DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Elections/Restrictions
2. This office action is a response to Applicant's election filed on 01/08/2026 with traverse of Group I, claims 1-11 for further examination. Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
3. Applicant timely traversed the restriction (election) requirement in the reply filed on 01/08/2026. Applicant's election with traverse of Group I, claims 1-11, apparatus.
The traversal is on the grounds that the subject matter of all claims 1-19 is sufficiently related that a thorough search for the subject matter of any one Group of claims would encompass a search for the subject matter of the remaining claims. Thus, it is respectfully submitted that the search and examination of the entire application could be made without serious burden. This is not found persuasive because regardless of the search method, inventions with different limitations will require different search strategies, and the times to consider the relevancy of collective references would increase proportionality as well.
Also, even though a few U.S. Patents disclosing both an apparatus and a method may be found in CPC subclass C23C, subgroup 16/045 and CPC subclass B33Y, subgroup 10/00, it is recognized that a diffusion device (CPC subclass C23C subject matter) and a deposition method (CPC subclass B33Y subject matter) are characterized as separate and distinct subject for inventive efforts. Thus it is necessary to search for one of the inventions in a manner that is not likely to result in finding art pertinent to the other invention. The findings of separate classification and different field of search would justify a serious burden on the examiner if restriction is not required. See MPEP 808.02.
Furthermore, the restriction requirement was based Inventions I and II are related as an apparatus and method of use. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In the instant case, the process as claimed can be practiced by another and materially different apparatus such as disclosed by the prior art (WO 2021/209746 A1) cited in the Search Report and Written Opinion of the French Patent Application No. 2202614 filed 03/24/2023. See the documents for citations and rationale.
Thus far, applicant has not proved or provided convincing argument that there is no material difference between the two inventions on the record. Therefore, the requirement is still deemed proper and is therefore made FINAL.
Priority
4. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
5. The information disclosure statement (IDS) submitted on 03/24/2023 is being considered by the examiner.
Drawings
6. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, “a first prismatic shape characterized by a first basic profile, the first prismatic shape being generated by the rectilinear translation of the first basic profile along the longitudinal axis,… a second prismatic shape characterized by a second basic profile, the second prismatic shape being generated by the rectilinear translation of the second basic profile along the longitudinal axis” recited in claim 5 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Interpretation
7. 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.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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-AlA 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(s) is/are: “porous element” in claim 1-7 & 10; “pressurizing member” in claim 3; “assembly member” in claim 9.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AlA 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 wishes to provide further explanation or dispute the examiner' s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
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.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112
8. 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.
9. Claims 1-11 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 14 recites the limitation “the one”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the one” as “one”. To correct this problem, amend line 14 to recite “one”.
As regards to claim 1, line 17 recites “as long as” which is an conditional/optional limitation, thus not a positive recitation of any claim limitation. For examination purposes, examiner is interpreting as long as” as conditional/optional and it may be but doesn’t have to be. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 18 recites “strictly” which is a relative term and renders the claim indefinite. The term “strictly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, examiner is interpreting “strictly” as any condition. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 1, line 18 recites the limitation “the other”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the other” as “another”. To correct this problem, amend line 18 to recite “another”.
As regards to claim 1, line 22 recites “strictly” which is a relative term and renders the claim indefinite. The term “strictly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, examiner is interpreting “strictly” as any condition. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 4, line 2 recites “generally” which is a relative term and renders the claim indefinite. The term “generally” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, examiner is interpreting “generally” as any condition. To correct this problem, amend claim 4 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 5, lines 4 & 7 recite the limitation “the rectilinear translation”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, examiner is interpreting “the rectilinear translation” as “rectilinear translation” in line 4. To correct this problem, amend line 4 to recite “the rectilinear translation”.
As regards to claim 6, line 3 recites “strictly” which is a relative term and renders the claim indefinite. The term “strictly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, examiner is interpreting “strictly” as any condition. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
As regards to claim 7, line 4 recites “strictly” which is a relative term and renders the claim indefinite. The term “strictly” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For examination purposes, examiner is interpreting “strictly” as any condition. To correct this problem, amend claim 1 to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 2-11 are rejected at least based on their dependency from claim 1.
