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 § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim 30 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because it is a “Use” claim. MPEP 2173.05(q). It does not claim any steps, which might lead to its interpretation as an attempt to claim a process. For purposes of examination, it will be interpreted as a composition, an article of manufacture, or an apparatus.
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 17-20 and 22-30 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.
Claim 17 recites the combination of limitations “a thickness between about 0.5 μm to about 8 μm, more specifically between about 0.8 μm to about 3 μm and in particular between about 1 μm to about 2.5 μm.” 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, claim 17 recites the broad recitation “between about 0.5 μm to about 8 μm,” and the claim also recites “more specifically between about 0.8 μm to about 3 μm and in particular between about 1 μm to about 2.5 μm” which is a combination of increasingly 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. Examiner interprets the claims to require only the broader statements.
Claim 18 recites the combination of limitations “between about 2:1 to about 30:1, more specifically between about 3:1 to about 20:1 and in particular between about 5:1 to about 15:1.” 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, claim18 recites the broad recitation “between about 2:1 to about 30:1,” and the claim also recites “specifically between about 3:1 to about 20:1 and in particular between about 5:1 to about 15:1,” which are increasingly 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. Examiner interprets the claims to require only the broader statements.
Claims 19-20, 23-24, and 26-30 each recites a combination of limitations which first include a broad limitation, followed narrower statements, beginning with the word by phrases “more specifically” and or “in particular.” 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 19-20,24, and 26-30 each recites a broad recitation, and the claim also recites a narrower statement of the range/limitation. (See the rejections of Claims 17 and 18 above for analogous broad-followed-by-narrow limitations 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. Examiner interprets the claims to require only the broader statements.
Claim 22 recites the limitation “the start of the process.” The limitation is indefinite, because it lacks sufficient antecedent basis. Additionally, the claim is unclear as to what is considered a start of the claimed process. Examiner considers the limitation to include some portion of any other recited step or an unrecited step which could reasonably be considered a start of the claimed process.
Claim 24 recites the limitation “the coating step comprises a first and a second coating step.” The limitation is indefinite as ambiguous, because it is not clear what is required by a first or a second coating step, because Claim 22 recites that “a coating step comprises” all of placing a carbonaceous substrate into a reaction chamber, heating the reaction chamber, supplying a process gas, and supplying a tantalum containing species. Therefore, it is not clear whether a first and a second coating step is meant to include some subset of “the coating step” or whether the first and the second coating step are also “a coating step” as defined by Claim 22, which includes every step recited in Claim 22. Examiner considers the limitation to include either performing some subset of the step of Claim 22 or repeating the entire claimed “coating step” of Claim 22, including placing a substrate, heating the chamber, etc.
Claim 30 recites the limitation “Use of a carbonaceous substrate according to claim 16 as a component for epitaxial growth systems.” The limitation is indefinite, because it is not clear what is meant by “a carbonaceous substrate according to claim 16,” since Claim 16 is drawn not merely to a “carbonaceous substrate,” but to a “carbonaceous substrate comprising a first tantalum-carbide-coating-layer.” Therefore, it is not clear whether Claim 30 is drawn to a use of only the carbonaceous substrate in Claim 16 or whether it is drawn to a use of the carbonaceous substrate comprising a first tantalum-carbide-coating-layer of Claim 16. In addition, it is not clear how the claimed “use of a carbonaceous substrate according to claim 16 as a component for epitaxial growth systems” is meant to be distinguished from “an epitaxial growth system comprising the carbonaceous substrate according to Claim 16.” Examiner considers the broadest reasonable interpretation of the limitation to include an epitaxial growth apparatus or a collection of compositions (“kit”), comprising the carbonaceous substrate (not necessarily with the coating, since the coating is not required in Claim 30 and Claim 16 distinguishes the carbonaceous substrate from its coating.
Claims 23-30 are rejected as depending from other rejected 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.
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.
Claim(s) 16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kondo (US 2012/0301723).
Regarding Claim 16, Kondo (US’723) teaches a carbonaceous substrate comprising a first tantalum-carbide-coating-layer, wherein the first tantalum-carbide-coating-layer is disposed on an outer surface of the carbonaceous substrate, and wherein the carbonaceous substrate comprises a plurality of pores comprising a tantalum-carbide-pore-coating, wherein the plurality of pores is not completely filled by the tantalum-carbide-pore-coating (see SEM images in Figs. 10, 17(b), and 22(b) for example, which show a coated surface and coated, but not completely filled, pores) (Abstract; Figs. 10, 17(b), and 22(b); [0141,0234,0254]).
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) 22-30 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kondo (US 2012/0301723).
