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 .
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.
Status of Claims
The amendments to the claims, including the cancellation of claims 23 and 24, have been entered and considered for this action. The prior claim objections and rejections under 35 USC § 112(b) are withdrawn.
Claims 11-19 and 26-30 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 12 December 2025.
Oath/Declaration
The declaration filed 21 April 2026 has been entered and considered. However, assertion 6 of this declaration (“The additional co-authors of Shiell et al., namely Li Zhu, Brenton A. Cook, Jodie E. Bradby, and Dougal G. McCulloch, worked under the direction and supervision of the present co-inventors, Timothy Strobel and Thomas Shiell.”) does not provide a sufficient explanation as to the roles of the co-authors on the prior art publication to disqualify this disclosure as prior art under 35 USC § 102(b)(1).
Example 1 of MPEP 2155.01 provides a comparative example in which the role of a co-author working under the direction and supervision of an inventor is specifically described as non-inventive: “Bob was a graduate student working under her direction and supervisions and did not contribute to the conception of the claimed invention” (emphasis added) . Example 2 of this same section further illustrates how asserting to have invented the subject matter claimed and disclosed is not sufficient for excepting a publication as prior art when there is co-authorship on the prior art disclosure that is insufficiently explained.
For this reason, the published work of Shiell, et al. (Physical Review Letters 126, 215701 (2021)) is still considered to be prior art under 35 USC § 102(a)(1).
Response to Arguments
Applicant's arguments filed 21 April 2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the rejections under 35 USC § 102 rely upon the disqualification of Shiell, et al. (Physical Review Letters 126, 215701 (2021)) as prior art based upon the concurrently declaration filed under 37 CFR 1.130(a). While this declaration does assert that co-authors Zhu, Cook, Bradby, and McCulloch worked under the direction and supervision of the present co-inventors, it does not include the assertion that these persons were “contributing only routine experimentation and not contributing to the conception and reduction to practice of the claimed invention(s)”, as asserted on p. 7 ¶ 5 of the reply filed 21 April 2026.
For this reason, the published work of Shiell, et al. (Physical Review Letters 126, 215701 (2021)) is still considered to be prior art under 35 USC § 102(a)(1), and the prior rejections under 35 USC § 102 are maintained.
Claim Notes
Applicant is advised that should claim 2 be found allowable, claim 20 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Though not presently under examination, it is noted that independent claims 11 and 16 of inventions II and III do not presently require all the limitations of independent claim 1. In particular, claim 1 requires that the 4H-Si crystalline allotrope of silicon comprise highly oriented microcrystals, but neither claim 11 nor claim 16 recite such a limitation.
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.
Claim 3 is 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.
Claim 3 references Figures 2 and 1A of the specification to define the limitations of the claim. However, it is unclear exactly which features of these figures must be present, or how closely the Raman spectrum and diffraction pattern must match the figures, to be within the metes and bounds of the claim. The claim is therefore indefinite.
Where possible, claims are to be complete in themselves. Incorporation by reference to a specific figure or table "is permitted only in exceptional circumstances where there is no practical way to define the invention in words and where it is more concise to incorporate by reference than duplicating a drawing or table into the claim. Incorporation by reference is a necessity doctrine, not for applicant’s convenience." Ex parte Fressola, 27 USPQ2d 1608, 1609 (Bd. Pat. App. & Inter. 1993). MPEP 2173.05(s).
It is recommended that if Applicant would like to claim specific features of the Raman spectrum and diffraction pattern that the claim recite specific peak positions rather than reference figures from the specification.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 and 20-22 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shiell et al. (Physical Review Letters 126, 215701 (2021); NPL Document BL on the IDS filed 19 December 2025; references below are made to the Applicant-provided pre-print). It is noted that the Shiell reference lists authors that are not inventors on the present application.
Regarding claim 1, Shiell discloses a 4H-Si crystalline allotrope of silicon comprising a 4H structure with highly oriented microcrystals (abstract, p. 1; p. 3 describes the product as exhibiting micro-crystallinity).