Claim Rejections
10. 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 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.
11. 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.
Claim Rejections - 35 USC § 102
12. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
13. Claims 1-7 & 9-11 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Rebstock (US 2012/0255488 A1) hereinafter Rebstock (the terminology of the claims in the application is used, but the references of Rebstock are included between parentheses).
Regarding claim 1, the recitation “a precursor configured to diffuse a growth precursor towards an external growth surface comprised on an external growth member,… the external growth surface,… a precursor fluid comprising the growth precursor,… the precursor fluid… contained between the diffusion surface and the external growth surface”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Rebstock since Rebstock meets all the structural elements of the claim and is capable of applying/diffusing a precursor configured to diffuse a growth precursor towards an external growth surface comprised on an external growth member using a precursor fluid comprising the growth precursor contained between the diffusion surface and the external growth surface, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Rebstock discloses a diffusion device of a precursor capable of diffusing a growth precursor towards an external growth surface (top surface of 96) comprised on an external growth member (96) (abs; fig 9B; clm 1), comprising:
a container (91A) internally delimiting at least one receiving enclosure (internal space of 91A), the container (91A) being at least partially constituted by at least one porous element (wall of 91A), the porous element (wall of 91A) internally delimiting an inner surface (inner surface of 91A), the inner surface (inner surface of 91A) at least partially delimiting the at least one receiving enclosure (internal space of 91A), the porous element (wall of 91A) externally delimiting a diffusion surface (outer surface of 91A) intended to face towards the external growth surface (top surface of 96), the at least one receiving enclosure (internal space of 91A) being configured to contain a precursor fluid (see fig 9B, arrows/fluid going into 91A) comprising the growth precursor (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13),
the diffusion device comprising the precursor fluid (see fig 9B, arrows/fluid going into 91A) contained in the receiving enclosure (internal space of 91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13),
the porous element (wall of 91A) having a porosity configured on one hand to allow the precursor fluid (see fig 9B, arrows/fluid going into 91A) to pass through a thickness (thickness of 91A) of the porous element (wall of 91A) counted between the inner surface (inner surface of 91A) and the diffusion surface (outer surface of 91A) as long as a pressure of the precursor fluid (see fig 9B, arrows/fluid going into 91A) contained in the receiving enclosure (internal space of 91A) is strictly higher than a threshold pressure, on another hand to prevent the precursor fluid (see fig 9B, arrows/fluid going into 91A) from passing through the thickness (thickness of 91A) of the porous element (wall of 91A) when the pressure of the precursor fluid (see fig 9B, arrows/fluid going into 91A) contained in the receiving enclosure (internal space of 91A) is lower than the threshold pressure, the threshold pressure being strictly higher than an external pressure prevailing outside the container (91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13);
the porous element (wall of 91A) being configured so that the precursor fluid (see fig 9B, arrows/fluid going into 91A) which passes through the thickness (thickness of 91A) of the porous element (wall of 91A) generates, from the diffusion surface (outer surface of 91A), an aerosol by fragmentation of the precursor fluid (see fig 9B, arrows/fluid going into 91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13),
the aerosol being formed of droplets of the precursor fluid (see fig 9B, arrows/fluid going into 91A) and contained between the diffusion surface (outer surface of 91A) and the external growth surface (top surface of 96) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 2, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the container (91A) is entirely formed by the porous element (wall of 91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 3, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), comprising at least one pressurizing member (e.g. pumping mechanism, pressure controller, flow controller and distribution manifold) configured to vary the pressure of the precursor fluid (see fig 9B, arrows/fluid going into 91A) inside the receiving enclosure (internal space of 91A), so as to place the precursor fluid (see fig 9B, arrows/fluid going into 91A) at a pressure higher than the threshold pressure, to allow the precursor fluid (see fig 9B, arrows/fluid going into 91A) to pass through the porous element (wall of 91A) from the inner surface (inner surface of 91A) towards the diffusion surface (outer surface of 91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0083]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 4, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the container (91A) extends generally along a longitudinal axis and comprises a sealed end and a fluid inlet end spaced apart from each other along the longitudinal axis, the porous element (wall of 91A) being located between these two ends and the receiving enclosure being configured to receive the precursor fluid (see fig 9B, arrows/fluid going into 91A) at the fluid inlet end and to be closed at the sealed end (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claims 5-6, it is noted that claims 5-6 are a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since Rebstock’s the diffusion surface of the porous element is similar to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
