Prosecution Insights
Last updated: July 17, 2026
Application No. 18/293,885

PROCESS FOR PRODUCING COATED SUBSTRATES AND COATED SUBSTRATE AND USE THEREOF

Final Rejection §103
Filed
Jan 31, 2024
Priority
Aug 03, 2021 — EU 21189473.8 +1 more
Examiner
GOLDEN, CHINESSA T
Art Unit
1788
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung e.V.
OA Round
2 (Final)
57%
Grant Probability
Moderate
3-4
OA Rounds
1y 2m
Est. Remaining
62%
With Interview

Examiner Intelligence

Grants 57% of resolved cases
57%
Career Allowance Rate
398 granted / 694 resolved
-7.7% vs TC avg
Minimal +5% lift
Without
With
+4.6%
Interview Lift
resolved cases with interview
Typical timeline
3y 7m
Avg Prosecution
34 currently pending
Career history
723
Total Applications
across all art units

Statute-Specific Performance

§103
96.6%
+56.6% vs TC avg
§102
2.6%
-37.4% vs TC avg
§112
0.2%
-39.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 694 resolved cases

Office Action

§103
DETAILED ACTION The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 16-19, 21-33 are pending in the application, claims 16-19, 21-28 and 33 have been withdrawn from consideration due to Applicant’s election. Claims 1-15 and 20 are cancelled. Amendments to claims 29 and 31, filed on 4/3/2026, have been entered in the above-identified application. WITHDRAWN REJECTIONS The objections to claim 31 made of record in the office action mailed 1/9/2026, page 2, paragraph 4 has been withdrawn due to Applicant’s amendment in the response filed 4/3/2026. The 35 U.S.C. §102 rejection of claims 29, 30 and 32 over Shigefugi et al. (JP2020-011866, see machine translated version) as evidenced by Fatzer et al. (US Patent No. 3,925,577) made of record in the office action mailed 1/9/2026, page 3, paragraph 6 has been withdrawn due to Applicant’s amendment in the response filed 4/3/2026. The 35 U.S.C. §103 rejection of claim 31 over Shigefugi et al. (JP2020-011866, see machine translated version) as evidenced by Fatzer et al. (US Patent No. 3,925,577) made of record in the office action mailed 1/9/2026, page 5, paragraph 15 has been withdrawn due to Applicant’s amendment in the response filed 4/3/2026. REJECTIONS The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action. Claim Rejections - 35 USC § 103 Claims 29-32 are rejected under 35 U.S.C. 103 as being unpatentable over Shigefugi et al. (JP2020-011866, see machine translated version) as evidenced by Fatzer et al. (US Patent No. 3,925,577) in view of Shinohara (US Patent Application No. 2015/0321966). Regarding claim 29, Shigefugi et al. teach a coated substrate (paragraphs [0001], [0010]) comprising a substrate (paragraph [0010]) and a TaC coating (protective layer that comprises at least one refractory metal carbide) (paragraphs [0011], [0016]). Shigefugi et al. teach wherein the substrate is made of isotropic graphite (paragraph [0011]). Fatzer et al. teach that all isotropic graphites have some pores present (col. 1, lines 25-30). Therefore, the substrate of Shigefugi et al. is a porous substrate based on the evidence of Fatzer et al. because the substrate is an isotropic graphite (Shigefugi et al., paragraph [0011]; Fatzer et al., col. 1, lines 25-30). Shigefugi et al. fail to teach wherein the substrate comprises at least one surface sealing layer arranged on at least one region of the surface of the porous substrate, wherein the at least one surface sealing layer is selected from the group consisting of pyrolytical carbon layer, silicon layer, zirconium boride layer, tantalum nitride layer, silicon carbide layer, and silicon nitride layer. However, Shinohara teaches a coated substrate comprising a base material (page 1, paragraph [0017]), at least one surface sealing layer arranged on at least one region of the surface of the substrate (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]) and at least one protective layer that is arranged on the at least one surface sealing layer (page 2, paragraph [0050]) and that comprises at least one refractory metal carbide (page 2, paragraph [0050]), wherein the at least one surface sealing layer is silicon carbide (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]). It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sealing layer of Shinohara on the porous substrate of Shigefugi et al. in order to provide excellent durability and thermal uniformity (Shinohara, page 1, paragraphs [0010], [0011]). Regarding claim 30, Shigefugi et al. teach wherein the TaC coating (protective layer) has a thickness of 10 µm or more which reads on the claimed mean layer thickness of at least 20 µm (paragraphs [0016], [0032]). Regarding claim 31, Shigefugi et al. teach wherein the TaC coating (protective layer) has a thickness of 10 µm or more (paragraphs [0016], [0032]). Shigefugi et al. do not disclose wherein a standard deviation of the mean layer thickness of the at least one protective layer is below 6%. However, where in the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges in thickness involve only routine skill in the art, absence a showing of criticality. MPEP 2144.05 II. One would have been motivated to modify the standard deviation of the mean layer thickness of Shigefugi et al. because an optimum thickness can be selected depending on the purpose (Shigefugi et al., paragraph [0032]). Regarding claim 32, Shigefugi et al. teach a coated substrate (paragraphs [0001], [0010]) comprising a substrate (paragraph [0010]) and a TaC coating (protective layer that comprises at least one refractory metal carbide) (paragraphs [0011], [0016]). Shigefugi et al. teach wherein the substrate is made of isotropic graphite (paragraph [0011]). Fatzer et al. teach that all isotropic graphites have some pores present (col. 1, lines 25-30). Therefore, the substrate of Shigefugi et al. is a porous substrate based on the evidence of Fatzer et al. because the substrate is an isotropic graphite (Shigefugi et al., paragraph [0011]; Fatzer et al., col. 1, lines 25-30). Shigefugi et al. fail to teach wherein the substrate comprises at least one surface sealing layer arranged on at least one region of the surface of the porous substrate, wherein the at least one surface sealing layer is selected from the group consisting of pyrolytical carbon