DETAILED ACTION
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.
Claims 1, 3, 4, 10, 13, 15-17, 20 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Wataya (US PG Pub. No. 2002/0160189) and, optionally, in view of Xie (US PG Pub. No. 2007/0110655), and/or Kumar (Kumar et al. Comp. Mater. Sci. 2006, 36, p. 451-456), and/or Fukagawa (US PG Pub. No. 2015/0111037).
Regarding claims 1, 4, 10, 13, 16, 17, and 22, Wataya teaches a particulate rare earth oxide thermal spraying material consisting essentially of yttrium oxide (i.e. “the rare earth an oxygen”) and including sintered, spherical, granulated particles with a volume-based average size, D50, of 10 to 80 µm and a BET specific surface area of 0.1 to 1.5 m2/g (Abstract; par. 18, 19, 28, 39, 42, 57). The instantly claimed D50 ranges are encompassed and rendered obvious by Wataya's taught range. See MPEP 2144.05.
Although Wataya does not explicitly teach that his granulate thermal spraying material consists of granulated particles in the discussed size range, which might be considered a difference from the current invention, as Wataya teaches that the particles in his spraying material are made by granulating (par. 39, 42), teaches sorting the granulated material to only include desired particles (par. 41), and makes no disclosure of other components or materials being present, Wataya’s material is presumed to consist of granulated particles. It also would have been obvious to one of ordinary skill in the art to configure the material to consist of granulated particles for these reasons.
With respect to the recited “surface flattening treatment”, it is noted that the instant disclosure makes clear that, rather than being made “flat”, granules are treated to remove surface irregularities, (Applicant’s published Application, par. 56; see also Figure 2, which depicts spherical, rather than “flattened” particles). Therefore, the recited “surface flattening treatment” is actually a smoothing treatment. Although Wataya does not explicitly teach subjecting his granules to a “surface flattening treatment”, which might be considered a difference from the current invention, Wataya does teach sorting the material so that only spherical granules remain, and teaches reducing the granules’ surface porosity to improve particle smoothness and lowering the D50/Fisher ratio to achieve a precise and constant feed into a thermal sprayer, thereby achieving a smooth and dense coating (par. 41, 49, 53). Accordingly, it would have been obvious to one of ordinary skill in the art to sort and/or configure the granules in Wataya’s thermal spraying material to be spherical and to have as smooth of surfaces as possible because Wataya teaches that the granules should be spherical and makes clear that smooth granule surfaces are desirable, and in order to achieve as precise and constant of a feed rate into a thermal spray device as possible to achieve as smooth and dense of a coating as possible. As such, Wataya renders obvious granules that have a surface structure that may be considered “flattened”.
Xie further teaches that feedstocks for thermal spray processes (i.e. such as Wataya’s material) should be able to be injected into the deposition devices stably and consistently to form high purity metal oxide coatings, that plasma densification or spheroidization can be used to produce smooth spheroidized particles that achieve more consistent flow while being fed into a thermal spray gun, and that plasma densification or spheroidization results in both improved particle smoothness and smoother and more dense thermal spray coatings (par. 8, 12, 14). Xie further teaches that raw materials such as agglomerated ceramic oxides may be subject to the taught plasma densification or spheroidization process and that treated particles, such as yttria particles, have a smooth surface, a spherical morphology, and good flowability, and are especially well-suited for use in making coatings subject to high chemical corrosion and plasma erosion in an environment containing a halogen gas (par. 22). Therefore, it would have been obvious to one of ordinary skill in the art to treat Wataya’s thermal spraying material, including by using plasma densification or spheroidization, so that they are at least partially melted, have smooth surfaces, and have a spherical morphology in order to achieve good flowability of the material during deposition and to produce smooth, dense thermal spray coatings that are suitable for use in corrosive and erosive environments, such as in an environment including a halogen gas.
Although Xie does not explicitly teach the recited specific temperature or amount of time that the particles of a thermal spraying material should be treated by plasma densification or spheroidization, which may be considered a difference from the instant claims, Xie does teach that the procedure should melt or partially melt the particles being treated (par. 22). As such, it would have been obvious to one of ordinary skill in the art to select plasma densification or spheroidization parameters that achieve at least partially melted, smooth-surfaced spherical particles because Xie teaches to at least partially melt the particles and in order to achieve the benefits discussed above.
