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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 04/03/2026 has been entered.
Examiner Notes
The supplemental reply filed on 05/18/2026 was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111(a)(2)(ii). The supplemental reply is not limited to (A) Cancellation of a claim(s); (B) Adoption of the examiner suggestion(s); (C) Placement of the application in condition for allowance; (D) Reply to an Office requirement made after the first reply was filed; (E) Correction of informalities (e.g., typographical errors); or (F) Simplification of issues for appeal.
Claims 1-6, and 8-21 are currently pending of which claims 2 and 9-20 are withdrawn. The claim amendment(s) filed 03/10/2026 where entered as noted in the Advisory Action mailed 03/17/2026
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 1, 3-6, 8, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Moh et al. (US 6,455,998) in view of Corbin et al. (US 4,869,943).
Regarding claims 1 and 8, Moh discloses a composite comprising a substrate which is a ceramic body matrix composite and a top layer (column 2, lines 30-41), where the top layer comprises a metal oxide (column 11, lines 25-40). The top layer being etched via laser ablation to include a marking having letters and numbers (Fig. 2a, column 3, lines 15-20) or bar codes (column 17, lines 50-55).
Moh does not expressly teach leaving a portion of the metal oxide layer that is less than 5% (or less than 1% as claimed in claim 8) of an original thickness of the metal oxide layer. However, Moh teaches various thicknesses of the top layer may be removed to allow for different levels of contrast within the same pattern with the greatest contrast being obtained for a given pattern when the total thickness of the top layer is removed (column 8, lines 40-50).
It would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the removal thickness, including for less than 5% or less than 1% of the original thickness to remain, for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Moh teaches the base layer comprising particles interspersed in a glassy phase (column 6, lines 29-31), however Moh does not teach the matrix comprising SiC, BN, B4C, Si3N4, MoSi2, SiOC, SiNC, SiONC, ZrC, HfC, or a combination thereof.
Corbin, in the analogous field of ceramic matrix composite articles (column 1, lines 10-15), discloses a ceramic matrix composite of silicon carbide fibers and a matrix of silicon nitride (column 1, lines 20-25).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the base layer of Moh to include the ceramic matrix composite as taught by Corbin, as the material is light weight with high stiffness and low coefficient of thermal expansion (column 14, lines 45-50).
Regarding claim 3, Moh teaches the top layer directly in contact with the substrate (Fig. 1 and 2a).
Regarding claim 4, Moh teaches fibers of e.g., glass (oxide ceramic) (column 12, lines 10-15) and Corbin teaches silicon carbide fibers (column 1, lines 20-25).
Regarding claim 5, Moh teaches the layers having a different color and thus reflectivity (column 2, lines 40-45 and column 18, lines 1-10).
Regarding claim 6, Moh teaches the base layer being black and the top layer being white (column 7, lines 35-40), thus teaching the metal oxide layer (top layer) having a greater reflectivity form that of the matrix material in the bottom layer.
Regarding claim 21, Moh does not expressly teach the original thickness of the metal oxide layer being between 0.1 to 0.4 millimeters. However, Moh teaches that the thickness of the top layer should be thick enough to allow sufficient color contrast while not being too thick that the laser may not penetrate far enough (column 13, lines 5-15). It would have been obvious to one having ordinary skill in the art at the time of the invention to adjust the top layer thickness, for the intended application, since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Response to Arguments
Applicant’s amendments filed 03/10/2026 were entered as noted in the Advisory Action mailed 03/17/2026. Accordingly, the objection of claim 1 is withdrawn.
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that there is no motivation to combine Corbin with Moh because the motivation provided bears no connection to the problem addressed by Moh.
There is no requirement for obviousness to address the problem faced by the primary reference. That the applied references do not disclose the same motivations does not imply that the motivation of the secondary reference wouldn't have been pertinent and/or an obvious modification to a person of ordinary skill.
Applicant argues that the combination proposed by the Office action is a product of impermissible hindsight reconstruction. Applicant argues that because Moh does not disclose the claimed matrix materials selection of Corbin to cure the deficiencies of Moh is by working backward from the claim language itself.
With regards to applicant's argument that the examiner’s conclusion of obviousness is based on improper hindsight reasoning. Please note that, "[a]ny judgment on obviousness is in a sense necessarily a reconstruction based on hindsight reasoning, but so long as it takes into account only knowledge which was within the level of ordinary skill in the art at the time the claimed invention was made and does not include knowledge gleaned only from applicant’s disclosure, such a reconstruction is proper." In re McLaughlin, 443 F.2d 1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Here, Corbin is combined with Moh for teaching a known matrix material having beneficial properties (Corbin: column 1, lines 20-25 and column 14, lines 45-50). A “teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention” is an exemplary rational supporting a conclusion of obviousness.
Conclusion
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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 ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
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