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 .
Election/Restrictions
Applicant's election with traverse of Group II, claims 13-25 and 27 and Species (i) claims 8 and 22 in the reply filed on 11/10/25 is acknowledged. The traversal is on the ground(s) that the national stage application has a unity of invention if it only drawn to one of the following combination of categories, 1) a product and a process of said product. This is not found persuasive because the previous mailed restriction requirement indicate a lack of special technical feature which is taught by Joonson (see mailed action on 09/10/25). Furthermore, the following rejection provides further evidence that applicant’s claims lack a special technical feature.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102/103
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 13-15, 17-18, 20-22 is/are rejected under 35 U.S.C. 102(a1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Poteet [US 20210115568].
Claim 13: Poteet teaches a method for protecting a substrate [abstract] from corrosion such as in saline environments [abstract, 0018] by coating the substrate [abstract] with a nano-laminate [0007; Fig. 2; 0019] using chemical vapor deposition (atomic layer deposition) to produce a plurality of deposition layers [0014; 0019; Fig. 2], where the deposition layers have a first composition alternate with the deposition layers having a second composition different from the first composition [0019-0023; 0030-0031; Fig. 2]. Poteet teaches this method produces corrosion barrier coatings [0001-0002] that further protects the substrate from corrosion in saline environments [0028; 0052]. Poteet also teaches exposing the coated substrate to a saline fog for testing [0052]. In the event that Poteet does not meet the limitation “essentially saline environments” it would have been obvious to one of ordinary skill in the art that a saline fog would provide similar or the same corrosive species that originate from essentially saline environment.
Claim 14: Poteet does not explicitly teach blocking diffusion of the corrosive species by the barrier coatings, Poteet does teaches that the barrier coatings are used to prevent the substrate from corroding to increase longevity of components [abstract, 0002] it would have been obvious to one of ordinary skill in the art that the barrier coating would be capable of at least partially blocking diffusion of the corrosion species to the substrate.
Claim 15: Poteet teaches one of the deposited layer of the nanolaminate can be of HfO2 [0022], where in light of the applicant’s disclosure is considered as a conductive layer that enables selective diffusion of corrosive species from saline environments [Specification pg 20, line 19].
Claim 17: although Poteet does not explicitly the formation of the diffusion barrier involves chemical interactions between the deposition layers and diffusion corrosive species, it would have been obvious to one of ordinary skill in the art that if the prior art uses the same materials (hafnium oxide and titanium oxide) and exposed in the same environment (saline), then the same results (chemical reaction between deposition layers and corrosive species) would be yielded as well in absence of unexpected results.
Claim 18: again, Poteet also teaches exposing the coated substrate to a saline fog for testing [0052]. In the event that Poteet does not meet the limitation “essentially saline environments” it would have been obvious to one of ordinary skill in the art that a saline fog would provide similar or the same corrosive species that originate from essentially saline environment.
Claim 20-21: although Poteet does not explicitly teach an additional layer formed by exposing the laminate to a saline environment, it would have been obvious to one of ordinary skill in the art that if the prior art uses the same materials (hafnium oxide and titanium oxide) and exposed in the same environment (saline), then the same results (additional interface layer between the ion conductive layer and reactive layer to diffusing corrosive species) would be yielded as well in absence of unexpected results.
Claim 22: Poteet teaches the plurality of deposition layers can be of hafnium oxide and titanium oxide [0019-0022].
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poteet as applied to claim 13 above, and further in view of Ueda [US 20030089906].
Teaching of the prior art is aforementioned, but does not appear to teach the limitations of claim 16. Ueda is provided.
Claim 16: Ueda teaches Silicon dioxide and Titanium dioxide are both capable of be etched by reactive ion [0144]. It would have been obvious to one of ordinary skill in the art that titanium dioxide is ion reactive since the material can be etched by reactive ion.
Claim(s) 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Poteet as applied to claim 13 above, and further in view of Savage [US 20170095358].
Teaching of the prior art is aforementioned, but does not appear to teach the limitations of claim 19. Savage is provided.
Claim 19: Savage teaches saline environments such as medical implantable devices need to be protected from corrosion [0005], would generally require multiple barrier layers [0009]. It would have been obvious to one of ordinary skill in the art to provide the nano-laminate barrier system of Poteet to a implantable medical devices to provide the same corrosion benefits as taught.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claim 13-22 are provisionally rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over claims 1-14 of copending Application No. 18/697992. Although the conflicting claims are not identical, they are not patentably distinct from each other because the claim in the instant application fully encompass the subject matter of the claims of copending application or alternatively the claims of copending anticipates the claim in the instant application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MANDY C LOUIE whose telephone number is (571)270-5353. The examiner can normally be reached Monday to Friday 1:00PM to 4:00PM PT.
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/MANDY C LOUIE/Primary Examiner, Art Unit 1715