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 .
Election/Restrictions
Claims 10-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 16 September 2025.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Claim Objections
Claim 1 is objected to because of the following informalities:
In Claim 1, line 13, the phrase “the same as to the shape” should be written “the same as the shape.”
Appropriate correction is required.
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 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.
Claim(s) 1-3,6, and 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Joo et al. (US 2018/0337379) in view of Yoshida et al. (JP 2008184647A).
Regarding Claim 1, Joo et al. (US’379) teaches a film forming apparatus capable of forming a film on a base material (an aspect of an intended use, and not a structural limitation of the claimed apparatus), comprising an aerosol transport path capable of ejecting an aerosol obtained by dispersing a ceramic raw material powder in a gas, from an ejection end toward the base material (Figs. 3-4; [0012,0055,0127-0128]). The flow path can have a substantially circular shape [0127]. The recited intended use is not given significant patentable weight for the claimed apparatus, which is capable of the recited intended use. The transport path includes a straight pipe (conduit with wall) member (801 and/ or 805), and a shape of a flow path cross-section of the transport path is the same as the shape of a cross-section at the ejection end (807 for 805, 803 for 801), since the ejection end is simply an opening at an end of the transport path (Fig. 8; [0048,0106,0127]).
US’379 fails to teach explicitly that a flow path cross-section at the ejection end of the aerosol transport path has an area of 10 mm2 or more. However, it provides a range of first diameter between 0.1 to about 10 mm (equivalent to about 0.008-80 mm2: Pi*D2/4) and a larger second diameter range of between 0.2-15 mm (equivalent to about 0.03-176 mm2). The ranges substantially overlap the recited range, and would be obvious to choose values within the taught ranges that also fall within the recited area. Moreover, it would have been obvious to optimize between tradeoffs, such as maximizing rate of deposition while constraining a spray to specific regions of a substrate in a given intended use, not given patentable weight for the claimed apparatus.
Furthermore, US’379 suggests an apparatus with an aerosol transport path with a circular shape with an area of 10 mm2 or more (see rejection of Claim 1 above).US’379 fails to teach a processing chamber with an inner space. Yoshida et al. (JP’647) is analogous art in the field of spraying aerosols, including ceramics, for aerosol deposition [0004, 0030] and suggests a processing chamber capable of containing an apparatus with an inner space for controlling environmental conditions for aerosol deposition and capable of containing components, including an aerosol transport path (nozzle 6) and a base material 7 (Fig. 1; [0018]). It would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of US’379 so that it includes a processing chamber with an inner space for controlling environmental conditions for aerosol deposition and capable of arranging both the apparatus, including the aerosol transport path inside the processing chamber (i.e. at a “transport section”) so that the transport path with a substantially circular shape and an area of 10 mm2 or more, obvious over US’379, and the base material are contained inside, because JP’647 suggests such a space for deposition with an aerosol nozzle inside.
Regarding Claim 2, the apparatus of US’379 is capable of spraying on a base material 100 mm or less away from the ejection end of the aerosol transport path. The intended use is not given significant patentable weight for the claimed apparatus. In addition, it would have been obvious to optimize the distance between a base material and the ejection end in order to deposit the spray over a desired area at an adequate velocity.
Regarding Claim 3, the claimed value is defined at least in part by a base material, which is an aspect of an intended use and not a limitation of the apparatus itself, which is capable of spraying a base material arbitrarily close to the outlet opening such that a value obtained by dividing the area of the flow path cross-section at the ejection end of the aerosol transport path by a square of a distance between the ejection end of the aerosol transport path and the base material is 0.001 or more. For example, where a diameter of an outlet is 3.6 mm, the cross-sectional area of the flow path is greater than 10 mm2 and a distance of less than 100 mm would make the inequality true. The apparatus of US’379 is capable of the intended use of spraying on a base within the recited distance. In addition, it would have been obvious to optimize the distance between a base material and the ejection end in order to deposit the spray over a desired area at an adequate velocity.
