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 .
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1.114, and the fee set forth in 37 CFR1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/21/26 has been entered.
Claims 11-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b),
as being drawn to a nonelected group II, there being no allowable generic or linking
claim. Applicant timely traversed the restriction (election) requirement in the reply filed
on 05/11/26.
Applicant's election with traverse of group I in the reply filed on 05/11/26 is
acknowledged. The traversal is on the ground(s) that there is no burden as claim 1 is
amended. This is not found persuasive 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 the liquid metal can be comprising metals with higher than 600C
melting points.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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 the first paragraph of pre-AIA 35 U.S.C. 112:
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.
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.
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.
Claim 3 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. For claim 3 the
disclosure does not have support for all possible alloys comprising one metal element of
claim 3 to meet limitation of claim 1, for example gallium and terbium do not have eutectic point equal or less than 550C.
Claims 1, 3, and 5-8 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. It is not clear what the applicant means by melting temperature of less than about 550C, for examination purposes it is considered as operating temperature of less than 550C.
Claim 1 recites the limitation "the homogenous" in line 9. There is insufficient antecedent basis for this limitation in the claim. For examination it is considered as a homogenous.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim does not further limit the parent claim 1 as at least one or two of the metals has to have melting point greater than eutectic point. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claims 1, 3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Neil J. Bassom et al (U. S. Patent Application: 2023/0245859, here after Bassom).
Claims 1 and 3 are rejected. Bassom teaches a process for implanting ions into a
workpiece using a liquid metal(melt) alloy ion source, the process comprising:
heating a liquid metal precursor composition to form a heterogenous liquid metal (alloy) ion source, wherein the liquid metal alloy precursor composition comprises a metal alloy mixture of two metals (gallium and aluminum) with a eutectic temperature of less than 550C(this happens when melt is slightly cool below liquidus);
vaporizing and ionizing a homogeneous or heterogenous liquid metal alloy ion
source in an arc chamber to create a plasma of ionized metal elements [0051 last
sentence, 0039, 0043 lines 13-16];
extracting the ionized metal elements within the plasma through a source
aperture to form an ion beam [0039]; and
implanting one or more of the ionized metal elements into the workpiece [0039].
Although Bassom does not teach heating metal source to less or equal than 550C,
but also teaches to selectively heat the source material to between approximately 500-
1000C [0064]. Overlapping ranges are prima facie evidence of obviousness. It would
have been obvious to one having ordinary skill in the art to have selected the portion of
[overlapping range] that corresponds to the claimed range. In re Malagari, 182 USPQ
549 (CCPA 1974). Therefore, it would have been obvious to one of ordinary skill in the
art at the time of the invention was made to have a method of Bassom wherein an
operating temperature of less than or equal to 550°C, because overlapping ranges are prima facie evidence of obviousness. The liquid metal alloy precursor (Gallium- aluminum melt) composition forms a heterogenous liquid metal alloy comprising a flux metal (Gallium) having a first melting point and one or more additive metals(aluminum) soluble in the flux metal having a relatively higher second melting point;
wherein the one or more additive metals are in an amount exceeding a solubility
limit in the flux metal (this condition happens when for specific composition, for example 50% gallium 50% aluminum, temperature of the composition slightly reduces from melting temperature (liquidus line) and solid crystalline phase forms in the melt.
Claim 5 is rejected as aluminum has melting temperature(660C) more than the eutectic temperature.
Claim 6 is rejected as Bassom teaches the liquid metal alloy precursor
composition is in a powder or other solid form [0064].
Claim 7 is rejected as Bassom teaches heterogenous metal alloy comprising a
flux metal(gallium) and additional metal(aluminum) [0032] which is at least partially
soluble therein.
Claim 8 is rejected as Bassom teaches mass analyzing the ion beam to permit
selected ionized mass metal elements to pass therethrough; and implanting selected
ionized mass elements into the workpiece [0030-0031].
Response to Arguments
Applicant's arguments filed 07/21/26 have been fully considered but they are not persuasive. The applicant argument regarding 35 U.S.C 112(a) of claim 3 is not persuasive as for example gallium and terbium do not have eutectic below 550C.
The applicant argument regarding 35 U.S.C 112(b) of claim 1 is not persuasive as disclosure does not teach what is the range of claim for example 550 + 5%.
The applicant argument regarding 35 U.S.C 112(d) of claim 5 is not persuasive as one of the metals inherently has to have melting point higher than eutectic point.
The applicant argument regarding 35 U.S.C 103 of claim 1 is not persuasive, the applicant argues regarding unexpected result of heterogenous liquid metal alloy mixture provides stable ion beam source, however claims do not reflect it. Basically, composition slightly different than eutectic alloy or temperature slightly less than liquidus would cause formation of crystals in the melt.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TABASSOM TADAYYON ESLAMI whose telephone number is (571)270-1885. The examiner can normally be reached M-F 9:30-6.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gorodn Baldwin can be reached at 5712725166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TABASSOM TADAYYON ESLAMI/ Primary Examiner, Art Unit 1718
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