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 .
DETAILED ACTION
Applicants' arguments have been fully considered. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn due to Applicant's amendments and/or arguments. The following rejections and/or objections are either reiterated or newly applied.
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.
Claims 1-3, 5-18, and 21 are rejected under 35 U.S.C. 103 as being obvious over US 2020/0199031 A1 to Luthra et al. in view US 20190071769 A1 to Kirby et al. and further in view of US 5855859 A to Pirooz et al.
It is noted that when utilizing FR 3077286 A1 in the above paragraph, the disclosures of the reference are based on US 20210070661 A1 which is an English language equivalent of the reference. Therefore, the column and line numbers cited with respect to FR 3077286 A1 are found in US 20210070661 A1.
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2).
This rejection under 35 U.S.C. 103 might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C.102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B); or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement. See generally MPEP § 717.02.
Re claims 1-3, 5-18, and 21, Luthra essentially teaches the claimed invention, a coated composition (Abstract), [34] ceramic matrix, [45] silicon carbide, [104] bond coat, [36] discrete 110 particles, [43] mullite and [28-31, 38] overlapping defining 60% to 98% volume (exact range) and 75% to 98%. See published claims 1-3. 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 reWertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In reWoodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). See MPEP 2144.05. Luthra teaches 108 environmental coating, FIG. 1 and associated text, [35]. Re Claim 8 -see [44]. Re claim 9, see [32]. Re claim 13, see [32]. Re claim 10, see [35] 104 is bonded to surface 103. [38], Luthra teaches overlapping ranges 60% up to 98% matrix phase defines 65% to 95% volume of bond coat as per claims 11-12 and 98% volume mullite – meets claim 14. Re claims 15-16, see [47]. Re claim 17, see [46]. Luthra teaches monosilicate [11] (claim 18). Further re claims 1-3, and 5-7, Luthra fails to disclose the 50% of volume of size of the particles as claimed.
Luthra doesn’t the 75 wt% up to 100% by volume as claimed; however, Kirby teaches overlapping ranges in a similar environment.
Kirby discloses [0025] coated component 100 of FIG. 1 or 2, having a continuous refractory phase 112 having discrete silicon-phases 110 dispersed therein where [0027] silicon-based bond coating 104 in an amount to provide structural integrity to the silicon-based bond coating 104 while the silicon-phase 110 is melted. Conversely, the silicon-phase 110 is included in the silicon-based bond coating 104 in an amount sufficient to serve as a bonding agent and as a gettering of oxygen. For example, the silicon-based bond coating 104 may, in certain embodiments, include about 25% to about 75% by volume of the silicon-phase 110 (75% by volume touches the claimed range of 75% to 100% as claimed).
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges of wt% and vol of claimed particles for improving structural integrity as taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
The combination doesn’t teach the average particle sizes as claimed.
Pirooz teaches getter particles in overlapping ranges average particle sizes of 0.01 mm to 0.5 mm (10 micrometers to 500 micrometers) and have commercially available particles. See 3:1-20 and 4:10-20.
It would have been obvious to one of ordinary skill in the art at the time the invention was made to have selected from the overlapping portion of the ranges from commercially available particles as taught by the reference because overlapping ranges have been held to establish prima facie obviousness. MPEP 2144.05.
Response to Arguments
Applicant’s arguments with respect to the claimed amendments have been considered but are not convincing. Applicant argues Kirby and Luthra’s % by volumes are contradictory; however, Lutura teaches the exact range of mullite bond coat of 60% to 98% by volume, thus claim 1 and new claims are overlapping as does Kirby. Again see MPEP 2144.05. The applicant is not relying solely on the background but the actual teachings and see published claims 1-3. Applicant’s attempt to restructure the action is therefore not persuasive. Obviousness does not require that the combination produce the most desirable result. See In re Fulton, 391 F.3d 1195, 1200 (Fed. Cir. 2004) (“[T]he question is whether there is something in the prior art as a whole to suggest the desirability, and thus the obviousness, of making the combination,” not whether there is something in the prior art as a whole to suggest that the combination is the most desirable combination available.); Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 807 (Fed. Cir. 1989) (quoting In re Lamberti, 545 F.2d 747, 750 (CCPA 1976)) (“[I]n a section 103 inquiry, 'the fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.' ”).
While Applicant argued Pirooz is essentially non-analogous art, it is considered relevant because the similarities in structure and function far outweigh the Patent Office classification (see In re Ellis, 177 USPQ 526 (CCPA 1973).
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.
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TAMRA L. DICUS
Primary Examiner
Art Unit 1787
/TAMRA L. DICUS/Primary Examiner, Art Unit 1787