DETAILED ACTION
1. The Amendment filed 12/18/2025 has been entered. Claims 1-20 in the application remain pending. Claim 1 was amended. Claims 10 & 12 remain withdrawn from consideration.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 103
4. Claims 1-9, 11 & 13-20 are rejected under AIA 35 U.S.C. 103 as being unpatentable over Walters et al. (“Aerosol assisted chemical vapour deposition of ZnO films on glass with noble metal and p-type dopants; use of dopants to influence preferred orientation”, Applied Surface Science, 2009, pp. 6555-6560, Vol. 255.) (cited in 06/22/2023 IDS) hereinafter Walters in view of Amezaga-Madrid et al. (“Synthesis, structural characterization and optical properties of multilayered yttria-stabilized ZrO2 thin films obtained by aerosol assisted chemical vapour deposition”, Thin Solid Films, 2008, pp. 8282-8288, Vol. 516:23.) (cited in 06/22/2023 IDS) hereinafter Amezaga.
As regards to claim 1, Walters discloses a system for depositing a solar control coating on a substrate (abs; 1. Introduction) comprising: a) a heating system configured to heat the substrate (2. Experimental methods); b) a nebulizer coupled to the heating system, which includes an outlet nozzle of a precursor solution for depositing a precursor solution on the substrate surface (2. Experimental methods); c) configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating (2. Experimental methods); and d) a gas extraction system configured to avoid contamination of the deposited coating (2. Experimental methods), however Walters does not disclose a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate or wherein the outlet nozzle is configured to heat the precursor solution to a temperature between 50 °C to 150 °C, but teaches two parallel plates are configured to heat the precursor solution to a temperature between 250 °C to 450 °C (2. Experimental methods). An outlet nozzle configured to heat the precursor solution and two parallel plates configured to heat the precursor solution are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute outlet nozzle configured to heat the precursor solution for the two parallel plates configured to heat the precursor solution disclosed by Walters with a reasonable expectation of success.
Although Walters does not explicitly disclose the claimed temperature range, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Walters to have the temperature range recited in the claim as temperature range discusses the temperature range for evaporated films on substrates, wherein different precursors and substrate materials and processes may require different temperature range (1. Introduction; 2. Experimental methods; 3. Results). Thus, it would have been within the purview of one of ordinary skill in the art to modify the temperature range of the precursor solutions, since it has been held that “where 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
Amezaga discloses a system for depositing a solar control coating on a substrate (abs; 1. Introduction) comprising a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating (2. Experimental details – 3. Results and discussion; fig 5). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating in the system of Walters, because Amezaga teaches the use of a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating to influence the growing characteristics and microstructure of the films (2. Experimental details).
As regards to claim 2, Walters discloses a system (abs; 1. Introduction), wherein the nebulizer is pneumatic, electrostatic, or ultrasonic type (2. Experimental methods).
As regards to claim 3, Walters discloses a system (abs; 1. Introduction), wherein the heating system is configured to heat the substrate to a temperature between 100 °C and 600 °C (2. Experimental methods).
As regards to claim 4, Walters discloses a system (abs; 1. Introduction), however Walters does not disclose wherein the nozzle drive system is configured enable the outlet nozzle to travel at a speed of from 0.1 to 5 cm/min thereby permitting varying the thickness of the coating.
Amezaga discloses a system for depositing a solar control coating on a substrate (abs; 1. Introduction) comprising a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating, wherein the nozzle drive system is configured enable the outlet nozzle to travel at varying velocities thereby permitting varying the thickness of the coating (2. Experimental details – 3. Results and discussion; fig 5). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating, wherein the nozzle drive system is configured enable the outlet nozzle to travel at varying velocities thereby permitting varying the thickness of the coating in the system of Walters, because Amezaga teaches the use of a nozzle drive system coupled to the outlet nozzle to move the outlet nozzle above the substrate configured to deposit the precursor solution uniformly over the entire substrate surface thereby forming a uniform coating, wherein the nozzle drive system is configured enable the outlet nozzle to travel at varying velocities thereby permitting varying the thickness of the coating to influence the growing characteristics and microstructure of the films (2. Experimental details – 3. Results and discussion). Although Walters does not explicitly disclose the claimed speed/velocity, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Walters to have the speed/velocity recited in the claim as Walters discusses wherein the nozzle drive system is configured enable the outlet nozzle to travel at varying velocities thereby permitting varying the thickness of the coating (2. Experimental details – 3. Results and discussion). Thus, it would have been within the purview of one of ordinary skill in the art to modify the speed/velocity of the nozzle drive system, since it has been held that “where 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
As regards to claim 5, Walters discloses a system (abs; 1. Introduction), wherein the nebulizer utilizes an aerosol-assisted chemical vapor deposition (AACVD) technique (abs; 2. Experimental methods).
