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 .
Claim Rejections - 35 USC § 112
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 1-7, 11, 13, and 31-40 are 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 1, the recitation “the surface microtopography” (lines 3-4) lacks antecedent basis.
Further regarding claim 1, the recitation “on which surface” (lines 2-3) renders the claim indefinite. it is unclear if “on which surface” refers to the previously recited “metal surface” (line 2). For examination purposes it is assumed that “on which surface” refers to the previously recited “metal surface”.
Regarding claim 2, the recitation “the uncoated metal surface” (line 3) lacks antecedent basis.
Regarding claim 4, the recitation “the ratio of Si:O in the silicon oxide coating is between 1.5 and 2” (line 2) renders the claim indefinite. Since the chemical composition of silicon oxide is known in the art as SiO2, it is unclear if the recitation implies that the ratio of Si:O means the ratio of silicon to oxygen atoms is between 1.5 and 2, or that there is some other component to the silicon oxide coating that the silicon oxide is being compared.
Regarding claim 31, the recitation “the ratio of Si:O in the silicon oxide coating is between 1.6 and 1.9” (lines 1-2) renders the claim indefinite. Since the chemical composition of silicon oxide is known in the art as SiO2, it is unclear if the recitation implies that the ratio of Si:O means the ratio of silicon to oxygen atoms is between 1.6 and 1.9, or that there is some other component to the silicon oxide coating that the silicon oxide is being compared.
Regarding claim 32, the recitation “the ratio of Si:O in the silicon oxide coating is between 1.7 and 1.8” (lines 1-2) renders the claim indefinite. Since the chemical composition of silicon oxide is known in the art as SiO2, it is unclear if the recitation implies that the ratio of Si:O means the ratio of silicon to oxygen atoms is between 1.7 and 1.8, or that there is some other component to the silicon oxide coating that the silicon oxide is being compared.
Regarding claim 40, the recitation “wherein the surface adhesion strength of mineral scaling from a calcium-based salt to the surface is reduced by at least 50%, wherein the surface adhesion strength of an asphaltene to the surface is reduced by at least 50% compared with the uncoated metal surface, wherein the surface adhesion strength of a biofilm to the surface is reduced by at least 50% compared with the uncoated metal surface, or wherein the surface adhesion strength of a solidified salt in a molten salt melt to the surface is reduced by at least 50% compared with the uncoated metal surface” (emphasis added) (lines 2-9) renders the claim indefinite. It is unclear if “the surface” refers to the silicon oxide coating or some other surface. It is also unclear with respect to what frame of reference “the surface adhesion strength of mineral scaling from a calcium-based salt to the surface is reduced”.
Claims 3, 5-7, 11, 13, and 33-39 are rejected as depending from a rejected claim
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, 4, 5, 7, 31, 32, 33, 34, and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Svensson (US 2014/0338867), and further in view of Gentleman et al. (US 2010/0151264).
Regarding claim 1, Svensson discloses an anti-fouling treated closed heat exchanger, comprising: a closed heat exchanger comprising a metal surface (9) (Paragraph 31: Defined by a surface of a tube or shell) which is brought into contact with a heat exchange fluid in use (Paragraph 21), on which surface is formed a coating (Figure 2 and Paragraph 26: See layer 12 of 10) of silicon oxide (Paragraphs 24-26) which at least partially levels the surface microtopography of the metal surface (Paragraph 15: The coating lowers surface roughness of the heat exchanger). However, Svensson does not explicitly teach or disclose the coating as in the form of a non-continuous coating.
Gentleman et al. teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (104) (Paragraph 34), on which surface is formed a non-continuous coating (106) (Paragraphs 33 and 38: The coating 106 is non-continuous in that the coating comprises an irregular surface -e.g. holes, wells, etc.- with a porosity of about 5%, where the pores are acknowledged as forming openings to the metal substrate). As a result it would have been obvious to one having ordinary skill in the art at the time the invention was filed to configure the coating as disclosed by Svensson in the form of a non-continuous coating as taught by Gentleman et al. to improve heat exchanger heat exchange efficiency by improving a wetting-resistant properties of the metal surface of the heat exchanger (Paragraphs 33 and 38 of Gentleman et al.).
Regarding claim 4, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above, where the ratio of Si:O in the silicon oxide coating is between 1.5 and 2 (Paragraph 24).
Regarding claims 5, 33, and 34, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above. However, Svensson does not explicitly teach or disclose the coating as in the form of a non-continuous coating with a proportion of surface area of the metal substrate that is coated by the coating layer (i.e. a certain percentage of the metal substrate is coated by the coating layer).
