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 .
Status of Claims
Claims 19 and 22-25 are cancelled. Claims 1-18, 20 and 21 are pending. Claims 1, 2, 4, 7, 10, 16-18 and 20 are amended. Claims 1 and 20 are independent claims. Claims 20 and 21 are withdrawn. Claims 1-18 are currently examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-18 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The reciting in claim 1 "... a spontaneous flow evacuation configured to allow only extraction of the growth solution from the crystalline growth cavity without modifying flow of the growth solution …" is not described in the specification as originally filed. Any claim containing a negative limitation which does not have basis in the original disclosure should be rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement, see MPEP 2173.05(i). Claims 2-18 are rejected because they depend on claim 1.
Claim 1 recites "...substantially close the crystalline growth cavity…", which is not described in the specification as originally filed. Claims 2-18 are rejected because they depend on claim 1.
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 1-18 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 pre-AIA the applicant regards as the invention.
The recited in claim 1 “…optionally, a spontaneous flow evacuation configured to allow only extraction of the growth solution from the crystalline growth cavity without modifying flow of the growth solution… said spontaneous flow evacuation arranged in the first wall or in a portion of the substrate located at the growth cavity…” constitutes an indefinite subject matter. While claim 1 recites “optionally, a spontaneous flow evacuation configured to allow only extraction of the growth solution from the crystalline growth cavity without modifying flow of the growth solution”, while also positively reciting “said spontaneous flow evacuation”. It is not clear whether “spontaneous flow evacuation” is optional or not. Therefore, the metes and bounds of claim 1 are not readily ascertainable. Clarification and/or correction are/is required. Claims 2-18 are rejected because they depend on claim 1.
The recited in claim 1 “… the growth solution controlling, over time … spontaneous flow evacuation…” constitutes an indefinite subject matter. It appears that the limitations “growth solution controlling, over time” and “spontaneous flow evacuation” are conflicting with each other. It is not clear whether the solution is controlled or spontaneous flow. Therefore, the metes and bounds of claim 1 are not readily ascertainable. Clarification and/or correction are/is required. Claims 2-18 are rejected because they depend on claim 1.
The term "substantially" recited in claim 1 is a relative term which renders the claim indefinite. The term "substantially" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Claims 2-18 are rejected because they depend on claim 1.
The recited in claim 18 “…formula respecting the electronic neutrality A(1)1-(y2+…+yn)A(2)y2…A(n)ynB(1)1-(z2+…+zm)B(2)z2…B(m)zmX(1)3-(x2+…xp)x(2)x2…X(p)xp.…” constitutes an indefinite subject matter. It is not clear what x, y, z, n, m and p represent, and what A(1)1-(y2+…+yn)A(2)y2…A(n)ynB(1)1-(z2+…+zm)B(2)z2…B(m)zmX(1)3-(x2+…xp)x(2)x2…X(p)xp is. Therefore, the metes and bounds of claim 18 are not readily ascertainable. Clarification and/or correction are/is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), fourth paragraph:
Subject to the [fifth paragraph of 35 U.S.C. 112 (pre-AIA )], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 2 is rejected under 35 U.S.C. 112(d) or 35 U.S.C. 112 (pre-AIA ), 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. While reciting “comprising said spontaneous flow evacuation”, claim 2 does not further limit the parent claim 1 by providing an additional structural element/feature. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-7, 9 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Liu et al (Adv. Mater, 2016 Nov; 28(41): 9204-9209, “Liu”), and further in view of Zhong et al (CN 102634846 A, machine translation).
