DETAILED ACTION
The claims 1-7 and 14-19 are pending in the application. Claims 14-18 are withdrawn from consideration as non-elected, and claims 1-7 and 19 are examined on merits herein.
Election/Restrictions
Applicant’s election without traverse of invention I, claims 1-7 and 19, in the reply filed on 05/31/2026 is acknowledged.
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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 09/18/2023, 07/10/2024, 12/13/2024, and 11/20/2025 are being considered by the examiner.
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.
Claims 1-7 and 19 are 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 claims contain 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. The instant claims are drawn to a sintered body having a zone that is composed of a very specific microstructure. This microstructure is defined by the content of grains having sizes that fall within the specific range 30-60 µm. However, it is not adequately disclosed in the instant Specification how such sintered bodies can be prepared. The discussion of preparation methods in the Specification and the examples therein only recite that a starting boron carbide powder is used, and processed according to certain sintering treatments. No information is given as to the size of the starting particulate, and as this would clearly materially affect the resulting grain size distribution, the lack of disclosure in this regard would leave a skilled artisan unable to produce a sintered body having the instantly claimed features. Because the instant Specification would not enable one to produce the claimed product, there is not sufficient enabling support provided, and claim 1 and dependent claims 2-7 and 19 are rejected under USC 112(a).
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 1-7 and 19 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.
Claim 1 recites that the sintered body comprises a zone that has a certain content of grains having size 30-60 µm. However, the nature of the microstructural grain size distribution that is intended to be imparted by the claim 1 limitations is unclear, because the claim recites the grain content in volume percent, but further that the grain sizes are determined by observation from a surface. It is not clear how grain volume is determined from these two-dimensional observations of a surface, and this is not made clear by the supporting Specification. It is disclosed that grain size is measured from micrographs; however, it is not stated if these values are used to assume a spherical grain and thereby to calculate percentage by volume, or if there is some other manner by which volume is calculated from a surface measurement. Because of these ambiguities, the scope of what can be covered by the instant claims is unclear, and claim 1 and the claims depending therefrom are indefinite under USC 112.
Claim 19 is further indefinite because it is drawn to a part that is stated to be “included in a plasma processing apparatus”. From this language it is unclear if the intended coverage of the claim is to an apparatus per se, or to a part that is capable of being used in such an apparatus. Because of this ambiguity, the metes and bounds of the claim are unclear and the claim is indefinite under USC 112.
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.
Claims 1 and 4-7 are rejected under 35 U.S.C. 103 as being unpatentable over Horiuchi et al 7776773 B2).
Regarding claim 1, Horiuchi et al teaches a boron carbide sintered body and method of manufacturing the same. Per the disclosure in the instant Specification, the instantly claimed sintered body is resultant from a particular sintering method (paragraphs 0085-0091). The method taught by Horiuchi et al is equivalent to that disclosed in the Specification, and as such, one of ordinary skill in the art would have understood that the boron carbide sintered body produced by the Horiuchi et al method would also be equivalent to that of the instant claims. Thus, while Horiuchi et al does not specify grain size distribution in a manner wherein the volume percentage of grains having a size of 30-60 µm within a zone is disclosed, this feature would necessarily be present in the sintered body resulting from the Horiuchi et al method.
The Horiuchi et al method comprises loading powders into a rotary mill along with milling media made from boron nitride sintered bodies and mixing in acetone for 12 hours to form a slurry. The slurry is dried and sieved for homogeneity, and thereafter charged into a mold carbonized at a temperature of 500 °C to 1000 °C. Horiuchi et al teaches sintering of the boron carbide body by performing a first thermal process at a temperature of 1900 °C to 2100 °C for 1-3 hours after the carbonizing; and a second thermal process at a temperature of 2000 °C to 2230 °C for 1-2 hours, using a heating rate of 20 °C/min. A vacuum atmosphere is used below 1600 °C and an argon atmosphere at a pressure of 110 kPa is used at 1600 °C and higher. An embodiment is specified wherein a first reference temperature of 2100 °C and a second reference temperature of 2200 °C is used (see Sample 13 of Table 1).
As can be seen, this Horiuchi et al method is substantially equivalent to that disclosed in the instant Specification as leading to a sintered boron carbide body having the grain size distribution features of the instant claims. As such, it would be reasonably expected that the Horiuchi et al sintered body prepared by the prior art method would also necessarily have grains with a size of 30-60 µm in an amount of 50-70% by volume. Claim 1 is therefore obvious and not patentably distinct over the prior art of record.