Gentleman et al. teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (104) (Paragraph 34), on which surface is formed a non-continuous coating (106) (Paragraphs 33 and 38: The coating 106 is non-continuous in that the coating comprises an irregular surface -e.g. holes, wells, etc.- with a porosity of about 5%, where the pores are acknowledged as forming openings to the metal substrate), where Gentleman et al. acknowledges that a proportion of surface area of the metal substrate that is coated by the coating layer is at least partially dependent upon a porosity of the coating layer (Paragraphs 33 and 38: Sufficiently low porosity will prevent a fluid to come in contact with the metal substrate and sufficiently high porosity will permit a fluid to come in contact with the metal substrate). Therefore, a proportion of surface area of the metal substrate that is coated by the coating layer is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that increasing the porosity of a coating layer results in an increase in surface area of a metal substrate that is exposed to a fluid (and vice versa) (Paragraphs 33 and 38: The capability of a coating layer to resist fouling depends on a porosity of the coating layer). Therefore, since the general conditions of the claim, i.e. that a proportion of surface area of the metal substrate that is coated by the coating layer falls within a range, were disclosed in the prior art by Gentleman et al., it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to configure a metal surface as disclosed by Svensson with a proportion that is coated by the coating layer as taught by to Gentleman et al. improve heat exchanger service life by improving an ability of the heat exchanger to resist fouling (Paragraphs 33 and 38of Gentleman et al.) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Regarding claim 7, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above, where the metal surface is a steel surface (Paragraph 32).
Regarding claim 31, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above, where the ratio of Si:O in the silicon oxide coating is between 1.6 and 1.9 (Paragraph 24).
Regarding claim 32, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above, where the ratio of Si:O in the silicon oxide coating is between 1.7 and 1.8 (Paragraph 24).
Regarding claim 40, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above, where the surface adhesion strength of a biofilm to the surface is reduced by at least 50% compared to the uncoated surface (Paragraphs 69-72: Adhesion of a biofilm such as an organic material comprising oil is reduced by 65%).
Note: It is well settled that it is possible for functional language to define structure, but that where no distinguishing structure has been defined, the claim is not patentable and is fully met by the reference. See In re Swinehart, 169 USPQ 226. See also General Electric v. United States, 198 USPQ 73 which further reinforced the concept that functional language which defines no structure cannot distinguish over the prior art. In the instant case, the limitation “wherein the surface adhesion strength of mineral scaling from a calcium-based salt to the surface is reduced by at least 50%, wherein the surface adhesion strength of an asphaltene to the surface is reduced by at least 50% compared with the uncoated metal surface, wherein the surface adhesion strength of a biofilm to the surface is reduced by at least 50% compared with the uncoated metal surface, or wherein the surface adhesion strength of a solidified salt in a molten salt melt to the surface is reduced by at least 50% compared with the uncoated metal surface” (lines 2-9) constitutes a functional limitation, there being no differentiating structure recited.
Namely, since Svensson and Gentleman et al. disclose an anti-fouling treated closed heat exchanger as claimed, the composition of the anti-fouling treated closed heat exchanger of the prior art would be expected to have the same anti-fouling properties or very similar properties to the instantly claimed anti-fouling treated closed heat exchanger because both have the same composition, structure, and purpose (MPEP 2112.01).
Claims 2, 37, 38, 39 are rejected under 35 U.S.C. 103 as being unpatentable over Svensson (US 2014/0338867) and of Gentleman et al. (US 2010/0151264), and further in view of Toyama et al. (US 2019/0011200) and Yamasaki (US 2011/0259571)
Regarding claims 2, 37, 38, 39 are, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above. While Svensson generally discusses a relationship between surface roughness and fouling of heat exchanger surfaces (Paragraph 5), Svensson does not explicitly teach or disclose a roughness of the silicon oxide coating.
Toyama et al. teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (Defined by 3 and 11), on which surface is formed a coating (3) (Paragraph 40), where Toyama et al. discloses that a roughness of the coating determines an ability of the coating to resist fouling (Paragraph 37). Therefore, the roughness of the coating is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that reducing coating roughness results in an improvement in an ability of the coating to minimizing adhering particles (and vice versa) (Paragraph 37). Therefore, since the general conditions of the claim, i.e. that a roughness of the coating, were disclosed in the prior art by Toyama et al., it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to configure a coating as disclosed by Svensson with a roughness as taught by to Toyama et al. to improve heat exchanger service life by providing a surface of the heat exchanger with properties that are configured to reduce corrosion and fouling (Paragraphs 33 and 37 of Toyama et al.) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Further While Svensson generally discusses a relationship between surface roughness and fouling of heat exchanger surfaces (Paragraph 5), Svensson does not explicitly teach or disclose a roughness of the uncoated metal surface.
Yamasaki teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (Paragraph 177: Substrate), on which surface is formed a coating (Paragraph 177: Coating), where Yamasaki acknowledges that roughening a substrate prior to applying a coating [in addition to other surface treatments] improves an adhesion between the substrate and the coating (Paragraphs 156 and 177). Therefore, the roughness of the metal surface is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that increasing metal surface results in an improvement in an ability of a coating to adhere to a metal surface (Paragraphs 156 and 177). Therefore, since the general conditions of the claim, i.e. that a roughness of the metal surface, were disclosed in the prior art by Yamasaki, it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to configure a metal surface as disclosed by Svensson with a roughness as taught by to Yamasaki improve heat exchanger service life by improving a bond between a substrate and a coating (Paragraphs 156 and 177of Yamasaki) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Claims 3, 35, and 36 are rejected under 35 U.S.C. 103 as being unpatentable over Svensson (US 2014/0338867) and of Gentleman et al. (US 2010/0151264), and further in view of Gensker et al. (US 2010/0129645).