Regarding Claims 22-23, Kondo (US’723) teaches a gas-phase deposition process for coating a carbonaceous substrate with a tantalum carbide coating, wherein the process comprises a coating step, the coating step comprising: placing a carbonaceous substrate into a reaction chamber (Fig. 1; [0088]); heating the reaction chamber gradually to a temperature of about 1100*C [0091,0121,0127] for a duration of between about 1 h to about 24 h; supplying a process gas to the reaction chamber, wherein the process gas comprises a halide containing species (e.g. TaCl5) [0093], wherein for at least 15min after the start of the process, the process gas comprises less than 4 at. % of carbon and less than 10 vol. % of H2; and supplying a tantalum containing species (e.g. also TaCl5) [0093] to the reaction chamber, or placing a solid comprising tantalum into the reaction chamber, or placing a solid comprising a tantalum halide into the reaction chamber. US’723 fails to teach heating the reaction chamber to a temperature of about 1100*C [0091,0121,0127] for a duration of between about 1 h to about 24 h; supplying a process gas to the reaction chamber. US’723 provides evidence that heating time is a result-effective variable, known in the prior art to affect the fit of coating to irregularities of the carbon substrate surface, the adhesion, and the number of grain boundaries, due to improvement in crystallinity [0019]. Therefore, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’723 to heat gradually within the recited time through routine optimization.
Regarding the recited concentrations of carbon and hydrogen for at least 15 minutes after the start of the process, US’723 teaches the introduction of either hydrogen or a hydrocarbon gas and also TaCl5 as reactant gasses in a reaction, represented by Formula (1), and also hydrogen and/ or argon gas as carrier gasses [0093-0095]. US’723 also teaches degassing after introducing the carbon substrate [0091] – the start of introducing the carbon substrate can be considered a start of the process. The hydrogen can include a mix of hydrogen and argon [0094]. The carbon source is preferably 2 to 25 times larger than the tantalum source [0094]. US’723 fails to teach the recited concentrations of carbon or hydrogen gas within the recited range of time. However, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’723 with process gas within the recited ranges of concentration within the recited time through routine optimization of a degassing procedure, for example. Additionally, generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
Regarding Claim 24, US’723 teaches that the coating process can be repeated to change a coating thickness [0034-0035], and each coating step is necessarily performed at a first and second temperature, whether the first and second temperature are the same temperature or a different temperature.
Regarding Claim 25, US’723 teaches a first temperature of about 1100 C [0091]. US’723 fails to teach 1150 C. 1150 C is obviously close to 1100 C. Additionally, US’723 provides evidence that temperature is a result-effective variable, known in the art to affect crystallinity, adhesion, strength, and fit of coating to irregularities on the carbon substrate [0007,0033,0051,0101-0102]. It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the process of US’723 to a temperature within the recited range through routine optimization. Also, generally, differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical.
Regarding Claim 26, US’723 teaches multiple cycles, and a “first coating step” can be considered either a subset of steps of coating in US’723 (e.g. heating, introduction of reactants, and deposition) or a repetition of the entire obvious process of US’723 on different substrates, since Claim 22 defines “coating step” as including a step of “placing a carbonaceous substrate into a reaction chamber.”
Regarding Claims 27-28, US’723 teaches a first coating step of degassing, which necessarily occurs at a first temperature (Claim 24 does not specify any steps required of a first or second coating step). It would have been obvious for the process gas in a first coating step (e.g. during degassing or during a step of only introducing methane, or to comprise less than 5 at. % of carbon and/ or less than 4 vol. % hydrogen (e.g. 0%), relative to the total number atoms in the process gas (which may also be at 0% concentration), because one wouldn’t expect carbon gas or hydrogen gas during a coating step, comprising degassing, and US’723 suggests that molecular hydrogen gas is optional.
Regarding Claim 29, US’723 teaches a pressure of 0.013 bar (10 Torr) in the reaction chamber [0093].
Regarding Claim 30, US’723 teaches a component, comprising a carbonaceous substrate and a tantalum carbide coating, of an epitaxial growth apparatus [0189].
Allowable Subject Matter
Claims 17-20 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding Claims 17-20, US’723 teaches that the coating can enter pores to provide an anchoring effect. The average radius of pores of the carbon substrate is preferably between 0.1-5 micron (i.e. average diameter from 0.2-10 micron). The size of crystal grains can be controlled with temperature, and the larger the grains, the fewer the number of grain boundaries [0065]. The XRD figures do not provide high enough resolution and neither the figures nor the text provides sufficient information to be considered to teach or make obvious the limitations of Claims 17-20, including coating thickness in the pores, ratio of surface coating to pore coating, fraction of pores filled, total pore volume.
Regarding Claim 21, US’723 fails to teach the properties recited in Claim 21.
Conclusion
No claim is allowed.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Fujiwara et al. (US 2012/0040172) (embedding tantalum carbide in a porous carbon substrate)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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