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 3 July 2025 have been fully considered but they are not persuasive. Applicant’s description of the invention from Pg. 5-6 of the Remarks is acknowledged but did not consist of any arguments and is not further addressed.
Applicant argues from Tables 2, 4, and 6 of Wochner the silicon chunks of Wochner “have much high metal concentrations than the presently claimed range.” Applicant argues the median and mean are much higher than the upper limit of 15.0 pptw as defined in the claim, including the Cu, Fe, and Zn values.
However, this is not found persuasive because a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 [R-5]). Although Wochner does not explicitly list specific examples of metal concentrations falling within the instantly claimed ranges, the broader teachings of polycrystalline silicon chunks preferably have a concentration of metals on the surface of 10-200 pptw, more preferably 10-100 pptw (col. 3, lines 28-31), and the surface contamination with Fe is 1-40 pptw, with Cu 0.1-5 pptw, and with Zn 0.1-10 pptw (col. 3, lines 35-38), reasonably suggest total and specific metal concentrations falling within the instantly claimed ranges and as such the concentrations in Wochner presents a prima facie case of obviousness over the instantly claimed metal concentrations.
Applicant asserts Wochner teaches a method of cleaning the polycrystalline silicon chunks that includes HF, HCl, and H2O2. Applicant cites Table 1 of the instant specification that includes a comparative example deploying that same acid wash composition as that of Wochner. Applicant argues that because the total surface metal concentration and total Fe and Zn concentrations do not fall within the claimed ranges, the instant specification rebuts any prima facie “vase” of obviousness.
However, first, arguments regarding the different methods of production between the prior art Wochner and the instant invention are not convincing. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113. Given that Wochner describes a broad range that overlaps the claimed ranges, the disclosure of Wochner makes obvious the instantly claimed invention.
Second, it cannot be said that a single example in the instant invention (i.e. comparative example 3 in Table 1) represents the entirety of the disclosure of Wochner. As presented in the 103 section, Wochner teaches polycrystalline silicon chunks that are cubic and have a metal content of less than 200 pptw, where the concentration of metals on the surface are 10-200 pptw, or more preferably 10-100 pptw (col. 3, lines 23-41; Abstract). Wochner teaches the Cu concentrations ranges from 0.1-5 pptw and that the iron concentration ranges from 1-40 pptw and the Zn concentration ranges from 0.1-10 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (total metal from 10-100 pptw; Cu concentration 0.1-5 pptw; Fe concentration 1-40 pptw and Zn concentration 0.1-10 pptw; Fe + Zn total range 1.1 to 50 pptw) overlaps with the claimed ranges (surface metal 15.0 pptw or less; Cu 0.30 pptw or less; iron and zinc 2.00 pptw or less). Therefore, the range in Wochner renders obvious the claimed ranges.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-5 and 11-15 are rejected under 35 U.S.C. 103 as being unpatentable over Wochner et al. (US9266741).
Regarding claim 1, Wochner teaches polycrystalline silicon chunks that are cubic and have a metal content of less than 200 pptw, where the concentration of metals on the surface are 10-200 pptw, or more preferably 10-100 pptw (col. 3, lines 23-41; Abstract). Wochner teaches the Cu concentrations ranges from 0.1-5 pptw and that the iron concentration ranges from 1-40 pptw and the Zn concentration ranges from 0.1-10 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (total metal from 10-100 pptw; Cu concentration 0.1-5 pptw; Fe concentration 1-40 pptw and Zn concentration 0.1-10 pptw; Fe + Zn total range 1.1 to 50 pptw) overlaps with the claimed ranges (surface metal 15.0 pptw or less; Cu 0.30 pptw or less; iron and zinc 2.00 pptw or less). Therefore, the range in Wochner renders obvious the claimed ranges.
Additionally, Wochner describes the metal concentration as being measured on the surface (col. 3, lines 39-46), and further describes a washing/etching procedure that probes a depth of about 30 µm (see col. 6, lines 13-36). As stated above in the claim interpretation section, Wochner meets the limitation “surface metal concentration” in regards to the concentration of metals measured thereon.
