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
Applicant is advised that should claim 1 be found allowable, claim 15 will be objected to under 37 CFR 1.75 as being a substantial duplicate thereof. When two claims in an application are duplicates or else are so close in content that they both cover the same thing, despite a slight difference in wording, it is proper after allowing one claim to object to the other as being a substantial duplicate of the allowed claim. See MPEP § 608.01(m).
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 15 is rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 15 recites substantially identical region areas with size and composition which is not further limiting than claim 1 from which it depends. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-11, 14-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Mutsuda et al. (US 2012/0202045).
Considering claim 1, Mutsuda teaches surface coatings of a base material (abstract). An embodiment is taught in Fig.1 (reproduced below) of base material (10a) with outer layer (22a) of a crystalline inorganic material (e.g. a first portion including a first region) with inner layer (21a) of an amorphous inorganic material (e.g. a second portion comprising a second region) therebetween (Paragraph 83). The thickness of the first layer is about 0.5-1200 µm (Paragraph 138) and the thickness of the second layer is about 0.5-800 µm (Paragraph 141) each overlapping the claimed unit size area. The material of the amorphous layer material alumina-silicate glass, etc. (Paragraph 88) and the material of the crystalline material includes alumina, zirconia, etc. (Paragraphs 97-98).
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While not expressly teaching a singular example of the claimed three-dimensional manufactured object this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Mutsuda as this is considered a combination of conventionally known crystalline and amorphous materials for insulating coatings and one would have had a reasonable expectation of success. As the crystalline material layer and amorphous layer are taught to be only those materials they are considered to include more of themselves in each respective layer (e.g. ~100%). Further, as the thickness of (22a) is optionally significantly larger than (21a) this is considered to teach where (22a) may be ‘a major portion’ as no particular amount is disclosed. See MPEP 2111.01. The amount of the amorphous and crystalline materials, the sizes thereof, and relative size differential thereof overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside one another a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Mutsuda teaches oxides for the amorphous and crystalline materials (Paragraphs 88 and 97-98).
Considering claim 3, Fig.1 of Mutsuda above depicts where the amorphous coating contacts the surface of the article and this is considered to meet the claimed structure as no particular surface is recited. See MPEP 2111.01.
Considering claims 4-5, Mutsuda teaches where the coating is applied to the concave inner surface of a pipe as well as optionally the convex exterior (Fig.3C; Paragraph 132).
Considering claim 6, Mutsuda teaches where (22a) comprises the crystalline material (Paragraph 83) and is considered to teach where only this material is present (e.g. 100%). See MPEP 2144.05.
Considering claim 7, Mutsuda teaches where (21a) comprises the amorphous material (Paragraph 83) and is considered to teach where only this material is present (e.g. 100%). See MPEP 2144.05.
Considering claims 8-11, Mutsuda teaches where the inorganic material may be alumina, zirconia, silica, and yttria (Paragraphs 88, 94, and 97-98).
Considering claim 14, Mutsuda teaches where the total thickness of the crystalline and amorphous layers may be about 1-2000 µm (Paragraph 136). See MPEP 2144.05.
Considering claim 15, as outlined in claim 1 above, Mutsuda teaches thicknesses overlapping the claimed size range and optionally where each of (21a) and (22a) comprises only the amorphous and crystalline inorganic material, respectively, and this overlaps that which is claimed. See MPEP 2144.05.
Considering claim 17, Mutsuda does not expressly teach the use of plural layers. However, this is considered a duplication of the crystalline layer and the courts have held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See MPEP 2144.04 (VI)(B).
Considering claim 18, Mutsuda teaches where pores (e.g. void portions) exist in the first layer (Paragraph 107).
Considering claims 19-20, the recitations of “is produced by…” are considered product-by-process limitations and are not considered to render a patentable distinction over the prior art absent a showing as to how the claimed process affects the structure of the final manufactured object. See MPEP 2113.
Allowable Subject Matter
Claims 12-13 and 16 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: The closest prior art to the instant claims is that of Mutsuda as outlined above. Mutsuda is silent using phase separated crystalline materials or eutectic materials and there is no suggestion to use these materials. Mutsuda also does not teach or suggest where layer (22a) may be 80 vol% or more of the total article. These features combined with the rest of the recited limitations would not have been obvious to one of ordinary skill in the art.
Response to Arguments
Applicant’s arguments, see remarks pp. 5-8, filed 12 February 2026, with respect to the rejection(s) of claim(s) 1-20 under 35 USC 102(a)(1) and 35 USC 103 in view of Machida, Tanaka, and Rosenflanz have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. Applicant has amended the claims to recite features not disclosed by these references. However, upon further consideration, a new ground(s) of rejection is made in view of Mutsuda as outlined above.
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784