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 .
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 & 3 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.
The limitation that the silicon nitride ceramic material is single-phase does not appear to be supported by the instant specification. It is acknowledged that in the 8/28/2025 amendment applicants assert [0006] and [0007] explicitly state that an objective of the invention is to sinter Si3N4 “without creating any new phase”
Paragraphs [0006] and [0007] cannot be found. Note that the copy of the specification used in preparing this office action does not have paragraph numbers. The specification being used has WO 2021/133300 and PCT/TR2020/051091 at the top of each page.
The most relevant passage on this matter in the specification being used appears to be the last paragraph of page 5 which states that there is no new product and phase transformation in the system.
“Without creating any new phase” is not the same as single-phase. If one starts with a two phase mixture and performs an action that does not create a new phase, one still has two phases.
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 and 3 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. In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Claim 1 requires single-phase silicon nitride but same may be produced with sintering aids Y2O3, Dy2O3 or EuO3. It is not clear how the sintering aids could be present in the production method but not introduce another phase or to the instantly claimed single phase Si3N4.
Claim 1 requires a single step sintering process but then recites three distinct steps which involve multiple temperatures. Perhaps this could be alleviated by claiming a sintering process which consists of recited steps.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Matsuura et al. (US 5,622,905).
Note that claim 1 as written does not require any amount of additives Y2O3, Dy2O3 or EuO3.
Matsuura sinters Si3N4 at temperatures from 1400 – 1900C. See the paragraph spanning columns 2-3. Matsuura may use spark plasma sintering (col. 3, line 51).
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 BENJAMIN L UTECH whose telephone number is (571)272-1137. The examiner can normally be reached M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shawn Decenzo can be reached at (571)270-3227. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BENJAMIN L UTECH/Primary Examiner, Art Unit 6212
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