Regarding claim 6, the recitation “wherein the concentration of the precursor solution is from 0.001 to 0.2 mol dm-3”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the concentration of the precursor solution be from 0.001 to 0.2 mol dm-3, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 6, Walters discloses a system (abs; 1. Introduction), wherein the concentration of the precursor solution is capable of being from 0.001 to 0.2 mol dm-3 (abs; 1. Introduction – 4. Discussion).
As regards to claim 7, Walters discloses a system (abs; 1. Introduction), wherein the nebulizer (2. Experimental methods), however Walters does not disclose includes a flow controller and a pressure regulator for introducing a carrier gas mixed with the precursor solution.
Amezaga discloses a system for depositing a solar control coating on a substrate (abs; 1. Introduction) comprising a flow controller and a pressure regulator for introducing a carrier gas mixed with the precursor solution (2. Experimental details – 3. Results and discussion; fig 5). Before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to include a flow controller and a pressure regulator for introducing a carrier gas mixed with the precursor solution in the system of Walters, because Amezaga teaches the use of a flow controller and a pressure regulator for introducing a carrier gas mixed with the precursor solution to provide the carrier gas at a fixed specified pressure and specified gas flux (2. Experimental details).
Regarding claim 8, the recitation “wherein the carrier gas is air, argon, nitrogen, or a similar gas”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the carrier gas be air, argon, nitrogen, or a similar gas, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 8, Walters discloses a system (abs; 1. Introduction), wherein the carrier gas is capable of being air, argon, nitrogen, or a similar gas (abs; 1. Introduction – 4. Discussion).
As regards to claim 9, Walters discloses a system (abs; 1. Introduction), wherein the heating means comprises a heating block (2. Experimental methods).
Regarding claim 11, the recitation “wherein the precursor solution comprises organometallic precursors or inorganic compounds”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the precursor solution comprise organometallic precursors or inorganic compounds, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 11, Walters discloses a system (abs; 1. Introduction), wherein the precursor solution capable of comprising organometallic precursors or inorganic compounds (abs; 1. Introduction – 4. Discussion).
Regarding claim 13, the recitation “i) a first active protective layer residing over one surface of the substrate; ii) a non-continuous metallic nanoparticle layer residing over said first active protective layer; iii) a second active protective layer residing over said metallic nanoparticle layer; and iv) a dielectric layer”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having i) a first active protective layer residing over one surface of the substrate; ii) a non-continuous metallic nanoparticle layer residing over said first active protective layer; iii) a second active protective layer residing over said metallic nanoparticle layer; and iv) a dielectric layer, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 13, Walters discloses a system (abs; 1. Introduction), wherein the solar control coating is capable of comprising: i) a first active protective layer residing over one surface of the substrate; ii) a non-continuous metallic nanoparticle layer residing over said first active protective layer; iii) a second active protective layer residing over said metallic nanoparticle layer; and iv) a dielectric layer (abs; 1. Introduction – 4. Discussion).
Regarding claim 14, the recitation “wherein the non-continuous metallic nanoparticle layer comprises metallic nanoparticles that are uniformly and homogeneously distributed in the first layer of the substrate”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the non-continuous metallic nanoparticle layer comprise metallic nanoparticles that are uniformly and homogeneously distributed in the first layer of the substrate, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 14, Walters discloses a system (abs; 1. Introduction), wherein the non-continuous metallic nanoparticle layer is capable of comprising metallic nanoparticles that are uniformly and homogeneously distributed in the first layer of the substrate (abs; 1. Introduction – 4. Discussion).
