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 .
Election/Restrictions
Applicant’s election without traverse of claim 39 in the reply filed on 1 June 2026 is acknowledged.
Claims 38 and 40-56 are withdrawn from further consideration as being drawn to a non-elected invention.
Claim Interpretation
Claims directed to an apparatus must be distinguished from the prior art on the basis of structural differences. Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990) (“[A]pparatus claims cover what a device is, not what a device does.”) (emphasis in original). Likewise, the “[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 (CCPA 1963). It is firmly rooted that because an apparatus is a structure, an apparatus must be distinguished from prior art on the basis of its structure, and where a prior art structure is inherently “capable of” performing the claimed function of the apparatus, the burden shifts to the applicant to show that the claimed function patentably distinguishes the claimed structure from the prior art structure. See, In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman, 655 F.2d 212, 215 (CCPA 1981). 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 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Information Disclosure Statement
The Information Disclosure Statement filed 18 February 2026 fails to comply with the provisions of 37 CFR 1.97, 1.98 and MPEP § 609 because the foreign patent document identified therein as “JPS5133772A” is published in a non-English language. It has been placed in the application file, but the noted reference has not been considered as to the merits. Applicant is advised that the date of any re-submission of any item of information contained in this information disclosure statement or the submission of any missing element(s) will be the date of submission for purposes of determining compliance with the requirements based on the time of filing the statement, including all certification requirements for statements under 37 CFR 1.97(e). See MPEP § 609.05(a).
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.
Claim 39 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
With respect to claim 39, the claim recites the limitation “the powder outlet.” There is insufficient antecedent basis for this limitation in the claim.
Claim Rejections - 35 USC § 103
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.
Claim 39 is rejected under 35 U.S.C. 103 as being unpatentable over Sceats (US 8,807,993).
With respect to claim 39, Sceats discloses a reactor comprising: (a) a powder injector (16) having an inlet extending into an upper portion of a vertical reactor tube (17), a lower portion of the reactor tube (17) comprising externally heated walls (24) (see Sceats, Fig. 1); (b) a gas injector (13) (see Sceats, Fig. 1); (c) an exhaust outlet (21) at the upper portion out of the vertical reactor tube (17) (see Sceats, Fig. 1); (d) particle separator plates (19) (see Sceats, Fig. 1).
Sceats does not explicitly disclose wherein the particle separator plates exist as an “array” of separator plates.
However, the mere duplication of parts of a prior art device (e.g., providing additional separator plates in the form of an “array”) is obvious in the absence of new or unexpected results. MPEP § 2144(IV)(B).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Randy Boyer whose telephone number is (571) 272-7113. The examiner can normally be reached Monday through Friday from 10:00 A.M. to 7:00 P.M. (EST).
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Prem C. Singh, can be reached at (571) 272-6381. The fax number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Randy Boyer/
Primary Examiner, Art Unit 1771
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