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
Applicant’s election without traverse of Group II, claims 7-14, in the reply filed on 7/27/2026 is acknowledged.
Claims 1-6 and 15-20 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112
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.
Claims 7-9 and 11-14 are 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.
The term “low pressure” in claims is a relative term which renders the claim indefinite. The term “low-pressure” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. Here, claim 7 merely requires some “low” pressure; however, the specification does not quantify the metes and bounds of this term and therefore it is unclear if this is limited to a certain pressure (see e.g. claim 10 which further defines the pressure range and therefore the natural inference is that low pressure as claimed in claim 7 can be any pressure range that is low relative to a higher pressure range).
Dependent claims do not cure the deficiencies of the claims from which they depend.
Claim Rejections - 35 USC § 103
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 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.
Claim(s) 7, 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over US Patent 11261524 by Vezza et al, hereinafter Vezza 524 taken with US Patent 10876206 by Vezza, hereinafter Vezza 206
Vezza 524 discloses a method of comprising: providing a hollow metal pipe into a process chamber (Figure and accompanying text, hollow metal pipe at Figure, column 6, lines 40-54, tube, pipe at column 2, lines 45-65); and performing a low-pressure chemical vapor deposition process in the process chamber to form an thin film on an inner surface of the hollow metal pipe (low pressure met at Column 6, lines 20-30). Vezza 524 discloses a deposited film from silane (abstract); however, fails to disclose the film has a degree of crystallinity not greater than 40%. However, Vezza 206, also in the art of thermal CVD onto a interior of a tube (column 3, liens 14-35, “permit coating of a wide range of geometries (for example, narrow channels/tubes” and “in needles, tubes”) discloses depositing a coating that is amorphous silicon coating (“The coating is an amorphous silicon coating at least partially formed from silane”, column 2, lines 38-40) and therefore taking the references collectively, it would have been obvious to have modified Vezza 524 to deposit the amorphous silicon as such is know to be deposited via CVD for coating within tubes as outlined by Vezza 206.
As for the requirement of “anti-oxidized” this requirement is met by the combination of reference which meet the chemical and crystallinity of deposited film and thus meets this broadly drafted claim requirement (i.e. the claims merely define the anti-oxidize layer in terms of the crystallinity and deposition process and as the prior art meet these requirements, the prior art can reasonably be considered to meet the requirement of anti-oxidize film as presently claimed.
Claim 10: Vezza 524 discloses a pressure of the low-pressure chemical vapor deposition process that reads on the range 0.1 Torr to 100 Torr and such a range as taught by the prior art overlaps the range as claimed and thus makes obvious the claimed range.
Claim 11: Vezza 206 discloses before performing the low-pressure chemical vapor deposition process, the method further comprises performing an oxidation process to form a metal oxide layer on the inner surface of the hollow metal pipe (“prior to or after the introducing of the silicon-containing deposition gas 117 (step 104) an oxidant is capable of being introduced to the enclosed vessel 113”, column 7, lines 40-50) and therefore it would have been obvious to one of ordinary skill in the art to have modified Vezza 524 to include the oxidizing step as specifically articulated by Vezza 206 as Vezza 206 discloses oxidizing before silicon coating film deposition would lead to preditable results. Both Vezza 206 and Vezza 524 disclose metallic substrate; which upon exposure the oxidization process would result in a metal oxide film as claimed as such is a result of exposing metal substrate to oxidant (same metal substrate and same oxidizing process will have the same result as claimed, i.e. metal oxide film).
Claim 12: While the prior art does not specifically disclose the bond associated with the deposition, i.e. fails to disclose the covalent bond, the references disclose and/or make obvious the same process steps and same materials as claimed and the claimed bonding is merely a result of the process steps as claimed (as evidenced by the applicant’s claim and supporting information) and the prior art explicitly disclose the same process steps and therefore would have the same results, i.e. covalent bond, unless the applicant is performing different process steps or using different materials that are not specifically claimed or required to achieve the claimed bond.
Claim(s) 8-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vezza 524 with Vezza 206 as applied above and further in view of Ellis et al. (Properties of hydrogenated amorphous silicon prepared by chemical vapor deposition)
Claim 8: Vezza 524 discloses heating the process chamber to a reaction temperature, wherein the reaction temperature is 420° C. to 600° C. (column 6, lines 4-20) and such a range as taught by the prior art overlaps the range as claimed and thus makes obvious the claimed range. As noted above, Vezza 206 makes obvious deposition of amorphous silicon; however, references fail to disclose the gas mixture. However, Eilis, in the art of deposition of amorphous silicon via CVD and discloses deposition via introducing a mixing gas comprising silane and hydrogen gas into the process chamber (page 4310) and therefore using the known combination of gases to deposit the amorphous silicon would have been obvious to one of ordinary skill in the art at the time of the invention.
Claim 9: Ellis fails to disclose the claimed volume %; however, illustrates that the process gas chemistry determines the growth rate and the film properties (see Figure 2 and accompanying text) and therefore determination of the optimum vol% of the gas chemistry would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation to reap the benefits of controlling the growth rate/deposition rate as well as the film composition.
Claim(s) 13-14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Vezza 524 with Vezza 206 as applied above and further with CN 107109644, hereinafter CN 644.
Vezza 524 with Vezza 206discloses a coating on interior of a tube or pipe (including long tubes “tubing (for example, coiled tubing, tubing sections such as used to connect a sampling apparatus, pre-bent tubing, straight tubing, loose wound tubing, tightly bound tubing, and/or flexible tubing, whether consisting of the interior being treated or including the interior and the exterior being treated”); however, fails to disclose the claimed aspect ratio or inner diameter. However, CN 644, also in the art of coating an interior of a tube/pipe via vapor deposition and discloses hollow metal pipes with inner diameter that overlaps the range as claimed and thus makes obvious such (“the inner diameter is 10 mm or less (e.g., 5 mm or less, for example 3 mm”) and length that will result in a aspect ratio that meets the claimed range (see “ long member such as a length of 10, 000 mm or more of the component.”). As such, it would have been obvious to have deposited the coating on the tube with the claimed properties as Vezza 524 discloses long pipes with interior coatings and CN 644 discloses pipes with aspect ratios and inner diameters that meet the claims as drafted are coated via vapor deposition.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 7 and 10-12 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims of copending Application No. 18/935664 (reference application) taken with Vezza 204 as applied. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference application fails to disclose the crystalline film as claimed and such is made obvious by Vezza 204 as discussed above. Other requirements of claims 10-12 are discussed and made obvious by Vezza 204 as applied above.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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