Regarding claims 1 and 2, Liu teaches a manufacturing device allowing manufacturing a crystalline conversion layer from a crystalline conversion layer growth solution, the manufacturing device comprising a first wall and a bottom glass (substrate) defining therebetween a crystalline growth cavity (fig 1, pages 9204 and 9205); solution flow in/out (at least one inlet/outlet device) of the growth solution controlling, over time, the supply and extraction of the growth solution respectively to and from the crystalline growth cavity (fig 1, pages 9204 and 9205); a temperature controller and a heater (temperature setting device) creating a temperature profile in at least the crystalline growth cavity (fig 1, pages 9204 and 9205); the temperature profile controlling a free formation of the crystalline conversion layer over a thickness of 150 µm (greater than 1 micrometer), from all or part of a forming face of the substrate facing the interior of the crystalline growth cavity, in a direction mainly transverse to said forming face (figs 1 and 2, pages 9204-9206); the entire thickness of the crystalline conversion layer being obtained by the free formation of the crystalline conversion layer (figs 1 and 2, page 9204).
Liu teaches the first wall, the substrate, the growth solution, the crystalline growth cavity and the at least one inlet/out devices as addressed above, and further teaches that the growth solution, introduced into the crystalline growth cavity by said at least one inlet/outlet device, is extracted from the crystalline growth cavity the inlet/outlet device (fig 1, pages 9204 and 9205), but does not explicitly teach that the first wall is sealingly fastened to the substrate. However, Zhong teaches a device for crystal growth, wherein the device comprises walls forming a growth cavity with a substrate in a sealing/ fastened manner (figs 2 and 3, abstract, 0007, 0008, 0018, 0019, claim 1). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Liu per teachings of Zhong in order to provide tightly sealed device which is suitable conditions for crystals under control (Zhong abstract).
Liu/Zhong teaches the first wall being sealingly/fastened to the substrate, the growth cavity and the at least one inlet/outlet device, similar to the instantly claimed structural element. Therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of “substantially closing the crystalline growth cavity so that the growth solution is extracted.” A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 3, Liu/Zhong teaches the instantly claimed temperature setting device comprising elements (temperature controller and heater) as addressed above; therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of allowing modifying the temperature profile over time. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 4, Liu/Zhong teaches the instantly claimed temperature setting device comprising elements (temperature controller and heater) as addressed above; therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of allowing configuring the temperature profile in at least one element selected from the group comprising the crystalline growth cavity, the substrate and the first wall. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 5, Liu/Zhong teaches the instantly claimed temperature setting device comprising elements (temperature controller and heater) as addressed above; therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of the temperature profile being at least one temperature lower than a temperature of the substrate. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 6, Liu/Zhong teaches the instantly claimed temperature setting device comprising elements (temperature controller and heater) as addressed above; therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of the temperature profile being at least one temperature higher than a temperature of the substrate. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Regarding claim 7, Liu/Zhong teaches the temperature setting device as addressed above, and further teaches the heater of the temperature setting device is arranged in a second wall formed at an outer face of the substrate opposite the forming face (Liu fig 1).
Regarding claim 9, Liu/Zhong teaches the inlet/outlet device of the conversion crystal growth solution as addressed above, and further teaches that the inlet and the outlet are separated arranged on either side of the substrate, both an end portion of the inlet and an end portion of the outlet (the portions closest to the substrate) are parallel to the forming face (Liu fig 1), reading on a plurality of separate inlet/outlet devices of the conversion crystal growth solution arranged on either side of the substrate, parallel to the forming face.
Regarding claim 15, Liu/Zhong teaches the instantly claimed temperature profile by the temperature setting device as addressed above; therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of obtaining the formation of the crystalline conversion layer only on a limited part of the forming face of the substrate without contact with the first wall, the remaining part of the forming face) remaining devoid of conversion crystal. A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997). It is noted that “configured to” is recited in the instant claim; and it is well settled that “configured to” is linking words, provided it is clear that the claim element is reciting a function. See MPEP 2181.
