DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on June 26, 2026 was received. Claims 12, 15-16, 21 and 23 were amended. Claim 19 was canceled. Claim 33 was added. Claims 1-11 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued October 8, 2025.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 12-16, 18, 20-21, 23-33 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 12, while original disclosure does not support the limitation “the heating and vaporizing the raw material and the forming the surface layer are performed without a plasma”. While the disclosure teaches not to form the YOxFy coating using plasma spraying by melting granulate particles of the YOxFy coating (paragraph 0186 and 0005, US Patent Application Publication of the instant application), it does not teach to not exclude a plasma in any form during heat and vaporizing a raw material containing solid materials selected from the group consisting of NH4F, NH5F and NH4Cl (raw material for F and Cl only) to modify the ceramic coating (such as Y2O3) (claimed invention in the instant claim). It is well settled that “any negative limitation or exclusionary proviso must have basis in the original disclosure” and “the mere absence of a positive recitation is not basis for an exclusion” (MPEP 2173.05(i)). Thus, the specification does not explicitly provide support for the limitation of “heating and vaporizing without a plasma”.
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 12-15, 20-21 and 23-33 are rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014), Barros (US20190071601) and Neal (US20100047474) and Scarlete (CA2489199).
Regarding claim 12, Wu teaches a method of converting the surface of the metal oxide into M-O-F layer (metal oxyfluoride) (paragraph 0002) on a plasma resistance ceramic member (paragraphs 0003-0004, 0052, 0081-0082, 0098). Wu teaches to prepare a substate with a ceramic coating layer, wherein the ceramic coating is a ceramic oxide, such as Y2O3 (or other yttrium based oxide) (paragraphs 0052, 0065, 0081-0082, figure 3A). Wu teaches to heat the HF or other fluorine source containing F anions (heating a raw material containing one or more anions selected from the group consisting of F and Cl) (paragraphs 0087-0089, figure 3A). Wu teaches to convert the Y2O3 coating (or other yttrium based oxide) at least on the surface into a Y-O-F layer (yttrium oxyfluoride), thus, indicating the F anion is absorbed to the surface to modify the surface of the ceramic coating layer (paragraph 0081 and 0092-0094). Wu teaches the heating is 50-500° C (paragraphs 0087-0088), which overlaps the claimed range.
In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Wu teaches the surface layer is a layer in which an oxide composition component is modified with a composition comprising one or more anions selected from group consisting of F and Cl (paragraphs 0081, 0092-0094). Wu teaches the process is carried out without a physical vapor deposition technique (paragraphs 0081-0094). Wu teaches to heating is by heating means in a furnace (paragraphs 0049 and 0062-0063), which reads on the limitations of “heating and vaporizing the raw material and the forming the surface layer are performed without a plasma”.
Wu does not explicitly teach to vaporize the raw material. However, Speyer teaches a method of forming a transparent ceramic material (abstract). Speyer teaches to provide a fluoride anion source to a metal oxide compact to absorb the fluorine ion during sintering (heating), wherein the metal oxide includes Y2O3 or YAG (paragraphs 0053, 0058-0059, see figure 1A). Speyer teaches the fluoride anion sources is fluorine/nitrogen trifluoride gas (Wu’s fluoride source) or fluoride salts (solid materials) that melting and vaporizing during heating, such as LiF, LiBF4, NaF KF etc , wherein the melting and vaporizing temperature is based on the melting point of solid material (paragraph 0057). Therefore, it would have been obvious to one of ordinary skill in the art to substitute vaporizing fluoride salts (solid materials) for using gas (fluorine/nitrogen trifluoride gas) as fluoride anion source in the method of adsorbing the fluoride in the yttrium oxide to convert the surface to Y-O-F as disclosed by Wu. Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the temperature in the process in accordance to the melting point of the raw material (solid material/fluoride salts) to yield the desired melting and vaporizing of the raw materials. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Speyer also does not teach the heating and vaporizing are performed with a plasma (paragraphs 0057-0059).
Wu in view of Speyer does not explicitly teaches the raw materials (fluoride salt/solid material) is selected from NH4F or NH5F2. However, Barros teaches a method of sol-gel process (abstract) including providing a fluorine atmosphere by a fluorinated agent in the heated temperature of 100 to 1000ºC (overlap with the claimed range) (paragraphs 0026-0027). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Barros teaches NH4F and KF (Speyer’s fluorine salt) are functionally equivalent fluorinated agent to generate fluorine atmosphere under heat as evidenced by Barros (paragraphs 0026-0027). Therefore, it would have been obvious to one of ordinary skill in the art to substitute NH4F for KF as fluorinated agent for generating fluorine atmosphere under heat in the method as disclosed by Wu in view of Speyer.
