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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 20 July 2026 has been entered.
Election/Restrictions
In light of reopening prosecution, the restriction requirement dated 23 May 2023 has been reinstated. The rejoinder of claim 27 has been withdrawn. Therefore, claim 27 is now withdrawn and clams 21, 25-26, 31-32, 34-35, 37 and 39-44 are examined as set forth below.
Response to Amendment
Claims 21, 25-27, 31-32, 34-35, 37 and 39-44 are currently pending in the application. Claim 27 is withdrawn. The rejections of record from the office action dated 17 January 2025 not repeated herein have been withdrawn.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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 21, 25-26, 31-32, 34-35, 37, and 39-40 are rejected under 35 U.S.C. 103 as being unpatentable over David et al. (US 6,749,813 B1).
Regarding claims 21, 25-26, 31-32, 34-35, 37 and 39-40, David discloses a fluid handling device including capillaries/tubes for use in liquid chromatography having a substrate and a diamond-like coating on the substrate that provides good wetting and flow characteristics on the internal surface, wherein the diamond-like coating comprises an amorphous coating comprising carbon, silicon and oxygen and may include hydrogen and may be formed by plasma or vapor deposition and the coating may be surface modified with oxygen (i.e. a liquid chromatography component comprising a substrate and an amorphous coating on the substrate, the amorphous coating having a base layer and a surface layer with a different composition than the base layer, the base layer including carboxysilane; wherein the amorphous coating comprises carbon, hydrogen, silicon, oxygen or combinations thereof; wherein the amorphous coating is at least partially formed from oxidation; wherein the liquid chromatography component is tubing; wherein the liquid chromatography component has a channel, lumen, passageway or cavity; wherein the amorphous coating includes SiO2, SiC, SiOxCy, SiCxHy)(abstract, C1/L10-15, C1/L50-65, C2/L10-20, C3/L24-30, C4/L45-50, C5/L1-15, C6/L1-5, C8/L43-60, C9/L20-35).
It is the examiner’s position that the portion of the diamond-like coating that is surface modified with oxygen can be considered the surface layer and the unmodified portion could be considered the base layer (i.e. different compositions).
It would have been obvious one of ordinary skill in the art to choose any diamond-like material disclosed for the coating including one comprising carbon, silicon and oxygen (i.e. carboxysilane) because it is expressly disclosed by David.
Regarding claim 25, given that the coating is identical in composition to the instant coating, it is the examiner’s position that it is intrinsically resistant to adhesion of biomolecules and/or inert to analytes in contact therewith. Alternatively, given that no analyte is specified, it is the examiner’s position that one of skill in the art could pick an inactive analyte to which the coating is inert to prevent reaction with the coating.
Regarding claim 26, it is the examiner’s position that the capillary tubes may be considered a fitting. David also discloses that the device/article may include valves and pumps (C7/L49-60).
Regarding claim 34, the diamond-like coating is formed by chemical vapor deposition using hydrocarbons (i.e. at least partially formed from an organic molecular precursor)(C12/L45-67)
Regarding claim 37, David discloses that the diamond-like coating may have a thickness of 10 Angstroms to 10 µm (i.e. overlapping a thickness of about 10 nm to about 5 µm)( C11/L10-17).
Claims 21, 25-26, 31-32, 34-35, 37, 39-40 and 42-44 are rejected under 35 U.S.C. 103 as being unpatentable over Dawes et al. (US 2005/0077222 A1) in view of David et al. (US 6,749,813 B1).
In regard to claims 31 and 42-43, Dawes discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assembly (abstract). The separation column is preferably a micro capillary or nano liquid chromatography column ([0026]), also a metal frit and a metal sheath (i.e. metal or metallic liquid chromatography component; having a lumen with an interior surface)([0017]-[0018]). The separation column is preferably made of glass lined metal tubing (i.e. metal or metallic liquid chromatography component; having a lumen with an interior surface; chromatographic column)([0026]). Thus, a liquid chromatography component comprising a metal substrate.
Dawes is silent with regard to a base layer including carboxysilane.
