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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claims 1-15, drawn to a silica-passivated article.
Group II, claims 16-20, drawn to a method for forming a silica-passivated article.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I and II lack unity of invention because even though the inventions of these groups require the technical feature of the silica-passivated article according to claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Hara (“Silica-based hybrid porous layers to enhance the retention and efficiency of open tubular capillary columns with a 5 μm inner diameter”, 2018) (see the rejection of claim 1 under 35 U.S.C. 102(a)(1) below).
During a telephone conversation with David Marcus on July 13th, 2026, a provisional election was made with traverse to prosecute the invention of Group I, claims 1-15. Affirmation of this election must be made by applicant in replying to this Office action. Claims 16-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Specification
The disclosure is objected to because of the following informalities:
On Page 6, Paragraph [0034], the last sentence reads, “Silicas which are structurally modified by may be derived from silsesquioxanes” (emphasis added). The phrase ‘by may be’ should be edited for grammatical correctness and clarity.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-7, 9-10, and 13-14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hara (“Silica-based hybrid porous layers to enhance the retention and efficiency of open tubular capillary columns with a 5 μm inner diameter”, 2018).
Regarding claim 1, Hara teaches a silica-passivated article (Hara, Fig. 1a, Page 64, Col. 1, Paragraph 3 - Col. 2, Paragraph 5), comprising:
a fluidic path (Hara, Fig. 1a, center of image, shown as a dark circle, is the inside of a capillary through which fluids flow in chromatography);
a fluidic path surface facing the fluidic path (Hara, Fig. 1a, inner surface of capillary); and
a conformal coating disposed on a passivated portion of the fluidic path surface between the fluidic path surface and the fluidic path such that the fluidic path is maintained remote from the passivated portion of the fluidic path surface across the conformal coating (Hara, Fig. 1a, a uniform conformal coating separating the inner diameter of the capillary from the fluidic path is clearly shown), wherein:
the conformal coating is a silica-based coating (Hara, Abstract, “silica-based porous layered open tubular (PLOT) columns”);
the conformal coating includes carbon-based moieties each covalently bound to singular silicon atoms of the silica-based coating (Hara, Page 64, Col. 1, Paragraph 2, “In the present study, we investigate the possibility to further increase the achievable retention ability of PLOT columns by increasing the hydrophobicity of the layers using hybrid TMOS/MTMS sol-gel mixtures, wherein methyltrimethoxysilane(MTMS) is added to allow the incorporation of extra methyl groups in the material backbone.”);
the conformal coating is substantially free of carbon-based moieties each covalently bound to more than one silicon atom of the silica-based coating (Hara, Page 64, Col. 1, Paragraph 3 - Col. 2, Paragraph 5 and elsewhere in the disclosure give no indication that any carbon-based moieties each covalently bound to more than one silicon atom are present);
the conformal coating is substantially free of layers of bulk silicon (Hara, Page 64, Col. 1, Paragraph 3 - Col. 2, Paragraph 5 and elsewhere in the disclosure give no indication that any layers of bulk silicon are present);
and the passivated portion of the fluidic path surface constitutes approximately 100% of the fluidic path surface by surface area (Hara, Fig. 1a clearly shows the entire cross-section covered by a uniform coating).
Regarding claim 2, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the conformal coating is free of carbon-based moieties each covalently bound to more than one silicon atom of the silica-based coating (Hara, Page 64, Col. 1, Paragraph 3 - Col. 2, Paragraph 5 and elsewhere in the disclosure give no indication that any carbon-based moieties each covalently bound to more than one silicon atom are present).
Regarding claim 3, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the conformal coating is free of layers of bulk silicon (Hara, Page 64, Col. 1, Paragraph 3 - Col. 2, Paragraph 5 and elsewhere in the disclosure give no indication that any layers of bulk silicon are present).
Regarding claim 4, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the passivated portion of the fluidic path surface constitutes approximately 100% of the fluidic path surface by surface area (Hara, Fig. 1a clearly shows the entire cross-section covered by a uniform coating).
Regarding claim 5, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein approximately 100% of the conformal coating by surface area has a thickness varying by no more than 0.2% (Hara, Page 6, Col. 2, Paragraph 2).
