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 July 29, 2026 was received. Claim 1 was amended. Claims 2-7 were canceled. No claim was added.
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 May 7, 2026.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on July 29, 2026 has been entered.
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.
Claim 1 is 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 1, while the specification discloses “a controller for controlling driving of the moving device 50” (specification paragraph 0022) and “as shown in FIG. 4C, in the method for applying the thermal barrier coating according to still another embodiment, the step S10 of forming the bond coat layer 7 may include forming the bond coat layer 7 by high velocity flame spraying while moving the first thermal spray gun 30A by a first moving device 50A. Then, the step S20 of forming the top coat layer 9 may include forming the top coat layer 9 while moving the second thermal spray gun 30B different from the first thermal spray gun 30A by a second moving device 50B different from the first moving device 50A” (specification paragraph 0033); the specification does not explicitly disclose the actual handover step as claimed. Particularly, the specifics of the controller controls driving of each of the first industrial robot and the second industrial robot such that a driving status is switched from the first industrial robot to the second industrial robot is not disclosed in the specification or original claims. There is no discussion of the controller controls of the switching.
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.
Claim 1 is 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, it is unclear what is considered as “a working area” or which component does such area associated with (robot, spray gun or the sprayed area etc). The specification also does not provide a specific definition of such term. For purpose of examination, any area in the chamber/booth is considered to read on the claimed limitation. However, Applicant should clarify what is intended, without adding new matter.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Li (US20180371600) in view of Reid (US20160083829) and Brund (EP0989199).
Regarding claim 1, Li teaches a method of forming a thermal barrier layer (TBC) (paragraphs 0062and 0067). Li teaches to form a bond coat 108 (abstract, paragraph 0022) on a component of high temperature mechanical system 106 (paragraph 0003) made with mixture of silicon metal and ceramics etc. (heat-resistant alloy base material) (paragraph 0020) by high velocity flame spraying device 110 (thermal spray gun) in a chamber 102 (paragraphs 0042, 0052 and 0035), wherein the chamber 102 encloses the substate and the thermal spray device 110 (paragraph 0017, figure 1). Li’s chamber 102 that encloses the substate 106 and the thermal spray device reads on the limitations of the thermal spray booth that forms a space partitioned off from surroundings. It would be reasonably expected that the chamber 102 is inside some kind of building and room (working room) as it is conventional for such reactor type set up are being disposed in a working room. Li teaches to form TBC on the bond coat 108 with the same high velocity flame spraying device 110 and system by thermal spraying a suspension (paragraphs 0062 and 0043), wherein the suspension comprising particles of the coating material in a liquid carrier (paragraphs 0038-0039) and the coating material is ceramic (paragraph 0067) (forming a top coat layer by thermal spraying a suspension containing ceramic powder by high velocity flame spraying on the bond coat layer of the object disposed in the thermal spray booth, with the thermal spray gun disposed in the thermal spray booth). Li teaches the bond coat layer is formed on the disposed on a stage 104 inside the chamber 102 (specific location in the thermal spray booth), wherein the stage restrains the substate (stationary) or rotate the substrate along at least one axis to position substrate relative to thermal spray device (rotating state) (paragraph 0035). Since Li teaches the bond coat and top coat are formed by the same thermal spray gun 110 (paragraph 0062), the substrate is considered to be disposed in the same specific location (stage 104) when the bond coat layer and the top coat layer are being deposited, without transferring the object out of the thermal spray booth in between the deposition of the two coatings. Li teaches the bond coat and the ceramic powder are forming by the same thermal spray gun 110 (paragraph 0062) and the thermal spray gun 110 is moved relative to the surface of the substrate by a computer device (paragraph 0061) (moving device/ industrial robot). However, duplication of parts has no patentable significance unless a new and unexpected result is provided (see MPEP 2144.04VI). Thus, it would be obvious to one of ordinary skill in the art to use two thermal spray guns in their respective moving device (industrial robots) to form the bond coat and the top coat in view of the teaching of Li, as the same results of forming thermal sprayed coatings (bond coat and top coat) are achieved by using either one or two thermal spray guns with their respective moving device/ industrial robot. Since Li teaches the bond coat and top coat are being deposited on the substrate when it is being held on the same a stage 104 inside the chamber 102, the working area of the two duplicated guns and duplicated robots would be overlapping, specifically, “a working area” is not defined in the claim or the specification, thus any area in the chamber would appear to read on the claimed limitation.
