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 § 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.
Claims 1, 4-8,14, 16-18, 20, 26,30-32, and 34 are rejected under 35 U.S.C. 103 as being unpatentable over Walters et al (PG-PUB US 2017/0174520) in view of Goodwin et al (PG-PUB US 2004/0022945).
Regarding claim 1, Walters et al disclose a method of treating a material with glow discharge in a treatment chamber (i.e., … glow discharge plasma in a treatment vessel, ABSTRACT & paragraph [0058]). The method comprises steps of
(1) simultaneously supplying gas from a gas source and hexamethyldisilane to the treatment chamber 10 for igniting the glow discharge plasma, wherein
(i) the supply of gas is controlled by a mass flow controller and
(ii) the treatment chamber 10 include a rotatable drum 20 (i.e., delivering a gaseous forming feedstock … causing formation of a glow discharge plasma …, and simultaneously delivering a reagent …, wherein the sample … by rotating the treatment vessel …, Figures 6- 8, paragraphs [0089] - [0096], & Example 2);
(2) forming the glow discharge plasma to treat the material (i.e., contacting the sample …, Figures 6- 8, paragraphs [0045] - [0048], & Example 2).
Walters teaches to control the supply of gas during the plasma process by using a mass flow controller and liquid material is supplied to the treatment chamber (paragraphs [0045] - [0048], [0092], & Example 2), but does not teach to utilize a pump to control the liquid flow rate. However, Goodwin et al dis close a method of treating a material/substrate with glow discharge (ABSTRACT & paragraphs [0010] & [0020]).
Goodwin teaches that plasma generating gas is introduced and the flow rate of the liquid material is separately controlled by a syringe pump 14 for properly controlling the treatment (Figure 1, paragraphs [0012] – [0014], [0023], & [0025] – [0027]).
Therefore, it would be obvious for one having ordinary skill in the art to control the gas supply with the mass flow controller while using a syringe pump to separately control the flow rate of the liquid material as suggested by Goodwin in order to properly treat the material while using the method of Walters with reasonable expectation of success.
Regarding claim 4, Goodwin teaches a syringe pump 14 (Figure 1, paragraph [0023]).
Regarding claim 5, Goodwin teaches a syringe pump 14 (Figure 1, paragraph [0023]).
Regarding claim 6, Goodwin teaches a syringe pump 14 (Figure 1, paragraph [0023]).
Regarding claim 7, Goodwin teaches that various liquid, including non-volatile liquid, can be used as liquid material (paragraph [0012]).
Regarding claim 8, Walters teaches to use salinization reaction and hexamethyldisilane (paragraphs [0045] – [0048]). Goodwin teaches that silane can be used as liquid material (paragraph [0012]).
Regarding claim 14, Goodwin teaches to use a syringe pump for delivering liquid/solid/process material (Figure 1, paragraph [0023]). Furthermore, it has been held that the provision of adjustability, where needed, involves only routine skill in the art. In re Stevens, 101 USPQ 284 (CCPA1954). Therefore, adjusting/varying the flow rate is within ordinary skill in the art because it only involves routine skill in the art.
Regarding claim 16, Goodwin teaches that the liquid material is atomized by atomizer 12 (Figure 1, paragraph [0023]).
Regarding claim 17, Walters teaches that the supply of gas is controlled by a mass flow controller (paragraph [0092]).
Regarding claim 18, Walters teaches to connect a pumping arrangement to create vacuum (paragraph [0093]). Goodwin teaches that residual gas is evacuated (paragraph [0025]).
Regarding claim 20, Walters teaches that the starting material may contain particular material (paragraphs [0035], & [0063]). Goodwin teaches that the material/substrate may comprise powder (paragraph [0017]).
Regarding claim 26, Walters teaches electrodes 32 (Figures 6-8, paragraphs [0096]).
Regarding claim 30, Walters teaches to supply hexamethyldisiloxane to the treatment chamber 10 for igniting the glow discharge plasma (Example 2). Goodwin teaches to supply the liquid material to generate glow discharge plasma (Example 1).
Regarding claim 31, Walters teaches to supply hexamethyldisiloxane to the treatment chamber 10 for igniting the glow discharge plasma (Example 2). Goodwin teaches to supply the liquid material to generate glow discharge plasma (Example 1).
Regarding claim 32, Walters teaches a plurality of gas inlet ports 38 (Figure 8, paragraph [0092]).
Regarding claim 34, Walters teaches to connect a pumping arrangement to create vacuum (paragraph [0093]). Goodwin teaches that residual gas is evacuated (paragraph [0025]).
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over Walters et al (PG-PUB US 2017/0174520) and Goodwin et al (PG-PUB US 2004/0022945) and as applied to claim 18 above, and further in view of Tarat (WO 2015/173589).
Regarding claim 19, Walters/Goodwin does not teach a pressure feedback system. However, Tarat disclose a method of treating a material with a glow plasma with an inert plasma gas (ABSTRACT & page 28 line 22 – page 29 line 3). Tarat teaches that a programmable pressure controller along with a pressure transducer and a pressure sensor is provided for monitoring the pressure on the vacuum pump/valve side for properly monito the process conditions within the apparatus (page 18 line 19-21 & page 19line 4-6). Therefore, it would be obvious for one having ordinary skill in the art to include a programmable pressure controller along with a pressure transducer and a pressure sensor as suggested by Tarat in order to properly monitor the process conditions while using the method of Walters/Goodwin.
Claims 27-29 and 33 are rejected under 35 U.S.C. 103 as being unpatentable over Walters et al (PG-PUB US 2017/0174520) and Goodwin et al (PG-PUB US 2004/0022945) and as applied to claims 1 and 26 above, and further in view of Walters et al (PG-PUB US 2013/0320274, referred to Walter’274 thereafter).
Regarding claims 27-29 and 33, Walter teaches the treatment chamber 10 having a rotatable drum 20 and a plurality of hollow electrodes 32 having internal gas conduit for receiving supplying material (Figures 8, paragraph [0090], [092] & [0094]), but Walters/Goodwin does not teach a central electrode having supplying ports. However, , Walters’274 et al disclose a method of treating material with glow discharge plasma in a treatment vessel (ABSTRACT). Walters’274 teaches that the treatment vessel 4 is a rotatable drum and a central electrode 3 having a central feed channel 70 (Figures 1-3 1, paragraphs [0128] – [0136]). The teaching of Walters’274 shows that utilizing a central hollow electrode having a feed channel with a plurality of ports is an equivalent electrode configuration for treating material using glow discharge plasma in a rotatable drum. Therefore, it would be obvious for one having ordinary skill in the art to utilize a central hollow electrode having a central feed conduit with a plurality of gas ports because it is an art-recognized equivalent.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 10 of copending Application No. 18/027079 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims a method comprising substantially the same steps as that of the copendin application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 17 of copending Application No. 18/027084 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims a method comprising substantially the same steps as that of the copendin application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant’s arguments have been considered but are moot in light of the applicant’s amendments.
Conclusion
Claims 1, 4-8, 14, 16-20, and 26-34 are rejected. Claims 9-13, 15, and 22-25 are withdrawn.
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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/XIUYU TAI/Primary Examiner, Art Unit 1795
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