Regarding Claim 6, US’379 fails to teach a pressure or vacuum in a processing chamber. JP’647 suggests a vacuum of 600 Pa and 300 Pa (0.6 and 0.3 kPa) [0050]. In addition, JP’647 provides evidence that pressure is a result-effective variable, known in the prior art to affect mechanical and electrical properties of a deposited structure [0045]. Thus, it would have been obvious to a person of ordinary skill in the art at the time of invention to modify the apparatus of the combination of US’379 in view of JP’647 to be capable of the pressure or vacuum in a processing chamber, because JP’647 suggests these pressures/ vacuum for deposition and suggests that one would optimize pressures to within the recited range to impart desirable mechanical and electrical properties to a deposited structure.
Regarding Claim 8, US’379 teaches an apparatus capable of spraying ceramic raw material [0121], but fails to teach a density of particles ceramic raw material powder is 4.0 g/cm3 or more. The intended use density is not given significant patentable weight. However, it is considered obvious to spray an aerosol with the recited density in order to deposit a ceramic coating at an adequate rate.
Regarding Claim 9, the film forming apparatus of US’379 is capable of depositing a ceramic raw material powder which is stabilized zirconia. The intended use is given little significant patentable weight for the claimed apparatus, capable of performing the intended use.
Response to Arguments
Applicant’s amendment to the claims, filed 2 January 2026, with respect to the rejections of Claims 4-6 under 35 USC 112(b) have been fully considered and overcome the previous rejections under this paragraph. The rejections of Claims 4-6 under 35 USC 112(b) have been withdrawn.
Applicant's arguments filed 2 January 2026, with respect to the rejections of Claims 1-9under 35 USC 103) have been fully considered but they are not persuasive.
In response to Applicant’s argument that the purpose of the present invention is to provide a film forming apparatus capable of stably supplying a large amount of ceramic raw material powder for a long time and forming a homogeneous and dense film, (Remarks, p. 7), the argument is not persuasive, because a process or intended use is not at issue. Claims 1-3, 6, and 8-9 define an apparatus with structural features, and the combination of over Joo et al. (US 2018/0337379) in view of Yoshida et al. (JP 2008184647A) teach and/ or suggest every feature of the apparatus, capable of performing the intended use.
In response to Applicant’s argument that Joo is different from the present invention in the technical field of the invention and the problem to be solved by the invention (Remarks, p. 8), the argument is not convincing, because the field of both inventions is an apparatus for spraying an aerosol, and Joo is reasonably pertinent to Applicant’s problem of an apparatus for spraying an aerosol. Applicant’s construal of the field or problem to be “stably supplying ceramic material powder and to form a homogeneous and dense film” is too narrow and the argument is not commensurate in scope with the claims, which are drawn to an apparatus, an intended use of which need not be given patentable weight.
In response to Applicant’s argument that Yoshida does not disclose the shape of the flow path cross-section of the processing chamber internal transport section and the shape of the ejection end (Remarks, p. 8), the argument confuses a shape of the transport path with a shape of the transport section. The claim requires that a “shape of the flow path cross-section at the processing chamber internal transport section is the same as the shape of the flow path cross-section at the ejection end,” and NOT a “shape of the flow path cross-section of the processing chamber internal transport section.” See, also, Fig. 1. Moreover, the feature suggested by Applicant’s argument (i.e. “shape of the flow path cross-section of the processing chamber internal transport section”) is not supported by the application as originally filed and would constitute new matter if the claims were actually amended to recite this limitation. Rather, the comparisons are made between the cross-section of the flow path transport path at the internal transport section and the cross-section of the ejection end (Specification, [0014,0017,0033]). This is particularly clear in paragraph [0033], which reads, “That is, in the aerosol transport pipe 10 of the present embodiment, the flow path cross-section in the processing chamber internal transport section 10b and the flow path cross-section at the ejection end 10a are both circular with the same flow path cross-sectional area A1.” Joo, not Yoshida, is cited for its teachings about the shapes of cross-sections of the transport path and ejection end.
Conclusion
No claim is allowed.
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 ALEXANDER M WEDDLE whose telephone number is (571)270-5346. The examiner can normally be reached 9:30-6:30.
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ALEXANDER M WEDDLE
Examiner
Art Unit 1712
/ALEXANDER M WEDDLE/Primary Examiner, Art Unit 1712
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