Regarding claim 2, Wochner teaches the iron concentration ranges from 1-40 pptw (col. 3, line 35). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Fe concentration 1-40 pptw) overlaps with the claimed ranges (iron concentration 1.25 pptw or less). Therefore, the range in Wochner renders obvious the claimed ranges.
Regarding claim 3, Wochner teaches the Zn concentration ranges from 0.1-10 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Zn concentration 0.1-10 pptw) overlaps with the claimed ranges (zinc concentration 0.75 pptw or less). Therefore, the range in Wochner renders obvious the claimed ranges.
Regarding claim 4, Wochner teaches the Ni concentration ranges from 0.1-5 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Ni concentration from 0.1-5 pptw) overlaps with the claimed ranges (nickel concentration 0.30 pptw or less). Therefore, the range in Wochner renders obvious the claimed ranges.
Regarding claim 5, Wochner teaches the surface metals constitute the metals Fe, Cr, Ni, Na, Zn, Al, Cu, Mo, Ti, W, K, Co, Mn, Ca, Mg, V, and Ag in total (col. 3, lines 32-34). It is noted that the metals examined by Wochner include all of the metals required by claim 5 in addition to V and Ag. However, the ranges of metal concentrations taught by Wochner still meet the ranges required by the claim as the presence of additional metals in the screening panel (i.e. metals being measured) would only result in an overestimation of the metal ranges in Wochner.
Regarding claim 11, Wochner teaches the concentration of metals on the surface are 10-200 pptw, or more preferably 10-100 pptw (col. 3, lines 23-41; Abstract). Wochner teaches the Cu concentrations ranges from 0.1-5 pptw, the iron concentration ranges from 1-40 pptw and the Zn concentration ranges from 0.1-10 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (total metal from 10-100 pptw; Cu concentration 0.1-5 pptw; Fe concentration 1-40 pptw and Zn concentration 0.1-10 pptw; Fe + Zn total range 1.1 to 50 pptw) overlaps with the claimed ranges (surface metal 7.0 to 13.0 pptw; Cu 0.1 to 0.2 pptw; iron and zinc 0.6 to 1.80 pptw). Therefore, the ranges in Wochner renders obvious the claimed ranges.
Regarding claim 12, Wochner teaches the iron concentration ranges from 1-40 pptw (col. 3, line 35). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Fe concentration 1-40 pptw) overlaps with the claimed ranges (iron concentration 0.5 to 1.25 pptw). Therefore, the range in Wochner renders obvious the claimed range.
Regarding claim 13, Wochner teaches the Zn concentration ranges from 0.1-10 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Zn concentration 0.1-10 pptw) overlaps with the claimed ranges (zinc concentration 0.1 to 0.75 pptw). Therefore, the range in Wochner renders obvious the claimed range.
Regarding claim 14, Wochner teaches the Ni concentration ranges from 0.1-5 pptw (col. 3, lines 35-38). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (Ni concentration from 0.1-5 pptw) overlaps with the claimed ranges (nickel concentration 0.1 to 0.3 pptw or less). Therefore, the range in Wochner renders obvious the claimed range.
Regarding claim 15, Wochner teaches the polycrystalline silicon chunks are obtained by a process that includes comminution that takes place using a spike-roll crusher followed by cleaning (col. 4, lines 24-49). Wochner teaches this process, as described in prior art, provides cubic chunk polysilicon with a size of 45 to 250 mm (col. 1, lines 31-49). A process that provides chunks with a size between 45 to 250 mm would include at least 90% of the polycrystalline silicon, as the polycrystalline silicon chunks are described as being provided in that size and therefore would constitute about 100% of the polycrystalline silicon, within error.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. MPEP 2144.05 (I). In the instant case, the ranges taught by Wochner (45 to 250 mm) overlaps with the claimed ranges (2 mm to 160 mm). Therefore, the range in Wochner renders obvious the claimed range.
Conclusion
THIS ACTION IS MADE FINAL. 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 Jordan Wayne Taylor whose telephone number is (571)272-9895. The examiner can normally be reached Monday - Friday, 7:30 AM - 5 PM EST; Second Fridays Off.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally A. Merkling can be reached on (571)272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/J.W.T./Examiner, Art Unit 1738
/SALLY A MERKLING/SPE, Art Unit 1738