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 .
Election/Restrictions
Applicant’s election without traverse of Species of A1 and B1 in Group I, encompassing claims 1-8, 14, and 16-21, in the reply filed on 4/3/2026 is acknowledged.
NOTE: claims 10-13 are further withdrawn due to the dependency to the withdrawn claim 9 (species A2)
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation is: “a reagent dose controller” in claim 1.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-8, 14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Goodwin et al (PG-PUB US 2004/0033945) in view of Tarat (WO 2015/173589).
Regarding claim 1, Goodwin et al dis close a method of treating a material/substrate with glow discharge in a glow discharge chamber (i.e., … glow discharge plasma in a treatment vessel, ABSTRACT & paragraphs [0010] & [0020]). The method comprises steps of
(1) introducing a plasma discharge gas with a controlled flow rate from a gas source to ignite the glow discharge plasma (i.e., delivering gaseous forming feedstock … causing formation of a glow discharge plasma …, paragraphs [0010], [0020], & [0025]);
(2) simultaneously supplying a liquid/solid material with a controlled flow rate from a syringe pump 14, wherein the flow rate of the plasma gas and the flow rate of the liquid/solid material are separately/independently controlled (i.e., simultaneously delivering a reagent …, wherein the reagent is a liquid or a solid, wherein … allow independent control of the rate of …, Figure 1, paragraphs [0012], [0023], & [0025]); and
(3) exposing the material/substrate with the liquid/solid material and the glow discharge plasma (i.e., contacting the sample …, Figure 1, paragraphs [0017], [00200], & [0025]).
The limitation of “a reagent dosing controller” is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The instant specification discloses that the reagent dosing controller may be a pump, such as a syringe pump (paragraphs [0028] & [0033]). Goodwin teaches a syringe pump 14 (Figure 1, paragraph [0023]), reading on “a reagent dosing controller”.
Goodwin teaches that the plasm discharge gas is controlled with a certain flow rate (paragraph [0025]), but does not teach to use a gas flow controller to control the gas flow rate. 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 the plasma gas is introduced to the treatment chamber 3 and the gas flow rate is controlled by a mass flow controller 13 (page 16 line 10-22).
Therefore, it would be obvious for one having ordinary skill in the art to provide a mass flow controller as suggested by Tarat in order to properly control the gas flow rate while using the method of Goodwin.
Regarding claim 2, Goodwin teaches a liquid material is supplied from the syringe pump 14 (paragraphs [0012], [0023], & [0025]).
Regarding claim 3, Goodwin teaches a syringe pump 14 (Figure 1, paragraph [0023]).
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, 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]). Tarat teaches that various parameters of performance conditions, such as the flow rate of process material, affect the treatment results (page 25 line 5-19). Therefore, it would be obvious for one having ordinary skill in the art to adjust/optimize the flow rate of the process material in order to achieve desired treatment.
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, Tarat teaches a mass flow controller 13 for controlling the gas flow rate (page 16 line 10-22).
Regarding claim 18, Goodwin teaches that residual gas is evacuated (paragraph [0025]0, but does not teach a vacuum pump or a vacuum valve. However, Tarat teaches that residual gas is evacuated by a vacuum system having a vacuum pump and a valve (page 16 line 9-11, page 18 line 16-18, &page 20 line 8-12). Therefore, it would be obvious for one having ordinary skill in the art to include a vacuum pump and a valve as suggested by Tarat in order to evacuate the residual gas while using the method of Goodwin.
Regarding claim 19, 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 Goodwin.
Regarding claim 20, Goodwin teaches that the material/substrate may comprise powder (paragraph [0017]). Tarat teaches that the material may be particulate material (page 10 line 20).
Claim 21 is rejected under 35 U.S.C. 103 as being unpatentable over Goodwin et al (PG-PUB US 2004/0033945) and Tarat (WO 2015/173589) as applied to claim 1 above, and further in view of Walters et al (PG-PUB US 2013/0320274).
Regarding claim 21, Tarat teaches that the material is agitated by a screw conveyor (page 6 line 17-19 & page 18 line 2-5), but Goodwin/Tarat does not teach the agitating being achieved by rotating the treatment vessel. However, Walters et al disclose a method of treating material with glow discharge plasma in a treatment vessel (ABSTRACT). Walters teaches that the treatment vessel 4 is a rotatable drum, wherein the material is agitated by rotating the treatment drum, resulting in good results and improved performance of the treated material (Figure 1, paragraphs [0086] – [0087], [0097]. & [0128]). Therefore, it would be obvious for one having ordinary skill in the art to rotate the treatment vessel as suggested by Walters in order to obtain good results and improve performance of treated material while using the method of Goodwin/Tarat.
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.
Claims 1 and 21 are 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 20-21 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.
Conclusion
Claims 1-8, 14, and 16-21 are rejected. Claims 9-13, 15, and 22-25 are withdrawn.
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/XIUYU TAI/Primary Examiner, Art Unit 1795
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