Continued Examination Under 37 CFR 1.114
1. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/08/2025 has been entered. Claims 1-7 & 9-10 in the application remain pending. Claims 1-2 & 7 were amended. Claim 8 was cancelled. Claim 10 remains withdrawn from consideration.
2. The text of those sections of Title 35, U.S.C. code not included in this action can be found in a prior Office Action.
Notice of Pre-AIA or AIA Status
3. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Drawings
4. The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “robotic structure” recited in claim 1 must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
5. The amendment filed 09/08/2025 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the “range of 0.5 millimeters and 0.8 millimeters” of claim 7, line 2.
Applicant is required to cancel the new matter in the reply to this Office Action.
Currently, the original specification recites:
[0028] Furthermore, in some embodiments, the electrodes may have dimeters in range of 0.3 milli meters and 0.5 milli meters.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
7. Claim 7 is rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention.
The amendment to claim 7, line 2 which recites “range of 0.5 millimeters and 0.8 millimeters” is not supported by the original specification or claims and therefore considered new matter.
Claim Rejections
8. The claim rejections under AIA 35 U.S.C. 102(a)(1) as being anticipated by Zong (US 2021/0287870 A1), of claim 8 are withdrawn per cancellation of claim 8.
Claim Rejections - 35 USC § 102
9. Claims 1-6 & 9 are rejected under AIA 35 U.S.C. 102(a)(1) as being anticipated by Zong (US 2021/0287870 A1) hereinafter Zong.
Regarding claim 1, the recitation “predefined inorganic material… oxides of the predefined inorganic material”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Zong since Zong meets all the structural elements of the claim and is capable of using predefined inorganic material and oxides of the predefined inorganic material, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 1, Zong discloses an apparatus for providing nano coating on a surface (abs; [0004]; fig 2A-17), comprising:
a spark head unit 31 electrically coupled to a voltage source 30 and mounted on a frame 10, wherein the spark head unit 31 comprises one or more electrode pairs 311+312 including gaseous coating forming material of a predefined inorganic material, wherein the one or more electrode pairs 311+312 are mounted on the spark head unit 31 in a three dimensional array format (see fig 2A-2D, 10-12 ) ([0005]; [0064]-[0098]; [0154]; fig 2A-2D, 10-12),
wherein the one or more electrode pairs 311+312 are adapted to:
provide a spark between corresponding electrodes 311&312 of the one or more electrode pairs 311+312 to obtain a fused electrode material 92 upon receiving a voltage from the voltage source 30 ([0064]-[0098]; [0154]; fig 2A-2D, 10-12); and
deposit the fused electrode material 92 obtained on a surface 91, thereby providing nano coating on the surface 91, wherein the fused electrode material 92 can comprise oxides of the predefined inorganic material, wherein the three dimensional array format is adapted to provide non-uniform deposition of the fused electrode material 92 on the surface 91 ([0005]; [0064]-[0098]; [0154]; fig 2A-2D, 10-12),
wherein the spark head unit 31 is mounted on a robotic structure 41D+42D to provide remote operation ([0022]-[0024]; [0064]-[0098]; [0102]; [0152]-[0162]; [0173]; fig 2A-2D, 7-12).
Regarding claim 2, the recitation “predefined organic material comprises least one of a material comprising zinc, titanium, tungsten and silica”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Zong since Zong meets all the structural elements of the claim and is capable of using predefined inorganic material and oxides of the predefined inorganic material, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 2, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the predefined organic material is capable of comprising at least one of a material comprising zinc, titanium, tungsten and silica ([0005]; [0064]-[0098]; [0154]).
As regards to claim 3, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the frame 10 comprises one or more motors 424D+425D and corresponding guide rails 41D+42D to provide multi-dimensional movement to the spark head unit 31, wherein the one or more motors are controlled by a multi axis controller ([0064]-[0098]; [0152]-[0162]; fig 2A-2D, 7-12).
