DETAILED ACTION
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Any rejections made in a previous Office action and not repeated below are hereby withdrawn.
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 .
Claim Rejections - 35 USC § 103
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al. (JP 2000-119068).
Regarding claim 1, Watanabe discloses a setter comprising a boron nitride sintered plate with a porous structure, see abstract and [0001]. The reference further discloses that the porous boron nitride sintered body has a porosity of 40 to 60% by volume [0018]. Note that the disclosed range overlaps the claimed ranges and that a prima facie case of obviousness exists where ranges “overlap or lie inside ranges disclosed by the prior art”; see MPEP 2144.05 I. Additionally, the reference discloses the average pore diameter of the through holes is preferably 1 micron or less [0013]. Given the average pore diameter is 1 micron or less, the reference is considered to render obvious the claimed proportion of pore having a pore diameter of 0.2 to 0.9 microns; see MPEP 2144.05 I. Lastly, it is noted that the claimed method of measuring the porosity does not structurally limit the claim.
Regarding claim 2, while the reference does not specifically disclose the claimed coefficient of thermal expansion, given the disclosed material and the claimed material have the same composition and microstructure (i.e. porous boron nitride), it is expected the disclosed and claimed setters will have the same coefficient of thermal expansion; see above discussion and MPEP 2112.01 II: “if the composition is physically the same, it must have the same properties.”
Regarding claim 3, given the reference discloses the porous structure as through-holes, the reference is considered to disclose all the pores as open pores [0013].
Regarding claims 4 and 5, the reference discloses the boron nitride as having a purity of 99% or more by weight, which is considered to render obvious the claimed content of iron and of calcium [0018].
Regarding claims 6 and 7, given the reference discloses the average pore diameter as 1 micron or less, the reference is considered to render obvious the claimed value of the peak position in a distribution curve of the pore diameters [0013]; see MPEP 2144.05 I.
Response to Arguments
Applicant's arguments filed April 24, 2026 have been fully considered but they are not persuasive.
Applicant argues that there is minimal overlap between the claimed and the disclosed porosity ranges. As such, Applicant concludes that one of ordinary skill in the art would not have been motivated by Watanabe to arrive at the claimed invention with a reasonable expectation of success. Examiner respectfully disagrees.
As discussed above and previously, overlapping ranges are considered a prima facie case of obviousness, absent a showing of criticality or a showing that the prior art teaches away from the claimed range; see MPEP 2144.05. In order to establish criticality (unexpected results over a claimed range), Applicant should compare a sufficient number of tests both inside and outside the claimed range; see MPEP 716.02(d) II. Further, evidence of unexpected results must also compare the claimed invention with the closest prior art; see MPEP 716.02(e) III. In the instant case, the disclosed ranges overlap the claimed ranges, see above discussion. Note that Applicant has not provided evidence of unexpected results over the claimed range in terms of porosity.
Additionally, Applicant argues that the claimed pore size distribution is neither disclosed nor suggested by the prior art. Specifically, Applicant notes that the average pore size of 1 micron or less in Watanabe does not disclose the claimed proportion of pores within a specific diameter. Applicant also notes that the method of measuring pore size should be given patentable weight because it is known that different methods of measuring result in different pore sizes. Further, Applicant argues that there are differences in raw materials and manufacturing process that would result in a different pore size distribution. Lastly, Applicant argues that the claimed pore size distribution is critical based on the data of Table 1. Examiner respectfully disagrees.
While Applicant is correct that the average pore size is not the same as pore size distribution, Examiner notes that reference specifically discloses limiting the average pore size to 1 micron or less. As such, it would have been obvious to one of ordinary skill in the art to limit the amount of pores above the disclosed average in order to ensure a lower average.
Examiner notes that wherein the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, absent a showing of criticality; see MPEP 2144.05 II. Although Applicant argues criticality of the claimed pore size, Applicant’s arguments are not commensurate in scope with the claims; see MPEP 716.02(d). Particularly, the examples of Table 1 cited as evidence of criticality of the pore size distribution are for a setter made using a specific starting material, processed into a powder using a specific method, and hot pressed as a specific pressure, time and temperature, all of which are not claimed. Further note that Applicant has failed to provide a comparison to the closest prior art; see MPEP 716.02(e). Lastly, regarding Applicant’s argument that the method of measurement results in different pore size amounts from other methods of measuring the pore size, Examiner notes that Applicant has not provided any evidence as such; see MPEP 716.01 (c) arguments by applicant cannot take the place of evidence.
Regarding the rejection of claim 2, Applicant argues that the inherent property is not applicable because the prerequisite that the compositions are physically is not met. Examiner respectfully disagrees for the above discussed reasons (i.e. the porosity and pore size distribution are rendered obvious by the disclosed invention). Note that claim 1 does not contain process limitations and, as such, a prior art disclosure that renders obvious the claimed product is not required to be made using the same method. Further note that product claims with process limitations are not limited to the steps recited by the process limitations, only to the structure that results from any claimed limitations; see MPEP 2113.
Lastly, regarding the claimed amounts of iron and calcium, given the reference discloses purity as 99% or more, it is considered to render obvious iron and calcium contents below the claimed ranges. For example, if purity 99.999%, then any impurities will have values below the claimed amounts.
For the above reasons, the rejections under 35 U.S.C. 103 are respectfully maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/ Primary Examiner, Art Unit 1783
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