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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 April 27, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The Examiner could not find a passage in the specification that describes using spraying and aerosol deposition to form the upper coating layer.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the upper coating layer is formed by spraying and formed by aerosol deposition. It cannot be determined which method is used to form the upper coating layer. Applicant has argued that aerosol deposition is distinct from the spraying of Hayasaki. Therefore the Examiner has interpreted that the intent of claim 1 is to form the coating by aerosol deposition and not spraying. The Examiner recommends deleting “spraying” in step c and inserting “aerosol deposition”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-5 are rejected under 35 U.S.C. 102a1 as being anticipated by Hayasaki (US 2005/0282034) in view of Iwasawa (WO 2014/104354 see translation for citation)
Regarding claim 1, Hayasaki teaches a method of forming a plasma-resistant coating film, the method comprising:
(a) forming a lower coating layer (5) on a target object (4) by depositing a first rare-earth metal compound powder through a physical vapor deposition (PVD) process [0060][0101], fig. 3b;
(b) transferring a second rare-earth metal compound powder [0087];
and (c) forming an upper coating layer (6) by spraying (thermal spraying) the transferred second rare-earth metal compound powder onto the lower coating layer (5) formed in the (a) forming (Fig. 3b, [0099-0101],
wherein each of the first rare-earth metal compound powder (Y203, [0060]) and the second rare-earth metal compound powder (Y2O3, [0087]) is selected from the group consisting of yttria (Y203),
wherein the first rare-earth metal compound powder has the same components as the second rare- earth metal compound powder (Y203; [0087],[0060]) and
Hayasaki teaches the upper coating layer (corrosion resistant film 6) is thermally sprayed onto the lower coating layer (PVD Corrosion resistant film 5). Hayasaki describes the thermal spraying method as a material …, that is melted by means of a heat source such as plasma, is sprayed from a nozzle in the form of fine particles and is caused to deposit and solidify on the surface of a base material made of ceramics or a metal, so as to form the corrosion resistant coating or the corrosion resistant layer. [0007] Upon solidification of the sprayed material energy is released as heat and absorbed the lower layer. Additionally the energy of the impact from the sprayed material hitting the lower coating layer is absorbed by the lower layer Therefore Hayasaki teaches the lower coating layer (5, fig. 3b) receives energy applied to the target object from the second rare-earth metal compound during step c (thermally sprayed corrosion resistant film 6).
Hayasaki does not teach the upper coating layer is formed by aerosol deposition in the step c. Hayasaki only teaches thermal spraying.
Iwasawa recognizes the deposition of yttria by plasma spraying and aerosol deposition [0035],[0054],[0095]. Iwasawa teaches that the yttria coating deposition by aerosol deposition is at most a superior coating because it has a dense structure compared to a yttria sprayed film [0025]. Additionally the coating of Iwasawa has the probability of producing less particles than a sprayed film. Iwasawa teaches that is was well known in the coating of yttria for a plasma resistant coating member to have used either thermal spraying or aerosol deposition to form the yttria coating [0025],[0035]. The teachings of Iwasawa would have at least presented a recognition of equivalency in the prior art and would have presented strong evidence of obviousness in substituting one method for the other in a process of forming the yttria coating. The substitution of equivalents requires no express suggestion. See MPEP 2144.06. II.
The Examiner takes the position It would be inherent to Iwasawa’s aerosol deposition that the substrate of Iwasawa receives energy applied to the target object from the yttria being deposited because aerosol deposition accelerates particles towards the substrate for deposition which they impact to form a coating.
Therefore it would have been obvious to one of ordinary skill in the art at the time of invention to modify the method of forming the upper coating layer of Hayasaki by providing the upper coating layer is formed by aerosol deposition in the step c, as taught by Iwasawa, because one skilled in the art would have a reasonable expectation of success and because it would have provided a dense plasma resistant coating higher in plasma resistance than a sprayed film [0025].
Regarding claim 2, Hayasaki teaches the physical vapor deposition (PVD) process is one selected from among thermal deposition, electron beam evaporation, and sputtering (Fig. 4, [0056], [0062]).
Regarding claim 3, Hayasaki teaches the lower coating layer has a thickness of 100 microns or less at [0049] and gives a specific example thickness of 10 microns at [0121]. Therefore Hayasaki provides a teaching of sufficient specificity that anticipates the range of 0.1 to 10 um ([0049],[0121]). See MPEP 2131.03.
Regarding claim 4, Hayasaki teaches the second rare-earth metal compound powder has a median diameter (D50) in a range of 0.1 to 10 m [0087].
Regarding claim 5, Hayasaki teaches the upper coating layer has a thickness of 500 microns or less [0093]. Therefore the prior art provides a range that overlaps Applicant’s range of 1 to 30 um, as such a prima facie case for obviousness has been made. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed April 27, 2026 have been fully considered but are moot in light of the new grounds of rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J BRAYTON whose telephone number is (571)270-3084. The examiner can normally be reached 9AM-5PM EST M-F.
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JOHN J. BRAYTON
Primary Examiner
Art Unit 1794
/JOHN J BRAYTON/Primary Examiner, Art Unit 1794
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