layer, silicon layer, zirconium boride layer, tantalum nitride layer, silicon carbide layer, and silicon nitride layer. However, Shinohara teaches a coated substrate comprising a base material (page 1, paragraph [0017]), at least one surface sealing layer arranged on at least one region of the surface of the substrate (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]) and at least one protective layer that is arranged on the at least one surface sealing layer (page 2, paragraph [0050]), wherein the at least one surface sealing layer is silicon carbide (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]). It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use the sealing layer of Shinohara on the porous substrate of Shigefugi et al. in order to provide excellent durability and thermal uniformity (Shinohara, page 1, paragraphs [0010], [0011]). The product-by-process limitation “prepared in accordance with claim 16” would not be expected to impart distinctive structural characteristics to the coated substrate. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the coated substrate of Shigefugi et al., as modified by Shinohara, possesses the same characteristics as the Applicant’s claimed coated substrate. Claims 29 and 32 are rejected under 35 U.S.C. 103 as being unpatentable over Shinohara (US Patent Application No. 2015/0321966) in view of Shigefugi et al. (JP2020-011866, see machine translated version) as evidenced by Fatzer et al. (US Patent No. 3,925,577). Regarding claim 29, Shinohara teaches a coated substrate comprising a base material (page 1, paragraph [0017]), at least one surface sealing layer arranged on at least one region of the surface of the substrate (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]) and at least one protective layer that is arranged on the at least one surface sealing layer (page 2, paragraph [0050]) and that comprises at least one refractory metal carbide (page 2, paragraph [0050]), wherein the at least one surface sealing layer is silicon carbide (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]). Shinohara fails to teach wherein the base material is a porous substrate. However, Shigefugi et al. teach a coated substrate (paragraphs [0001], [0010]) comprising a substrate (paragraph [0010]) and a TaC coating (protective layer that comprises at least one refractory metal carbide) (paragraphs [0011], [0016]). Shigefugi et al. teach wherein the substrate is made of isotropic graphite (paragraph [0011]). Fatzer et al. teach that all isotropic graphites have some pores present (col. 1, lines 25-30). Therefore, the substrate of Shigefugi et al. is a porous substrate based on the evidence of Fatzer et al. because the substrate is an isotropic graphite (Shigefugi et al., paragraph [0011]; Fatzer et al., col. 1, lines 25-30). It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use porous substrate of Shigefugi et al. as the base material of Shinohara in order to provide a polycrystalline graphite material (Shigefugi et al., paragraph [0014]). Regarding claim 32, Shinohara teaches a coated substrate comprising a base material (page 1, paragraph [0017]), at least one surface sealing layer arranged on at least one region of the surface of the substrate (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]) and at least one protective layer that is arranged on the at least one surface sealing layer (page 2, paragraph [0050]) and that comprises at least one refractory metal carbide (page 2, paragraph [0050]), wherein the at least one surface sealing layer is silicon carbide (page 1, paragraph [0017], page 2, paragraphs [0041], [0043]). Shinohara fails to teach wherein the base material is a porous substrate. However, Shigefugi et al. teach a coated substrate (paragraphs [0001], [0010]) comprising a substrate (paragraph [0010]) and a TaC coating (protective layer that comprises at least one refractory metal carbide) (paragraphs [0011], [0016]). Shigefugi et al. teach wherein the substrate is made of isotropic graphite (paragraph [0011]). Fatzer et al. teach that all isotropic graphites have some pores present (col. 1, lines 25-30). Therefore, the substrate of Shigefugi et al. is a porous substrate based on the evidence of Fatzer et al. because the substrate is an isotropic graphite (Shigefugi et al., paragraph [0011]; Fatzer et al., col. 1, lines 25-30). It would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to use porous substrate of Shigefugi et al. as the base material of Shinohara in order to provide a polycrystalline graphite material (Shigefugi et al., paragraph [0014]). The product-by-process limitation “prepared in accordance with claim 16” would not be expected to impart distinctive structural characteristics to the coated substrate. The product itself does not depend on the process of making it. MPEP 2113. It can therefore be ascertained that the coated substrate of Shinohara, as modified by Shigefugi et al., possesses the same characteristics as the Applicant’s claimed coated substrate. Response to Arguments Applicant's arguments filed 4/3/2026 with respect to claims 29-32 of record have been carefully considered but are moot due to the new grounds of rejection. 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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHINESSA GOLDEN whose telephone number is (571)270-5543. The examiner can normally be reached on Monday - Friday; 8:00 - 4:00 EST. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alicia Chevalier can be reached on 571-272-1490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /Chinessa T. Golden/Primary Examiner, Art Unit 1788 5/27/2026
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Prosecution Timeline

Jan 31, 2024
Application Filed
Jan 09, 2026
Non-Final Rejection mailed — §103
Apr 03, 2026
Response Filed
May 29, 2026
Final Rejection mailed — §103 (current)

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Prosecution Projections

3-4
Expected OA Rounds
57%
Grant Probability
62%
With Interview (+4.6%)
3y 7m (~1y 2m remaining)
Median Time to Grant
Moderate
PTA Risk
Based on 694 resolved cases by this examiner. Grant probability derived from career allowance rate.

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