As regards to claim 4, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the spark head unit 31 comprises one or more actuators adapted to adjust a distance between the surface 91 and the one or more electrode pairs 311+312 ([0064]-[0098]; [0106]; [0152]-[0162]; [0171]-[0172]; fig 2A-2D, 7-12).
As regards to claim 5, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the spark head unit 31 comprises one or more pulse coils adapted to provide voltage pulses of varying duration to the corresponding electrodes 311&312 of the one or more electrode pairs 311+312 to provide pulsated sparking of the one or more electrode pairs 311+312 ([0064]-[0098]; fig 2A-2D, 7-12; clm 24).
As regards to claim 6, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the spark head unit 31 comprises one or more ceramic capacitators to restrict sparking between tips of the corresponding electrodes 311&312 of the one or more electrode pairs 311+312 ([0064]-[0098]; fig 2A-2D, 7-12; clm 24).
Regarding claim 9, the recitation “wherein the nano coating on the surface comprises spikes varying in thickness between 200 nanometers and 500 nanometers”, this recitation is a statement of process expressions relating the apparatus to contents thereof and intended use which does not patentably distinguish over Zong since Zong meets all the structural elements of the claim and is capable of having the nano coating on the surface 91 comprise spikes varying in thickness between 200 nanometers and 500 nanometers, if so desired, and does not add structure to the claim. Expressions relating the apparatus to contents thereof and intended use of a known apparatus does not give it patentable weight. See In re Thuau, 57 USPQ 324, CCPA 979 135 F2d 344, 1943. A claim containing a “recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus” if the prior art apparatus shows all of the structural limitations of the claim. See Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). It is additionally noted that it is well settled that the intended use of a claimed apparatus is not germane to the issue of the patentability of the claimed structure. If the prior art structure is capable of performing the claimed use then it meets the claim. In re Casey, 152 USPQ 235, 238 (CCPA 1967); In re Otto, 136 USPQ 459 (CCPA 1963). Furthermore, “expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” See Ex parte Thibault, 164 USPQ 666,667 (Bd. App. 1969). Thus, the “inclusion of material or article worked upon does not impart patentability to the claims.” In re Young, 75 F.2d 966, 25 USPQ 69 (CCPA 1935) (as restated in In re Otto, 312 F.2d 937, 136 (USPQ 458, 459 (CCPA 1963)). Therefore, Examiner is disregarding any structural limitations to the apparatus based on process expressions relating the apparatus to contents thereof and the process intended to be used with the apparatus. See MPEP 2114 & 2115.
As regards to claim 9, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the nano coating on the surface 91 can comprise spikes varying in thickness between 200 nanometers and 500 nanometers ([0022]-[0024]; [0064]-[0098]; [0102]; [0152]-[0162]; [0173]; fig 2A-2D, 7-12).
Claim Rejections - 35 USC § 103
10. Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Zong as applied to claim 1 above.
As regards to claim 7, Zong discloses an apparatus (abs; [0004]; fig 2A-17), wherein the electrodes comprises diameters that can be measured in millimeters ([0005]; [0064]-[0098]; [0154]; fig 2A-2D, 10-12), however Zong does not disclose varying in range of 0.5 millimeters and 0.8 millimeters.
Although Zong does not explicitly disclose the claimed diameters, before the effective filing date of the invention, it would have been obvious to one of ordinary skill in the art to modify the apparatus of Zong to have the diameters recited in the claim and therefore is not expected to alter the operation of the device in a patentably distinct way as the diameters (relative dimensions) are considered engineering aspects of an apparatus, not problems or sources of problems to be solved. In addition, it is the position of the examiner that the disclosure provides no evidence of criticality with regard to the diameters of the electrodes.
Where the only difference between the prior art and the claims is a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device is not patentably distinct from the prior art device. In Gardner v. TEC Systems, Inc., 725 F.2d 1338, 220 USPQ 777 (Fed. Cir. 1984), cert. denied, 469 U.S. 830, 225 USPQ 232 (1984).