Regarding claim 15, the recitation “wherein the non-continuous metallic metallic nanoparticle layer comprises gold (Au), silver (Ag), platinum (Pt) or palladium (Pd)”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the non-continuous metallic metallic nanoparticle layer comprise gold (Au), silver (Ag), platinum (Pt) or palladium (Pd), if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 15, Walters discloses a system (abs; 1. Introduction), wherein the non-continuous metallic metallic nanoparticle layer is capable of comprising gold (Au), silver (Ag), platinum (Pt) or palladium (Pd) (abs; 1. Introduction – 4. Discussion).
Regarding claim 16, the recitation “wherein the non-continuous metallic nanoparticle layer comprises metallic nanoparticles having a diameter of less than 30 nm”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the non-continuous metallic nanoparticle layer comprise metallic nanoparticles having a diameter of less than 30 nm, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 16, Walters discloses a system (abs; 1. Introduction), wherein the non-continuous metallic nanoparticle layer is capable of comprising metallic nanoparticles having a diameter of less than 30 nm (abs; 1. Introduction – 4. Discussion).
Regarding claim 17, the recitation “wherein the dielectric layer comprises Al2O3”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the dielectric layer comprise Al2O3, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 17, Walters discloses a system (abs; 1. Introduction), wherein the dielectric layer is capable of comprising Al2O3 (abs; 1. Introduction – 4. Discussion).
Regarding claim 18, the recitation “wherein the first active protective layer or the second active protective layer has a thickness in a range between 10 and 70 nm”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the first active protective layer or the second active protective layer have a thickness in a range between 10 and 70 nm, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 18, Walters discloses a system (abs; 1. Introduction), wherein the first active protective layer or the second active protective layer is capable of having a thickness in a range between 10 and 70 nm (abs; 1. Introduction – 4. Discussion).
Regarding claim 19, the recitation “wherein the first active protective layer and second active protective layer comprise a metal oxide”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having the first active protective layer and second active protective layer comprise a metal oxide, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 19, Walters discloses a system (abs; 1. Introduction), wherein the first active protective layer and second active protective layer is capable of comprising a metal oxide (abs; 1. Introduction – 4. Discussion).
Regarding claim 20, the recitation “wherein said metal oxide comprises titanium or zinc”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Walters since Walters meets all the structural elements of the claim and is capable of having said metal oxide comprise titanium or zinc, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 20, Walters discloses a system (abs; 1. Introduction), wherein said metal oxide capable of comprising titanium or zinc (abs; 1. Introduction – 4. Discussion).
Response to Arguments
5. Applicant's arguments filed 12/18/2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Amended independent claim 1 is not obvious at least because Walters, alone or in combination with other prior art of record, fails to disclose or suggest an outlet nozzle that is configured to heat a precursor solution to a temperature between 50 °C to 150 °C.
(b) In view of the foregoing amendments and remarks, reconsideration and withdrawal of the rejections and allowance of claims 1-20 are respectfully requested.
6. In response to applicant’s arguments, please consider the following comments.
(a) As already discussed above in detail in regards to claim 1, Walters does not disclose wherein the outlet nozzle is configured to heat the precursor solution to a temperature between 50 °C to 150 °C, but teaches two parallel plates are configured to heat the precursor solution to a temperature between 250 °C to 450 °C (2. Experimental methods). An outlet nozzle configured to heat the precursor solution and two parallel plates configured to heat the precursor solution are considered functionally equivalent heating methods. Therefore, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to substitute outlet nozzle configured to heat the precursor solution for the two parallel plates configured to heat the precursor solution disclosed by Walters with a reasonable expectation of success.
Although Walters does not explicitly disclose the claimed temperature range, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Walters to have the temperature range recited in the claim as temperature range discusses the temperature range for evaporated films on substrates, wherein different precursors and substrate materials and processes may require different temperature range (1. Introduction; 2. Experimental methods; 3. Results). Thus, it would have been within the purview of one of ordinary skill in the art to modify the temperature range of the precursor solutions, since it has been held that “where 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 reAller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955)
(b) In view of the foregoing, Examiner respectfully contends the limitations of claim 1 are indeed satisfied. Claims 2-9, 11 & 13-20 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
7. 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.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717