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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/19/2025 has been entered.
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 21, 27, 29, 31-34, 37-38, and 40-41 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 21 recites the limitation "the gas generator" in line 9. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction/classification is required, For the purpose of examination, the above limitation will be interpreted as “the gas injector"
Due to the dependency to the parent claim, Claims 27, 29, 31-34, 37-38, and 40-41 are rejected.
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.
Claims 21, 27, 29, 31, and 41 are rejected under 35 U.S.C. 103 as obvious over Johnson et al (U.S.5,665,277) in view of Shahverdi et al (PG-PUB US 20180237306), and Wira (PB-PUB US 2007/0280863).
Regarding claim 21, Johnson et al disclose an electric arc apparatus (ABSTRACT & col. 5, line 44-45), The apparatus comprises
(1) a first chamber 10 (i.e., a reactor having a chamber, Figures 1, col. 5, line 32-33);
(2) an electrode 14 extending into the chamber 10, wherein arc is generated from the electrode to melt and evaporate the material in a crucible 12 (i.e. an electrode…, Figure 1, col. 5, line 43-45);
(3) a crucible 12 at the bottom of the chamber 10 (i.e. a crucible …, Figure 1, col. 5, line 37-39);
(4) an evaporation region in the chamber 10 (i.e., a vaporization zone, Figure 1, col. 5, line 34-35);
(5) a gas jet nozzle 15 provided at a lateral wall of the chamber 10 above the crucible 12, wherein the gas jet nozzle 15 directs quenching gas to the chamber 10 having the evaporation region (i.e., an gas injector …, Figure 1, col. 6, line 32-40); and
(6) a vacuum pump V for evacuating the chamber 10 (i.e., a vacuum pump…, Figure 1, col. 5, line 42-43).
Johnson teaches that the raw material M is placed in the crucible 12 (Figure 1, col. 5, line 36-37), but does not teach the raw material being received from the upper portion of the chamber or the crucible insulated by a layer of refractory material or the chamber insulating by a layer of refractory material. However, Shahverdi et al disclose an electric arc apparatus (ABSTRACT). Shahverdi teaches that the electric arc apparatus comprises an electrode 4 extending into the arc furnace 2 insulated by an insulating ceramic 11, a crucible 3 insulated by a refractory material 12 for receiving feed stock F from a port 1 provided at the upper portion of the arc furnace 2 for supplying the raw material to the arc furnace (Figure 1, paragraphs [0032] & [0035]).
Therefore, it would be obvious for one having ordinary skill in the art to provide the crucible and the chamber with a refractory material and to provide a port at the upper portion of the chamber as suggested by Shahverdi in order to insulate the crucible and the chamber and to supply the raw material to the device of Johnson.
Johnson teaches that the gas jet nozzle 15 directs quenching gas to the chamber 10 (Figure 1, col. 6, line 32-40) while Shahverdi teaches a gas injection port 10 for injecting gas tot the arc furnace (Figure 1, paragraph [0034]), but Johnson/Shahverdi does not teach the gas injector comprising a vortex generator. However, Wira discloses an electric arc apparatus having a plasma torch (ABSTRACT). Wira teaches that arc apparatus comprises a plasma torch 4 and a vortex generator 23/10 with convergent-divergent nozzles for injecting gas to quench the same in order to effectively cool/quench the gas (Figure 1, paragraphs [0138], [0144], [0147] – [0149]).
Therefore, it would be obvious for one having ordinary skill in the art to include a vortex generator in the gas injector as suggested by Wira in order to improve quenching efficiency within the device of Johnson/Shahverdi.
Since the device of Johnson/Shahverdi/Wira comprises substantially the same/similar structures as claimed, it is fully capable of performing the claimed functions.
It should be noted that the limitations of “for producing nano-silicon particles … from raw silicon” are cited in preamble. When reading the preamble in the context of the entire claim, the above recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
The limitations of “raw silicon”, “silicon vapours”, “nano particles”, and “nano wires” are material worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115).
It should be noted that the limitation of “operative to first create arc… further operative to create a second arc…” is related to a manner of operating the device. It has been held that a manner of operating a device does not limit the apparatus claim from the prior art (MPEP 2114).
Regarding claim 27, Shahverdi teaches that the movable graphite electrode 4 is displaced by a motion system to control the voltage (paragraphs [0032] & [0035]).
Therefore, it would be obvious for one having ordinary skill in the art to utilize a movable electrode as suggested by Shahverdi in order to control the voltage within the device of Johnson/Shahverdi/Wira.
Regarding claim 29, the limitations of “a quenching mixture”, “the silicon vapour”, “an inert gas”, and “carbon containing precursors” are material worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 31, Wira teaches that the vortex generator 23/10 comprises convergent-divergent nozzles (paragraphs [0084],& [0145]).
It should be noted that the De Laval nozzle does not recite any structural limitation and will be interpreted as a nozzle having a converging-diverging section.
Regarding claim 41, Wira teaches that the convergent-divergent nozzle may comprises a plurality of inlets/holes and the dimension of the nozzles may affect the cooling efficiency (paragraph [0149]), hence a result-effective variable.
One having ordinary skill in the art would have realized to optimize the number and the diameter of the holes in order to adjusting velocity, thus achieving desired cooling/quenching rate within the device of Johnson/Shahverdi/Wira.