Response to Arguments
11. Applicant's arguments filed 09/08/2025 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
(a) Applicant submits that Zong fails to identically disclose "wherein the spark head unit is mounted on a robotic structure to provide remote operation" as recited in the amended claim 1.
Applicant respectfully submits that while Zong merely discloses robotic arms (e.g., 41D, 42D), these arms are located inside the sealed reaction chamber (as disclosed in Zong) and are designed to manipulate substrates or chamber components in a vacuum/plasma environment (emphasis added). The "remote operation" as referred to in Zong using the said arms is aimed at controlling internal mechanisms from outside the vacuum chamber to avoid contamination, not open-air robotic manipulation of a spark head.
In contrast, the spark head unit (as disclosed in amended claim 1) itself is mounted on a robotic structure configured for remote operation. This robotic structure of the amended claim 1 is external to any chamber and enables free multi-axis movement of the spark head over large or irregular surfaces in open air. Unlike Zong, the robotic structure is not merely "arms" in the amended claim 1, but the spark head unit is actually mounted on the robotic structure. This is completely different from Zong. This configuration allows coating operations to be performed on surfaces located in hazardous or inaccessible areas while keeping the operator at a safe distance, and without the requirement of the vacuum chamber.
Furthermore, and more specifically, the robotic structure of the amended claim 1 positions a live spark head over external targets. In contrast, Zong's robotic arms handle substrates inside a closed environment of a vacuum chamber. The robotic structure having the spark head unit of the amended claim 1 operates in an open atmosphere, unlike Zong's robotic arm that operates in a vacuum/plasma chamber. Lastly, the robotic structure of the amended claim 1 is unconstrained by chamber geometry, unlike Zong's robotic arms, which are dictated by chamber dimensions and seals.
Given these differences, Zong cannot anticipate the claimed "spark head unit mounted on a robotic structure configured to provide remote operation" without fundamental redesign.
In addition to the above differences between the amended claim 1 and Zong, Applicant further respectfully submits that the amended claim 1 is not anticipated by Zong. Zong fails to disclose, either expressly or inherently, the claimed combination of:
- Solid-state spark deposition apparatus operating in open atmosphere,
- Absence of reaction chamber, vacuum pump, and precursor gas inlet, and
- Spark head unit mounted on a robotic structure configured to provide remote
operation.
The spark head unit, as disclosed in the amended claim 1, operates "in atmospheric conditions without a reaction chamber, vacuum pump, or precursor gas inlet." Zong, by contrast, is premised on a closed-chamber, controlled-atmosphere process. Furthermore, in Zong's disclosure, the robotic structures and plasma generation components are contained entirely within the reaction chamber, and the chamber is integral to operation; without it, Zong's deposition process cannot function as intended. This is completely different from the amended claim 1. Thus, the physical environment and structural configuration of the apparatus of the present invention are materially different from those of Zong. The absence of a chamber in the amended claim 1 is a positive structural limitation that Zong does not teach or suggest.
Furthermore, the electrodeposition process as disclosed in amended claim 1 does not require a clean room setup, or inert atmosphere or any other special conditions. It can be done in open, under normal atmospheric conditions. The process of the amended claim 1 does not require any heating or baking before or after the deposition process. It also does not require any chemical treatment, surface treatment or etching. This is completely different from the disclosure of Zong.
(b) Applicant respectfully submits that the cited reference does not anticipate the invention disclosed in claim 1, and the rejection under 35 U.S.C. §§ 102/103 should be withdrawn. Dependent claims 2-7 and 9 are also allowable for similar reasons.
12. In response to applicant’s arguments, please consider the following comments.
(a) Applicants arguments are not commensurate with the breadth of the currently amended claims. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification." The Federal Circuit’s en banc decision in Phillips v. AWH Corp., 415 F.3d 1303, 75 USPQ2d 1321 (Fed. Cir. 2005) expressly recognized that the USPTO employs the "broadest reasonable interpretation" standard: The Patent and Trademark Office ("PTO") determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction "in light of the specification as it would be interpreted by one of ordinary skill in the art." In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827] (Fed. Cir. 2004). Indeed, the rules of the PTO require that application claims must "conform to the invention as set forth in the remainder of the specification and the terms and phrases used in the claims must find clear support or antecedent basis in the description so that the meaning of the terms in the claims may be ascertainable by reference to the description." 37 CFR 1.75(d)(1).