Kumar further teaches that the plasma parameters, such as plasma velocity, which varies as a function of temperature, particle residence time, and melting time, of a plasma spheroidization process may be optimized to achieve better spheroidization of particles being treated (p. 453, sections 3.1, 3.2; p. 454, sections 3.3, 3.4, 4). Therefore, it would have been obvious to one of ordinary skill in the art to optimize the plasma spheroidization parameters, including optimizing the temperature and treatment time, used to treat Wataya and Xie’s particles in order to achieve the best possible spheroidization.
The teachings of Wataya may also be considered to differ from the current invention in that he does not discuss the compression degree of his thermal spray material. However, as discussed above, Wataya’s particles may be of a size range rendering obvious that of the instantly claimed, are spherical, and have surface areas of the of the recited range, all of which affect how the particles rub against each other and how the powder compresses. As also noted above, Wataya’s granules are sintered and of the recited composition. As further noted, it would have been obvious to make the surfaces of Wataya’s granules to be as smooth as possible in view of Wataya and Xie’s teachings, including by plasma spheroidization. Much like Xie, Applicant’s disclosure teaches using a plasma apparatus to effect surface flattening (Applicant’s published application, par. 56). Therefore, in view of these physical and, particularly in the case of Xie’s teachings being applied, processing similarities, Wataya and, optionally, Xie and Kumar’s particulate thermal spraying material is expected to have a compressibility (or “compression degree”) commensurate with that of the claimed invention. Fukagawa further teaches to configure a rare earth metal-containing thermal spray material to have a compressibility of less than 20 to allow the particles to flow well and be stably fed into a thermal spray device (par. 18, 19). Therefore, it would have been obvious to one of ordinary skill in the art to configure the prior art spraying material to have a compression degree of less than 20 in order to achieve good and stable flow characteristics for thermal spraying. The instantly claimed compression degree range is encompassed and rendered obvious by Fukagawa's teachings. See MPEP 2144.05.
The requirements that the recited material includes “granulated particles” and is produced by firing granulated particles and subjecting them to a flattening treatment are product-by-process limitations. Product-by-process claims are not limited to the recited processing steps, but rather the product implied by the recited procedure. See MPEP 2113. As no actual parameters for the granulation procedure or firing operation are recited, the limitations imply little about the actual structure that is produced other than that an agglomeration of smaller particles is present in each granule. As noted above, Wataya teaches or renders obvious granules with “flattened” surfaces and Xie motivates utilizing a plasma densification or spheroidization process to achieve smooth, spherical particles. Therefore, the thermal spraying material Wataya alone or in view of the cited optional references and the granulated particles it includes meet the product-by-process limitations because they have the limited structure(s) that are implied.
Regarding claims 3 and 15, Wataya teaches that his thermal spray material preferably has a crystallite size of at least 25 nm (par. 60). The instantly claimed crystallite size range is overlapped and rendered obvious by Wataya. See MPEP 2144.05.
Regarding claims 20 and 21, Wataya’s granules may have an angle of repose of up to 44 ° (par. 56). The instantly claimed angle of repose range is overlapped and rendered obvious by Wataya. See MPEP 2144.05.
Claims 2, 12, 14, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wataya and, optionally, Xie and/or Kumar and/or Fukagawa, as applied to claims 1 and 13 above, and further in view of Ibe (US PG Pub. No. 2016/0244868).
Regarding claims 2, 12, 14, and 19, the teachings of Wataya differ from the current invention in that he does not discuss the volumetric pore distribution of his thermal spraying materials in terms of peaks for specific pore sizes or the ratios of the peaks’ volumes and, therefore, does not teach the claimed pore distribution. However, Ibe teaches that it is preferable to configure a thermal spray powder such that two peaks are present in a volumetric pore distribution, wherein a first peak in the range 10 µm or less and a second peak, which represents a fine pore size of less than the main peak, are each present and wherein the ratio of the second peak height, H2 (i.e. "P2"), to the first peak height, H1 (i.e. "P1"), or P2/P1, is 0.05 or less because pore formation while thermal spraying such a powder is unlikely, thereby allowing a compact thermal spray coating to be formed (par. 26). Ibe elsewhere refers to pores having a size of 1 µm or less as "fine pores" (par. 38). Therefore, it would have been obvious to one of ordinary skill in the art to configure the thermal spray material of Wataya or Wataya et al. such that it has a volumetric pore distribution including two peaks, wherein a first peak with a height of P1 in the range of 10 µm or less and a second peak with a height of P2 representing fine pores with a size of smaller than the pores represented by the first peak, including a size of smaller than 1 µm, are each present and wherein the P2/P1 is equal to 0.05 or less because Ibe teaches that peaks in such coarse and fine pore diameter ranges are appropriate for his spraying material and refers to pores that are smaller than 1 µm as "fine pores", and in order to avoid pore formation during spraying and achieve compact thermal spray coatings. The instantly claimed peak locations and P2/P1 ranges are overlapped by or sufficiently close (particularly as the instant disclosure states that the lower limit of the P2/P1 range is not particularly limited, Applicant's published Application, par. 46) to and rendered obvious by Ibe's teachings. See MPEP 2144.05.
