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 .
Status of Claims
Claims 6 and 7 are cancelled. Claim 17 is newly added. Claims 1-5 and 8-17 are pending. Claims 1, 5, 9 and 11 are amended. Claims 1 and 13 are independent claims. Claims 13-16 are withdrawn. Claims 1-5, 8-12 and 17 are currently examined on the merits.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 9 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 9 recites "... multiple molds are provided in the liquid …", which is not described in the specification as originally filed.
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 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 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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 1-5 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang et al (CN 101613877 A, machine translation, “Zhang”) in view of Prunier et al (US 5145833 A, “Prunier”) and Sensuke et al (JP 2010251740 A, machine translation, “Sensuke”).
Regarding claim 1, Zhang teaches a silicon powder molding method comprising placing silicon power in a mold/container (a mold filled with silicon powder) under a first pressure condition (P1) and maintaining the first pressure condition P1 for a certain time period (continuous duration of a first pressure time T1) (0120, 0121, 0124, 0261, 0262, 0265, 0305, 0308), and the pressure satisfying a range of for example 10-800 MPa for the time period of for example 0.1-1 hour (10-60 minutes) (0121, 0124, 0136, 0142, 0262, 0265, 0277, 0283), overlapping the instantly claimed ranges of 50 MPa ≤ P1 ≤ 600 MPa and 7 minutes ≤ T1 ≤ 15 minutes; Overlapping ranges are prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05 I); and wherein a medium applying the first pressure P1 is a liquid (0129, 0130, 0135, 0136, 0141, 0142, 0150, 0151, 0270, 0271, 0276, 0277, 0282, 0283, 0291, 0292, 0300, 0301, 0312, 0313).
Zhang teaches placing the mold filled with the silicon powder under the pressure of 10-800 MPa and the time period of 10-60 minutes, but does not explicitly teach a second pressure P2 condition for a continuous duration of a second pressure time T2, satisfying 50MPa ≤ P2 ≤ 600MPa, and 1minute ≤ T2 ≤ 15 minutes; and placing the mold filled with silicon powder under a third pressure P3 condition for a continuous duration of a third pressure time T3, satisfying 100MPa ≤ P3 ≤ 600MPa, and 1minute ≤ T3 ≤ 6 minutes. However, it is well established that the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held not to patentably distinguish the process (e.g., Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144.04 (IV) (C). Furthermore, Prunier teaches a method for producing a material body/block, wherein a pressure and a time period affect the density of the material block (col 2 lines 50-61, col 3 lines 10-15, col 5 lines 44-60 and col 6 line 43 to col 7 line 15), e.g., the pressure and the time period are result effective variable. and Prunier has provided sufficient guidance to allow one ordinary skill in the art to vary the pressures and the time periods. Thus it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified/optimize Zhang as suggested by Prunier, and obtained various pressures and time periods including the instantly claimed “a second pressure P2 condition for a continuous duration of a second pressure time T2, satisfying 50MPa ≤ P2 ≤ 600MPa, and 1minute ≤ T2 ≤ 15 minutes; and placing the mold filled with silicon powder under a third pressure P3 condition for a continuous duration of a third pressure time T3, satisfying 100MPa ≤ P3 ≤ 600MPa, and 1minute ≤ T3 ≤ 6 minutes” in order to produce material block with desired density economically, by conducting routine experimentation of a result effective variable. See MPEP 2144.05 (II) (A-B). Further it is well-established that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Zhang/Prunier teaches the first pressure as addressed above, but does not explicitly teach that after the pressurization process is completed, applying a first pressure relief process to the mold, wherein the first pressure relief process comprises: lowering the pressure to a pressure Pn, maintaining the pressure Pn for a continuous duration of time Tn, satisfying: 10 MPa ≤ Pn ≤ 100MPa, 1 minutes ≤ Tn ≤ 2 minutes. However, Sensuke teaches a method of manufacturing a bulk material, wherein after pressurizing at a higher pressure, a step of lowering pressure is carried out, the lowered pressure is a pressure of 20-300 MPa for a time period of 1 minute to 15 minute (figs 2-14, 0026, 0053, 0054). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier per teachings of Sensuke in order to provide suitable conditions for producing the bulk material body with desired density (Sensuke abstract, 0053 and claim 1). It is also well-established that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 2, Zhang/Prunier/Sensuke teaches the first pressure P1 condition as addressed above, and further teach that the first pressure P1 condition is achieved through a pressure increasing step, and the pressure increasing step comprises increasing a pressure to the first pressure P1 at a first pressure increasing rate increased at a rate of greater than about 6.89 MPa/sec (v1) (Prunier col 6 lines 58-60), overlapping the instantly claimed satisfying 20 MPa/s ≤ v1 ≤ 30 MPa/s. Overlapping ranges are prima facie obvious. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) (MPEP 2144.05 I). It is also well-established that “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Regarding claim 3, Zhang/Prunier/Sensuke teaches a particle size of the silicon powder is 0.1 micron to 1000 microns (Zhang 0108, 0169).