Wu in view of Speyer and Barros does not explicitly teach the inert carrier gas. Wu teaches the process is conducted in a chamber (controlled atmosphere) (pargraph 0087-0088). However, Neal teaches a method of depositing a coating by vaporizing deposit material in a crucible on to a heated substrate inside a chamber (paragraph 0022). Neal teaches the chamber is vacuum chamber (paragraph 0011). Neal teaches a carrier gas is directed to carry the evaporated raw material from the crucibles to the substrate surface (paragraphs 0022-0023, figure 1) (control the atmosphere for surface modification). The carrier gas is expected to be inert, as it is conventional to use an inert gas as carrier gas to avoid the reaction from the reaction gas. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use an inert carrier gas as disclosed by Neal in the method of Wu in view of Speyer and Barros because Neal teaches such gas carries the vaporized raw material to deposit onto the surface of the substrate (paragraphs 0022-0023).
Wu in view of Speyer, Barros and Neal does not explicitly teach the heating means surround the chamber or the furnace. However, Scarlete teaches a method of forming a thin film on a substrate by CVD in a chamber (page 11 lines 7-20), wherein the gaseous precursors are vaporized (page 20 lines 10-25). Scarlete teaches the heating elements surround the outside of the reactor to produce a temperature gradient (page 15 lines 20-32, figure 1A). It would have been obvious to one of ordinary skill in the art at the time the invention was made to place to use the heating means to surround the chamber/furnace as suggested by Scarlete in the method of Wu in view of Speyer, Barros and Neal, because Scarlete teaches such set up allows properly control the temperature gradient inside of the chamber/furnace, which ensure the appropriate range for the precursors (vaporizing material) (page 15 lines 20-32).
Regarding claim 13, Wu teaches the ceramic coating layer is Y2O3, yttria stabilized zirconia etc (paragraph 0081).
Regarding claim 14, Wu teaches the thickness of the surface layer is 50nm to 5µm (paragraph 0093), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 15, Barros teaches the raw material is NH4F (pargraph 0027)
Regarding claim 20, Wu teaches oxygen gas plasma is included with the fluoride anion source (paragraph 0088). Since the final layer includes an oxygen content, it would be reasonably expected the oxygen content is affected by the oxygen gas plasma. It would be reasonable to expect the oxygen gas plasma facilitate the moving of the raw material to the ceramic coating layer as both of them are being deposited/absorbed into the ceramic coating layer.
Regarding claim 21, Wu teaches to heat the ceramic coating layer and the raw material so that the surface absorbs the raw material (paragraph 0087). Spryer teaches to heat the vaporize the raw material and also heating the metal oxide (paragraph 0057).
Regarding claim 23, Neal taches to put the raw material into the crucible, loading the crucible and the substrate into the chamber configured to adjust an inner temperature by heating means and heating and vaporized the raw material using the heating means (paragraphs 0012-0013, 0019, 0022-0023, see figure 1). Neal does not explicitly teach the substrate is placed inside of the crucible. However, the particular placement of the substrate holding device (or the substrate) inside of the chamber was held to be an obvious matter of design choice (MPEP 2144.04 VI C). Thus, it would be obvious for one of the ordinarily skill in the art before the effective filing date of the claimed invention to place the substrate holder inside of the crucible along with the raw material in light of the teaching of Neal, especially Neal teaches the heating of both the substrate and the raw material are both conducted by the same heating element (paragraphs 0013 and 0023). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 24, Neal teaches the substrate and the raw material are placed separately from each other (see figure 1).
Regarding claim 25, Neal teaches the substrate is placed higher than the raw material (see figure 1),
Regarding claim 26, Neal teaches the support is provide to be higher than the bottomed surface of the crucible, and would be expected to be smaller than the inner diameter of the crucible to be fitted inside. Neal teaches the raw material is placed on the bottom surface of the crucible (see figure 1), Neal teaches the substrate is mounted on the support to be placed higher than the raw material, so that the raw material and the substrate are spatially separated.
Regarding claim 27, Neal teaches placing the substate in the furnace (paragraph 0011, see figure). Neal teaches putting the raw material in the crucible, and placing the crucible in the furnace so that the raw material is spaced apart from the substrate; heating and vaporizing the raw material using a heating means (paragraphs 0022-0023, see figure 1). Wu teaches the heating temperature for the substrate and the raw material are set differently from each other (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 28, Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 29, Neal teaches the substate and the raw material are heated using the heating means, beam 20, and a carrier gas is flowed to allow the vaporized raw material to move to the substate to adsorbed to the surface of the coating (see paragraphs 0013 and 0022-0023, see figure 1).
Regarding claim 30, Neal teaches placing the substate in the furnace, putting a raw material and placing the crucible in a second furnace, heating and vaporizing the substrate the substrate having the ceramic coating layer using a first heating means and heating and vaporizing the raw material using a second heating means (paragraphs 0012-0013, 0022-0023, see figure 1). Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. The claim does not require the first and second furnace, or the first and second heating means to be different from each other. Thus, Neal teaches the claimed limitation. Nevertheless, it is well settled that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (MPEP 2144.04 VI). Thus, it would be obvious for one of the ordinarily skill in the art before the effective filing date of the claimed invention to place duplicate the number of chamber and heating means (to hold and heat the substrate and raw material) in light of the teaching of Neal’s apparatus. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the apparatus as disclosed by Neal in the method of Wu in view of Speyer because Neal teaches such apparatus provides enhanced temperature control (paragraph 0002).
