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 .
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.
Claim 1 is 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. Claim 1 recites, “Fine particles comprising SiC and Si, wherein the fine particles have a particle size of not more than 80 nm, a weight loss ratio of not more than 9 mass%, and a degree of hydrophilization of not more than 30%.” However, given that the claimed “weight loss ratio” and claimed “degree of hydrophilization” (in terms of a percentage) are not typical or common properties in the art and appear to be relative properties dependent upon the method(s) and condition(s) utilized to determine said properties wherein the claims and the specification fail to clearly define said properties and the method(s) and condition(s) utilized to determine said properties, one having ordinary skill in the art would not be reasonably apprised of the scope of the claimed invention and could not interpret the metes and bounds of the claim so as to understand how to avoid infringement.
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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Akashi (Effect of Intermittent Injection of Ar/CH4 Quenching Gas on Particle Composition and Size of Si/C Nanoparticles Synthesized by Modulated Induction Thermal Plasma). Akashi discloses a method for producing nanoparticles or “fine particles’, comprising: a step of supplying a feedstock into a thermal plasma flame, the feedstock being silicon (Si) powder as in instant claim 2, particularly dispersed in a particulate form as in instant claim 3; and a step of supplying a cooling/quenching gas to the thermal plasma flame to thereby produce the fine particles, wherein the cooling/quenching gas includes methane gas as in instant claim 2 (Abstract, Experimental Conditions). Hence, Akashi anticipates instant claims 2-3.
With respect to instant claim 1, Akashi discloses that the resulting nanoparticles or “fine particles” have an average particle size within the claimed range of not more than 80 nm as shown in Figs. 4 and 10, and discussed on pp. 1128-1129, and comprise Si as well as SiC as evidenced by the XRD spectra shown in Fig. 6 and discussed on pp. 1131-1134 and 1141-1144, including the nanoparticles synthesized with a carbon coating on a surface thereof utilizing a quenching gas injection delay of 7.5 ms given the presence of small peaks in the XRD spectra attributed to SiC as shown in Fig. 6; and although Akashi does not specifically disclose that the resulting nanoparticles have “a weight loss ratio of not more than 9 mass%” and “a degree of hydrophilization of not more than 30%” as instantly claimed, given that the method disclosed by Akashi for producing the nanoparticles is the same as the instantly claimed method as discussed in detail above, which is utilized to produce the claimed fine particles, and that it is further noted that the quenching gas of Akashi comprising methane and argon (as utilized in the instant invention) is introduced in Akashi at a location and methane concentration similar to that utilized in the instant invention (particularly with respect to inventive Examples 1-2) as shown in Figs. 2-3 and discussed in the Experiment Setup and Procedure section, the Examiner takes the position that the resulting nanoparticles disclosed by Akashi would inherently exhibit “a weight loss ratio” and “degree of hydrophilization” as instantly claimed, particularly when determined by some arbitrary method(s) and under some arbitrary condition(s).
Claims 2-3 are rejected under 35 U.S.C. 102(a)(1) and 102(a)(2) as being anticipated by Tanaka (WO2020/050202A1, also printed as US2021/0316268A1, please refer to the US PG publication for the below cited sections). Tanaka discloses a method of manufacturing fine particles including a step of supplying silicon (Si) powder as feedstock, dispersed in a particulate form (as in instant claim 3), into a thermal plasma flame (as in instant claim 2); and a step of supplying a quenching/cooling gas to the thermal plasma flame to thereby produce the fine particles, particularly a mixed gas of argon gas and methane gas as the quenching/cooling gas (i.e., “includes methane gas” as in instant claim 2) such that Tanaka anticipates instant claims 2-3 (Entire document, particularly Abstract; Paragraphs 0087-0092).
Claim Rejections - 35 USC § 103
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.
Alternatively, claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Akashi, as applied above to claims 1-3, and discussed further below.