Regarding claim 4, as discussed above, the Horiuchi et al method used to prepare the inventive boron carbide body is equivalent to that disclosed in the instant Specification, and as such the resultant boron carbide body would necessarily also be equivalent in terms of grain size distribution. The further limitation to average grain size of claim 4 is thus met by the Horiuchi et al teachings.
Regarding claim 5, the Horiuchi et al boron carbide comprises further components graphite and silicon carbide in ranges such that their total amount can be less than 3 wt%, and thus Horiuchi et al teaches a boron carbide body having a content of boron and carbon that is 97 wt% or greater.
Regarding claim 6, as discussed above, Horiuchi et al teaches a boron carbide sintered body produced by a process equivalent to that used to produce the instantly claimed boron carbide, and thus teaches a sintered body equivalent to that of the instant claims. This equivalent boron carbide sintered body would necessarily have an equivalent etching rate, as this property would stem from the composition and structure of the body. Thus, the further property limitation of claim 6 would necessarily also be present in the body of the prior art of record. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 7, as discussed above, Horiuchi et al teaches a boron carbide sintered body produced by a process equivalent to that used to produce the instantly claimed boron carbide, and thus teaches a sintered body equivalent to that of the instant claims. This equivalent boron carbide sintered body would necessarily have an equivalent thermal conductivity, and thus the further property limitation of claim 7 would necessarily also be present in the body of the prior art of record. The claim is therefore not patentably distinct over the prior art of record.
Claims 1, 4, and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Matsumoto et al (US 7833921 B2).
Regarding claim 1, Matsumoto et al teaches a composite material comprising boron carbide along with silicon carbide and silicon. The boron carbide and silicon carbide components comprise grains with a size greater than 10 µm in an amount of 10-50 parts by volume (claim 1). Matsumoto et al teaches embodiments wherein this grain size is 50 µm (see column 12, lines 12-17 and 35-40). Because the average grain size is 50 µm, a grain size distribution wherein the diameters are close to this value is rendered obvious by the Matsumoto et al teachings. The embodiments taught by Matsumoto et al having 50 parts by volume boron carbide would thus constitute embodiments having a region wherein the boron carbide portion has grains close to 50 µm, and thus within the 30-60 µm range, in an amount also within the 50-70 vol% range instantly claimed. As the characteristic grain size distribution is obvious from the overlapping compositional and grain size ranges taught by Matsumoto et al, the claim limitations are taught by the prior art of record and claim 1 is not patentably distinct.
Regarding claim 4, the Matsumoto et al boron carbide region has an average grain size of 50 µm.
Regarding claim 6, as discussed above, Matsumoto et al teaches a boron carbide-containing sintered body having a grain size distribution such that the content of grains having a size in the range 30-60 µm is within the corresponding 50-70 vol% range of the instant claim. This equivalent boron carbide-containing sintered body would necessarily have an equivalent etching rate, as this property would stem from the composition and structure of the body. Thus, the further property limitation of claim 6 would necessarily also be present in the body of the prior art of record. It is well settled that when a claimed composition appears to be substantially the same as a composition disclosed in the prior art, the burden is properly upon the applicant to prove by way of tangible evidence that the prior art composition does not necessarily possess characteristics attributed to the CLAIMED composition. In re Spada, 911 F.2d 705, 15 USPQ2d 1655 (Fed. Circ. 1990); In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980); In re Swinehart, 439 F.2d 2109, 169 USPQ 226 (CCPA 1971).
Regarding claim 7, as discussed above, Matsumoto et al teaches a boron carbide-containing sintered body having a grain size distribution such that the content of grains having a size in the range 30-60 µm is within the corresponding 50-70 vol% range of the instant claim. This equivalent boron carbide sintered body would necessarily have an equivalent thermal conductivity, and thus the further property limitation of claim 7 would necessarily also be present in the body of the prior art of record. The claim is therefore not patentably distinct over the prior art of record.
Conclusion
15. No claim is allowed.
16. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
17. Any inquiry concerning this communication or earlier communications from the examiner should be directed to NOAH S WIESE whose telephone number is (571)270-3596. The examiner can normally be reached on Monday-Friday, 7:30am-4:30pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amber Orlando can be reached on 571-270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NOAH S WIESE/Primary Examiner, Art Unit 1731
NSW6 October 2026
Prosecution Insights