Claims 32 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (U.S.5,665,277), Shahverdi et al (PG-PUB US 20180237306), and Wira (PB-PUB US 2007/0280863) as applied to claim 21 above, and further in view of Garella et al (PG-PUB US 20170253494).
Regarding claim 32, Johnson teaches a collector chamber 20 for separating particles from gas (Figure 1, col. 8, line 25-28) while Shahverdi teaches that gas and solid are separated in a cyclone 15 (Figure 2, paragraph [0036]), but Johnson/Shahverdi/Wira does not teach a candle filter. However, Garella et al disclose an apparatus for separating gas from solid, wherein a cyclone and/or candle filter may be used for removing gas from the solids (paragraphs [0065] & [0070]).
One having ordinary skill in the art, upon reading the teaching of Garella, would have realized to use candle filter in an attempt to separate/remove solid from gas within the device of Johnson/Shahverdi/Wira because a person with ordinary skill in the art has a good reason to pursue the known potential options with a reasonable expectation of success.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Regarding claim 33, Johnson teaches another collector chamber 60 connected to the chamber 20 (Figure 1, col. 8, line 25-28 & col. 10, line 28-30).
The limitation of “is adapted to collect filtered particles” is a recitation for intended use, which does not differentiate the claimed apparatus from a prior art if the prior art teaches all the structural limitations of the claim (see MPEP 2114). Moreover, “filtered particles” is material worked upon the device. It has been held that material worked upon a device does not limit the apparatus claim from the prior art (MPEP 2115).
Claims 34 is rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (U.S.5,665,277), Shahverdi et al (PG-PUB US 20180237306), Wira (PB-PUB US 2007/0280863), and Garella et al (PG-PUB US 20170253494) as applied to claim 33 above, and further in view of Zehavi (PG-PUB US 20100243963).
Regarding claim 34, Shahverdi teaches that silicon is tapped through a tap hole 8 for collecting silicon (Figure 1, paragraph [0033]), but Johnson/Shahverdi/Wira/Garella does not teach a glove box. However, Zehavi discloses an apparatus for producing silicon (ABSTRACT). Zehavi teaches that silicon may be further processed in a glove box for desired application (paragraph [0053]). Therefore, it would be obvious for one having ordinary skill in the art to include a glove box downstream of the collector as suggested by Zehavi in order to further process silicon for desired application within the device of Johnson/Shahverdi/Wira/Garella.
Since the device of Johnson/Shahverdi/Wira/Garella/Zehavi comprises substantially the same/similar structures as claimed, it is fully capable of performing the claimed functions.
Claims 37-38, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al (U.S.5,665,277), Shahverdi et al (PG-PUB US 20180237306), and Wira (PB-PUB US 2007/0280863) as applied to claim 21 above, and further in view of Boulos et al (PG-PUB US 2016/0175936).
Regarding claim 37, Johnson/Shahverdi/Wira does not teach the furnace/reactor comprising an induction coil. However, Boulos et al disclose an apparatus for generating plasma (ABSTRACT). Boulos teaches that the plasma generating device comprises a plasma torch 120 coupled to an induction coil 130 for producing electromagnetic field to ignite and sustain the plasma 126 within the confinement tube 179 including a pre-heating zone 124 (Figures 1-3, paragraphs [0046] – [0047]).
Therefore, it would be obvious for one having ordinary skill in the art to couple an induction coil to the furnace/reactor as suggested by Boulos in order to effectively ignite and sustain the plasma within the device of Johnson/Shahverdi/Wira.
It should be noted that the limitation of “raw silicon” is material worked upon a device, which does not limit the apparatus claim from the prior art (MPEP 2115).
Regarding claim 38, Boulos teaches that the induction coil 130 is provided within the torch body 180 and includes a pre-heating zone 124 (Figures 1-3, paragraphs [0046] – [0047]).
Regarding claim 40, Johnson teaches that the electrode 14 for generating arc is placed around the crucible 12 (Figure 1). Shahverdi teaches that the electrode 4 is placed around the crucible 3 (Figure 1). Boulos teaches that the induction coil 130 is coupled to the plasma torch 120 for generating arc (Figures 1-3, paragraphs [0046] – [0047]).
Therefore, one having ordinary skill in the art would have realized to place the inductive coil around the crucible in order to heat the material in the crucible within the device of Johnson/Shahverdi/Wira.
Furthermore, the claimed limitations are obvious because all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results (MPEP 2143A).
Since the device of Johnson/Shahverdi/Wira/ Boulos comprises substantially the same/similar structures as claimed, it is fully capable of performing the claimed functions.
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 21, and 27 are rejected on the ground of non-statutory double patenting as being unpatentable over claims 1, 2, 6, and 11 of U.S. Patent No. 11,267,714. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims an apparatus comprising substantially the same structures as that of the issued patent.
Response to Arguments
Applicant’s arguments have been considered but are moot in light of the applicant’s amendments.
It should be noted that Shahverdi teaches that the arc furnace 2 is insulated by a layer of insulating ceramic 11 and a crucible 3 is insulated by refractory material 12 (Figure 1, paragraph [0035]). Thus, Shahverdi teaches the newly added limitations in the amended claim 1.
Conclusion
Claims 21, 27, 29, 31-34, 37-38, and 40-41 are rejected.
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/XIUYU TAI/Primary Examiner, Art Unit 1795