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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/25/26 has been entered.
Response to Arguments
Applicant's arguments filed 3/25/2026 have been fully considered but they are not persuasive. The applicant argues that Matthey does not teach reaction bonding particles to a reaction bonded layer. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Matthey does not teach second diamond particles that are embedded in the SiC layer and protrude. Sung teaches protruding diamond particles that are placed in a media (abstract, Figures) to have a surface with diamond grit in a customized pattern or placement that increase efficiency and reduce costs (para 0032, 0036-0037). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Matthey to include placement of second diamond particles as taught by Sung to increase efficiency of the product surface.
The applicant argues that Sung does not teach reaction bonding the particles to the layer but teaches brazing. Sung in paras 0104-0107 teaches the diamond particles embedded in the layer using an adhesive or a brazing layer, thus meeting the limitation ‘reaction bonded’ as broadly claimed at least via the adhesive. Sung also teaches chemical bonding of the particles with the brazing material that bonds to the substrate/Matthey’s layer in para 0122. This meets the reaction bonding with the layer at least as broadly claimed, as ‘reaction bonding’ is not defined in the claims and the prior art need only teach the structure implied by the method steps, not the method steps themselves (MPEP 2113). Thus, having the effect of reaction bonding also meets the claim.
Therefore, for at least these reasons, the previous rejection is maintained.
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.
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.
Claim(s) 1-9, 12-13 and 15-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Matthey et al. (US 2021/0002534 A1) in view of Sung (US 2007/0051354 A1)
As to claim 1, Matthey et al. teaches a composite material comprising: a substrate of a reaction-bonded silicon carbide material (para 0065); and a reaction-bonded diamond-retaining silicon carbide (RB-DSiC) layer reaction bonded to a surface of the substrate (paras 0025, 0071-0074, Figs 1-2), wherein the RB-DSiC layer includes diamond particles, wherein the substrate is a distinguishable different layer from the RB-DSiC layer.
Matthey does not teach second diamond particles that are embedded in the SiC layer and protrude. Sung teaches protruding diamond particles that are placed in a media (abstract, Figures) to have a surface with diamond grit in a customized pattern or placement that increase efficiency and reduce costs (para 0032, 0036-0037). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Matthey to include placement of second diamond particles as taught by Sung to increase efficiency of the product surface.
Sung in paras 0104-0107 teaches the diamond particles embedded in the layer using an adhesive or a brazing layer, thus meeting the limitation ‘reaction bonded’ as broadly claimed at least via the adhesive. Sung also teaches chemical bonding of the particles with the brazing material that bonds to the substrate/Matthey’s layer in para 0122. This meets the reaction bonding with the layer at least as broadly claimed, as ‘reaction bonding’ is not defined in the claims and the prior art need only teach the structure implied by the method steps, not the method steps themselves (MPEP 2113).
As to claim 2, the substrate in para 0065 differs from the RB-DSiC layer as in Matthey paras 0071-0074 and thus would have an interface.
As to claims 3-7, the particles in the substrate may include short of long fibers, which have a different size than that of the layer shown in Matthey Figs 1 and 2. Further, because the substrate and the RB-DSiC layer and different layers, they will inherently have different grain sizes, spacing and volumes of particles as broadly claimed.
As to claims 8 and 13, the diamond particles are distributed non uniformly and non ordered as shown in the Matthey Figures. The are distributed throughout the layer as shown. Sung teaches the same in para 0040 for the second particles.
As to claims 9 and 12, Matthey et al. is described above and teaches the limitations of claims 9, 12 and 22 but does not explicitly teach diamond particles that protrude from the SiC reaction bonded material in a uniform placement. Sung teaches placing diamond particles onto a surface after the placement of the matrix material SiC (abstract) to have a surface with diamond grit in a customized pattern or placement that increase efficiency and reduce costs (para 0032, 0036-0037). Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Matthey to include placement of the diamond particles as taught by Sung to increase efficiency of the product surface.
As to claim 15, the surface diamond particles of Sung as shown in Fig. 1 would be larger than that in the layer.
As to claims 16-18 and 20, Matthey teaches the limitations of claims 16-18 and 20 except for the claimed particle sizes and thicknesses of the layers. The size of the particles and thickness of the layer is modified in Matthey based upon the existence/size of pores and desired wear time (para 0048, 0053, 0060, etc.). It has been held that where 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. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955). Further, Sung teaches modifying the thickness of the layer in order to seal the surface with the particles without interfering with the performance during abrasion (para 0044, for example). Sung likewise modifies particle sizes depending on the end use in para 0040. has been held that where 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. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claim 19, the size varies as shown in the Sung Figures.
As to claim 21, the RB-DSiC is a bonding layer bonding the diamond particles to the substrate, wherein the bonding layer is reaction bonded to the surface of the substrate and the diamond particles as in para 0025, 0071-0073. Sung in paras 0104-0107 teaches the diamond particles embedded in the layer using an adhesive or a brazing layer, thus meeting the limitation ‘reaction bonded’ as broadly claimed at least via the adhesive. Sung also teaches chemical bonding of the particles with the brazing material that bonds to the substrate/Matthey’s layer in para 0122. This meets the reaction bonding with the layer at least as broadly claimed, as ‘reaction bonding’ is not defined in the claims and the prior art need only teach the structure implied by the method steps, not the method steps themselves (MPEP 2113).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718
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