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 .
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 1-10 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 this case, claim 1 recites “medium-low-temperature”, the term “medium-low-temperature” in claim 1 is a relative term which renders the claim indefinite. The term “medium-low-temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of what can be considered as “medium-low-temperature”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Next, claim 1 recites “high-temperature”, the term “high-temperature” in claim 1 is a relative term which renders the claim indefinite. The term ““high-temperature” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of what can be considered as “high temperature”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Thirdly, claim 1 (D) recites “the atmosphere”, one of ordinary skill in the art is uncertain whether such recited “the atmosphere” referring back to either (B) and/or (C) recited nitrogen atmosphere or referring to a different atmosphere, therefore, one of ordinary skill in the art cannot ascertain the metes and bounds of such claimed “the atmosphere”. Fourthly, claim 1 recites “high-purity aluminum nitride”, the term “high-purity aluminum nitride” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree of what can be considered as “high-purity aluminum nitride”, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. All claim 1’s depending claims are rejected for similar reasons.
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.
Claims 1-10 are rejected under 35 U.S.C. 103(a) as being unpatentable over Hu et al. (CN106187203) (For applicant’s convenience, Machine translation has been used hereof for citations) in view of UNIV SICHUAN (CN111470481) (For applicant’s convenience, Machine translation has been used hereof for citations) and Muneoka (US20130171451).
Hu et al teaches a process of producing aluminum powder comprising: (a) evenly mixing aluminum (metal) powder and carbon powder in an inert gas, and then heating and reacting to generate a powdered aluminum carbide intermediate product, wherein
the reaction temperature is set to 600°C-1300°C, and the reaction time is set to 1h-8h;
(b) placing the intermediate product aluminum carbide in a nitrogen source (ammonia gas) and then heating the reaction to obtain the desired aluminum nitride powder, wherein the reaction temperature is set at 600°C to 1300°C and the reaction time is set at 1h to 10h, so that nitrogen can penetrate into the interior of the intermediate product aluminum carbide to eventually generate the desired aluminum nitride (claim 1, para. [0009]-[0010], [0035], examples, Fig. 1, 3-4).
Regarding claim 1, Hu et al. does not expressly teach the inert gas in step (a) including nitrogen, or decarbonizing aluminum nitride powder.
However, since Hu et al expressly teaches inert gas can be argon and nitrogen atmosphere used to obtain desired aluminum nitride powder.
UNIV SICHUAN teaches argon, nitrogen and helium are well-known inert gas for protecting aluminum nitride material.
It would have been obvious for one of ordinary skill in the art to combine nitrogen as shown by UNIV SICHUAN into Hu et al. disclosed inert gas atmosphere because combining such known inert elements of nitrogen and argon for providing a protective atmosphere would have predictable results (see MPEP §2143 KSR). It would have been obvious for one of ordinary skill in the art to combine such argon and nitrogen reacting atmosphere as shown by Hu et al. for help producing desired aluminum nitride because selection of any order of adding ingredients or prior art process steps is prima facie obvious (See MPEP § 2144.04 IV).
Since Hu et al. already teaches a process making aluminum nitride from aluminum metal powder, therefore, producing an aluminum nitride based on aluminum metal powder is expected. Hu et al. in view of UNIV SICHUAN teaches a substantially the same reacting aluminum metal powder and carbon powder in a substantially the same atmosphere containing nitrogen, therefore, substantially the same forming partially nitrided aluminum nitride is expected. Hu et al also teaches/suggests a same or substantially the same reacting partially nitrided aluminum nitride in the presence of same or substantially the same nitrogen atmosphere, therefore, same or substantially the same removing intermediate aluminum carbide phase and form a fully nitrided aluminum nitride powder as that of instantly claimed is expected.
Muneoka teaches using a decarbonizing step to remove excess carbon powder from the obtained aluminum nitride powder product in an oxidizing atmosphere under temperature usually 500 to 900 °C, preferably, 600 to 750°C, specifically 700°C for 12 hours (para. [0053], [0054], [0074]).
It would have been obvious for one of ordinary skill in the art to adopt such decarbonizing step as shown by Muneoka to modify the aluminum nitride producing step of Hu et al. because by doing so can help remove excess carbon powder (original reactant) from the obtained aluminum nitride thus obtain a final product with high purity level as suggested by Muneoka (para. [0053]). Furthermore, adopting such well-known decarbonizing technique for help to improve a known alumium nitride product for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 2, Hu et al. further teaches the average particle size of the added aluminum powder is less than 15 microns and its purity is greater than 98% (claim 2), specifically, the average particle size of the aluminum powder is 12 microns and the purity is 99% (para. [0012]).
Regarding claim 3, Hu et al. further teaches the carbon powder having an average particle size of less than 30 microns and its purity is greater than 99% (claim 3, para . [0014]). Hu et al does not expressly teach carbon powder being selected from graphite, carbon black and activated carbon or having a BET specific surface area of 0.1-500 m2/g.
Muneoka further teaches carbon powder used for producing aluminum nitride can be carbon black, graphite and carbon powder having a BET specific surface area of 0.1-500 m2/g (para. [0033]).
It would have been obvious for one of ordinary skill in the art to adopt such well-known graphite powder or carbon black powder with a BET specific surface area of 0.1-500 m2/g to practice the carbo powder of Hu et al. because adopting such known technique of carbon black or graphite powder with such BET specific area to a known method of making aluminum nitride for improvement would have predictable results (see MPEP §2143 KSR).
Regarding claim 4, Hu et al further teaches mixing aluminum powder and carbon powder evenly (para. [0035], examples) since no solvent or liquid being used, therefore, Hu suggests a dry mixing.
Regarding claim 5, Hu et al. further teaches the mixing mass ratio between carbon powder to aluminum powder being 2.25-3:1-2, specifically aluminum to carbon weight ratio being about 1.1:1, wherein such ratio close enough to that of instantly claimed range thus renders a prima facie case of obviousness (See MPEP § 2144.05 I). It would have been obvious for one of ordinary skill in the art to adopt a same weight ratio of aluminum powder to carbon powder as that of instantly claimed via routine experimentation (See MPEP § 2144.05 II) for help obtaining a desired aluminum nitride product.
Regarding claim 6-7 and 9-10, Hu et al already teaches such limitations as discussed above.
Regarding claim 8, Hu et al teaches reaction temperature in step (b) is set at 600°C to 1500°C and the reaction time is set at 1h to 10h (claim 5-6, para. [0010], [0016]-[0018], examples).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-8 of co-pending application 18/531,729 in view of Hu et al. (CN106187203) and UNIV SICHUAN (CN111470481). Co-pending application’729 teaches a substantially the same method of forming aluminum nitride, except heating a mixed aluminum (metal) powder and carbon powder in a nitrogen atmosphere under medium low temperature obtaining partially nitrided aluminum nitride with aluminum carbide intermediate. Hu et al in view of UNIV SICHUAN teaches such limitations. It would have been obvious for one of ordinary skill in the art to adopt such well-known technique of heating a mixed aluminum (metal) powder and carbon powder in a nitrogen atmosphere obtaining partially nitrided aluminum nitride with aluminum carbide intermediate of Hu et al. view of UNIV SICHUAN because adopting such known technique to a known method of making aluminum nitride for improvement would have predictable results (see MPEP §2143 KSR).
Conclusion
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/JUN LI/ Primary Examiner, Art Unit 1732
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