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 .
Claim Objections
Claim 1 is objected to because of the following informalities: there should be a colon at the end of line 2, “the interfacial surface” in line 12 should read “an interfacial surface”, and “aluminum or aluminum alloy” in line 12 should read “the aluminum or aluminum alloy”. Appropriate correction is required.
Claim 3 is objected to because of the following informalities: “the shape of the interface of” should read “a shape of an interface between”. Appropriate correction is required.
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.
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.
Claims 1-5 and 10-13 are rejected under 35 U.S.C. 102((a)(1)) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Biallas et al. (US 2014/0117629) in view of Minowa et al. (US 2006/0201613).
With regard to claim 1, Biallas discloses a gasket (1) for sealing two components (i.e. 31 and 35 as seen in Figs. 2, etc. Biallas discloses this intended use limitation in the preamble) from gas permeation (as disclosed in the abstract, etc. Biallas discloses this intended use limitation in the preamble), said gasket comprising (A) a first part (e.g. 30 in Fig. 2) comprising an elastomer (as disclosed in para. [0031]), and (B) a second part (e.g. 39) comprising a material having less gas permeation and lower flexibility than the elastomer (as disclosed in para. [0031], etc. it is a metal and has lower flexibility and gas permeation), wherein the second part is fixed to the first part (as seen in Figs. 2, etc.), and wherein the first and second parts are situated so that, when the gasket is seated as a seal between the two components (e.g. as seen in Fig. 2 the gasket of Biallas is capable of this intended use), the first part is proximal to a vacuum side of the two components, and the second part is proximal to an external side of the two components (as seen in Fig. 2 the gasket is capable of such an intended use depending on what parts it is used between), such that gas permeation between the two components is reduced or prevented (as disclosed in the abstract, para. [0007], etc., wherein the second part comprises aluminum or an aluminum alloy (as disclosed in para. [0022], etc.).
Biallas implicitly discloses that the interfacial surface of aluminum or aluminum alloy has pores (as all materials have at least some amount of small surface roughness features which can be termed pores), and at least a portion of the elastomer is inserted into the pores (i.e. as the metal is coated over the elastomer and the elastomer necessarily has at least minute surface roughness features that are peaks the metal coated thereon would be considered to have pores that the peaks of the elastomer are located in) by compression molding (Examiner notes this is a product-by-process limitation and it has been held that 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).).
If Applicant disagrees with Examiner’s interpretation above the claim would still be obvious as Minowa discloses a seal (as disclosed in para. [0031], etc.) comprising a perfluoro elastomer bonded to an aluminum (see para. [0010], [0033], etc.), wherein an interfacial surface of aluminum or aluminum alloy has pores (as disclosed in para. [0032], [0038], etc.), and at least a portion of the elastomer is inserted into the pores by compression molding (as disclosed in para. [0032], [0038], etc.).
It would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Biallas such that an interfacial surface of aluminum or aluminum alloy has pores, and at least a portion of the elastomer is inserted into the pores by compression molding as taught by Minowa. Such a modification would provide the expected benefits of improving both the tensile properties of the vulcanized perfluoroelastomer and the bond strength to the surface of the aluminum substrate (see Minowa abstract, etc.).
With regard to claim 2, Biallas/ the combination (Biallas) discloses that the second part is located in a vertical direction to the direction for gas permeation between the two components (as it is capable of use between two components such that that is the case (e.g. as seen in Fig. 2)).
With regard to claim 3, Biallas/ the combination (Biallas) discloses that the shape of the interface of the first part and the second part is cylindrical (as seen in Fig. 2).
With regard to claim 4, Biallas/ the combination (Biallas) discloses that the first part comprises a fluorinated elastomer (see para. [0015], etc. which discloses Viton a known fluoroelastomer).
With regard to claim 5, Biallas fails to disclose that the first part comprises a perfluoro elastomer.
Minowa discloses a seal (as disclosed in para. [0031], etc.) comprising a perfluoro elastomer bonded to an aluminum (i.e. and thus that the first part of such a seal is the perfluoro elastomer) (see para. [0010], [0033], etc.).
It would have been considered obvious to one having ordinary skill in the art, at the time the invention was filed, to have modified the device of Biallas such that the elastomer of the first part is perfluoro elastomer as disclosed by Minowa. Such a modification would provide the expected benefit of good thermal stability, chemical resistance, and/or good mechanical wear/resistance properties.
With regard to claim 10, Biallas/ the combination (Biallas) discloses a sealing structure (as seen in Fig. 2) comprising two components (31 and 35) and the gasket of claim 1 (as detailed in claim 1 above), each component has a surface facing in parallel against each other (as seen in Fig. 2), wherein the gasket is placed between the two surfaces to seal the components from gas leakage (as seen in Fig. 2), and wherein the second part is fixed with the first part in a direction that is vertical to the direction to the direction for gas permeation between the two components (as seen in Fig. 2, as disclosed in para. [0031], .etc.).