Claims 3 and 15 are alternatively rejected under 35 U.S.C. 103 as being unpatentable over Wataya and, optionally, Xie and/or Kumar and/or Fukagawa, as applied to claims 1 and 13 above, and further in view of Hayasaki (US PG Pub. No. 2005/0282034). Claims 13 and 15-17 are also rejected under 35 U.S.C. 103 as being unpatentable over Wataya, optionally, Xie and/or Kumar and/or Fukagawa, and Hayasaki.
Regarding claims 3 and 15, the teachings of Wataya et al. might be considered to differ from the current invention in that the disclosed spraying material is not explicitly taught to have a crystallite size of at least 1 µm. However, Hayasaki teaches to configure a thermal spraying material such that it includes a mean crystal particle (i.e. "crystallite") size in the range of 0.5 to 10 µm because powder with a mean crystal size of less than 0.5 µm leads to an increase in cost and powder with a size of greater than 10 µm makes the material difficult to sinter during heat treatment (par. 87). Therefore, it would have been obvious to one of ordinary skill in the art to configure the prior art thermal spraying material to have a mean crystal size (i.e. "crystallite size") in the range of 0.5 to 10 µm in order to achieve a good balance of cost and sinterability. The instantly claimed crystallite size range is overlapped and rendered obvious by Hayasaki's teachings. See MPEP 2144.05.
Regarding claims 13 and 15-17, as noted above, Wataya et al. teach a product that meets the requirements of claims 13 and 15-17 because their product has the structure implied by the recited product-by-process limitations. If the prior art product is still considered to differ in structure from that implied by the claims because they do not specifically teach crystallite sizes of greater than 1 µm, then it is noted that it would have been obvious to one of ordinary skill in the art to configure the prior art thermal spraying material to have a mean crystal size (i.e. "crystallite size") in the range of 0.5 to 10 µm in order to achieve a good balance of cost and sinterability, as taught by Hayasaki and discussed above. The product of Wataya, optionally Xie, Kumar, and Fukagawa, and Hayasaki meets the recited product-by-process limitations because it has the structure they imply. See MPEP 2113.
Response to Arguments
Applicant's arguments filed May 8, 2026 have been fully considered but they are not persuasive.
Applicant has argued that claims 1 and 13 are not obvious in view of Wataya because Wataya’s taught D50 and BET specific surface area ranges are only broad general disclosures rather than exemplified and because Wataya does not teach the combination of D50 and properties that are claimed. However, as Applicant has acknowledged, Wataya does teach D50 and BET specific surface area ranges that meet or render obvious the claim requirements (see MPEP 2144.05), which cannot be ignored. Wataya’s disclosed examples and preferred embodiments do not constitute a teaching away from the broader disclosure because they do not criticize, discredit, or otherwise discourage the broader teachings. See MPEP 2123 (II).
Applicant has further argued that Wataya does not teach the claimed surface flattening treatment and that his disclosed sintering temperatures are well below the recited flattening treatment temperatures. However, the limitations describing a “surface flattening treatment” are product-by-process limitations. Product-by-process claims are not limited by the recited process, but rather the structure implied by the recited procedure. See MPEP 2113. While Applicant is correct that Wataya does not teach the recited surface treatment, as discussed above, Wataya does teach sorting his material so that only spherical particles remain, teaches to reduce porosity, and makes clear that smooth granule surfaces are desirable, thereby rendering obvious configuring his the particles of his material to be as spherical and smooth as possible. Therefore, Wataya renders obvious granules having the structure implied by the claimed product-by-process limitations. It also would have been obvious to subject Wataya’s particles to a plasma densification or spheroidization process in view of Xie’s teachings, thereby performing a surface flattening treatment, for the reasons discussed above.