Regarding claim 6, Hara teaches the silica-passivated article of claim 1, as discussed above. While Hara does not explicitly teach that the conformal coating includes a plurality of layers, each of which is a silica-based coating, the structure required by the claims is indistinguishable from the prior art. A layer having a thickness can be considered to itself be comprised of a plurality of thinner layers of its own material. In the instant case, Hara’s coating (Hara, Fig. 1a) can be considered to include a plurality of layers of silica-based coating.
Regarding claim 7, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the fluidic path surface is an internal surface of the silica-passivated article (Hara, Fig. 1a, internal surface of capillary).
Regarding claim 9, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the fluidic path surface includes silica (Hara, Page 64, Col. 2, Paragraph 2, fused-silica capillaries).
Regarding claim 10, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the silica-passivated article includes at least one internal channel, the fluidic path surface includes an interior surface of the at least one internal channel, and the fluidic path includes a lumen defined by the interior surface of the at least one internal channel (Hara, Fig. 1a, internal surface is visible at bottom of the internal channel from the viewing angle of the SEM image as grey; also visible in the bottom-right of the article’s channel in Fig. 1b and in the top-right of the article’s channel in Fig. 1c. Moreover, given that the coating does not fill the entirety of the channel, a lumen is necessarily present as claimed.).
Regarding claim 13, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the silica-passivated article is a liquid chromatography component (Hara, Page 64, Col. 2, Paragraph 6 - Page 65, Col. 1, Paragraph 1, LC).
Regarding claim 14, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the conformal coating has an average thickness of 0.249 μm (Hara, Fig. 1a, caption, 249 nm).
Allowable Subject Matter
Claims 8, 11-12, and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Hara (“Silica-based hybrid porous layers to enhance the retention and efficiency of open tubular capillary columns with a 5 μm inner diameter”, 2018), Shiner (U.S. 2021/0164094 A1), and Carr (U.S. Patent No. 10,767,259, 2020) are considered to be the closest prior art to the instant claims.
Regarding claim 8, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the fluidic path surface includes silica (Hara, Page 64, Col. 2, Paragraph 2, fused-silica capillaries), which differs from the claimed metallic material. Where the prior art does teach silica-based coatings on metallic fluidic path surfaces, the features of claim 1 are not taught in their entirety. For example, Shiner teaches all of the limitations of claims 1 and 8 except for the limitation in claim 1 that “the conformal coating is substantially free of carbon-based moieties each covalently bound to more than one silicon atom of the silica-based coating” (Shiner, [0122] and Table 1 demonstrate ethylene-bridged disilyl moieties in the silica-based coating). Additionally, Carr teaches all of the limitations of claims 1 and 8 except for the limitation in claim 1 that “the conformal coating includes carbon-based moieties each covalently bound to singular silicon atoms of the silica-based coating” (Carr, Col. 15, lines 45-67 teach ALD SiO2 on stainless steel without reference to remaining functional groups).
Regarding claim 11 and its dependent claim 12, Hara teaches the silica-passivated article of claim 1, as discussed above, wherein the silica-passivated article includes at least one porous media (Hara, Fig. 1, the coating itself is a porous media), but does not teach or suggest that the fluidic path surface includes interior surfaces of the at least one porous media. The fluidic path surface, upon which the silica-based coating is deposited, is a smooth capillary without pores (Hara, Fig. 1). While Shiner teaches coating organosilica on a porous fluidic path surface (Shiner, [0188], frit of the chromatographic column), Shiner is deficient with respect to the limitations of claim 1, as discussed above. As there is no teaching or suggestion in the prior art that Hara’s coating could be applied to a frit of a chromatographic column in the same manner as taught by Shiner, the claim contains allowable subject matter.
Regarding claim 15, there is no teaching or suggestion in the cited prior art references that the conformal coating would have a surface roughness facing the fluidic path less than that of the fluidic path surface.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ZACHARY J. BAUM whose telephone number is (571)270-0895. The examiner can normally be reached Monday-Friday 8:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Anthony Zimmer can be reached at 571-270-3590. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ZACHARY JOHN BAUM/Examiner, Art Unit 1736
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