DETAILED ACTION
In the amendment filed on July 9, 2026, claims 1 – 20 are pending. Claims 1, 18, 19, 20 have been amended.
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Analysis
Present claim 19 requires a step of “… thermally decomposing a dimethylsilane-and-silane-containing mixture with a ratio of between 1.09: 1 and 6.61: 1 within the enclosed chamber thereby applying carbon and silicon to all exposed surfaces within the enclosed chamber at temperatures of at least 450 degrees Celsius, …” The Examiner notes that support for the amendment appears to be derived from paragraph [0033] of the originally filed specification.
Claim Rejections - 35 USC § 112
The rejections of the claims under 35 USC § 112 in the previous Office Action are withdrawn due to Applicant amendment.
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 15, 18, 19 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.
Regarding claim 18:
Present claim 18 recites “… wherein the aluminum-containing substrate is devoid of thermally catalyzed crystallization of silicon …”. It is unclear whether the condition refers to the method a whole (i.e. refers to a state of the aluminum-containing substrate at the end of the claimed coating process), to an initial provision or step (i.e. refers to a state of the aluminum-containing substrate at an unrecited beginning step or a positioning step), refers to the substrate at an intervening step of the claimed method, or an inherent capability of a substrate.
Regarding claim 19:
Present claim 19 recites “…thermally decomposing a dimethylsilane-and-silane-containing mixture with a ratio of between 1.09: 1 and 6.61: 1 within the enclosed chamber thereby applying carbon and silicon to all exposed surfaces within the enclosed chamber thereby applying …at temperatures of at least 450 degrees Celsius …”. It is unclear what components of such a mixture has a ratio within the claimed range of ratios. For the purposes of art rejections, the Examiner interprets the claim according to any ratio that relates any quantity associated with a dimethylsilane-and-silane-containing mixture.
Additionally, it is unclear whether or not the thermal decomposing step requires that the decomposition occurs at a temperature of at least 450 degrees Celsius, or if the decomposition must occur at more than one temperature, wherein each of the temperatures is at least 450 degrees Celcius
Dependent claims are rejected on the basis of the deficiencies of their parent claims.
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 15 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.
Regarding claim 15:
Present claim 15 requires a molar ratio of dimethylsilane to silane of between 1: 1 and 10: 1. However, in view of the indefiniteness of present-parent claim 19, the parent claim potentially requires a molar ratio of dimethylsilane to silane of between 1.09:1 and 6.61:1, which is a smaller range of ratios. Present claim 15 therefore fails to include all the limitations of the claim upon which it depends.
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 rejection of claim 19 under 35 USC § 103 in the previous Office Action are withdrawn due to Applicant amendment.
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 –14 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Vezza et al. WO 2017/040623 A1 (hereafter “Vezza”) in view of Smith et al. US 2013/0244025 A1 (hereafter “Smith”) and Awad et al. US 2010/0129994 A1 (hereafter “Awad”).
Regarding claim 1, 16, 17:
Vezza is directed to a coated article and the process of forming the coated article by thermal chemical vapor deposition (Abstract). The coated article may comprise a multilayer coating comprising one or more layers with a base layer [first region], interlayers [second region] and a surface layer [third region] in contact with the interlayer ([0018]). Vezza discloses a method comprising: providing a substrate containing aluminum into an enclosed chamber ([0044]; claim 20); providing a silicon-containing precursor into the enclosed chamber and reacting the silicon-containing precursor above its thermal decomposition temperature to produce a coating onto the article (Claim 20; [0030] – [0032], [0034]). The second region may have oxygen at a greater concentration, by weight, than the first region due to an oxidation step ([0039]). The third region may be e.g. amorphous silicon and produced from a precursor of at least silane (claim 6). Vezza discloses that both dimethylsilane and silane1 may be used together as a silicon precursor mixture ([0030]). Vezza discloses that the total coating thickness may be e.g. 800 nm ([0033]).
Vezza does not expressly teach:
that the first region comprises both carbon and silicon, wherein the first region is formed by thermally decomposing dimethylsilane and silane together; and
that the molar ratio of the mixture precursors that result in a dimethylsilane-and-silane containing mixture having molar ratios of dimethylsilane to silane within the claimed ratios.
With respect to the first region comprising both carbon and silicon, wherein the first region is formed by thermally decomposing dimethylsilane and silane together:
Smith is directed to a wear coating that includes an organosilane [silicon and carbon containing] and a method of forming the wear coating (Abstract). Smith discloses that the coated article may be made using CVD of a precursor of dimethylsilane to form a carbosilane, followed by oxidation ([0043], [0059[ – [0061]). The formation of carbosilane provides wear resistance that is further enhanced by oxidation to improve the hardness and/or wear resistance of the carbosilane, while the underlying carbosiloxane has improved adhesion to substrates ([0055], [0061]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method of Vezza by decomposing dimethylsilane and silane followed by oxidation to render a first region with carbon and silicon, and a second region with oxygen at a greater concentration because Smith teaches that the inclusion of dimethylsilane in the silicon precursors to deposit carbosilanes onto the substrate aids in the adhesion of the silicon/carbosilane layer onto substrates and that oxidation to produce the second region aids in the hardness and wear resistance of the overall coating.