As admitted by Applicant (pg. 5 of Remarks) Zong discloses robotic arms (e.g., 41D, 42D), these arms are located inside the sealed reaction chamber (as disclosed in Zong) and are designed to manipulate substrates or chamber components in a vacuum/plasma environment (emphasis added). The remote operation as referred to in Zong using the said arms is aimed at controlling internal mechanisms from outside the vacuum chamber to avoid contamination.
Further, although Applicant may be his/her own lexicographer, the plain meaning of the term “robotic structure” and “remote operation” has indeed been satisfied. Examiner recommends further defining the robotic structure and remote operation.
For a claim word to be given a meaning other than the plain meaning, the specification must clearly set forth the definition explicitly and with reasonable clarity, deliberateness, and precision. Teleflex Inc. v. Ficosa North America Corp., 63 USPQ2d 1374.
An embodiment in the written description may not be read into a claim when the claim language is broader than the embodiment. Even “explicit definitions” can have varying interpretations.
Applicant may rebut that terms are to be given their ordinary and customary meaning by clearly setting forth a definition of the term in the specification that is different from its ordinary and customary meaning(s). But applicant MUST do so “with reasonable clarity, deliberateness and precision” within the specification so as to give one notice of the change in meaning. See: MPEP §2111.01(IV)
Again, Applicants arguments are not commensurate with the breadth of the currently amended claims. In response to applicant's argument that the references fail to show certain features of applicant’s invention, it is noted that the features upon which applicant relies (i.e., not open-air robotic manipulation of a spark head… the spark head unit (as disclosed in amended claim 1) itself is mounted on a robotic structure configured for remote operation… robotic structure of the amended claim 1 is external to any chamber and enables free multi-axis movement of the spark head over large or irregular surfaces in open air… the spark head unit is actually mounted on the robotic structure… this configuration allows coating operations to be performed on surfaces located in hazardous or inaccessible areas while keeping the operator at a safe distance, and without the requirement of the vacuum chamber... the robotic structure of the amended claim 1 positions a live spark head over external targets… robotic structure having the spark head unit of the amended claim 1 operates in an open atmosphere… the robotic structure of the amended claim 1 is unconstrained by chamber geometry… the claimed combination of: - Solid-state spark deposition apparatus operating in open atmosphere, - Absence of reaction chamber, vacuum pump, and precursor gas inlet… spark head unit, as disclosed in the amended claim 1, operates "in atmospheric conditions without a reaction chamber, vacuum pump, or precursor gas inlet."… the physical environment and structural configuration of the apparatus of the present invention are materially different from those of Zong… the electrodeposition process as disclosed in amended claim 1 does not require a clean room setup, or inert atmosphere or any other special conditions… can be done in open, under normal atmospheric conditions… process of the amended claim 1 does not require any heating or baking before or after the deposition process… it also does not require any chemical treatment, surface treatment or etching) are not recited in the rejected claim(s). 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).
Even, further, a prior art reference must be considered in its entirety including portions that would lead away from the claimed invention. The mere fact that Zong teaches something different does NOT mean that Zong criticizes, discredits, or otherwise discourages the solution claimed (robotic structure and remote operation)…." In re Fulton, 391 F.3d 1195, 1201, 73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
(b) In view of the foregoing, Examiner respectfully contends the limitations of claim 1 are indeed satisfied. Claims 2-7 & 9 are rejected at least based on their dependency from claim 1, as well as for their own rejections on the merits, respectively.
Conclusion
13. Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jethro M Pence whose telephone number is (571)270-7423. The examiner can normally be reached M-TH 8:00 A.M. - 6:30 P.M..
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/Jethro M. Pence/
Primary Examiner
Art Unit 1717