Regarding claim 31, Wu teaches the heating temperature for the substrate and the raw material are set differently from each other, wherein the heating temperature is set lower than that of the substate (paragraphs 0087-0088). In addition, Speyer teaches the melt and vaporize the raw material (paragraph 0057), therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the heating temperature of the raw material in the process to yield the proper melting and vaporization of the raw material. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 32, Neal teaches a carrier gas is flowed from the raw material to the substrate to move the vaporized raw material to be absorbed on the surface of the substrate (paragraphs 0022-0023). Thus, Neal teaches the carrier gas flow from the “second furnace” (where the raw material is located) to the “first furnace” (where the substrate is located).
Regarding claim 33, Wu teaches the heating is 50-500° C (paragraphs 0087-0088), which overlaps the claimed range. Barros teaches the fluorinated agent in the heated temperature of 100 to 1000ºC (overlap with the claimed range) (paragraphs 0026-0027). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Speyer teaches the melting and vaporizing temperature is based on the melting point of solid material (paragraph 0057). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the temperature in the process in accordance to the melting point of the raw material (solid material/fluoride salts) to yield the desired melting and vaporizing of the raw materials. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014), Barros (US20190071601) Neal (US20100047474) and Scarlete (CA2489199) as applied to claims 12-15, 20-21 and 23-33 above, and further in view of Hayasaki (US20050282034) and Kim (US20100219742).
Regarding claim 16, Wu in view of Speyer, Barros, Neal and Scarlet teaches all limitations of these claim, except to include the chloride anion source. However, Hayasaki teaches a method of forming a corrosion resistant member comprising a base material ceramic oxide and at least one layer of corrosion resistant film against fluorine and chlorine (abstract and paragraphs 0027, 0043), wherein the ceramic oxide layer is YAG (paragraph 0028). Hayasaki teaches the corrosion resistant film is formed from Y2O3 on the base material, and YF3 and YCl3 formed through reaction of Y2O3 and a fluorine containing gas and a chlorine containing gas, respectively (paragraph 0076). Thus, Hayasaki teaches the modified surface is modified of Y2O3 with both F and Cl anions. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the Cl anions in the modified surface (corrosion resistant film) as suggested by Hayasaki in the method of Wu in view of Speyer, Barros, Neal and Scarlete because Hayasaki teaches the inclusion of the chloride component ensure the corrosion resistance to the chlorine plasma in addition to the fluorine plasma (paragraphs 0004-0006, 0027, 0082).
Wu in view of Speyer and Hayasaki does not explicitly the specific chloride material as claimed. However, Kim teaches a method of preparing a compound (abstract). Kim teaches chloride ions source for the reaction is provided by evaporating NH4Cl, which is solid in ambient, at low temperature (pargraph 0064). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to evaporating NH4Cl to obtain the chloride ion source as suggested by Kim in the method of Wu in view of Speyer, Barros, Neal, Scarlet and Hayasaki because Kim teaches the chloride ions can be obtained at low temperature (pargraph 0064).
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Wu (US20180327899) in view of Speyer (US20230127014), Barros (US20190071601), Neal (US20100047474) and Scarlete (CA2489199) as applied to claims 12-15, 20-21 and 23-33 above, and further in view of Puy (US5705717).
Regarding claim 18, Wu in view of Speyer, Barros, Neal and Scarlete teaches all limitation of this claim, except a non-reactive solid diluent is mixed with the raw material so that the raw material vaporized is adjusted by the non-reactive solid diluent. However, Puy teaches a method of fluorinating (abstract). Puy teaches to include a carrier with an effective amount of hydrogen fluoride (fluoride anion source) to produce a solid or liquid form, wherein the carrier is do not participate as reactants in the fluorination reaction (non-reactive solid diluent) (column 1 line 65 to column 2 line 5, column 2 lines 9-60). Since Puy teaches the non-reactive solid diluent serve to lower the vapor pressure of the hydrogen fluoride, thus, the amount of raw material vaporized is adjusted by the non-reactive solid diluent. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the non-reactive solid diluent to raw material as suggested by Puy in the method of Wu in view of Speyer, Barros, Neal and Scarlete because Puy teaches the inclusion of the non-reactive solid diluent renders the raw material less hazardous but also exhibits good reactivity (column 1 line 45-50).
Response to Arguments
Applicant's arguments filed on June 26, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Speyer does not teach the raw material as NH4F, NH5F2 or NH4Cl.
Speyer’s salts except LiPF6 are heated to temperature in excess of 250ºC, thus, Speyer does not teach the heating temperature (claims 12 and 33).
In response to Applicant’s arguments, please consider the following comments:
The new limitations is addressed by a new reference, Barros (see rejections above).
As discussed above, Wu teaches the heating is 50-500° C (paragraphs 0087-0088), which overlaps the claimed range. Barros teaches the fluorinated agent in the heated temperature of 100 to 1000ºC (overlap with the claimed range) (paragraphs 0026-0027). In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). Speyer teaches the melting and vaporizing temperature is based on the melting point of solid material (paragraph 0057). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the temperature in the process in accordance to the melting point of the raw material (solid material/fluoride salts) to yield the desired melting and vaporizing of the raw materials. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
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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