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, 7-9, 12, 15-17, 22, 24 and 30-37 are pending in the application. Claims 2-3, 6, 10-11, 13-14, 18-21, 23, 25-29 and 38-39 have been cancelled.
The amendments to claims 1, 22 and 24, filed on 12/10/2025, 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, 7-9, 12, 15-17, 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 limitations “the substrate being nonporous metal sheeting or nonporous metallic sheeting” and “wherein the substrate is capable of having any at least partially flexible structure capable of being furled.” However, the specification provides metal sheeting structures and non-porous structures as specific examples of any at least partially flexible structure capable of being furled (see [0014]). Therefore, the specification does not provide support for the substrate being nonporous metal sheeting or nonporous metallic sheeting while also being capable of having any at least partially flexible structure capable of being furled. Clams 4-5, 7-9, 12, 15-17 and 30-33 are rejected because they depend from claim 1.
Claim 22 recites the limitations “the substrate being nonporous metal sheeting or nonporous metallic sheeting” and “the substrate being capable of having any at least partially flexible structure capable of being furled.” However, the specification provides metal sheeting structures and non-porous structures as specific examples of any at least partially flexible structure capable of being furled (see [0014]). Therefore, the specification does not provide support for the substrate being nonporous metal sheeting or nonporous metallic sheeting while also being capable of having any at least partially flexible structure capable of being furled. Claims 24 and 34-37 are rejected because they depend from claim 22.
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 1, 4-5, 7-9, 12, 15-17, 22, 24 and 30-37 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 1 recites the limitation “temperatures of the thermal chemical vapor deposition process.” It is unclear what the upper and lower limits of the claimed temperature range are. Clams 4-5, 7-9, 12, 15-17 and 30-33 are rejected because they depend from claim 1.
Claim 1 recites the limitations “the substrate being nonporous metal sheeting or nonporous metallic sheeting” and “wherein the substrate is capable of having any at least partially flexible structure capable of being furled.” It is unclear what it means for a substrate that is limited to being nonporous metal sheeting or nonporous metallic sheeting to be capable of having any at least partially flexible structure capable of being furled. For the purpose of examination, both limitations are interpreted as being met by the substrate being nonporous metal sheeting or nonporous metallic sheeting. Clams 4-5, 7-9, 12, 15-17 and 30-33 are rejected because they depend from claim 1.
Claim 9 recites the limitation “the inner surface has a first dimension of greater than 5 centimeters and a second substantially perpendicular dimension of greater than 100 centimeters.” However, claim 1 limits the substrate to having lengths of from at least 3 m to less than 1,500 m. It is unclear if (or how) the inner surface of the substrate may have two substantially perpendicular dimensions that are both lower than 3 m.
Claim 17 recites the limitation “wherein the substrate is a perforated foil, a lattice structure, or a combination thereof.” It is unclear what it means for the substrate to be nonporous metal sheeting or nonporous metallic sheeting while also being a perforated foil, a lattice structure, or a combination thereof.
Claim 22 recites the limitation “temperatures of the thermal chemical vapor deposition process.” It is unclear what the upper and lower limits of the claimed temperature range are. Claims 24 and 34-37 are rejected because they depend from claim 22.
Claim 22 recites the limitations “the substrate being nonporous metal sheeting or nonporous metallic sheeting” and “the substrate being capable of having any at least partially flexible structure capable of being furled.” It is unclear what it means for a substrate that is limited to being nonporous metal sheeting or nonporous metallic sheeting to be capable of having any at least partially flexible structure capable of being furled. For the purpose of examination, both limitations are interpreted as being met by the substrate being nonporous metal sheeting or nonporous metallic sheeting. 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, 9, 12, 15-17, 22 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).
Regarding claims 1, 7, 9, 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 (nonporous metal sheeting or nonporous 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 that the insert is capable of withstanding temperatures of the thermal chemical vapor deposition process.
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).
Therefore, 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 in order to use the liner in a variety of coating processes, including atomic layer deposition, molecular layer deposition, or a combination thereof (col. 7, lines 34-42).
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 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 (Ferretti: 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 provided the substrate 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, may be made of the same metals, and may have the same dimensions as those claimed. Therefore, the substrate would be capable of having any at least partially flexible structure capable of being furled, and would be resistant to thermal conditions of greater than 300° C, as claimed.