The teachings of Akashi are discussed in detail above (and incorporated herein by reference), and although the Examiner is of the position that the reference is anticipatory with respect to instant claim 1 for the reasons discussed above, the Examiner alternatively takes the position that the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Akashi given that it would have been obvious to one having ordinary skill in the art to reasonably expect the synthesized nanoparticles taught by Akashi, which are produced by essentially the same method as utilized to produce the instantly claimed fine particles including a quenching gas location and methane concentration thereof, to exhibit the same properties as the instantly claimed fine particles when determined by the same method(s) and under the same condition(s) as utilized in the instant invention.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Tanaka as evidenced by or in view of Akashi. The teachings of Tanaka are discussed in detail above (and incorporated herein by reference), wherein it is again noted that Tanaka teaches a method of manufacturing fine particles by supplying Si powder as a feedstock into a thermal plasma flame and then supplying a quenching gas of argon and methane to produce the fine particles as discussed above; and although Tanaka also teaches that the method provides fine particles with a smaller size or nanosized particles (Abstract, Paragraphs 0026 and 0042), particularly nanosized Si fine particles using Si powder as the feedstock (Paragraph 0161) with the particle size “set to 100 nm” in one example (Paragraph 0156, and 0161), Tanaka does not specifically teach that the resulting fine particles comprise SiC and Si and “have a particle size of not more than 80 nm, a weight loss ratio of not more than 9 mass%, and a degree of hydrophilization of not more than 30%” as recited in instant claim 1. However, Tanaka does teach that the manufacturing apparatus and process can manufacture any fine particles whose type is not particularly limited, with example types including, in addition to silicon particles as an example of “metal” fine particles, oxide fine particles, nitride fine particles, carbide fine particles and oxynitride fine particles by changing the composition of the feedstock (Paragraph 0043), with SiC being an example of a carbide in the invention (Paragraph 0168); and given that Tanaka specifically teaches the use of a mixed gas of argon and methane as the quenching gas in the process, wherein as evidenced by Akashi, the presence of methane in the quenching gas as in Tanaka can result in SiC present in the synthesized nanoparticles such that it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the nanosized Si particles taught by Tanaka that are quenched with a mixed gas of argon and methane to comprise SiC even if only in a very minor amount.
In terms of the particle size, Tanaka clearly teaches that the fine particles are nanosized, providing a clear teaching and/or suggestion that the resulting fine particles are on the same order of magnitude as instantly claimed, especially given that as noted above, Tanaka teaches an example wherein the particle size is “set” to 100 nm. Further, given that both Tanaka and Akashi provide a clear teaching and/or suggestion that the particle size of the synthesized particles can be controlled by adjusting the process conditions, particularly the timing of the time modulation (Tanaka: Paragraph 0121; Akashi: Entire document, particularly Experimental Results), with Tanaka teaching that “fine particles with a still smaller size” are possible (Paragraph 0121) and Akashi teaching nanosized particle sizes with diameters below 100 nm and particularly below 80 nm as in the claimed invention (Experimental Results), a particle size within the claimed range of not more than 80 nm would have been obvious over the teachings of Tanaka in view of Akashi, wherein one having ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to utilize routine experimentation to determine the optimum processing conditions to “set” the particle size of the nanosized particles as desired before a particular end use.
Lastly, with respect to the claimed “weight loss ratio” and “degree of hydrophilization” as recited in instant claim 1, given that said properties appear to be the result of the feedstock material and the process conditions utilized for the thermal plasma process, particularly the methane concentration in the quenching gas and the introduction location of the quenching gas wherein both Tanaka and Akashi teach introducing the quenching gas toward a tail portion or end portion of the thermal plasma flame or given distance therefrom (Tanaka: Paragraphs 0071 and 0142; Akashi: Figs. 2-3, Experimental Setup and Procedure), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to reasonably expect the nanosized particles taught by Tanaka in view of Akashi to exhibit the same or similar properties as instantly claimed when determined by some arbitrary method(s) and under some arbitrary condition(s), and/or when determined by the same method(s) and condition(s) utilized in the instant invention. Further, given that Tanaka clearly teaches that the composition of the resulting particles can be tailored based upon the feedstock and process conditions (Entire document), while Akashi similarly teaches that the composition and surface structure of the resulting particles can be tailored based upon the process conditions (Entire document), the Examiner further takes the position that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 1 would have been obvious over the teachings of Tanaka in view of Akashi given that it is prima facie obviousness to choose from a finite number of identified, predictable solutions, with a reasonable expectation of success.
Citation of pertinent prior art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Lee (Thermal plasma synthesis of Si/SiC nanoparticles from silicon and activated carbon powders) discloses a process of synthesizing Si/SiC nanocomposites via a thermal plasma process utilizing waste silicon (Si) and activated carbon (C) powder to first form micron-sized SiC by a solid-stated method, and then using the solid-state synthesized SiC powder as the feedstock for the thermal plasma process resulting in uniformly dispersed 20-60 nm Si/SiC nanoparticles that can be used as a sintering additive for the preparation of pure and high density SiC ceramic.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MONIQUE R JACKSON whose telephone number is (571)272-1508. The examiner can normally be reached Mondays-Thursdays from 10:00AM-5:00PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787
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