DETAILED ACTION
Applicant’s Response
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant’s submission filed on July 1, 2025, has been entered.
Claims 16, 24, and 28 are amended; claims 25-27 are canceled; claims 37-40 are new.
The applicant contends that the cited prior art fails to disclose the new material currently recited by independent claim 16 – namely, the features of “organic lubricants and binders,” a “gas supply comprising oxygen between 2 and 100 percent,” and a “gas heater” generating temperatures “between 700 and 1800 degrees Fahrenheit” (p. 8).
In response, taking these features one by one, the examiner observes that the claimed aspect of “desired material containing organic lubricants and binders” denotes the article worked upon by the apparatus. By definition, the article worked upon is external to the scope of the apparatus itself and is not patentable subject matter – expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus (Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)). It can simply be said that the operator may provide this content to the conveyor of the prior art apparatus.
The matter of a “gas supply comprising oxygen between 2 and 100 percent,” in turn, relates to the intended use of the apparatus, where it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). Bour’s gas supply is capable of accommodating any fluid, including a flow distribution comprising at least 2 percent oxygen. The operator can simply supply the necessary admixture of source gases to yield the claimed oxygen percentage.
Lastly, the examiner agrees that the cited art does not teach the claimed gas heater. Subsequent further consideration, however, new rejections have been applied below.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) because the claim limitations use a generic placeholder – “system,” in this case – that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
The “conveyor system” of claims 16 and 17;
The “exhaust system” of claim 33.
Because these claim limitation(s) are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The conveyor system (30) will be interpreted as one of a belt conveyor, a gravity roller conveyor, a chain conveyor, a pusher plate system, a chain-driven line conveyor, or rollers in accordance with paragraph [0020] of Applicant’s specification.
The exhaust system (32) will be interpreted as a conduit in accordance with Figure 1.
If applicant does not intend to have these limitation(s) interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
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 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.
Claims 16-24 and 28-40 are rejected under 35 U.S.C. 103 as being unpatentable over Bour, US 2011/0268880, in view of Vellaikal et al., US 2013/0273262, and Kaufman-Osborn et al., US 2017/0350004, hereafter “Kaufman.”
Claim 16: Bour describes a processing apparatus, comprising:
A plurality of heat treatment modules including a first (114a) and last (114c) module, each module comprising:
A reaction zone (212a) having first and second openings (Fig. 2);
A conveyor system (218) that transports a material (130) from the first to the second opening [0025];
A plenum (114a) positioned above the reactor zone [0026];
A gas supply;
A gas heater [0036];
A vented barrier between the plenum and reaction zone (Fig. 4C).
Wherein the gas supply and heater are communicatively connected to the plenum so as to condition an atmosphere released into the reaction zone via the vents.
Concerning the new material directed to “desired material containing organic lubricants and binders,” the examiner observes that these are merely articles worked upon by the apparatus. By definition, the article worked upon is external to the scope of the apparatus itself and is not patentable subject matter – expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus (Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)). It can simply be said that the operator can provide this content to the conveyor of the prior art apparatus.
Relatedly, the matter of a “gas supply comprising oxygen between 2 and 100 percent” is directed to the intended use of the apparatus, where it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). Bour’s gas supply is capable of accommodating any fluid, including a flow distribution comprising at least 2 percent oxygen. The operator can simply supply the necessary admixture of source gases to yield the claimed oxygen percentage.
Bour is silent regarding the configuration of the vents and the class of conveyor, whereby Vellaikal addresses both omissions. As shown by Figure 2, Vellaikal discloses an in-line processing apparatus in which a conveyor belt (214) translates substrates along a linear path below a series of treatment modules [0021]. Further, the reference interposes a vented barrier between a plenum and reaction zone, where the vents decrease in density in the direction of substrate travel (Fig. 6B). This arrangement augments deposition upon the substrate’s leading edge in order to promote a more uniform profile [0033]. As Bour shares this desideratum, it would have been obvious to configure the vents as a gradient since applying a known technique to a known device ready for improvement is within the scope of ordinary skill.
Lastly, although Bour teaches a gas heater, there is no indication that it can generate temperatures “between 700 and 1800 degrees Fahrenheit,” as claim 16 now requires. In supplementation, Kaufman discloses a process chamber comprising a gas supply (518) for supplying a vapor to the substrate situated on the support (504) below (Fig. 5). To maintain a temperature necessary to prevent condensation of the process gas, Kaufman enshrouds the gas supply conduit (512, 514) with a heater jacket (528) [0084]. Because Kaufman prescribes heating both the process gases and the substrate support to 500° C (932° F), one of ordinary skill would deem it reasonable to generate a commensurate level of energy via the heating jacket. It should be noted that Bour already suggests a processing temperature, 617° F, very near the claimed threshold of 700° F [0046]. In view of the foregoing, it would have been obvious to incorporate a similarly situated gas heater to achieve the predictable result of regulating the thermal environment of the processing region.
