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 .
Disposition of Claims
Claims 1, 4-5, 7-8, 12, 15-16, 22, 24 and 30-37 are pending in the application. Claims 2-3, 6, 9-11, 13-14, 17-21, 23, 25-29 and 38-39 have been cancelled.
The amendments to claims 1 and 22, filed on 8/4/2026, have been entered in the above-identified application.
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.
Claims 1, 4-5, 7-8, 12, 15-16, 22, 24 and 30-37 are 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.
Claim 1 recites the limitation “the thermal chemical vapor deposition process includes a temperature of between 300 degrees C and 700 degrees C.” However, the specification only provides support for temperatures greater than 500 ° C. (see [0012]). Therefore, the specification does not provide support for the claimed limitation. Clams 4-5, 7-8, 12, 15-16 and 30-33 are rejected because they depend from claim 1.
Claim 22 recites the limitation “the thermal chemical vapor deposition process includes a temperature of between 300 degrees C and 700 degrees C.” However, the specification only provides support for temperatures greater than 500 ° C. (see [0012]). Therefore, the specification does not provide support for the claimed limitation. Claims 24 and 34-37 are rejected because they depend from claim 22.
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 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, 4-5, 7-8, 12, 15-16, 22, 24 and 30-37 are rejected under 35 U.S.C. 103 as being unpatentable over Dodge et al. (US Patent No. 9,243,322 B2) in view of Ferretti (IT MI20100235 A1, see attachment), further in view of Xiao et al. (US 2014/0158580 A1).
Regarding claims 1, 7, 12 and 15-16, Dodge teaches methods for applying a coating to a substrate in rolled form (a spooled arrangement as claimed), the substrate including a first edge face and a second edge face opposite the first edge face (e.g., see 30a and 30b in Figure 2B), the substrate further having a first major surface and a second major surface opposite the first major surface (e.g., 28a and 28b) extending between the first edge face and the second edge face. (See Abstract, col. 5 lines 45-60, and Figs. 2A and 2B). In exemplary embodiments using at least one liner (27a and/or 27b) (an insert), the coating 25 may be applied to only a portion of at least one or both of the first major surface 28a or the second major surface 28b, using a self-limiting surface reaction (col. 6, lines 44-49). Alternatively, a first liner 27a and/or a second liner 27b may be selected which extends across only a portion of the first major surface 28a and/or second major surface (col. 6, lines 49-54). Suitable substrates may be formed of (rigid or flexible) metal, metal foil, metallized (co)polymeric films, or ceramic sheet material (metal sheeting or metallic sheeting as claimed) (col. 10, lines 13-17). (Also see also see col. 14, lines 22-31, and col. 14, lines 43-54).
Claim 1 includes product-by process limitations. The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
With regard to the claimed limitation, “a silicon-oxygen-carbon-containing coating,” Dodge teaches that in exemplary methods of the disclosure, the coating can be either polymeric (organic) or ceramic (inorganic) (col. 14 lines 60-63). An inorganic coating can provide a chemistry for further surface modification, such as silane treatment (or silanation) (a silicon-oxygen-carbon-containing coating as claimed). (See col. 15 lines 16-30). Advantageously, a silanated surface can allow for chemical bonding between the substrate and a subsequently applied adhesive (col. 15, lines 18-20). For instance, Dodge teaches that further options and advantages of silane treatment are described in U.S. Patent Application Publication No. 2012/0070794 (Tzou, et al.) (which is incorporated by reference, see col. 15 lines 16-30). With regard to silane treatment, US 2012/0070794 teaches functionalization using pH-modified coupling agent solutions, wherein preferably the coupling agent is an organofunctional silane ([0021]). US 2012/0070794 teaches that in exemplary embodiments, the coupling agent solution is formed by hydrolyzing a coupling agent in acidified or basic water to form silanols, wherein exemplary organofunctional silanes useable for this purpose include vinyl tri-methoxysilane, glycidoxypropyl trimethoxysilane, 3-methacryloxypropyltrimethoxysilane and tetramethyl divinyl silazane ([0022]).
Dodge does not explicitly disclose wherein the substrate has a thickness of at least 0.45 mm, is nonporous, is resistant to thermal conditions of greater than 300° C, or has lengths from at least 3 m to less than 1,500 m.
