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 .
Election/Restrictions
Applicant’s election of Group I, claims 1-12, in the reply filed on 12/08/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 13-15 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 12/08/2025.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 03/22/2024, 04/18/2025 and 05/16/2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
Claim Rejections - 35 USC § 112
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 3-4 and 10 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.
Regarding claim 3, the phrases "preferably", “more preferably”, “yet more preferably” and “particularly preferably” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 4, the phrases "preferably", “more preferably,” “yet more preferably” and “particularly preferably” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 10, the phrase “in particular” render the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 3 recites the broad recitation range of 0.1 to 100 µm, and the claim also recites several ranges which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claims 4 recites the broad recitation range of 0.1 to 500 µm, and the claim also recites several ranges which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
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.
(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.
Claims 1-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Suematsu et al. (JP2013133272 A) [IDS dated: 04/18/2025], herein Suematsu.
The Examiner has provided a machine translation of (JP2013133272A). The citation of the prior art in this rejection refers to the machine translation except for the Figures.
In regards to claim 1, Suematsu teaches an infiltrated SiC/Si composite body with a hollow tube structure (i.e., cavity) located within the body [0001-0002, 0008, 0010, 0024Fig. 1(c)]. Here the tube walls comprise SiC and are interpreted as the claimed coating [0008-0010]. The infiltrate is Si [0010].
Claim 1 defines the product by how the product was made. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having a cavity and an inorganic coating at least partially coating the wall of the cavity. The reference suggests such a product.
In regards to claim 2 and 3-4, Suematsu further teaches less Si infiltrates the SiC tube then the porous body of the component [0010, 0024]. Thus, (a) is considered met. The limitations set forth in (b) are considered optional as “or” is chosen. Claims 3-4 are deemed optional as they require the limitations of (b) which is optional.
Claims 2-4 define the product by how the product was made. Thus, claims 2-4 are product-by-process claims. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure wherein less Si infiltrates the coating than the body. The reference suggests such a product. It is noted that the claim is drawn to the component body with a hollow portion having a coating layer at least partially covering the wall of the hollow portion. Thus, the precursor coating and precursor body are no longer present and only the final product is evaluated as the structure.
Alternatively, for claim 3, Suematsu further teaches the average particle diameter for the SiC used to create the porous body is 30 µm [0034]. Thus, the grain size of the result body is expected to be within the claimed range of 0.1 to 500 µm.
In regards to claim 5, Suematsu further teaches less Si infiltrates the SiC tube then the porous body of the component [0010, 0024].
Claim 5 defines the product by how the product was made. Thus, claim 5 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure wherein less Si infiltrates the coating than the body. The reference suggests such a product. It is noted that the claim is drawn to the component body with a hollow portion having a coating layer at least partially covering the wall of the hollow portion. Thus, the precursor coating and precursor body are no longer present and only the final product is evaluated as the structure.
In regards to claim 6, Suematsu further teaches the molten Si expands as it solidifies [0005].
Claim 7 defines the product by how the product was made. Thus, claim 7 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure wherein less Si infiltrates the coating than the body. The reference suggests such a product. It is noted that the claim is drawn to the component body with a hollow portion having a coating layer at least partially covering the wall of the hollow portion. Thus, the precursor coating and precursor body are no longer present and only the final product is evaluated as the structure. Further, as less of the infiltrate is in the coating more is within the body and thus would meet the limitation.
In regards to claim 8, Suematsu further teaches the cavity is a hollow tube/channel [0017].
In regards to claim 9, Suematsu further teaches the body Is formed substantially from SiC [0012, 0020].
In regards to claim 10, Suematsu further teaches less Si infiltrates the body [0008, 0010].
In regards to claim 11, Suematsu further teaches the SiC tube is embedded in porous body of the component [0010, 0024]. Thus, (a) is considered met.
Claim 11 defines the product by how the product was made. Thus, claim 1 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure wherein a separate materially is present in between the body and the cavity. The reference suggests such a product. It is noted that the claim is drawn to the component body with a hollow portion having a coating layer at least partially covering the wall of the hollow portion. Thus, the precursor coating and precursor body are no longer present and only the final product is evaluated as the structure.
In regards to claim 12, Suematsu further teaches both the body and the tube comprise SiC [0008, 0024-0025].
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH A COLLISTER whose telephone number is (571)270-1019. The examiner can normally be reached Mon.-Fri. 9 am-5 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ELIZABETH COLLISTER/ Primary Examiner, Art Unit 1784
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