Claim 17: As shown by Figure 6, the Vellaikal’s vents are arrayed linearly in the width direction.
Claim 18: Vellaikal provides at least four rows, but each row comprises only five vents rather than six. Even so, the effort to provide one additional vent would have been within the scope of ordinary skill, since as it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art (St. Regis Paper Co. v. Bemis Co., 193 USPQ 8).
Claim 19: Assuming that each module comprises the same vented barrier, the vent density at the first opening will necessarily be higher than at the second opening.
Claim 20: Vellaikal’s vents are circular rather than rectangular, but modifying the opening’s shape is a matter ordinary skill – a change in shape is generally recognized as being within the level of ordinary skill in the art (In re Dailey, MPEP 3144.04, 357 F.2nd 669, 149 USPQ 1966).
Claim 21: Vellaikal is silent regarding the matter of aspect ratio, but this is a result-effective variable affecting matters of flow rate. As such, one of ordinary skill would have been motivated to assess various ratios during routine experimentation. Further, Determining the optimal value of a result-effective variable is within the scope of ordinary skill (In re Boesch, 617 F.2d 272, 205 USPQ 215, CCPA 1980).
Claim 22: Figure 6A of Vellaikal depicts vents that are uniform in size.
Claim 23: Given that Bour’s apparatus operates at elevated temperatures, the vented barrier must necessarily be formed of a “high temperature material” in order to remain functional.
Claim 24: As shown by Figure 4E of Bour, each module comprises its own fluid inlet (760) and heat exchanger (714) [0048]. As operator can control these systems to create an “independently conditioned atmosphere” – it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959)).
Claims 28, 31: The type of gas supplied is a matter of intended use, where evidence of the prior art’s capacity to reproduce a claimed functional recitation is sufficient to satisfy the threshold for rejection – a recitation concerning the manner in which a claimed apparatus is to be employed does not differentiate the apparatus from prior art satisfying the claimed structural limitations (Ex parte Masham 2, USPQ2D 1647). An operator can simply charge the gas supply canister with any species of fluid.
Claim 29: Absent further clarification, any one of Bour’s heating mechanisms can be taken as the claimed “thermal processing furnace.” Necessarily, any component within the processing apparatus is “operatively connected” to any other component contained within the same.
Claim 30: Necessarily, the composite prior art apparatus is capable of mixing an incoming atmosphere from one end of the system with a conditioned atmosphere from the module. The standard of mixing availed by the claim is “sufficient,” and it is the Office’s position that the prior art satisfies this threshold.
Claim 32: Because each of Bour’s modules are arrayed linearly without a barrier therebetween, each opening is “operatively connected” to every other opening.
Claim 33: Bour provides a conduit (120a), i.e., the “exhaust system,” for evacuating an effluent [0029].
Claim 34: By using the verb “may,” the claim expresses an optional contingency. Because it is optional, the prior art need not satisfy said contingency.
Claims 35-36: The claim set does not attribute lateral structural boundaries to the modules; rather, a given module is bounded by arbitrary first and second openings that are simply volumes of space. Simply by delimiting the volume of space attributed to one module differently from the volume attributed to another module is sufficient to satisfy the limitations of these claims.
Claim 37: The operate can regulate the thermal output of each respective heater within successive reaction zones to progressively increase zone temperature. As noted above, Kaufman controls the gas heater to generate temperatures near 1,000° F, which is short of the claimed threshold of 1,500° F. However, simply increasing the capacity and/or output of the heating mechanism to raise the temperature further is within the scope of ordinary skill, since applying a known technique to a known device to yield predictable results is obvious.
Claim 38: The matter of “oxidation potential” can be regulated via the intended use of the apparatus, such as regulating the pressure, atmospheric composition, and temperature appropriately. The prior art apparatus is capable of manipulating each of these characteristics as directed by an operator.
Claim 39: The composite prior art apparatus is capable of accommodating and supplying each of the enumerated chemical species – it has been held that claims directed to an apparatus must be distinguished from the prior art in terms of structure rather than function (In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959)).
Claim 40: The prior art apparatus can be controlled such that the effluent does not contain hydrocarbons; for instance, the types of gases supplied to the process chamber can be selected such that their resultant interactions do not generate hydrocarbons.
Conclusion
The following prior art is made of record as being pertinent to Applicant's disclosure, yet is not formally relied upon: Harada et al., US 4,913,090. Harada discloses a processing apparatus comprising a plurality of heat treatment modules (21), a reaction zone (23) having first and second openings, a conveyor system (30), a plenum situated above the reaction zone, and a gas supply (4, 41ff; Fig. 5A).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is 571 273 8300.
/N. K. F./
Examiner, Art Unit 1716
/KARLA A MOORE/ Primary Examiner, Art Unit 1716