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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-10 in the reply filed on 11/11/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP2007297231(JP’231).
Regarding claim 1, JP’231 discloses a silicon nitride sintered body by mixing the silicon nitride powder with 1 to 10% by mass of rare earth elements in terms of oxides and 2 to 10% by mass of aluminum in terms of oxides. See claim 4 and 6th paragraph of page 2.
The reference differs from Applicant's recitations of claims by not disclosing identical ranges. However, the reference discloses "overlapping" ranges, and overlapping ranges have been held to establish prima facie obviousness (MPEP 2144.05).
Regarding claim 2, JP’231 discloses that the rare earth element oxide such as yttrium (Y), ytterbium (Yb), or erbium (Er) is preferably used. See 5th paragraph of page 4.
Regarding claim 3, JP’231 discloses that a rare earth oxide comprising lanthanoid element. See 5th paragraph of page 4. Cerium belongs to lanthanoid elements. it is not picking and choosing to select one element (cerium) from one list (lanthanoid) however long the list may be. When the species is clearly named, the selection from a long list does not avoid a 103 rejection. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982).
Regarding claim 4, it appears that the prior art discloses a similar process of making the sintered body as the applicants set forth in the instant application. JP’231 discloses a silicon nitride sintered body by mixing the silicon nitride powder with 1 to 10% by mass of rare earth elements in terms of oxides, 2 to 10% by mass of aluminum in terms of oxides, 0.1 to 5 mass% titanium nitride as a conductivity imparting material and 0.1 to 5% by mass of metal carbon silicide.. Then, a molding step for molding the mixture into a predetermined shape, and a temperature of the molded body obtained by the molding step are increased, and a primary sintered body is prepared by sintering in a temperature range of 1700 to 1850 ° C. And a secondary sintering step of subjecting the obtained primary sintered body to a hot isostatic pressing (HIP) treatment in a temperature range of 1500 to 1750 ° C. In the primary sintering step, the temperature is 1500 to 1650. The heating time in the temperature raising range of ° C. is 30 minutes or more and 120 minutes or less. See claims 1-8
The recitation of “the silicon nitride sintered body contains an inclusion (I) in a surface layer portion that is a region within 2 mm from a surface of the silicon nitride sintered body, and a ratio of a total sectional area of the inclusion (I) to a total sectional area of the surface layer portion is 0.05% or more” is met by the prior art teaching since It has been held that Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977).
Regarding claims 5 - 6, JP’231 discloses that 0.1 to 5% by mass of metal carbon silicide including metal carbon silicide (MxSiyCz) is present in the silicon nitride sintered body. Here, M is an arbitrary transition metal, and x, y, and z are arbitrary coefficients. See 3rd and 4th paragraphs of page 4,
Regarding claim 7, JP’231 discloses that 0.1 to 5 mass% titanium nitride is used. See claim 2.
Regarding claim 8, JP’231 discloses that 0.1 to 5% by mass of metal carbon silicide (MxSiyCz), various transition metal element carbon silicides can be used. See 3rd and 4th paragraphs of page 4. It is not picking and choosing to select one element (Cr) from one list (transition metals), however long the list may be. When the species is clearly named, the selection from a long list does not avoid a 103 rejection. See Ex parte A, 17 USPQ2d 1716 (Bd. Pat. App. & Inter. 1990) (The claimed compound was named in a reference which also disclosed 45 other compounds. The Board held that the comprehensiveness of the listing did not negate the fact that the compound claimed was specifically taught. See also In re Sivaramakrishnan, 673 F.2d 1383, 213 USPQ 441 (CCPA 1982).
Regarding claim 9, JP’231 discloses that when a metal carbon silicide powder is used, the average particle diameter of the metal carbon silicide powder is preferably 5 μm or less. See 9th paragraph of page 4.
Regarding claim 10, JP’231 discloses that in the primary sintering step, it is important to manage so that the heating time in the temperature rising range of 1500 to 1650 ° C. is 30 minutes or more and 120 minutes or less. When the heating time in the above temperature rising range is as short as less than 30 minutes, the outgassing becomes insufficient and pores remain. See second paragraph of page 6. Therefore, it is reasonable to expect that less pores are desired. Thus, the diameter of the pore can be zero.
Conclusion
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/SHUANGYI ABU ALI/Primary Examiner, Art Unit 1731