Detailed Notice
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
Claims 18-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 7/23/2026.
Claims 1-17 are pending examination.
Priority
Acknowledgment is made of applicant's claim for foreign priority based on an applications filed in Japan on 6/30/2021 and 6/28/2022 and the PCT of JP20222025909 6/29/2022. It is noted, however, that applicant has not filed a certified copy of the JP2021-109343, JP2022-103101, or JP2022-025909 applications as required by 37 CFR 1.55.
Claim Objections
Claim 1 is objected to because of the following informalities: the instant claim states that the powder is being melted, but as per [0017] of applicant’s specification, the powder is never melted, the powder is decomposed and the products of the decomposition can form a melt. Applicant should rephrase the instant claim to reflect this nuance. Appropriate correction is required.
Claim 5 is objected to because of the following informalities: the claim as currently written teaches that because the powder is irradiated with a laser beam, the focus position of the laser is above a surface of the powder. This is an unclear and problematic way to state the intended limitation, which is that the focus point of the irradiating laser beam is positioned above the powder. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
Claim 1 is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as based on a disclosure which is not enabling. The disclosure does not enable one of ordinary skill in the art to practice the invention without reforming the SiC structure from the melt materials, which is/are critical or essential to the practice of the invention but not included in the claim(s). See In re Mayhew, 527 F.2d 1229, 188 USPQ 356 (CCPA 1976). The instant claim preamble requires that the material manufactured by the end of Claim 1 is a SiC component. However, the instant claim only requires the decomposition of SiC and teaches nothing regarding its reconstitution from the decomposed materials. Accordingly, the metes and bounds of the claim do not provide sufficient detail to teach to the preamble. Specifically in the instant specification applicant discloses that the SiC is decomposed at a temperature above 2830 °C to form melt Si and melt C [0019]. Applicant further teaches an example for the reformation of SiC from the decomposed materials by applying a heat treatment in order to generate SiC again [0060]. Applicant further requires the generation of SiC in Claim 17. Accordingly, as the only mechanism applicant teaches for generating SiC from its decomposition products is heat treatment, one of ordinary skill in the art would not be enabled to form a SiC component from the required steps of Claim 1 without the additional information regarding the heat treatment process.
Claims 2-17 are rejected as depending from Claim 1.
Claim 12 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Specifically, the applicant requires that a “silicon carbide polymer” be used to impregnate the fabricated object. In the specification, the applicant teaches that SMP-10 from Starfire Systems Inc. is used to accomplish this, where SMP-10 is a known polycarbosilane [0068]. Accordingly, applicant merely teaches to the use of a SiC precursor, rather than a silicon carbide polymer.
In relation to the claim language and the level of detail provided in the specification, one of ordinary skill would not be enabled by this system to know sufficiently (a) what a silicon carbide polymer is nor (b) how one would use a silicon carbide polymer.
As to the Wands Factors:
As to the quantity of experimentation, there are no known examples of such a material are known to exist. Accordingly, these would be beyond burdensome tasks to one of ordinary skill in the art to know the metes and bounds of the claimed invention.
As to the guidance presented, there is not enough guidance to understand how to make a silicon carbide polymer nor use it.
As to the working examples, there is not enough information in the specification to perform an exemplary demonstration of the present invention.
As to the state of the prior art, there are examples of polycarbosilanes which are precursors of SiC that have a plurality of uses, but no explicit examples of a silicon carbide polymer.
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 1 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. The preamble of the instant claim requires the formation of a SiC component, but the claim does not adequately provide that the method being used in Claim 1 would produce SiC at all. Rather, the claim as written teaches the decomposition of SiC into its constituent components, whereby one of the components is a melt.
Claim 7 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. Specifically, the instant claim requires some temperatures for the base plate and the powders being heated. It is unclear whether the applicant is saying that both the base plate and the powder are between 30 and 100 °C or whether the base plate is 30 °C or more and the powder is 100 °C or less.
Claim 9 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. Specifically, the instant claim is requiring an impregnation and heat treatment step with a resin until the resin is “carbonated”. It is unclear what this could possibly mean. For the purposes of compact prosecution, it is understood that the applicant is merely requiring that the resin be melted.
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.
Claim(s) 1-2, 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abdelmoula et. al. Ceramics Int., 2023 and the additional Supplemental Information.
Regarding Claims 1-2, 15-17, Abdelmoula teaches a method for direct selective laser sintering (D-SLS) of SiC using a laser to form a SiC 3D printed object [abstract]. Abdelmoula teaches that a SiC powder is used as a feedstock powder for the sintering process in SiC D-SLS [2.3] and that the SiC powder has a size of about 20 µm [3.1.]. Abdelmoula teaches that multiple layers of SiC are placed and then sintered [2.2.]. Abdelmoula teaches that when SiC is subjected to a laser that provides temperatures above 2800 K, the material decomposes into silicon liquid and carbon [3.2.1.]. As shown in the supplementary Table 1 in the 30 W temperature contour quadrant, Abdelmoula teaches the temperature induced in the SiC powder can be over 2830 °C, which would cause the material to decompose and melt due to the laser scanning process which is on the order of microseconds [Supplementary Material and 3.2.1. paragraph 2]. It is understood that a prior art is relevant for all it contain, including nonpreferred embodiments (see MPEP 2123 I and II).
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.
Claim(s) 14 is rejected under 35 U.S.C. 103 as being unpatentable over Abdelmoula et. al. Ceramics Int., 2023 as applied to claim 1 above.
Regarding Claim 14, Abdemoula teaches that the SiC powder has a purity of 98.5% [2.3.]. One of ordinary skill would recognize the value of the SiC purity to be so close that prima facie one skilled in the art would have expected them to have the same properties [MPEP 214405 I]. Accordingly, it is understood that Abdelmoula teaches to Claim 14.
Allowable Subject Matter
Claims 3-13 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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