Applicant has also argued that the exemplary and comparative examples of the instant disclosure establish that Wataya’s particles, absent the recited surface flattening treatment, would not demonstrate a compression degree commensurate with the claimed and disclosed product because the comparative examples, which were not subjected to the recited surface flattening, have compression degrees outside of the claimed range. However, the instant disclosure does not teach sorting the particles of the comparative examples to only include spherical particles. Therefore, the comparative examples are not comparable to a thermal spray material including sorted, smooth, spherical granules that would have been obvious in view of Wataya’s teachings. Although the instant disclosure may show that the surface flattening treatment was useful in making a thermal spray material with the recited compression degree, it does not establish that the recited surface flattening treatment is the only way to achieve the recited compression degree.
Applicant has also argued that Fukagawa’s teaching of a compression degree in the recited range does not cure Wataya’s alleged deficiency because Fukagawa’s teachings are with respect to a different type of ceramic material and show that different materials have different compression degrees, which Applicant argues is a showing that the compression degree depends materially on composition and that Wataya’s material would not inherently have the claimed compression degree. However, Fukagawa is not cited for establishing that Wataya’s material would inherently have the recited compression degree or that composition is not important, but rather for his teaching that a compression degree of less than 20 is beneficial (par. 18, 19). As discussed above, Fukagawa provides motivation for why it would have been obvious to configure Wataya’s spraying material to have a compression degree of less than 20. Applicant has provided no evidence that a spraying material made up of sorted, smooth, spherical granules, as rendered obvious by Wataya, would fail to demonstrate the recited compression degree or that one of ordinary skill in the art would be incapable of configuring Wataya’s material to demonstrate the recited compression degree, if motivated to do so.
Applicant has also argued that the product-by-process analysis of claim 13 made in the previous Office Action is no longer applicable because claim 13 recites a temperature range and time duration of the recited surface flattening treatment followed by cooling, which the instant disclosure teaches results in surface melting, crystallinity, and improved properties. Applicant has also argued that the exemplary/comparative products affirmatively show that the recited procedure results in a different structure from a product that has not received the recited flattening treatment. However, claim 13 does not recite a duration of the treatment or that the granules are cooled. Therefore, claim 13 is not commensurate with the exemplary products. Additionally, although claim 22 does recite that the flattening treatment is performed for at least 0.1 second, the instant disclosure teaches performing the treatment for 0.1 second at temperatures of 3600 and 3700 °C and for 0.2 seconds at a temperature of 2900 °C (Applicant’s published application, par. 68). Therefore, the instant disclosure appears to establish that the treatment time matters, including at specific temperatures. As such, the independent claims’ recitation of a treatment temperature without a corresponding treatment time fail to imply the structures of the exemplary products.
Applicant has further argued that neither of Wataya’s disclosure of crystallite sizes of at least 25 nm or Hayasaki’s disclosure of crystallites of at least 1 µm meet the claimed crystallite size range of “not less than 1 µm” because neither reference teaches the recited flattening treatment. However, the references render obvious crystallites of the claimed size range because each teaches a range that overlaps or encompasses the claimed range. See MPEP 2144.05.
Applicant has also argued that Wataya’s teaching of a repose angle of up to 44 ° does not teach the claimed narrower range of “not more than 33 °”. However, this is not persuasive because the claimed “not more than 33 °” falls within Wataya’s range of “up to 44 °” and is, therefore, rendered obvious by Wataya’s teaching. See MPEP 2144.05.
Applicant has also argued the recited P2/P1 range of 0.1 to 0.25, as recited in claims 2, 12, 14, 13 19, is distinguished over the cited prior art because Ibe teaches a P2/P1 range of 0.05 or less. However, as discussed in the rejection, the recited P2/P1 range is sufficiently close to that of Ibe that it is rendered obvious by Ibe, particularly as the instant disclosure explicitly teaches that lower limit of the range is not particularly limited (Applicant's published Application, par. 46), thereby establishing that the claimed value lacks criticality. See MPEP 2144.05.
Applicant has also argued that the rejections of claims 3 and 15 should be withdrawn because the cited references do not relate crystallinity to a flattening treatment. However, this argument is not persuasive because the recited range falls within and is rendered obvious by the ranges taught by Wataya and Hayasaki. See MPEP 2144.05.
Applicant has argued that claim 22 is distinguished over the prior art because none teaches the recited flattening treatment conditions. However, a the prior art renders obvious a product having a structure implied by the product-by-process limitations for the reasons discussed above. See MPEP 2113.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JULIA L RUMMEL whose telephone number is (571)272-6288. The examiner can normally be reached Monday-Thursday, 8:30 am -5:00 pm PT.
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/JULIA L. RUMMEL/
Examiner
Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784
Prosecution Insights