Regarding claim 2, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further describes the material as “bulk crystalline 4H” (abstract), which is interpreted as containing no disordered material. It is further noted that the method of preparation is identical to that presently disclosed and so the materials are expected to have the same crystalline characteristics.
Regarding claim 3, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further discloses that the material exhibits a Raman spectrum as shown in Figure 2 and an X-ray diffraction pattern as shown in Figure 1A (Figure 1).
Regarding claim 4, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further discloses that the material exhibits the characteristics of an indirect band gap semiconductor with a band gap near 1.2 eV (4H-Si is a semiconductor with an indirect band gap of ~1.2 eV; p. 5, ¶ 2).
Regarding claim 5, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further discloses that the 4H-Si is produced by heating Si24 at 9 GPa and a temperature of 780°C (p. 10, ¶ 1).
Regarding claim 6, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1. The further limitations of claim 6 merely describe an inherent property of Na4Si24: that it able to convert to the 4H-Si crystalline allotrope of silicon either when heating Na4Si24 under vacuum pressure at temperatures between 300°C and 800 °C or when heating Na4Si24 at temperatures between 300°C and 800 °C in the presence of iodine. Even if the claim is interpreted as requiring that the material of claim 1 be prepared by one of these methods, the patentability of a product does not depend on its method of production. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). MPEP 2113(I). Given that the specification states that conversion to 4H-Si also occurs in the presence of iodine and when heating Na4Si24, and does not specify that a different product is made, this transformation is believed to give the same product as the process described by Shiell.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning to show inherency, the burden of production shifts to the applicant. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of [their] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 4380, 483-34 (CCPA 1977)), see MPEP 2112.
Regarding claim 7, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further discloses that the 4H-Si displays highly oriented multi-crystalline arcs in its XRD pattern which reflect the contributions of the individual grains (p. 3, ¶ 1), indicating that the 4H-Si is in the form of highly oriented 4H-Si grains.
Regarding claims 8 and 9, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1, and further discloses that the material can be powdered (p. 4, ¶ 1) and is comprised of individual grains ~0.5 μm (p. 5, ¶ 2).
Regarding claim 10, Shiell discloses the 4H-Si crystalline allotrope of silicon of claim 1. The remaining limitations of claim 10 merely recite inherent properties of the 4H-Si phase that is present in the material disclosed by Shiell. It is additionally noted that the material in the prior art is prepared by the same method as that of the instant invention. Therefore, the material disclosed by Shiell anticipates the material of claim 10.
Regarding claim 20, Shiell discloses a 4H-Si crystalline allotrope of silicon comprising a highly oriented 4H phase silicon microcrystals structure with minimal disordered material (bulk, highly oriented, crystalline 4H hexagonal silicon; abstract; p. 3 describes the product as exhibiting micro-crystallinity).
Regarding claim 21, Shiell discloses a 4H-Si crystalline allotrope of silicon comprising a highly oriented 4H phase silicon microcrystal structure synthesized from Si24 (synthesis of bulk, highly oriented, crystalline 4H hexagonal silicon (4H-Si), through a metastable phase transformation upon heating the single-crystalline Si24 allotrope; abstract; p. 3 describes the product as exhibiting micro-crystallinity).
Regarding claim 22, Shiell discloses a 4H-Si crystalline allotrope of silicon comprising a highly oriented 4H phase silicon microcrystals structure with minimal disordered material (bulk, highly oriented, crystalline 4H hexagonal silicon; abstract; p. 3 describes the product as exhibiting micro-crystallinity). Shiell also discloses that this material can be synthesized from Na4Si24 (p. 10, ¶ 1).
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 Nicholas A Piro whose telephone number is (571)272-6344. The examiner can normally be reached Mon-Fri, 8:00 am-5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (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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/NICHOLAS A. PIRO/Assistant Examiner, Art Unit 1738
/PAUL A WARTALOWICZ/Primary Examiner, Art Unit 1735
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