With regard to claim 11, Biallas/ the combination (Biallas) discloses that the first part is compressed (see Fig. 2), and at least generally in a broadly similar amount of 3 to 40% linear compression ratio, but Biallas is silent as to and thus fails to explicitly disclose that the first part is compressed to 3 to 40 % linear compression ratio. However it would have been considered obvious to one having ordinary skill in the art, at the time of filing, to have modified the device of Biallas such that the first part is compressed to 3 to 40 % linear compression ratio as Examiner hereby takes Official Notice that the art is replete with examples of similar seals that are compressed to 3 to 40 % linear compression ratio depending on how they are used. Such a modification provides the expected results of providing a good seal without damaging the seal body.
As applicant has not traversed examiner’s assertion of official notice, the common knowledge or well-known in the art statement relied upon in examiner’s assertion of official notice is hereby taken to be admitted prior art in accordance with MPEP 2144.03.
With regard to claim 12, Biallas/ the combination (Biallas) discloses that the second part forms a continuous contact with the surface of each component (as seen in Fig. 2).
With regard to claim 13, Biallas/ the combination (Biallas) discloses that the sealing structure is used for high vacuum seal of an apparatus used for semiconductor manufacturing process or flat panel display manufacturing process (Examiner notes that this is an intended use limitation and it is capable of use between parts of a high-vacuum system (e.g. see para. [0011]) including an apparatus that performs the recited processes).
Response to Arguments
Applicant's arguments with respect to claims 1-5 and 10-13 have been considered but are moot in view of the new grounds of rejection above. Applicant's arguments filed 22 May 2025, in so much as they may apply to the new grounds of rejection above, have been fully considered but they are not persuasive.
Applicant’s first argument is that the thin metal coating of Biallas cannot be considered to have pores on the interfacial surface. This argument is not persuasive for two reasons. First as detailed in the newly necessitated grounds of rejection above, all materials have some degree of surface topography which can be considered pores at least some small scale and as Biallas’ metal layer would be applied to the elastomer later some of peaks of the surface of the elastomer that are coated would result in corresponding pores in the metal layer that the elastomer is inside of. Secondly the combination above also makes such obvious (see above). Furthermore part of this limitation is a product-by-process limitation it has been held that 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).
Applicant’s arguments relating to the method by which the instant invention is made are not persuasive as no method claims are recited in the examined claims. Furthermore Applicant presents arguments regarding the specific thickness of the instant invention, the specific environment the seal is used in, the method by which it is formed, the amount of permeability it possesses, etc.. These arguments are not persuasive as the claims either do not recite such or do not recite such in the same specificity as argued. 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).
Applicant’s other argument that may still apply to the above amended grounds of rejection is that the teaching of Biallas and Minowa are not compatible as Biallas allegedly teaches a metal film applied to the elastomer and Minowa allegedly teaches the elastomer part is applied to the metal part. These arguments are not persuasive as Applicant has not claimed a certain manner in which the seal is made, only a product-by-process limitation (as detailed above), and as the resulting product would be the same such anticipates the claimed limitations. Additionally Applicant argues the thin nature of the metal layer of Biallas, however Examiner notes that nowhere in Biallas does Biallas limit the thickness to what is alleged by Applicant (i.e. the only hard limits Biallas places on the metal thickness are “the thickness of the metal should be such that the thin metal coating is compatibly deformable with the seal as well as sufficiently thick to prevent selected gas diffusion and/or photon transmission through the seal” (para. [0030]). The listed ranges are merely preferred embodiments. Furthermore Biallas does not specifically discredit or teach away from a thicker metal layer or applying the metal to the elastomer versus the elastomer to the metal. As such one of ordinary skill in the art could reasonably look to the teachings of Minowa to modify the device of Biallas.
Examiner’s Recommendations
Examiner also notes that even were Applicant’s arguments found persuasive other combinations (e.g. US 6,814,358 in view of Minowa, US 3,869,132 in view of Minowa, etc.) would still make obvious the claimed invention as currently presented. To that end Exmainer recommend Applicant claim the argued but unclaimed features (e.g. the process in which the pores and gasket are formed, the specific environment the seal is intended to be used in, the apparent thickness of the coating, etc.). Specifically the pore size and thickness of the second (metal) part/layer may be the most beneficial to claim (assuming such are different than those disclosed in Minowa and the other prior art of record).
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 NICHOLAS L FOSTER whose telephone number is (571)270-5354. The examiner can normally be reached M-F 9am-5pm.
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/NICHOLAS L FOSTER/Primary Examiner, Art Unit 3675