David discloses a fluid handling device including capillaries/tubes for use in liquid chromatography having a substrate and a diamond-like coating on the substrate that provides good wetting and flow characteristics on the internal surface, wherein the diamond-like coating comprises an amorphous coating comprising carbon, silicon and oxygen and may include hydrogen and may be formed by plasma or vapor deposition and the coating may be surface modified with oxygen (i.e. an amorphous coating on the substrate, the amorphous coating having a base layer and a surface layer with a different composition than the base layer, the base layer including carboxysilane; wherein the amorphous coating comprises carbon, hydrogen, silicon, oxygen or combinations thereof; wherein the amorphous coating is at least partially formed from oxidation; wherein the amorphous coating includes SiO2, SiC, SiOxCy, SiCxHy)(abstract, C1/L10-15, C1/L50-65, C2/L10-20, C3/L24-30, C4/L45-50, C5/L1-15, C6/L1-5, C8/L43-60, C9/L20-35).
It is the examiner’s position that the portion of the diamond-like coating that is surface modified with oxygen can be considered the surface layer and the unmodified portion could be considered the base layer (i.e. different compositions).
It would have been obvious one of ordinary skill in the art to choose any diamond-like material disclosed for the coating including one comprising carbon, silicon and oxygen (i.e. carboxysilane) because it is expressly disclosed by David.
Dawes and David both disclose liquid chromatography components. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized diamond-like coating of David on the glass lined metal tubing of Dawes motivated by the expectation of forming a separation column that has good wetting and flow characteristics (David C1/L50-65) ) and also is protected (David C10/L35-40) or to apply the diamond-like coating before the application of glass to provide protection to the column. Alternatively, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized diamond-like coating of David on the entirety of the metal sheath of Dawes motivated by the expectation of forming a sheath that has good wetting and flow characteristics (David C1/L50-65) and also is protected (C10/L35-40). Alternatively, regarding claim 31, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized diamond-like coating of David on the metal frit and/or metal sheath of Dawes motivated by the expectation of forming a frit/sheath that has good wetting and flow characteristics (David C1/L50-65) and also is protected (C10/L35-40).
Regarding claim 25, given that the coating of modified Dawes is identical in composition to the instant coating, it is the examiner’s position that it is intrinsically resistant to adhesion of biomolecules and/or inert to analytes in contact therewith. Alternatively, given that no analyte is specified, it is the examiner’s position that one of skill in the art could pick an inactive analyte to which the coating is inert to prevent reaction with the coating.
Regarding claim 26, Dawes discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assembly ([abstract]) also a metal frit and a metal sheath (i.e. frit; fitting) ([0017]-[0018]). The examiner considers the separation column and the metal sheath to be fittings.
Regarding claim 34, the diamond-like coating is formed by chemical vapor deposition using hydrocarbons (i.e. at least partially formed from an organic molecular precursor)(David C12/L45-67)
Regarding claim 37, modified Dawes discloses that the diamond-like coating may have a thickness of 10 Angstroms to 10 µm (i.e. overlapping a thickness of about 10 nm to about 5 µm)(David C11/L10-17).
In regard to claims 39-40, Dawes discloses that the separation column is preferably a micro capillary or nano liquid chromatography column ([0026]) or a metal sheath ([0017]-[0018]). Thus, it is a tubing and has a channel/lumen/passageway/cavity.
Regarding claim 44, Dawes discloses that the diameter of the inner bore is 0.025 mm – 2.1 mm (i.e. overlapping less than 10 mm). While there is no specific length recited for the column of Dawes, it is the examiners position that it would have been obvious to choose a length in the claimed range of greater than 20 mm depending on the end use of the column. Change in size and shape is not patently distinct over the prior art absent persuasive evidence that the particular configuration of the claimed invention is significant. See In re Rose, 220 F.2d 459, 105 USPQ 237 (CCPA 1955); In re Rinehart, 531 F.2d 1048, 189 USPQ 143 (CCPA 1976); In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966). MPEP 2144.04[R-1].
Claim 41 is rejected under 35 U.S.C. 103 as being unpatentable over Dawes et al. (US 2005/0077222 A1) and David et al. (US 6,749,813 B1), as applied to claim 43 above, in view of Henry et al. (US 2002/0176800 A1).
Regarding claim 41, modified Dawes discloses all of the claim limitations as set forth above. Dawes does not specifically disclose that the substrate is stainless steel.
