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/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-5, drawn to a product, classified in C01B32/956 or C30B29/36.
II. Claims 6-10, drawn to a method of using1, classified in G01N23/2055.
The inventions are independent or distinct, each from the other because:
Inventions I and II are related as product and process of use. The inventions can be shown to be distinct if either or both of the following can be shown: (1) the process for using the product as claimed can be practiced with another materially different product or (2) the product as claimed can be used in a materially different process of using that product. See MPEP § 806.05(h). In the instant case, Group I’s product can be used in materially different methods than Group II’s, such as in ballistic armor paneling/plating and/or drill bits.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
(a) the inventions have acquired a separate status in the art in view of their different classification;
(b) the inventions have acquired a separate status in the art due to their recognized divergent subject matter;
(c) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
(d) the prior art applicable to one invention would not likely be applicable to another invention; and/or
(e) the inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a)/1st par.
Applicant is advised that the reply to this Restriction Requirement (“R/R”) to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention. The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the R/R, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the R/R will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention. Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a 9-29-26 phone conversation with Bruce Kramer, Esq. a provisional election was made without traverse to prosecute the invention of Group I, claims 1-5. Affirmation of this election must be made by applicant in replying to this Office action. Claims 6-10 are withdrawn from further consideration per 37 CFR 1.142(b) as being drawn to a non-elected invention.
This R/R is between product claims and process claims. Where applicant elects claims directed to the product, and all product claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product claim for that process invention to be rejoined. In the event of rejoinder, the R/R between the product claims and the rejoined process claims will be withdrawn; rejoined process claims will be fully examined for patentability per 37 CFR 1.104. To be allowable, rejoined claims must meet all criteria for patentability including those of 35 U.S.C. 101-103 & 112. Until all claims to the elected product are found allowable, an otherwise proper R/R between product claims and process claims may be maintained. Withdrawn process claims not commensurate in scope with an allowable product claim will not be rejoined. See MPEP § 821.04. Also, for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the R/R is withdrawn by the examiner before the/any patent issues. See MPEP § 804.01.
Claim Interpretation
As to claim 1, all recitations other than “A SiC ingot” (which connotes a composition, i.e. product, claim) are directed to properties inherent to said SiC ingot2 and/or mere mental and/or algorithmic steps3, and as such i) are not accorded patentable weight and/or ii) do not further limit composition/product claim 1’s compositional/structural limitations. As to claims 2-5, since said claims’ recitations merely further detail claim 1’s (mental and/or algorithmic) measurement, these recitations have also not been accorded patentable weight and/or do not further limit composition/product claim 1’s compositional/structural limitations4.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2-5 are rejected under 35 U.S.C. 112(d)/4th par. as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends. Claims 2-5 merely provide more details about claim 1’s (algorithmic) measurement, which has not been accorded patentable weight as detailed above; further details about such measurement do not further limit the structural and/or compositional details of claim 1’s SiC ingot composition.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(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 1-5 (interpreted as detailed above) are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ridgway, US 2,005,956 (1935). Regarding claims 1-5, Ridgway discloses a SiC ingot. See Ridgway at, e.g., clms. 4-5.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL BERNS whose telephone number is (469)295-9161. The examiner can normally be reached M-F 8:30-5:00 (Central). Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at (571) 270-3591. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL BERNS/ September 29, 2026
Primary Examiner
Art Unit 1736
1 Notwithstanding the fact that claim 6 literally recites “A method for manufacturing a SiC ingot,” as all of the claim’s other limitations describe measuring and evaluating features/properties of a (pre-existing) SiC ingot, claim 6 has been interpreted as a method of use claim rather than a method of making claim.
2 “Products of identical chemical composition can not have mutually exclusive properties.” MPEP 2112.01 II, citing In re Spada, 911 F.2d 705, 709 (Fed. Cir. 1990).
3 Note: mental/algorithmic steps are not i) accorded/entitled to patentable weight and/or ii) do not further limit the claim's positive step(s). For i), see, e.g., Praxair Distribution, Inc. v. Mallinckrodt Hosp. Prods. IP Ltd., 890 F.3d 1024, 1033 (Fed. Cir. 2018) (rejecting the arguments that a) limitations reciting mental/algorithmic steps are entitled to patentable weight, and b) whether claims are directed to mental steps "may only be considered in determining patent eligibility [vis-a-vis 35 U.S.C. 101], not obviousness[, i.e. prior art applicability]"). For ii), see, e.g., Ex parte Varanasi, Appeal No. 2012-001521 (PTAB 2013) (available at https://developer.uspto.gov/ptab-web/#/search/documents?proceedingNumber=2012001521) at p. 4, citing Ex parte Nehls, 88 USPQ2d 1883, 1889 (BPAI 2008) (precedential), and Ex parte Cormier, Appeal No. 2017-011263 (PTAB 2018) (available at https://developer.uspto.gov/ptab-web/#/search/documents?proceedingNumber=2017011263) at p. 8. Additionally, note the CCPA’s statements that “a purely mental step [ ] can nowise lend patentability to the claims[,]” see In re Lundberg, 197 F.2d 336, 339 (CCPA 1971) (internal citations omitted), and “Patentability cannot be predicated upon a mental step.” See In re Venner, 262 F.2d 91, 95 (CCPA 1958) (internal citations omitted). Moreover, the BPAI in Ex parte Jansen, Appeal No. 2009-001067 (BPAI 2009) (available online at https://developer.uspto.gov/ptab-web/#/search/documents?proceedingNumber=2009001067) stated that “the reason recited for performing a certain step does not create a patentable distinction.” See Jansen at p. 9.
4 See fn. 3, above.
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