Nevertheless, Reid teaches a method of forming bond coat and TBC by thermal spraying (paragraphs 0003, 0006 and 0021) and discloses the two coating can by formed by different spray head in the same thermal spray booth (first thermal spray gun and second thermal spray gun) on a same head portion 131 supported by a robot arm (industrial robot) (paragraphs 0017, 0022, see figures 1 and 3) (first and second spray gun, industrial robot are all disposed in the same spray booth). Reid teaches the substrate is deposed in a thermal spray booth in a working room 103 includes an enclosure or space having isolation from an exterior environment (paragraph 0017, figure 1). Reid teaches the substate is held by the substrate support 120 (stationary) during the deposition of the two coatings (paragraph0017, figure 1), thus Reid teaches the bond coat and top coat disposed on the substrate when it is disposed in the same specific location without transferring the object out of the thermal spray booth in between the deposition of the two coatings, and the working area of the first and second industrial robot overlaps. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use two different guns as suggested by Reid in the method of Li because Reid teaches such system allows to form two different coatings on a substrate (paragraph 0022). Duplication of parts has no patentable significance unless a new and unexpected result is provided (see MPEP 2144.04VI). Thus, it would be obvious to one of ordinary skill in the art to put two thermal spray guns in their respective industrial robot adjacent to each other (two industrial robots in the same spraying booth to support the first and second thermal spray gun respectively) to form the bond coat and the top coat in view of the teaching of Li in view of Reid, as the same result of forming thermal sprayed coatings (bond coat and top coat) are achieved by using either one or two moving devices. Since both Li and Reid teach second coat (top coat for Li) is formed after the first coat (bond coat for Li) (Li paragraphs 0043 and 0062; Reid figure 2), and both Li and Reid teach the two coats (bond coat and top coat for Li, first and second coats for Reid) are formed in the same thermal spray booth (Li paragraphs 0042, 0035 and 0052, Reid figures 1 and 2), Li in view of Reid teaches to keep the object disposed in the thermal spray booth in the specific location after completion of the forming of the bond coat layer by high velocity flame spraying. Reid teaches the second thermal spray gun is attached to the second industrial robot before the coating process including before the completion of the forming of the bond coat layer by high velocity flame spraying (paragraphs 0017 and 0022). Since the Li in view of Reid teaches forming the bond coat layer by a first thermal spray gun on a first industrial robot before forming the top coat by a second thermal spray gun on a second industrial robot as discussed above, it is expected the handover from the forming of the bond coat layer to the forming of the top coat layer is controlled by either an operator or a computer controller to controls driving of each of the first industrial robot and the second industrial robot and a driving status is switched from the first industrial robot to the second industrial robot for the two coatings. It is well settled that it is not inventive to broadly provide a mechanical or automatic means to replace a manual activity which has accomplished the same results. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). Thus, it would be obvious to one of ordinary skill in the art to use a controller (either human or computer) to control driving of each of the first and second industrial robots in view of the teaching of Li in view of Reid.