Henry discloses a liquid chromatography column comprising metal, stainless steel (abstract, claim 6).
Dawes and Henry both disclose liquid chromatography systems. It would have been obvious to one of ordinary skill in the art to use stainless steel as the metal substrate of modified Dawes because it is a well-known metal for use in liquid chromatography systems and doing so would amount to nothing more than using a known material in a known environment to accomplish an entirely expected result.
Claims 21, 25-26, 31-32, 34-35, 37 and 39-44 are rejected under 35 U.S.C. 103 as being unpatentable over Henry et al. (US 2002/0176800 A1) in view of David et al. (US 6,749,813 B1).
In regard to claims 31 and 41-43, Henry discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assembly, wherein the liquid chromatography column comprises metal, stainless steel and a frit that may be stainless steel (i.e. metal or metallic liquid chromatography component; having a lumen with an interior surface; stainless steel) (abstract, [0022], claim 6, [0057]).
Henry is silent with regard to an amorphous coating having a base layer including carboxysilane and a surface layer.
David discloses a fluid handling device including capillaries/tubes for use in liquid chromatography having a substrate and a diamond-like coating on the substrate that provides good wetting and flow characteristics on the internal surface, wherein the diamond-like coating comprises and amorphous coating comprising carbon, silicon and oxygen and may include hydrogen and may be formed by plasma or vapor deposition and the coating may be surface modified with oxygen (i.e. an amorphous coating on the substrate, the amorphous coating having a base layer and a surface layer with a different composition than the base layer, the base layer including carboxysilane; wherein the amorphous coating comprises carbon, hydrogen, silicon, oxygen or combinations thereof; wherein the amorphous coating is at least partially formed from oxidation; wherein the amorphous coating includes SiO2, SiC, SiOxCy, SiCxHy)(abstract, C1/L10-15, C1/L50-65, C2/L10-20, C3/L24-30, C4/L45-50, C5/L1-15, C6/L1-5, C8/L43-60, C9/L20-35).
It is the examiner’s position that the portion of the diamond-like coating that is surface modified with oxygen can be considered the surface layer and the unmodified portion could be considered the base layer (i.e. different compositions).
It would have been obvious one of ordinary skill in the art to choose any diamond-like material disclosed for the coating including one comprising carbon, silicon and oxygen (i.e. carboxysilane) because it is expressly disclosed by David.
Henry and David both disclose liquid chromatography components. Thus, it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized diamond-like coating of David on the entirety of metal tubing (including the inner lumen) and or frit of Henry motivated by the expectation of forming a separation column/frit that has good wetting and flow characteristics (David C1/L50-65) and also is protected (David C10/L35-40).
Regarding claim 25, given that the coating of modified Henry is identical in composition to the instant coating, it is the examiner’s position that it is intrinsically resistant to adhesion of biomolecules and/or inert to analytes in contact therewith. Alternatively, given that no analyte is specified, it is the examiner’s position that one of skill in the art could pick an inactive analyte to which the coating is inert to prevent reaction with the coating.
In regard to claim 26, The examiner considers the separation column to be a fitting and the frit to be a frit.
Regarding claim 34, the diamond-like coating is formed by chemical vapor deposition using hydrocarbons (i.e. at least partially formed from an organic molecular precursor)(David C12/L45-67)
Regarding claim 37, modified Henry discloses that the diamond-like coating may have a thickness of 10 Angstroms to 10 µm (i.e. overlapping a thickness of about 10 nm to about 5 µm)(David C11/L10-17).
In regard to claims 39-40, Henry discloses that the separation column is a tubing ([0041]). Thus, it is a tubing and has a channel/lumen/passageway/cavity.
Regarding claim 44, Henry discloses that the diameter of the inner bore is 0.05 mm – 2 mm (i.e. overlapping less than 10 mm)([0006], claim 7-8) and has a length of 25 mm – 5000 mm (i.e. overlapping greater than 20 mm)(claim 8).
Response to Arguments
Applicant's arguments filed 20 July 2026 have been fully considered but they are not persuasive.
Applicant’s arguments with respect to the instant claims have been considered but are moot because the new ground of rejection does not rely on the Smith reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C YAGER/Primary Examiner, Art Unit 1782
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