As regards to claim 5, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the diffusion surface (outer surface of 91A) of the porous element (wall of 91A) has a first prismatic shape characterized by a first basic profile, the first prismatic shape being generated by rectilinear translation (implicit of 91A moving in a straight line) of the first basic profile along the longitudinal axis, and wherein the inner surface (inner surface of 91A) of the porous element (wall of 91A) has a second prismatic shape characterized by a second basic profile, the second prismatic shape being generated by the rectilinear translation (implicit of 91A moving in a straight line) of the second basic profile along the longitudinal axis (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 6, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the first basic profile is a circle having a first radius (radius from center of 91A to outer surface of 91A), and wherein the second basic profile is a circle having a second radius (radius from center of 91A to inner surface of 91A) strictly lower than the first radius (radius from center of 91A to outer surface of 91A), the thickness (thickness of 91A) of the porous element (wall of 91A) being equal to a difference between the first radius and the second radius (radius from center of 91A to inner surface of 91A) (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 7, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the porous element (wall of 91A) has a length, counted longitudinally along the longitudinal axis, the length being strictly greater than 80 cm (abs; [0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 9, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), comprising an assembly member disposed at an assembly end (implicit of 91A be attached/disposed to/in an apparatus) of the diffusion device, the assembly member being configured to allow the fastening, at the assembly end, of the growth member (abs; [0004]-[0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 10, it is noted that claim 10 is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). Since Rebstock’s porous element is similar to that of the Applicant’s, Applicant’s process is not given patentable weight in this claim.
As regards to claim 10, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the porous element (wall of 91A) can be obtained by three-dimensional printing (abs; [0004]-[0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
As regards to claim 11, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), wherein the container (91A) is shaped (see fig 9B) so that it can be inserted into a tubular clad (abs; [0004]-[0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13).
Claim Rejections - 35 USC § 103
14. 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 of this title, 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.
15. The factual inquiries for establishing a background for determining obviousness under pre-AIA 35 U.S.C. 103(a) 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.
16. Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Rebstock as applied to claim 1 above.
As regards to claim 8, Rebstock discloses a diffusion device (abs; fig 9B; clm 1), comprising: a first receiving enclosure delimited by a first inner surface (inner surface of 91A), and configured to receive a first precursor fluid (see fig 9B, arrows/fluid going into 91A) (abs; [0004]-[0006]; [0058]-[0060]; [0062]; [0064]-[0065]; [0085]; fig 9B; clm 1-5 & 9-13), however Rebstock does not disclose a second receiving enclosure delimited by a second inner surface and configured to receive a second precursor fluid. Although Rebstock does not explicitly disclose the claimed second receiving enclosure delimited by a second inner surface and configured to receive a second precursor fluid, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the system of Rebstock to have the second receiving enclosure delimited by a second inner surface and configured to receive a second precursor fluid recited in the claim to accommodate additional substrates or as needed for an intended coating method and therefore is not expected to alter the operation of the device in a patentably distinct way as it would have been an obvious matter of design choice to add an additional receiving enclosure delimited by a second inner surface and configured to receive a second precursor fluid in Rebstock since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 1 93 USPQ 8. Further, it is held that mere duplication of parts has no patentable significance unless a new and unexpected result it produced, see In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960), MPEP 2144.04 VI. B.
Conclusion
17. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: all references cited on the attached PTO-892 Notice of References Cited excluding the above relied upon references.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717