However, Ferretti teaches that coated metal tapes or sheets are used as starting material for the preparation of a great variety of articles, which find application in numerous technological sectors (for example, civil and industrial construction, household appliances, packaging for food and beverage products, means of transport , etc.) (page 1, lines 9-12). Ferretti teaches a coated metal substrate comprising a multilayer coating supported on a metal substrate in the form of a tape or sheet, said multilayer coating comprising: i) an adhesive layer comprising a polymer film modified with an adhesion promoter, said adhesive layer being in contact with said metal substrate, ii) a coating layer comprising a first polyethylene terephthalate film coupled to a lower polymeric film, said coating layer being above said adhesive layer (page 2, lines 28-35). The metallic substrate 3 can have a thickness ranging from 0.15 mm to 1.5 mm, preferably from 0.2 mm to 0.8 mm (page 4, lines 1-4). Typically, the width of the metal substrate 3 varies from 500 mm to 2000 mm, preferably from 500 mm to 1500 mm (page 4, lines 1-4). The length of the metallic substrate 3 varies according to the desired format for the coated final product (sheet or tape) (page 4, lines 1-4). Preferably, the metallic substrate 3 is a substrate obtained with one of the following types of material: aluminum or its alloys, carbon steel, galvanized steel, stainless steel, steel coated with zinc-aluminum alloys, chromed band, tinplate and black band (page 3, lines 35-37). Ferretti also teaches that Corona treatment is a surface treatment widely used in the sector of processing non-porous materials (for example, polymeric films, paper and metal surfaces) to improve the wettability properties of a surface, thus increasing the adhesion between the treated substrate and the coating film (ink, adhesive, paint, etc.) (page 6, lines 10-13). In addition, Dodge teaches that the substrates may be surface treated (e.g., corona or flame treatment) or coated with, e.g., a primer or print receptive layer (col. 10, lines 23-25).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the substrate with a thickness ranging from 0.15 mm to 1.5 mm, a width of from 500 mm to 2000 mm, and a length greater than the width (i.e., greater than 2000 mm) depending on the desired format for the coated final product, such as for a sheet or a tape and as starting material for the preparation of a great variety of articles that find application in numerous technological sectors (Ferretti: page 1, lines 9-12, and page 4, lines 1-4). It would also have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have expected that the substrate would be in a nonporous metal form or to have provided it in a nonporous metal form, made of metals such as aluminum or its alloys, carbon steel, galvanized steel, stainless steel, steel coated with zinc-aluminum alloys, chromed band, tinplate or black band, because Dodge teaches that the substrate may be corona treated and Ferretti teaches that corona treatment is widely used in the processing of nonporous metals (Dodge: col. 10, lines 23-25; Ferretti: page 6, lines 10-13).
The examiner notes that the substrate of Dodge in view of Ferretti is present in a rolled form and may be made of the same metal as those claimed. Therefore, the substrate would be resistant to thermal conditions of greater than 300° C, as claimed.
Dodge in view of Ferretti does not explicitly disclose that the insert is capable of withstanding temperatures of the thermal chemical vapor deposition process, wherein the thermal chemical vapor deposition process includes a temperature of between 300 degrees C and 700 degrees C.
However, Dodge teaches that various coating methods may be used for applying the coating 25 to the rolled substrate 30 (or 30' or 30") (col. 7, lines 34-42). In some exemplary embodiments, applying the coating 25 to the substrate 30 (or 30' or 30") is carried out using atomic layer deposition (a chemical vapor deposition process), molecular layer deposition, or a combination thereof (col. 7, lines 34-42).
In addition, Xiao teaches deposition processes that include, but are not limited to, chemical vapor deposition (CVD), plasma enhanced chemical vapor deposition (PECVD), cyclic chemical vapor deposition (CCVD), flowable chemical vapor deposition (FCVD), atomic layer deposition (ALD), or plasma enhanced atomic layer deposition (PEALD) processes ([0014]). Xiao also teaches alkoxysilylamine compounds, more specifically, alkoxysilylamine compounds such as tris(alkoxysilyI)amine or bis(alkoxysily)amine compounds, and the use of these compounds for the deposition of silicon and silicon-containing films such as silicon oxide, silicon oxynitride, silicon carboxide, silicon and silicon carboxynitride films ([0002]). Examples of suitable substrates include metals such as copper and aluminum, and diffusion barrier layers such as but not limited to TiN, Ti(C)N, TaN, Ta(C)N, Ta, W, or WN (among others) ([0089]). In an embodiment, the method comprises: (a) placing one or more substrates into a reactor which is heated to a temperature ranging from ambient temperature to about 700° C. and maintained at a pressure of 1 Torr or less ([0069]-[0070]). (Also see [0090]; also [0002], [0014], [0069]-[0071] and [0089]).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have made the liner (the insert) capable of withstanding temperatures of the chemical vapor deposition process, including temperatures ranging from ambient temperature to about 700° C., in order to use the liner in a variety of coating processes, including atomic layer deposition, molecular layer deposition, or a combination thereof (Dodge: col. 7, lines 34-42; and Xiao: [0069]-[0070]).
Regarding claims 4-5, Dodge does not explicitly disclose wherein the insert is a porous structure or wherein the insert is a lattice structure.
However, Dodge teaches that, in exemplary embodiments using at least one liner (27a and/or 27b) (an insert), the coating 25 may be applied to only a portion of at least one or both of the first major surface 28a or the second major surface 28b, using a self-limiting surface reaction (col. 6, lines 44-49). Alternatively, a first liner 27a and/or a second liner 27b may be selected which extends across only a portion of the first major surface 28a and/or second major surface (col. 6, lines 49-54). Dodge further teaches that methods include applying a coating to at least one edge face and optionally at least a portion of one or both major surfaces of the substrate in rolled form (Abstract; also see col. 14, lines 22-31, and col. 14, lines 43-54).