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 claim 17, Dodge does not explicitly disclose wherein the substrate is a perforated foil, a lattice structure, or a combination thereof.
However, Dodge teaches that suitable substrates may be formed of (rigid or flexible) metal, metal foil, metallized (co)polymeric films, or ceramic sheet material (col. 10 lines 12-16). Substrates may also take the form of a cloth backing, e.g. a woven fabric formed of threads of synthetic fibers or blends of these (same paragraph).
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 metal substrate in the form of a woven fabric in order to adjust the rigidity (or flexibility) of the substrate while maintaining other advantageous properties provided by metals.
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 30-37, Dodge remains as applied above to claims 1 and 22. The examiner 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.
Claims 4-5 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), as applied to claim 1 above, further in view of Pischow et al. (US 2011/0097551 A1).
Regarding claims 4-5, Dodge in view of Ferretti remains as applied above to claim 1, teaching the claimed limitations.
In addition, or in the alternative, Pischow teaches a PECVD enhanced chemical vapor deposition process, wherein in one preferred configuration depicted in FIG. 1a, a mesh or a perforated plate 6 is located between substrates and the reaction region (This mesh or perforated plate is referred as "patterning device") ([0024]-[0025]). The patterning device 6 may be made out of metal foil, textile web, glass, ceramics or plastic material ([0024]).
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) of Dodge in view of Ferretti in the form of a mesh in order to obtain a patterned coating on the substrate, particularly when using coating processes such as chemical vapor deposition processes, as suggested by Pischow (Abstract and [0024]).
Claims 8 and 24 is 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), as applied to claims 1 and 22 above, further in view of Ogawa et al. (US 2011/0223380 A1).
Regarding claims 8 and 24, Dodge in view of Ferretti remains as applied above, teaching the claimed limitations.
In the alternative, as applied above, Ferretti teaches that typically, the width of the metal substrate 3 varies from 500 mm to 2000 mm, preferably from 500 mm to 1500 mm (a first dimension of greater than 1 meter) (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).
With respect to the claimed limitation “a second substantially perpendicular dimension of greater than 100 meters,” Ogawa et al. (“Ogawa”) teaches that it is preferable that a pressure-sensitive adhesive tape 10 has a length of 50 m or longer in the longitudinal direction, more preferable that the tape 10 has a length of 100 m or longer, still more preferable that the tape 10 has a length of 300 m or longer, and most preferable that the tape 10 has a length of 500 m or longer ([0119]).
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 tapes of Dodge in view of Ferretti with lengths of 300 m or more in order to obtain pressure-sensitive adhesive tapes having the most preferable lengths, as suggested by Ogawa ([0119]).
Claims 22 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), as applied above to claim 1, further in view of Xiao et al. (US 2014/0158580 A1).
Regarding claim 22, Dodge in view of Ferretti remains as applied above, teaching the claimed limitations.
However, in the event that Dodge in view of Ferretti is found not to teach wherein the coating has been applied by positioning the spooled arrangement in a thermal chemical vapor deposition chamber, Xiao is applied as follows:
Xiao further 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 but are not limited to, silicon, SiO2, Si3N4, OSG, FSG, silicon carbide, hydrogenated silicon carbide, silicon nitride, hydrogenated silicon nitride, silicon carbonitride, hydrogenated silicon carbonitride, boronitride, antireflective coatings, photoresists, organic polymers, porous organic and inorganic materials, 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 ([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 applied the coating of Dodge in view of Ferretti by positioning the spooled arrangement in a chemical vapor deposition chamber in order to deposit silicon-containing films for applications including, but not limited to, coatings on a supporting metal material or substrate, thin film transistors (TFT) or liquid crystal displays (LCD), as taught by Xiao ([0090]; also [0002], [0014], [0069]-[0071] and [0089]).
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]).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 4-5, 7-9, 12, 15-17, 22, 24 and 30-37 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Worrell whose telephone number is (571)270-7728. The examiner can normally be reached on Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marla McConnell can be reached on 571-270-7692. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kevin Worrell/Examiner, Art Unit 1789
/MARLA D MCCONNELL/Supervisory Patent Examiner, Art Unit 1789
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