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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 12, 2025 has been entered.
Status of the Claims
By amendment filed September 05, 2025, claims 1 and 33 have been amended. Claims 23 through 29 were previously withdrawn. Claims 1 through 10, 12 and 23 through 34 are currently pending.
Response to Arguments
Applicant's arguments filed November 12, 2025 have been fully considered but they are not fully persuasive. As was discussed in the previous Advisory Action, the amendment to the claims have overcome the 112(a) and 112(b) rejections of the claims but are not persuasive over the 103 rejections.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant’s argument that the teachings of Rodriguez and Korbin, which are both directed to vapor deposition, would render the multicapillary device of Belov ‘838 inoperable are not persuasive because applicant has not provided any objective evidence to support this conclusion. Arguments presented by the applicant cannot take the place of evidence in the record. In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965) and In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984). See MPEP section 716.01(c).II. Nowhere within Belov ‘838 is there a teaching or a suggestion that forming the stationary phase coating by vapor deposition would render the device inoperable.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Rodriguez teaches that the taught vapor deposition process was a simple, inexpensive and reliable process for depositing a barrier coating on the interior or containers (Page 2 Paragraph 0018). Furthermore, as was discussed in the previous Office Actions and again in this Office Action, Rodriguez formed the same coating as taught by Belov ‘838. Therefore, there is sufficient motivation to use the process of Rodriguez to form the coatings of Belov ‘838 and a reasonable expectation of success in the combination.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Applicant’s arguments with respect to the David reference 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. As will be discussed in further detail within this Office Action, Weikart (U.S. Patent Publication No. 2015/0297800) teaches a method for depositing a siloxane barrier on the interior walls of a lumen by vapor deposition using an organosilicon monomer precursor and an oxidizing gas which included water.
Claim Rejections - 35 USC § 112
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 12 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 12 fails to further limit parent claim 1 because parent claim 1 requires the formation of oxide coatings while claim 12 discloses that the coating can include non-oxide coatings. 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.
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.
Claims 1, 2, 4-10, 12 and 30-32 are rejected under 35 U.S.C. 103 as being unpatentable over Belov ‘838 (U.S. Patent Publication No. 2011/0263838) in view of Rodriguez San Juan et al (U.S. Patent Publication No. 2011/0186537) and Kobrin et al (U.S. Patent # 7,879,396) and Weikart et al (U.S. Patent Publication No. 2015/0297800).
In the case of claim 1, Belov ‘838 teaches a multicapillary device used in liquid chromatography comprising a plurality of tubes having cavities/lumens coated with a stationary phase (Abstract, Page 2 Paragraph 0036 and Page 10 Paragraph 0103). Belov ‘838 further teaches that the stationary phase/coating was inert to analytes (Page 2 Paragraph 0036 and Page 3 Paragraph 0044) and that the device was made from metal (Page 4 Paragraph 0049).
Belov ‘838 further teaches that the lumen/tubes had a diameter of about 0.1 to about 200 micrometers, which was within the claimed range of less than 3 mm, and a length of about 1 to about 250 mm (Page 4 Paragraph 0050), which overlapped with the claimed range of greater than 20 mm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See section 2144.05.I of the MPEP.
Belov ‘838 does not teach that the lumen of the component/device was coated by the vapor phase process required by the claims. However, Belov ‘838 teaches that the stationary phase/coating was formed by cross-linked/polymerized polysiloxanes and by treating the inner surfaces of the capillaries with organo-silicone compounds (Page 3 Paragraph 0042-0043).
Rodriguez teaches a method of making a vapor coated article by chemical vapor deposition comprising pyrolyzing/polymerizing an organosilicon monomer gas/precursor on an interior surface/lumen of an article in the form of a container to deposit a barrier and/or lubricant material/coating wherein the method comprised introducing a gas phase material/monomer source into the interior of the article and removing any excess gas after deposition (Abstract, Pages 1-3 Paragraphs 003 and 0023 and Page 5 Paragraph 0058-0059). Furthermore, Rodriguez teaches that the container/component being coated in the taught process were formed from metal (Page 5 Paragraph 0052) and included syringes, liquid dispensing devices, liquid metering devices and tubing (Page 4 Paragraph 0051).
Based on the teachings of Rodriguez, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the coating/stationary phase on the inner surface of the lumen/tube of Belov ‘838 by the vapor phase process of Rodriguez because Rodriguez taught a deposition process which deposited a coating of organo-silicone material on the inner surface of tubes by polymerization and therefore one of ordinary skill would have had a reasonable expectation of success in the combination.
Though Belov ‘838 in view of Rodriguez teach having performed a vapor phase process/chemical vapor deposition on the interior surface of the component neither reference teaches having repeated one or more steps of the vapor phase process to arrive at a desired film thickness and/or composition. However, Belov ‘838 teaches having tailored the thickness of the stationary phase/coating to the diameter of the lumen/capillaries and having deposited greater amounts of stationary/coating material on wider capillary tubes (Page 2 Paragraphs 0032-0035).
Kobrin teaches a vapor deposition process for coating the interior surface of a fluidic component (Abstract) wherein it was known to increase the thickness of the coating by repeating the deposition process (Column 6 Lines 62-67 and Column 9 Lines 3-11).
Based on the teachings of Kobrin, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have repeated the vapor phase process of Belov ‘838 in view of Rodriguez in order to increase the thickness of the deposited coating to a desired thickness.