Regarding claim 4, Zhang/Prunier/Sensuke teaches the mold for receiving the first pressure P1 as addressed above, and further teaches that the mold comprises a cylindrical middle mold (having a side/third surface) having a base (first surface) and a heating interlayer (second surface) for covering the cylindrical middle mold (Zhang 0121, 0124, 0262, 0265, 0305, 0308), a guide mold is put on the cylindrical middle mold (having the third surface) to apply isostatic pressing (pressure) making the force on the silicon powder uniform in all directions for obtaining the block (0089, 0121, 0124, 0173, 0262, 0265, 0305, 0308), meeting the claim.
Regarding claim 5, Zhang/Prunier/Sensuke teaches the cylindrical middle mold having the first surface, the second surface and the third surface as addressed above, and further teaches that a guide mold is put on the cylindrical middle mold (having the first surface, the second surface and the third surface) to apply isostatic pressing (equal pressure) making the force on the silicon powder uniform in all directions for obtaining the block (Zhang 0089, 0121, 0124, 0173, 0262, 0265, 0305, 0308), meeting the claim.
Regarding claim 11, Zhang/Prunier/Sensuke teaches the mold as addressed above, and further teaches that the mold comprises a cylindrical middle mold (cylinder) having a base (cover) and a heating interlayer (cover) for covering the cylindrical middle mold, and the silicon powder is filled in the cylinder (Zhang 0121, 0124, 0262, 0265, 0305, 0308), meeting the claim. Regarding the mold comprises a cover and a cylinder limitation, it is an apparatus limitation in a process claim. Unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Tarczy-Hornoch 158 USPQ 141, 150; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Claims 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Zhang/Prunier/Sensuke as applied to claim 1 above, and further in view of Wang et al (CN 111196870 A, machine translation, “Wang”).
Regarding claim 8, Zhang/Prunier/Sensuke teaches the mold as addressed above, but does not explicitly teach that the mold is made of a polyurethane material, and a density po of the polyurethane material satisfies: 1.00 g/cm3 ≤ ρ0 ≤ 1.01 g/cm3. However, Wang teaches a polyurethane material used for making a lining material of a mold (pages 2 and 3, technical filed and summary of the invention), and the polyurethane material density is 0.95-1.2 g/cm3 (page 4 and claim 4). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier/Sensuke per teachings of Wang in order to provide a mold with low-hardness and high-wear-resistance material, which is effectively solves the durability problem of the mold (Wang page 4). It is also well-established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see MPEP 2144.07. Furthermore, it is noted that the instant claims recite a process. Regarding the mold limitation, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Regarding claim 10, Zhang/Prunier/Sensuke teaches the mold as addressed above, but does not explicitly teach that a wear rate G of the mold satisfies: G < G0 wherein the G0 satisfies 0 < G0 ≤ 0.1 g/cm2. However, Wang teaches a mold, wherein a polyurethane material used for making a lining material of a mold (pages 2 and 3, technical filed and summary of the invention), same mold material as disclosed in the instant specification (for example [0015] of instant PGPUB US 2025/0092568 A1). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier/ Sensuke per teachings of Wang in order to provide a mold with low-hardness and high-wear-resistance material, which is effectively solves the durability problem of the mold (Wang page 4). As just addressed, Zhang/Prunier/Sensuke/Wang teaches the same mold material as disclosed in the instant specification. Therefore, it is reasonably expected that a wear rate G of the mold satisfies: G < G0 wherein the G0 satisfies 0 < G0 ≤ 0.1 g/cm2 because it is well established that If the composition is physically the same, it must have the same properties. “Products of identical chemical composition cannot have mutually exclusive properties.” A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). MPEP 2112.01 II. It is also well-established that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). Also see MPEP 2144.07. Furthermore, it is noted that the instant claims recite a process. Regarding the mold limitation, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang/Prunier/Sensuke as applied to claim 1 above, and further in view of Sai et al (CN 217531266 U, machine translation, “Sai”) and Valls et al (WO 2020064786 A1, “Valls”).
Regarding claim 9, Zhang/Prunier/Sensuke teaches the silicon powder filled in the mold as addressed above, and further teaches container/mold in the liquid (Zhang 0135, 0141, 0150, 0270, 0276, 0282, 0291, 0300, 0312), but does not explicitly teach multiple molds, and a spacing between the adjacent molds is equal. However, Sai teaches a method of processing block materials, wherein multiple molds are used and a distance between each mold is equal (0044 and 0058). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier/Sensuke per teachings of Sai in order to reduce costs and increase production efficiency (Sai 0044). It is also well settled that mere duplication of parts has no patentable significance (MPEP 2144.04 VI B). Furthermore, regarding the multiple mold limitation, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang/Prunier/Sensuke as applied to claim 11 above, and further in view of Itaru et al (JP 2008290081 A, machine translation, “Itaru”).
