DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 8, 2026 has been entered.
Double Patenting
The rejections on the grounds of double patenting made in the previous Office Action are withdrawn in view of Applicant’s amendment, filed October, 8, 2025.
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, and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Wataya (US PG Pub. No. 2002/0160189) and, optionally, in view of Fukagawa (US PG Pub. No. 2015/0111037).
Regarding claims 1, 4, 10, 13, 16, and 17, 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 Takai'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 smooth as 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”.
The teachings of Wataya 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 just noted, it also would have been obvious to make the surfaces of Wataya’s granules to be as smooth as possible in view of Wataya’s teachings. As also noted above, Wataya’s granules are sintered and of the recited composition. In view of these physical similarities, Wataya’s particulate thermal spraying material, or particulate material rendered obvious by Wataya, 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 Wataya's 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, firing operation, or flattening treatment 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. Wataya’s thermal spraying material and the granulated particles it includes meet the product-by-process limitations because they have the limited structure(s) that are implied. As noted above, Wataya teaches sorting his thermal spray material to only include the most spherical particles, which in itself may be considered a smoothing treatment, or “flattening treatment”, because the overall smoothness, or “flatness”, of the material is increased as compared to a material that includes both spherical and irregular particles.
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, 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 Wataya and, optionally, Fukagawa's spray material 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, 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 Takai and Fukagawa, and Hayasaki.
Regarding claims 3 and 15, the teachings of Wataya and Fukagawa 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 and Fukagawa 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 Wataya and Fukagawa's 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 Fukagawa, and Hayasaki meets the recited product-by-process limitations because it has the structure they imply. See MPEP 2113.
The rejections made under 35 U.S.C. 103 in view of Takai (US PG Pub. No. 2002/0192429) and Matsukura (US PG Pub. No. 2022/0194809 and/or JP 6659073 B1, cited according to US PG Pub. No. 2022/0194809, which is an English language translation) in the previous Office Action are withdrawn in view of Applicant’s amendments, filed October 8, 2025.
Response to Arguments
Applicant's arguments filed October 8, 2025 have been fully considered but they are moot in view of the current rejections and/or are unpersuasive. The Declaration by Mr. Ryusei Nishimura, filed on October 8, 2025, is acknowledged and addressed below.
Applicant’s arguments regarding Takai and how Fukagawa relates to Takai are moot in view of the current rejections. As Fukagawa is also applied above, some of Applicant’s arguments addressing Fukagawa alone remain pertinent the current rejections.
Applicant has argued that Fukagawa’s teachings of a compressibility of 20 % or less are not applicable to the claimed invention because he only exemplifies that compressibility range for granules that are larger than what is claimed. Applicant has also pointed to Fukagawa’s Comparative Example 2, which has granules in the recited range but has an inferior compressibility, to support this argument. However, Fukagawa’s discussion is regarding a thermal spray material comprising granules that range in size from 1 to 150 µm (Abstract). Fukagawa makes no disclosure of his preferred compressibility only applying to larger granules and it would have been obvious to configure thermal spray granules to have a compressibility in Fukagawa’s taught range in order to achieve the benefits disclosed by Fukagawa (par. 19). As shown in Table 2, Fukagawa’s Comparative Example 2 has an aspect ratio of 2.21, which is outside the range he requires and which far greater than his exemplary products including larger granules. As discussed above Wataya also teaches to sort his thermal spray material so that spherical particles are used, which consistent with Fukagawa’s teachings. Therefore, the performance (and compressibility) of non-spherical granules, such as those of Fukagawa’s Comparative Example 2, cannot be assumed to be similar (or applicable) to that of Wataya’s spherical granules.
Applicant has also argued that there would be no basis for one skilled in the art to achieve a compressibility of 13 or less without a surface flattening treatment. However, as noted above, Fukagawa teaches a granule size range that includes granules as small as 1 µm. Therefore, given that Fukagawa’s disclosure presumed to be enabled (see MPEP 2121), one of ordinary skill in the art would conclude that Fukagawa’s taught range of preferred compressibility values could be applied to granules as small as 1 µm.
Applicant has also presented various arguments about Fukagawa’s discussion of D50n and D50d, which respectively pertain to undisintegrated and disintegrated granules. However, Fukagawa’s teachings of compressibility apply to the flow characteristics of granules, which he teaches refers to particles having a D50n (i.e. undisintegrated granules) (par. 12, 19) and which are the topic of discussion above and the claims. Additionally, both of Fukagawa’s D50n and D50d ranges encompass or overlap and render obvious the claimed D50 range. See MPEP 2144.05.
Applicant has also argued that one of ordinary skill in the art could not reasonably predict that Fukagawa’s compressibility range could be achieved with a rare earth compound that is not an oxyfluoride because Fukagawa teaches rare earth oxyfluoride granules in his thermal spray material. However, Fukagawa’s teachings about compressibility relate the physical performance, particularly the flow characteristics, of his thermal spray material. He makes no disclosure of the fluorine that is present affecting material flow or being responsible for the exhibited compressibility. Fukagawa does, however, provide motivation for configuring a thermal spray material to have a particular compressibility, which would motivate one of ordinary skill in the art to take steps to configure their own thermal spray material to have such a compressibility, for the reasons discussed above. Applicant has presented no evidence that one of ordinary skill in the art would be incapable of determining how to apply Fukagawa’s teachings of compressibility to a thermal spray material of a different composition, let alone a composition that is so similar to Fukagawa’s (note Wataya, Takai, and the instant claims all pertain to a rare earth oxide material, whereas Fukagawa teaches a rare earth oxyfluoride).
Applicant has also argued that the Declaration by Mr. Nishimura establishes that granulated particles that have not undergone a surface flattening treatment fail to satisfy the compressibility required of the claims. However, while the submitted Declaration and the data it includes may establish that the disclosed “surface flattening treatment” can reduce the compression degree of a thermal spray material comprising granulated particles, it does not establish that any/all granulated particles would fail to demonstrate the claimed compression degree without a flattening treatment. For example, the data does not demonstrate that granules that had been sorted to remove irregular particles would fail to perform as claimed. It also does not establish that one of ordinary skill in the art would be incapable of achieving such a compression degree, or compressibility, if motivated to do so by the prior art. Furthermore, although claim 13 requires that a surface flattening treatment has been performed, the limitation conveys very little about actual structure of the claimed granules because no parameters of the treatment are claimed.
Conclusion
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