Regarding claim 16, Liu/Zhong teaches the at least one inlet/outlet device of the solution, the first wall and the substrate as addressed above, but does not explicitly teach a specific arrangement of the at least one inlet/outlet device of the solution passes through at least one element selected from group comprising the first wall and the substrate. However, it has been held that the mere rearrangement of parts without modifying the operation of a device is prima facie obvious. See, e.g., In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); see also MPEP 2144.04 (VI) (C). The court has held that the configuration of the claimed apparatus is a matter of choice, which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed apparatus is significant, as per In re Dailey, 357 F. 2d 669,149 USPQ 47 (CCPA 1966).
Regarding claim 17, Liu/Zhong teaches the crystalline conversion layer to be formed is perovskite CH3NH3PbI3 (Liu pages 9204 and 9205), meeting the claim.
Regarding claim 18, Liu/Zhong teaches the crystalline conversion layer to be formed is perovskite (pages 9204 and 9205), but does not explicitly teach A(1)1-(y2+…+yn)A(2)y2… A(n)ynB(1)1-(z2+…+zm)B(2)z2…B(m)zmX(1)3-(x2+…xp)x(2)x2…X(p)xp. However, it is noted that the instant claims are apparatus claims, and the courts have ruled that expressions relating an apparatus to the contents thereof during an intended operation are of no significance in determining the patentability of the apparatus claims, consult Ex parte Thibault, 164 USPQ 666, 667 (Bd. App, 1969). ln re Young (25 U.S.P.Q. 69, 71 (CCPA 1935)) and ln re Rishoi (94 U.S.P.Q. 71,73 (CCPA 1952)). Furthermore, "[i]nclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims." In re Otto, 312 F.2d 937, 136 USPQ 458, 459 (CCPA 1963); see also In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935). MPEP 2115.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Liu/Zhong as applied to claim 1 above, and further in view of Longxian Zhang (US 20150214036 A1, “Zhang”).
Regarding claim 8, Liu/Zhong teaches the temperature setting device as addressed above, but does not explicitly teach a plurality of control areas, each control area having an area temperature that can be modified by the temperature setting device, independently from one control area to another control area. However, Zhang teaches a temperature control apparatus, wherein the apparatus comprises a plurality of heating sets/areas, and each of the heating sets independently comprise a thermostat and a temperature monitor (fig 3, 0016, 0027). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Liu/Zhong per teachings of Zhang in order to control and adjust the real-time temperature of different areas of a substrate and obtain a uniform crystalline layer on the substrate (Zhang, 0027, 0033). Furthermore, it is well settled that mere duplication of parts has no patentable significance (MPEP 2144.04 VI B).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Liu/Zhong as applied to claim 1 above, and further in view of Takahashi et al (US 20200211919 A1, “Takahashi”).
Regarding claim 10, Liu/Zhong teaches the at least one inlet/outlet device as addressed above, but does not explicitly teach that at least one conversion crystal liquid precursor inlet/outlet device is arranged facing the forming face. However, Takahashi teaches an apparatus for forming crystalline material, wherein a supply pipe is facing a substrate for supplying raw material solution to the substrate (figs 1 and 2, 0071, 0072). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Liu/Zhong per teachings of Takahashi in order to provide suitable way to supply raw material for forming crystalline material with excellent and enhanced quality (Takahashi abstract, 0024, 0028).
Claims 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Liu/Zhong as applied to claim 1 above, and further in view of Hu et al (US 20160042829 A1, “Hu”).
Regarding claims 11 and 12, Liu/Zhong teaches the forming face as addressed above, but does not explicitly teach all or part of the forming face comprises a seed layer of the conversion crystal. However, Hu teaches a device for forming crystalline material, wherein a seed layer includes crystalline grains for further film layer formation (0023, 0040-0042, 0056). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Liu/Zhong per teachings of Hu in order to facilitate the subsequent formation of film layer (Hu 0023, 0040-0042, 0056).