Regarding claim 12, Zhang/Prunier/Sensuke teaches the mold comparing having the cover as addressed above, but does not explicitly teach that an edge of the cover is provided with a step, and the step surrounds the cover. However, Itaru teaches a molding method, wherein an edge of the cover of a mold is provided with a step, and the step surrounds the cover (figs 1, 3 and 4, 0010-0019). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier/Sensuke per teachings of Itaru in order to provide a mold for performing the isostatic pressing process (Itatu abstract and 0010-0019). Furthermore, regarding the step of the mold, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Zhang/Prunier/Sensuke as applied to claim 11 above, and further in view of Komatsu Shiro (JP 2001090249 A, machine translation, “Shiro”).
Regarding claim 17, Zhang/Prunier/Sensuke teaches the cover, but does not explicitly teach a protective sheath is provided on an outer periphery of the cover, and the protective sheath covers at least a portion of the cover. However, Shiro teaches a molding process, wherein an inner shell and an outer shell is provided on both side of a member including an outer periphery and covers the member (figs 1-4, abstract, pages 3-15). Therefore, it would have been obvious that one of ordinary skill in the art before the effective filing date of the claimed invention would have modified Zhang/Prunier/ Sensuke per teachings of Shiro in order to provide a brick/block material having excellent workability (Shiro abstract, 0008 and 0012). Furthermore, regarding the protective sheath being provided on an outer periphery of the cover and the protective sheath covering at least a portion of the cover, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the claims at issue are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); and In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-5, 8-12 and 17 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-12 of copending Application 18,555,444 (‘444). Although the conflicting claims are not identical, they are not patentably distinct from each other because claims 1-12 of ‘444 teaches all the limitations except for multiple molds and a spacing between the adjacent molds being equal. However, it is well settled that mere duplication of parts has no patentable significance (MPEP 2144.04 VI B). Furthermore, regarding the multiple mold limitation, it is an apparatus limitation in a process claim; the court has held that unless the apparatus limitations affect the process in a manipulative sense, they may have little weight in the process claims. In re Leeson Corp. 185 USPQ 156; In re Edwards 128 USPQ 387; Stalego v. Heymes 120 USPQ 473, 478 (CCPA); Ex parte Hart 117 USPQ 193; In re Freeman 44 USPQ 116 (CCPA); In re Sweeney 72 USPQ 501 (CCPA). This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 02/28/2026 have been fully considered but they are not persuasive.
Applicant’s arguments that “The Cited References Fail to Recognize or Address the Claimed Technical Problem…None of the cited references recognize internal stress accumulation in molded silicon blocks as a technical problem, nor do they disclose or suggest performing a dedicated pressure relief stage for facilitating non-destructive demolding and suppression of dust generation” have been considered, but not found persuasive. The primary reference to Zhang explicitly teaches the silicon powder molding method and the secondary reference to Sensuke teaches performing a pressure relief stage as addressed above. It is further noted that neither the instant claims nor the specification as originally filed “recognize internal stress accumulation in molded silicon blocks as a technical problem” and “facilitating non-destructive demolding.” It is further noted that the instant specification explicitly discloses that … This application relates to the field of single crystal growth technology, specifically to a silicon powder molding method, silicon block, and their applications (for example [0001] of instant PGPUB US 2025/0092568 A1). Also, it has been held that a prior art reference must either be in the field of the inventor' s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, the primary reference to Zhang (for example abstract, 0001, 0002, 0120-0121) explicitly teaches that the technical field relates to raw silicon material in a single crystal furnace and the silicon power molding method, which is in the field of the inventor' s endeavor or/and is reasonably pertinent to the particular problem with which the inventor was concerned, thus meeting requirement for being relied upon as a basis for rejection of the claimed invention. Also, it is well established that arguments of counsel cannot take the place of factually supported objective evidence. See, e.g., In re Huang, 100 F.3d 135, 139-40, 40 USPQ2d 1685, 1689 (Fed. Cir. 1996); In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). In response to other teachings of the cited references, it is noted that the transitional term “comprising” is used in the instant claim. Therefore any additional features/elements can be included in the cited prior arts. The transitional term “comprising”, which is synonymous with “including,” “containing,” or “characterized by,” is inclusive or open-ended and does not exclude additional, unrecited elements or method steps (see MPEP 2111.03).
Applicant’s arguments that Zhang fails to teach or suggest the claimed multi-stage pressure sequence, including a sequential multi-stage pressure application that cooperates with a subsequent pressure relief stage to ensure block integrity have been considered, but not found persuasive. It is noted that the features upon which applicant relies (i.e., subsequent) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Moreover, it is well-established that selection of any order of performing process steps is prima facie obvious. Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). Also see MPEP 2144.04 IV C. Furthermore, in general, the transposition of process steps or the splitting of one step into two, where the processes are substantially identical or equivalent in terms of function, manner and result, was held not to patentably distinguish the process (e.g., Exparte Rubin, 128 USPQ 440 (Bd. Pat. App. 1959). See MPEP 2144.04 (IV)(C).
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it is examiner’s position that a prima facie case of obviousness is well-established per teachings/combination of the instantly cited references.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 Hua Qi whose telephone number is (571)272-3193. The examiner can normally be reached 9am-6pm.
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/HUA QI/ Primary Examiner, Art Unit 1714