It would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the liner (the insert) with a porous and/or lattice structure in order to selectively apply the coating to only portions of the substrate in a desired pattern.
Regarding claims 8 and 24, modified Dodge does not explicitly disclose a second substantially perpendicular dimension of greater than 100 meters. However, it would have been obvious to one having ordinary skill in the art prior to the effective filing date of the invention to have provided the substrate with a length greater than the width (i.e., greater than 2000 mm) and in a variety of lengths depending on the desired format for the coated final product, such as for a sheet or a tape, particularly as it is known to provide adhesive tapes in a variety of lengths (Ferretti: page 4, lines 1-4).
Regarding claim 22, Dodge in view of Ferretti is applied in the same manner applied above to claim 1. Claim 22 includes product-by-process limitations. Dodge teaches methods for applying a coating to a substrate in rolled form (Abstract and FIG. 2B). Dodge further teaches that various coating methods may be used for applying the coating 25 to the rolled substrate 30 (or 30' or 30") (col. 7 lines 34-42). In some exemplary embodiments, applying the coating 25 to the substrate 30 (or 30' or 30") is carried out using atomic layer deposition, molecular layer deposition, or a combination thereof (col. 7 lines 34-42). The examiner notes that atomic layer deposition (ALD) is a form of chemical vapor deposition. The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
Regarding claims 30 and 34, both claims recite the limitation “wherein the coating has been applied by soaking the substrate in the presence of a precursor at a temperature above a thermal decomposition temperature of the precursor,” which the examiner notes includes product-by-process limitations. Dodge teaches that methods include applying a coating to at least one edge face and optionally at least a portion of one or both major surfaces of the substrate in rolled form (Abstract and col. 14 lines 22-31). (Also see [0034] and [0079] of Xiao). With regard to temperature, Xiao teaches, for instance, that in a further embodiment of the method, the silicon-containing film is deposited using a thermal CVD process ([0069]). Xiao also teaches that the term "chemical vapor deposition processes" refers to any process wherein a substrate is exposed to one or more volatile precursors, which react and/or decompose on the substrate surface to produce the desired deposition ([0031]; also see [0014], [0030] and [0069]-[0070]). Thus, the examiner notes that deposition would occur above the decomposition temperature of the precursor. The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
Regarding claims 31-33 and 35-37, Xiao teaches that examples of additional silicon-containing precursors include, but are not limited to (among others) organo-silicon compounds such as trisilylamine (TSA), and organosilanes (e.g., dimethylsilane and trimethylsilane) ([0035]). The examiner also notes that the claimed limitations include product-by process limitations. The product being claimed appears to be the same as or obvious over the prior art product, in which case differences in process are not considered to impart patentability. Thus, the burden is shifted to Applicant to show that any differences in process would result in an unobvious difference between the claimed product and the prior art product.
Response to Arguments
Applicant's arguments filed 8/4/2026 have been fully considered but they are not persuasive.
Applicant contends the following: “First, there is no motivation to combine Dodge and Ferretti. Dodge is directed to methods for applying coatings to substrates in rolled or spooled form, where the substrates are porous or microporous multilayer structures and the coating processes include chemical and/or atomic layer deposition.”
Regarding this contention, Dodge is not limited with respect to the types of articles that formed through the disclose coating process, and Dodge teaches use of liners adjacent to the substrates to control gas exposure and deposition. Dodge teaches articles that includes tapes. Ferretti teaches articles in tape form that are coated with adhesive layers, and Ferretti teaches that coated metal tapes or sheets are used as starting material for the preparation of a great variety of articles, which find application in numerous technological sectors (for example, civil and industrial construction, household appliances, packaging for food and beverage products, means of transport , etc.) (page 1, lines 9-12). Therefore, a person having ordinary skill in the art would reasonably have been motivated to provide the substrates in the dimensions taught by Ferretti in order to obtain articles in tape form as starting material for the preparation of a great variety of articles that find application in numerous technological sectors, as suggested by Ferretti (page 1, lines 9-12, and page 4, lines 1-4). In addition, the examiner notes that both Dodge and Ferretti teach corona treatment, and Dodge reasonably applies to the formation of laminates.
Applicant contends the following: Second, Dodge teaches away from and is incompatible with the claimed invention. Dodge's coating mechanism depends on the substrate's own porosity (or on masking liners that inhibit, rather than enable, gas flow) to control which surfaces receive coating.”
Regarding this contention, Dodge teaches that, in exemplary embodiments using at least one liner (27a and/or 27b) (an insert), the coating 25 may be applied to only a portion of at least one or both of the first major surface 28a or the second major surface 28b, using a self-limiting surface reaction (col. 6, lines 44-49). Alternatively, a first liner 27a and/or a second liner 27b may be selected which extends across only a portion of the first major surface 28a and/or second major surface (col. 6, lines 49-54). Therefore, Dodge relies on the liner for selective coating rather than on porosity of the substrate.
Conclusion
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/Kevin Worrell/Examiner, Art Unit 1789
/JENNIFER A BOYD/Supervisory Patent Examiner, Art Unit 1786
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