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 .
Status of Application
Claims 1-18 are pending and presented for examination.
Response to Arguments
Applicant's arguments filed 11/18/2025 have been fully considered but they are not persuasive. The Applicant argues that the prior art of record fails to teach or suggest purging the region around the side of the substrate. In particular, Applicant contends that the prior art discloses evacuating the pressure which is substantially different. The Applicant argues that the evacuation of air is caused by the pump and the helium is not causing the purge as alleged by the Examiner, and would only be filling the chamber rather than purging the region.
However, the Examiner disagrees and notes that in the section cited by Applicant in their Remarks that it is disclosed that the addition of helium to the chamber is done while the pump is being operated. This step will cause the helium to be pulled around the sides of the substrate and evacuated thereby purging any remaining air and not simply filling the chamber as suggested by Applicant. The section cited by Applicant in their Remarks specifically recites that after opening the valves to provide the helium after a period of two minutes any remaining air was purged. Therefore, the Examiner maintains that the prior art teaches the carrier gas purging the region around the side of the substrate to be coated.
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.
1. Claims 17 and 18 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. Claims 17 and 18 newly recite that purging imparts a pressure of greater than 1 bar to the region. However, the original disclosure fails to support this newly added limitation. There is nothing in the specification which makes clear that the purging causes a pressure of greater than 1 bar to “the region” which is the region around the side of the substrate to be coated. Applicant points to paragraph 0014 to support new claims 17 and 18. However, paragraph 0014 simply recites “It may be advantageous to provide for a coating which can be functionalised and have an antibiological or antiviral treatment embedded therein.” A thorough search of the disclosure failed to disclose support for claims 17 and 18. Therefore, claims 17 and 18 fail to comply with the written description requirement.
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.
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.
2. Claim(s) 1-11 and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coulson (U.S. PGPUB No. 2013/0211004) in view of Coulson et al. (WO 2005/089961, hereinafter referred to as Coulson2).
I. Regarding claims 1, 2, 4, 6-8 and 16, Coulson teaches a coating comprising an upper side and a lower side (0010) on a surface of a substrate (abstract) with the upper side exposed to the atmosphere (0014). Coulson teaches an example where the coating is a polymer including silver nanoparticles formed from a monomer and silver nanoparticles (which are pathogen inhibiting, such that the upper side of the coating is adapted to be in contact with pathogens) exposed to a plasma formed from a carrier gas, helium (0101), which causes polymerization of the monomer and deposition on to the article (0100-0102). Coulson teaches that the plasma may be conducted at atmospheric pressure (0072). Coulson teaches purging the atmosphere around the sides of the substrate by pulling a vacuum and then teaches providing the carrier gas around the sides of the substrate. Coulson fails to explicitly teach that the carrier gas purges the region around the side of the substrate.
However, Coulson teaches that the equipment used is disclosed and the method for producing the substrates in accordance with the invention is specifically described in Coulson2 (0087). Furthermore, Coulson2 teaches the plasma process (abstract) comprising pulling a vacuum to purge the atmosphere around the sides of a substrate to be treated (page 18, lines 30-34) followed by providing a carrier gas while pulling the vacuum such that the carrier gas purges the region around the side of the substrate (page 19, lines 9-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Coulson’s process to ensure that carrier gas is used to purge the region around the side of the substrate as disclosed by Coulson2 to thereby arrive at the claimed product. One would have been motivated to make this modification as Coulson specifically teaches that Coulson2 should be referred to for the treatment process and Coulson2 teaches that the purging with the carrier gas removes any remaining air in the system (page 19, lines 15-16) which will prevent contamination.
II. Regarding claim 3, the Examiner notes that claim 3 is directed towards a coating. Furthermore, the method in which the coating is made is not necessarily relevant to the properties of the coating. Coulson in view of Coulson2’s coating prepared from a monomer in an atmospheric pressure (1 atm) carrier gas plasma (see above) will be identical to a coating made with the same monomers and nanoparticles in a plasma that is very slightly above atmospheric pressure, for example at 1.0001 atm. Therefore, Coulson in view of Coulson2’s coating is identical to the coating of claim 3. Thus, Coulson in view of Coulson2 make obvious claim 3.