Regarding claims 13 and 14, Liu/Zhong/Hu teaches the seed layer as addressed above, but does not explicitly teach specific orientations of the seed layer. However, it has been held that the mere rearrangement of parts without modifying the operation of a device is prima facie obvious. See, e.g., In re Japikse, 181 F.2d 1019, 86 USPQ 70 (CCPA 1950); In re Kuhle, 526 F.2d 553, 188 USPQ 7 (CCPA 1975); see also MPEP 2144.04 (VI) (C). Further, it is well-established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see MPEP 2144.07.
Response to Arguments
Applicant's arguments filed 11/28/2025 have been fully considered but they are not persuasive.
Applicant’s arguments that Liu fails to disclose features of “a first wall and a substrate defining therebetween a crystalline growth cavity… at least one inlet/outlet device of the growth solution controlling, over time, at least one function selected from the group consisting of supply and extraction of the growth solution respectively to and from the crystalline growth cavity… the first wall is sealingly fastened to the substrate to substantially close the crystalline growth cavity” have been considered, but not found persuasive. As addressed above, Liu teaches a first wall and a bottom glass (substrate) defining therebetween a crystalline growth cavity (fig 1, pages 9204 and 9205); solution flow in/out (at least one inlet/outlet device) of the growth solution controlling, over time, the supply and extraction of the growth solution respectively to and from the crystalline growth cavity (fig 1, pages 9204 and 9205). It is noted that Liu does not explicitly teach that the first wall is sealingly fastened to the substrate. However, Zhong teaches a device for crystal growth, wherein the device comprises walls forming a growth cavity with a substrate in a sealing/ fastened manner (figs 2 and 3, abstract, 0007, 0008, 0018, 0019, claim 1). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Liu per teachings of Zhong in order to provide tightly sealed device which is suitable conditions for crystals under control (Zhong abstract). Liu/Zhong teaches the first wall being sealingly/fastened to the substrate, the growth cavity and the at least one inlet/outlet device, similar to the instantly claimed structural element. Therefore, it is reasonably expected that the apparatus of Liu/Zhong is capable of performing the instantly claimed functions of “substantially closing the crystalline growth cavity so that the growth solution is extracted.” A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Moreover, the argument concerning "Liu refers to a peristaltic pump, which, in this case, allows a flow of solution to be established in the container but does not actually allow the supply or extraction of the solution to be controlled with respect to the space between the two plates" represents the counselor’s opinion, which is not supported by factual evidence. It is well established that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). Furthermore, it is noted that the instant invention is also involved a pumping system for actually allow the supply or extraction of the solution to be controlled, for example as described in the instant specification ([0108] of instant PGPUB US 2023/0357948 A1).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., sensor or valve) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant’s arguments that “While Liu may disclose a temperature controller and a heater, Liu does not disclose or suggest deliberately creating a temperature profile (temperature gradient)” have been considered, but not found persuasive. As applicant already noted, Liu discloses the structural elements of a temperature controller and a heater; Liu further teaches the temperature controller and the heater creating a temperature profile in at least the crystalline growth cavity (fig 1, pages 9204 and 9205). It is also noted that “temperature gradient” is not recited in the instant claims. It is well established that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, A claim containing a "recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus" if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ 2d 1647 (Bd. Pat. App. & Inter. 1987). See also MPEP 2114. While features of an apparatus may be recited either structurally or functionally, claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431-32 (Fed. Cir. 1997).
Applicant’s arguments that Zhong in particular does not describe “a) A temperature control device. b) The formation of layers…. c) That the pads 8 allow conversion crystals to form. d) That crystals can grow from the substrate. Zhong only shows that growth is possible from pads glued to the substrate” have been considered, but not found persuasive. As addressed above, the primary reference to Liu already teaches temperature control device, formation of layers, and crystals growing from the substrate; and as applicant already noted, Zhong also teaches growth from pads glued to the substrate (pads and substrate as whole being considered as the instantly claimed substrate), meeting the claim. It is also noted that “pads” is not recited in the instant claims. It is well established that although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is examiner’s position that a prima facie case of obviousness is well-established per teachings/combination of the instantly cited references.
Conclusion
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 Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714