None of the references teach that a precursor to produce oxides was provided in the vapor phase material. However, Belov ‘838 teaches having formed coating comprising oxides such as polysiloxanes (Page 3 Paragraphs 0042-0044). Furthermore, Rodriguez uses organosilicon monomer in the vapor deposition process (Page 5 Paragraph 0061).
Weikart teaches a method for forming a siloxane composite barrier coating on an interior surface of a lumen by vapor deposition (Abstract, Page 2 Paragraph 0019 and Page 7 Paragraph 0091) wherein the deposition process used an organosilicon monomer and an oxidizing gas including water (Page 7 Paragraphs 0098-0100).
Based on the teachings of Weikart, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have included an oxidizing gas/precursor such as water to the vapor phase material of Belov ‘838 in view of Rodriguez and Kobrin to assist in the oxidation of the organosilicon monomer/precursor and deposit an oxide coating.
As for claim 2, as was discussed previously, the precursor for producing an oxide was water.
As for claim 4, Belov ‘838 does not specifically teach that the thickness of the coating/stationary phase was from about 10 nm to about 5 micrometers. However, Belov ‘838 teaches that the thickness of each coating was tailored based on the diameter of the lumen/capillary tubes in order to optimize efficiency of the tubes (Page 2 Paragraphs 0032-0035). Furthermore, section 2144.05.II.A of the MPEP states, “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. ‘[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.’ In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)”
Therefore, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have determined optimal thicknesses for the coatings/stationary phases Belov ‘838 in view of Rodriguez and Kobrin and Weikart through routine experimentation in order to optimize the efficiency of each lumen/tube of the device.
Furthermore, Rodriguez teaches that the coating had a thickness in the range of 1 nm to about 100 microns (Page 8 Bottom of Paragraph 0084), which overlapped with the claimed range and as was discussed previously overlapping ranges are prima facie obvious.
As for claim 5, the coating of Belov ‘838 in view of Rodriguez and Korbin and Weikart would have had to be one or more or monocrystalline, polycrystalline, amorphous or epitaxial.
As for claims 6, 12 and 30, the coatings/stationary phases of Belov ‘838 were derived from organosilicone compounds and formed a silicon-based polymer (Page 3 Paragraphs 0042-0043) and therefore the coating of Belov ‘838 in view of Rodriguez and Korbin and Weikart would have comprised SiC.
As for claims 7-9, as was discussed previously, the vapor phase process of Rodriguez was a chemical vapor deposition process and Rodriguez further teaches that the deposition was conducted at sub-atmospheric/low pressures (Page 9 Paragraph 0087).
As for claim 10, Rodriguez teaches that the precursor as an organosilicon precursor (Page 5 Paragraphs 0059-0061) and therefore a Si-based precursor.
As for claims 31 and 32, as was discussed previously, the inner diameter of the lumen/tube of Belov ‘838 was in the range of about 0.1 to about 200 micrometers, which overlapped with the claimed ranges of less than 100 and less than 10 micrometers and as was discussed previously overlapping ranges are prima facie obvious.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Belov ‘838 in view of Rodriguez San Juan et al and Kobrin et al and Weikart et al as applied to claim 1 above, and further in view of Belov ‘097 (U.S. Patent # 7,964,097).
The teachings of Belov ‘838 in view or Rodriguez and Korbin and Weikart as they apply to claim 1 have been discussed previously and are incorporated herein.
In the case of claim 3, Belov ‘838 does not specifically teach that the coating comprised a plurality of layers each comprising a different material. However, Rodriguez discloses that the taught vapor deposition process was capable of depositing a multilayer of different materials (Page 6 Paragraph 0069) and Belov ‘838 teaches that the stationary phase was formed from materials such as organo-silicones and polymerizable compounds such as butadiene (Page 3 Paragraph 0042-0043).
Belov ‘097 teaches a multicapillary column used in liquid chromatography and sample preparation comprising an insoluble stationary phase deposited on the inner surface of the capillaries (Abstract). Belov ‘097 teaches that the insoluble stationary phase was formed by depositing multiple layers of different materials including an organo-silicon compound and polybutadiene (Column 4 Lines 30-60).
Based on the teachings of Belov ‘097, at the time the present invention was effectively filed it would have been obvious to one of ordinary skill in the art to have formed the coating of Belov ‘838 in view of Rodriguez and Kobrin and Weikart to have a plurality of layers each comprising a different material in the form of a layer of organo-silicon and a layer of polybutadiene because this was a known insoluble stationary phase in the art for the inner surfaces of capillaries of a liquid chromatography component.
Allowable Subject Matter
Claims 33 and 34 are 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:
As was discussed previously, though Belov ‘838 teaches having formed oxides including silicon oxide comprising coatings Belov ‘838 does not teach having formed an oxynitride coating. Therefore, none of the prior art of record fairly teaches of suggests having further included a precursor to produce nitrides in the vapor phase material.
Conclusion
Claims 1 through 10, 12 and 30 through 32 have been rejected and claims 33 and 34 have been objected. Claims 23 through 29 have been withdrawn from consideration. No claims were allowed.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL P WIECZOREK whose telephone number is (571)270-5341. The examiner can normally be reached Monday - Friday, 6:00 AM - 3:30 PM.
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/MICHAEL P WIECZOREK/Primary Examiner, Art Unit 1712