DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on June 22, 2026 was received. Claims 1, 6-7, 10, 23-25 and 28-30 were amended. Claims 2-5, 9, 11-20 and 27 were canceled. Claims 31-33 were added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued April 2, 2026.
Claim Rejections - 35 USC § 112
The rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, on claims 23-25 are withdrawn, as the support for these limitations can be found in specification paragraph 0040 (US Patent Application Publication of the instant application).
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 32 is 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.
Regarding claim 32, the limitations “a silica-rich mixture containing HfSO4, ZrSiO4 or Yb2Si2O7’ and “a phosphate-rich mixture containing YPO4” render the claim indefinite as it is unclear how much of the silica content and phosphate content are considered as “silica-rich” and “phosphate -rich”, respectively. For purpose of examination, mixture containing more than or equal to 70mol% of silica or phosphate are considered to read on the claim limitations (see paragraph 0040) (US Patent Application Publication of the instant application), however, applicant should clarify what is intended, without adding new matter.
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.
Claims 1, 6-8, 10, 21-26 and 28-32 are rejected under 35 U.S.C. 103 as being unpatentable over Hofener (US20140342094) in view of Grossman (US20170191152).
Regarding claim 1, Hofener teaches a powdered coating material for thermal spraying, including air plasma spraying (abstract, paragraph 0018 and 0032). Hofener teaches to coat the particles with an additive to break up the agglomerate of the powder, wherein the additive is applied as a shell (outer particle shell) on the particles (core-shell structure) (paragraph 0041). Hofener teaches the inner core particle are inorganic particles feedstock for forming coating on substrate by thermal spraying including air plasma spraying (paragraphs 0145-148, 0018 and 0032). Hofener teaches the additive includes polymer such as polyester or poly(methyl methacrylate) (paragraphs 0033-0035, 0041, 0050, 0054 and 0056), wherein the additive has low boiling point which evaporates or decomposes during the spraying process (paragraph 0035 and 0073) (wherein the outer particle shell has a composition and/or thickness such that the outer particle shell is consumed during air plasma spraying). Since Hofener teaches the same shell materials as claimed (with Grossman teaching the same inner particle material, see below), Hofener’s outer particle shell (disclosed by the combination of reference) intrinsically protects the inner core particle from plasma and plume environments during air plasma spraying. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999). Hofener further teaches the particle has a D50 value 1.5 to 53µm (paragraph 0108), D90 value 42 to 103µm (paragraph 0114) and D10 value 0.2 to 5µm (paragraph 0118), which naturally resulted in the nominal diameter being overlapped with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hofener further teaches the span value (calculated from D50, D90 and D10) controls the conveyability of the powdered coating material and the level of homogenous and quality of the layer (paragraphs 0122-0123). Since the span, D50, D90 and D10 also affects the nominal diameter of the particles, it would have been within the skill of the ordinary artisan to adjust and optimize the span (by D50, D90 and D10) along with the nominal diameter of the particle in the product/process to yield the desired conveyability of the powdered coating material and the level of homogenous and quality of the layer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Hofener teaches the outer shell of the particle has a thickness to accomplish high chemical and mechanical stability of the particles, but able to be removed quickly during the combustion flame or plasm a flame to leave no residues (paragraph 0073). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the shell in the particle/process to yield the desired level of chemical and mechanical stability of the particles, but able to be removed quickly during the combustion flame or plasm a flame to leave no residues (paragraph 0073). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Hofener does not explicitly teach the inner powdered coating material is inorganic particles, oxides, carbides, halides, nitrides, mixture, mineral, metal oxides etc, (paragraphs 0145-0147) and does not explicitly teaches the claimed silicate and phosphate. However, Grossman teaches a method of making an environmental barrier coating (EBC). Groomsman teaches the EBC is formed by air plasma spraying (paragraph 0007), with a powdered feedstock comprising rare earth element composition, including rare earth monociliate (RE2SiO-5) and rare earth disilicate (RE2Si2O7), wherein RE is Y, Ho, Sc, Yb Er, etc (paragraphs 0016-0018) (inorganic particles). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to use the rare earth monociliate (RE2SiO-5) and rare earth disilicate (RE2Si2O7) as the feedstock material for air plasma spraying (inner core particle) as suggested by Grossman in the product of Hofener, because Grossman teaches such feedstock is useful to form EBC by air plasma spraying (paragraphs 0005 and 0015-0018).