III. Regarding claim 5, Coulson in view of Coulson2 teach all the limitations of claim 1 (see above), but fail to explicitly teach wherein more than one species of nanomaterial is in the coating. However, Coulson in view of Coulson2 does teach that the nanomaterial included can be any convenient type and can include metal, silicone, silica or polymeric nanoparticles (see Coulson at 0019) and can have different sizes (see Coulson at 0020). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Coulson in view of Coulson2’s coating by using a combination of different nanoparticles or different nanoparticle sizes. One would have been motivated to make this modification as Coulson in view of Coulson2 teach that different types and sizes of particles can be used (see above) and the selection of multiple species of nanoparticles would allow for tailoring and optimization of the properties of the resultant coating.
IV. Regarding claims 9-11 and 13-15, Coulson teaches a method comprising positioning a substrate below a treatment module (0087, 0091 and 0100); purging the local atmosphere, using helium as a carrier fluid (0101); supplying helium as a plasma fluid to an electrode region comprising two or more electrodes (0079 and 0101); igniting a plasma forming a plasma in the electrode region (0079 and 0101); supplying a monomer and nanomaterial in the monomer as a carrier fluid to the plasma through a gas aperture (0080, 0082 and 0102) such that the monomer is polymerized and is fixed to the substrate with the nanomaterial distributed throughout the coating (0102). Coulson’s nanomaterial is silver nanoparticles which are known to release ions which will interfere with pathogens. Finally, Coulson also teaches that the nanomaterial may be applied in a pre-treatment step before being supplied to the plasma (0016). Coulson fails to explicitly teach that the local atmosphere is purged with the carrier fluid.
However, Coulson teaches that the equipment used is disclosed and the method for producing the substrates in accordance with the invention is specifically described in Coulson2 (0087). Furthermore, Coulson2 teaches the plasma process (abstract) comprising pulling a vacuum to purge the atmosphere around the sides of a substrate to be treated (page 18, lines 30-34) followed by providing a carrier gas while pulling the vacuum such that the carrier gas purges the region around the side of the substrate (page 19, lines 9-19). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Coulson’s process to ensure that carrier gas is used to purge the local atmosphere between the article and treatment module as disclosed by Coulson2. One would have been motivated to make this modification as Coulson specifically teaches that Coulson2 should be referred to for the treatment process and Coulson2 teaches that the purging with the carrier gas removes any remaining air in the system (page 19, lines 15-16) which will prevent contamination.
V. Regarding claims 17 and 18, Coulson in view of Coulson2 make obvious claims 1 and 9 (see above), but fail to teach that the purging imparts a pressure of greater than 1 bar to the region. However, controlling the pressure applied near a surface with the helium flow will control the amount of air/contaminants that are left near the surface. Furthermore, it is desirable to remove all the air contaminant as disclosed by Coulson2 prior to igniting a plasma (page 19, lines 15-18). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to choose the instantly claimed pressure range to ensure thorough purging of the air prior to igniting the plasma through process optimization, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. See In re Boesch, 205 USPQ 215 (CCPA 1980).
3. Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Coulson in view of Coulson2 as applied to claim 9 above, and further in view of Kim (U.S. Pat. No. 8138444).
Regarding claim 12, Coulson in view of Coulson2 teach all the limitations of claim 9 (see above), but fail to teach the treatment module identifying an article below the electrodes and activating the electrodes corresponding to the size of the article. However, Kim teaches a plasma apparatus (abstract) which identifies the presence of an article to be treated below the electrodes (abstract) and then activates the electrodes based on the size of the article (column 7, lines 2-52 and column 9, lines 18-56). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Coulson in view of Coulson2’s process by additionally having the treatment module identify an article below the electrode and then activating the electrodes based on the size of the article as disclosed by Kim. One would have been motivated to make this modification as it would allow for different sized substrates to be treated as well as for the automatic detection of a substrate and activation of the plasma coating process, as well as having greater control over the coating process and the location of the plasma in relation to the article.
Conclusion
Claims 1-18 are pending.
Claims 1-18 are rejected.
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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/ROBERT S WALTERS JR/
December 1, 2025Primary Examiner, Art Unit 1717