a transient aqueous environment) densifying the mixture and causing evaporation [0038] under a dissolution precipitation process [0050].
As to claim 14, As the claim allows for water to be added at before, during or after combining the transport phase with the inorganic compound [0034] Randall teaches aqueous solvent is heated at boiling point of the solvent and temperatures up to 50-80 C higher than the boiling point [0027] and supersaturates the solubilized species [0032] which is considered to generate a hydro-flux spanning a regime between flux growth and hydrothermal growth as mass transport between grains of inorganic material is present during the process leading to densification [0061-0063] Randall teaches the densification process involved a pressure of 250-750 MPa [0033] encompassing the claimed range of 520 MPa, and teaches a temperature of 200 C or less [0032] so a similar non-aqueous mass transport phase between grains of inorganic material would also be expected as the system is heated to a temperature at or above the solvent boiling point under the expectation products made by identical methods have the same properties. (See MPEP 2112.01(I)).
The examiner reminds applicant that “absent a clear indication in the specification or claims of what the basic and novel characteristics actually are, "consisting essentially of" will be construed as equivalent to "comprising" and that it is “applicant’s burden to establish that a step practiced in a prior art method is excluded from his claims by ‘consisting essentially of’ language" See MPEP 2111.03 III.
As to claim 15, Randall teaches the transport phase partially solubilizes the inorganic compound [0009].
As to claim 16, As the claim allows for water to be added at before, during or after combining the transport phase with the inorganic compound [0034]. Randall teaches the aqueous medium serves as transient solvent (which is considered a transient aqueous environment) densifying the mixture and causing evaporation [0038] under a dissolution precipitation process [0050] and before heating as applied [0091] which further supersaturates the liquid phase at low temperature and further densifies the compact) [0038]; this is also considered to read on the step of suppressing the melting temperatures of fluxes formed, as the mechanism of the prior art and claimed invention are similar and therefore an ordinary artisan would expect similar flux suppression to occur. (See MPEP 2112.01(I)).
As to claim 17, Randall teaches an identical pressure and temperature is applied to dissolve precursor and promote nucleation as a liquid phase form between particles, this is interpreted to convey a melted liquid phase formed by pressure and heating identical to the claimed method. [0061]
As to claim 18, Randall teaches aqueous solvent is heated at boiling point of the solvent and temperatures up to 50-80 C higher than the boiling point [0027] and supersaturates the solubilized species [0032] which is considered to generate a hydro-flux spanning a regime between flux growth and hydrothermal growth as mass transport is present during the process leading to densification [0061] so a similar non-aqueous mass transport phase would also be expected as the system is heated to a temperature at or above the solvent boiling point under the expectation products made by identical methods have the same properties. (See MPEP 2112.01(I)).
As to claim 19, Randall teaches a pressure of 250-750 MPa [0033].
As to claim 20 Randall teaches a temperature of 200 C or less [0032], overlapping with the claimed range of 100-300 C. In the case where a claimed range overlaps or lies inside of a range taught by the prior art, a prima facie case of obviousness exists. (See MPEP 2144.05(I)).
As to claim 21, Randall teaches transport phase comprises hydrated powders as the water can be added in powder form [0035].
As to claim 22, Randall teaches the transport phase comprises acetic acid or sails thereof (ie acetate) [0034] and the use of hydrated powders [0035] and thus would imply the use of hydrated acetate powders [0034, 0035].
As to claim 23, Randall teaches the transport phase is a solid solution prior to densification as the water can be added in powder form [0035].
As to claim 24, Randall teaches the pressure and temperature are applied in the absence of a sintering aid other than water [0028].
As to claim 25, Randall teaches the water is bound or free [0034-0036].
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 ARMAND MELENDEZ whose telephone number is (571)270-0342. The examiner can normally be reached 9 AM- 6 PM Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ARMAND MELENDEZ/Primary Examiner, Art Unit 1759
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