Regarding claims 3, 35, and 36, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above. However, Svensson does not explicitly teach or disclose the coating as having a thickness less than 1µm.
Gensker et al. teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (Paragraphs 89 and 131: A substrate), on which surface is formed a silicon oxide coating (Paragraph 110), where (claim 3) the thickness of the silicon oxide coating is below 1µm (Paragraph 110), where (claim 35) the thickness of the silicon oxide coating is below 0.5µm (Paragraph 110), and where (claim 36) the thickness of the silicon oxide coating is below 0.1µm (Paragraph 110). As a result it would have been obvious to one having ordinary skill in the art at the time the invention was filed to configure the coating as disclosed by Svensson in with a thickness as taught by Gensker et al. to improve heat exchanger corrosion resistance while minimizing resistance to thermal conductivity (Paragraph 111 of Gensker et al.)
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Svensson (US 2014/0338867) and of Gentleman et al. (US 2010/0151264), and further in view of Toyama et al. (US 2019/0011200)
Regarding claim 6, Svensson discloses an anti-fouling treated closed heat exchanger as discussed above. While Svensson generally discusses a relationship between surface roughness and fouling of heat exchanger surfaces (Paragraph 5), Svensson does not explicitly teach or disclose a roughness of the silicon oxide coating.
Toyama et al. teaches an anti-fouling treated closed heat exchanger comprising at least: a metal surface (Defined by 3 and 11), on which surface is formed a coating (3) (Paragraph 40), where Toyama et al. discloses that a roughness of the coating determines an ability of the coating to resist fouling (Paragraph 37). Therefore, the roughness of the coating is recognized as a result-effective variable, i.e. a variable which achieves a recognized result. In this case, the recognized result is that reducing coating roughness results in an improvement in an ability of the coating to minimizing adhering particles ( and vice versa) (Paragraph 37). Therefore, since the general conditions of the claim, i.e. that a roughness of the coating, were disclosed in the prior art by Toyama et al., it is not inventive to discover the optimum workable range by routine experimentation, and it would have been obvious to one of ordinary skill in the art at the time of the invention to configure a coating as disclosed by Svensson with a roughness as taught by to Toyama et al. to improve heat exchanger service life by providing a surface of the heat exchanger with properties that are configured to reduce corrosion and fouling (Paragraphs 33 and 37 of Toyama et al.) since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
Allowable Subject Matter
Claims 11 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The instant claims are directed to an anti-fouling treated closed heat exchanger, comprising: a closed heat exchanger comprising a metal surface (11) which is brought into contact with a heat exchange fluid in use, on which surface is formed a non-continuous coating (12) of silicon oxide which at least partially levels the surface microtopography of the metal surface (Figure 2b),
Where (claim 40) wherein the surface adhesion strength of mineral scaling from a calcium-based salt to the surface is reduced by at least 50%, wherein the surface adhesion strength of an asphaltene to the surface is reduced by at least 50% compared with the uncoated metal surface, wherein the surface adhesion strength of a biofilm to the surface is reduced by at least 50% compared with the uncoated metal surface, or wherein the surface adhesion strength of a solidified salt in a molten salt melt to the surface is reduced by at least 50% compared with the uncoated metal surface,
Where (claim 11) the heat exchanger further comprises a self-assembled monolayer of covalently bonded PEG on the silicon oxide coating, and
Where (claim 13) the heat exchanger further comprises a self-assembled monolayer of 1H,1H,2H,2H- perfluorodecyltrichlorosilane (FDTS) on the silicon oxide coating
The cited art discloses various anti-fouling treated closed heat exchangers as discussed in the 35 USC 103 rejections as discussed above. While the cited art discloses various types of metal surfaces such as steel that are coated with one or more continuous or non-continuous coating layers including at least silicon oxide, the cited art does not teach or disclose providing an additional coating layer in the form of (i) a self-assembled monolayer of covalently bonded PEG on the silicon oxide coating as recited in claim 11 or (ii) a self-assembled monolayer of 1H,1H,2H,2H- perfluorodecyltrichlorosilane (FDTS) on the silicon oxide coating as recited in claim 13.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 2011/0003143 discloses coating layers with varying thickness and application.
US 2020/0271400 discloses coating films configured to fill base layer pores.
US 2020/0025464 discloses composite coated surfaces.
US 2015/0184956 discloses flattening of surfaces through coating layers.
US 2007/0137627 discloses selective application of protective coatings.
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/JASON N THOMPSON/Examiner, Art Unit 3763
/FRANTZ F JULES/Supervisory Patent Examiner, Art Unit 3763