Nevertheless, Brund teaches a method of forming multiple plasma spraying layers and teaches two different layers are formed by two different guns moved by two different robots (abstract, paragraphs 0029). Burnd is an analogues art as both high velocity flame spraying and plasma spraying are thermal spraying processes. Brund teaches the plasma application to the object 12 is made in an enclosed chamber (thermal spray booth), five individual robots (701, 702, etc) (industrial robots) belong to five separate stations (501, 502 etc) are provided for spraying first layers (14, 16 etc) on the object 12, wherein each robot comprises a plasma spray gun (thermal spray gun) and is controlled to move toward the object for spraying each layer (move the thermal spray guns by the industrial robots in the thermal spray booth); and wherein the robots are disposed adjacent each other (paragraph 0029, figures 1 and 2). Brund teaches the substrate is rotated during the deposition (paragraph 0029). All the robots are set up before the coating started (see figure 1), thus Brund teaches the forming of the second layer includes using the second thermal spray gun attached to the second industrial robot before completion of the forming of the first layer by the first thermal spray gun. Brund teaches the handover from forming the first coating and second coating is controlled by the assembly line 32 (paragraph 0027) and the driving the robots down toward the object (paragraph 0029) (a driving status is switched from the first industrial robot to the second industrial robot), but does not explicitly teach these components are controlled by a controller. However, it is well settled that it is not inventive to broadly provide a mechanical or automatic means to replace a manual activity which has accomplished the same results. In re Venner, 262 F.2d 91, 95, 120 USPQ 193, 194 (CCPA 1958). Thus, it would be obvious to one of ordinary skill in the art to use a controller (either human or computer) to control driving of each of the first and second industrial robots in view of the teaching of Li in view of Reid. The limitation “a working area” is not defined in the claim nor is being associated with any of the spray gun or robot in the claim, thus any area in the chamber/booth would appear to read on the claimed limitation, and considered as overlapping with the first industrial robot. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention form multiple plasma spraying layers with different plasma gun moved by their respective industrial robots as suggested by Brund in the method of Li in view of Reid because Brund teaches such systems allow various layers of materials being applied to the substrate by plasmas spraying (paragraph 0001), which is desired by Li and Reid also.
Response to Arguments
Applicant's arguments and declaration filed on July 29, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
The added/amended features in claim 1 find support in the specification of the instant application.
Brund does not teach “the working areas” of the respective robots do no overlap. And Brund teaches away from the claimed configuration.
The claimed configuration achieves a remarkable synergistic effect, which is different from Reid’s teaching of physical replacement of the tool head inevitably causes downtime. In the configuration in Brund, transferring the object between stations inevitably causes a temperature drop, which is not the same as the claimed invention.
Objective evidence of unexpected results.
Improper Hindsight.
In response to Applicant’s arguments, please consider the following comments:
Support for the limitation of “without transferring the object out of the thermal spray booth” are found in instant specification paragraphs 0018 “.. it is not necessary to move the heat-resistant member 1 as the object to another thermal spray booth after the bond coat layer 7 is formed, the trouble of moving the heat-resistant member 1 to the different thermal spray booth becomes unnecessary and set up work such as setting the heat-resistant member 1 until the start of thermal spraying by suspension high velocity flame spraying can greatly be reduced…”.
“A working area” is not defined in the specification or the claim as to which area is considered within the boundary of the working area. The claim also does not associate “a working area” with any component (spray gun or robot) of the claim. Thus, any area in chamber/booth is considered to read on the limitation of “working area” and overlaps with the first industrial robot. Thus, Brund teaches at least a part of “a working area” overlaps with the first industrial robot and does not teach away from such claimed limitations. In addition, while Brund teaches each station has a robots, Brund does not explicitly teach “working areas” of the respective robots do no overlap, especially “working areas” is not defined by the claimed invention. Since the claimed configuration is unclear, Brund does not teaches away from the claimed configuration. Furthermore, Li and Ried clearly teaches the working areas of the first and second guns (and their respective robots) are overlapping as the object is stay in the same specific location in the thermal spray booth for deposition of the two coatings, or first thermal spray gun is disposed such that at least a part of a working area overlaps with the first industrial robot. Brund is used to show the different thermal sprayed coatings can be formed by different guns moved by their own respective industrial robot. The rejection does not based on replacing the whole thermal spraying booth of Li in view of Ried by Brund’s product line. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Applicant further argue Brund does not teach the object is kept stationary or rotating without being transferred. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., object is kept stationary or rotating without being transferred) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Brund teaches the two guns moved by their respective robot arms, thus the combination of Li in view of Reid and Brund does not involve changing the two gun heads as disclosed by Reid. The combination of Li in view of Reid and Brund teaches all the limitations of the two guns and two robots configurations are claimed. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., no temperature drop, without transferring the object) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
While the rejections includes the discussion of the duplication of parts, the rejections based on Li in view of Reid and Brund teaches all the claimed limitations and does not solely rely on duplication of parts or obvious design choice reasoning. In addition, Applicant’s declaration does not establish unexpected results. It is well settled that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MEPE 716.02(b)). Such evidence should include experimental data to show the quantified differences in results.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
Conclusion
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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