With respect to the molar ratio of the mixture precursors results in a dimethylsilane-and-silane containing mixture having molar ratios of dimethylsilane to silane within the claimed ratios:
Awad is directed to a method of forming films on substrates, wherein the films chiefly comprise silicon and carbon, and particularly for passivation properties (Abstract, [0009]). Awad discloses providing for CVD gaseous precursor species including silane (SiH4) and dimethyl silane ([0043] – [0045]); supplying the gaseous precursor to a deposition chamber and reacting the gaseous precursor with an energy source e.g. electrical heating [thermal] to form a coating comprising at least silicon and carbon at a range of stoichiometries ([0056], [0059], [0063]). The silicon:carbon ratio of the resultant film may be tuned as a function of the composition of the gas mixture (i.e. the gases used as precursors and their relative amounts [ratios]) during formation of the silicon-carbide film ([0068]), which in turns affects properties such as passivation, mechanical stress and the like ([0069], [0074]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modifed the method of Vezza in view of Smith by altering the ratio between dimethylsilane to silane within the claimed ratios as a matter of routine experimentation in order to optimize different properties of the resultant film, such as passivation and mechanical stress, as taught by Awad. "[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).
Regarding claims 2 – 12, 20:
In addition to the limitations described above, Vezza discloses that the substrate may be e.g. ferrous-based alloys, nickel-based alloys or aluminum alloys ([0044]). Among substrates, Vezza discloses the same or substantially similar compositions as those described in claim 2 ([0049]); claim 3 ([0050]); claim 4 ([0051]); claim 5 ([0052]); claim 6 ([0057]); claim 7 ([0058]); claim 8 ([0059]); claim 9 ([0060]); claims 10 and 12 ([0061]); claim 11 ([0062]); and claim 20 ([0057]).
Regarding claims 13 – 14:
Vezza discloses that the total coating thickness may be e.g. 800 nm ([0033]).
Claim(s) 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vezza in view of Smith and Awad as applied to claims 1 –15 and 20 above, and additionally evidenced by Bellanger et al. “Polycrystalline silicon films obtained by crystallization of amorphous silicon on aluminium based substrates for photovoltaic applications”. Thin Solid Films 636 (2017) 150–157 (hereinafter “Ballanger”).
Regarding claim 18:
Vezza in view of Smith and Awad teaches the claimed invention above but fails to teach that the aluminum-containing substrate is devoid of thermally catalyzed crystallization of silicon. It is reasonable to presume that Vezza’s disclosed aluminum-containing substrate’s (at least its state before the thermal decomposition of the recited dimethylsilane and silane-containing mixture) lack of thermally catalyzed crystallization of silicon is inherent to Vezza in view of Smith and Awad. Support for said presumption is found in the use of like materials and like processes (i.e. the use of substantially the same alloys, including before processing) as well as – in the interpretation where the limitation refers to the state of the aluminum-containing substrate at the end of the claimed process – Vezza’s disclosure that their process is operated at a temperature of e.g. 380°C to 450°C . The Examiner notes that Applicant’s examples form silicon films at an example temperature of 450°C
Additionally Ballanger discloses that catalytic crystallization of silicon occurs when amorphous silicon films are present on aluminum or silicon-rich-aluminum substrates and such substrates are exposed to an annealing temperatures of e.g. 490°C, 520°C or 550°C (page 151 1st column 2nd paragraph, page 151 2nd column 1st paragraph and 2nd paragraph; Fig. 1) and operates based on diffusion of silicon into aluminum and operates over a relatively long time scale of minutes and as a function of temperature (Fig. 8; page 154 2nd column).
In the interpretation where the property is referring to the state of the aluminum-containing substrate, it would then be necessarily true that there is no thermally catalyzed crystallization of silicon in an aluminum-containing substrate at least during the provision of such a substrate in the “provisioning … step” as taught by Vezza. In the interpretation where the property is referring to the state of such a substrate during the recited coated process or the end of it, a preponderance of evidence exists that indicate that no significant crystallization occurs at the temperatures disclosed by Vezza; or alternatively one of ordinary skill in the art would have a reasonable expectation that there is no significant crystallization occurs at the temperatures disclosed by Vezza and reaction conditions suggested by the modification of Vezza by Smith and Awad.
The burden is upon the Applicant to prove otherwise. In re Fitzgerald 205 USPQ 594. In addition, the presently claimed properties would obviously have been present once the Vezza in view of Smith and Awad product is provided. Note In re Best, 195 USPQ at 433, footnote 4 (CCPA 1977).
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached on (571) 272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
1 For the sake of clarity, the Examiner interprets the term “silane” to refer to the specific chemical compound, SiH4, as opposed to the broad family of silanes.
Prosecution Insights