Regarding claim, 6, Hofener teaches the outer shell composition comprises a polymer (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Regarding claim 7, Hofener teaches the outer shell composition comprises polyester or poly(methyl methacrylate) (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Regarding claim 8, Hofener further teaches the particle has a D50 value 1.5 to 53µm (paragraph 0108), D90 value 42 to 103µm (paragraph 0114) and D10 value 0.2 to 5µm (paragraph 0118), which naturally resulted in the nominal diameter being overlapped with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hofener further teaches the span value (calculated from D50, D90 and D10) controls the conveyability of the powdered coating material and the level of homogenous and quality of the layer (paragraphs 0122-0123). Since the span, D50, D90 and D10 also affects the nominal diameter of the particles, it would have been within the skill of the ordinary artisan to adjust and optimize the span (by D50, D90 and D10) along with the nominal diameter of the particle in the product/process to yield the desired conveyability of the powdered coating material and the level of homogenous and quality of the layer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 10, Hofener teaches the quantity (mass% which governs the vol%) of the coating is selected to prevent too strong a disruption of the plasma flame used for the coating by the formation of large quantities if gas (paragraph 0047) and to ensure a breakup of the agglomerates of the particles (paragraph 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the vol% of the shell material in the particle/process to minimize a strong a disruption of the plasma flame used for the coating by the formation of large quantities if gas (paragraph 0047) and to ensure a breakup of the agglomerates of the particles (paragraph 0048). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 21, Groomsman teaches the powdered feedstock comprising rare earth element composition, including rare earth monociliate (RE2SiO-5) and rare earth disilicate (RE2Si2O7), wherein RE is Y, Ho, Sc, Yb Er, etc (paragraphs 0016-0018) (inner core particle).
Regarding claim 22, Groomsman teaches the powdered feedstock comprising rare earth element composition, including rare earth monociliate (RE2SiO-5) and rare earth disilicate (RE2Si2O7), wherein RE is Y, Ho, Sc, Yb Er, etc (paragraphs 0016-0018) (inner core particle).
Regarding claim 23, Hofener teaches the outer shell composition comprises polymer, such as polyester or poly(methyl methacrylate) (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Regarding claim 24, Hofener teaches the outer shell composition comprises polyester or poly(methyl methacrylate) (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Regarding claim 25, Hofener teaches the outer shell composition comprises polyester or poly(methyl methacrylate) (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Regarding claim 26, Hofener further teaches the particle has a D50 value 1.5 to 53µm (paragraph 0108), D90 value 42 to 103µm (paragraph 0114) and D10 value 0.2 to 5µm (paragraph 0118), which naturally resulted in the nominal diameter being overlapped with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05. Hofener further teaches the span value (calculated from D50, D90 and D10) controls the conveyability of the powdered coating material and the level of homogenous and quality of the layer (paragraphs 0122-0123). Since the span, D50, D90 and D10 also affects the nominal diameter of the particles, it would have been within the skill of the ordinary artisan to adjust and optimize the span (by D50, D90 and D10) along with the nominal diameter of the particle in the product/process to yield the desired conveyability of the powdered coating material and the level of homogenous and quality of the layer. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 28, Hofener teaches the outer shell of the particle has a thickness to accomplish high chemical and mechanical stability of the particles, but able to be removed quickly during the combustion flame or plasm a flame to leave no residues (paragraph 0073). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the thickness of the shell in the particle/process to yield the desired level of chemical and mechanical stability of the particles, but able to be removed quickly during the combustion flame or plasm a flame to leave no residues (paragraph 0073). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 29, Hofener teaches the quantity (mass% which governs the vol%) of the coating is selected to prevent too strong a disruption of the plasma flame used for the coating by the formation of large quantities if gas (paragraph 0047) and to ensure a breakup of the agglomerates of the particles (paragraph 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the vol% of the shell material in the particle/process to minimize a strong a disruption of the plasma flame used for the coating by the formation of large quantities if gas (paragraph 0047) and to ensure a breakup of the agglomerates of the particles (paragraph 0048). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 30, Hofener teaches the outer shell has low boiling point which evaporates (consumed by volatilization), decomposes and removed during the spraying process (paragraph 0035 and 0073), thus Hofener teaches the outer particle shell has a composition and thickness such that the outer particle shell is consumed by volatilization during air plasma spraying.
Regarding claim 31, Grossman teaches the inner core particle is rare earth monociliate (RE2SiO-5) and rare earth disilicate (RE2Si2O7), wherein RE is Yb (paragraphs 0016-0018).
Regarding claim 32, Grossman teaches the inner core particle is rare earth disilicate (RE2Si2O7), wherein RE is Yb (paragraphs 0016-0018). Hofener teaches the outer shell composition comprises polyester (paragraphs 0033-0035, 0041, 0050, 0054 and 0056).
Claim 33 is rejected under 35 U.S.C. 103 as being unpatentable over Hofener (US20140342094) in view of Grossman (US20170191152) as applied to claims 1, 6-8, 10, 21-26 and 28-32 above, and further in view of Meschter (US20120244383)
Regarding claim 33, Hofener in view of Grossman teaches all limitations of this claim, except the inner core particle is rare earth phosphate particles. However, Meschter teaches a method of forming a EBC coating by air plasma spraying (abstract, paragraphs 0014-0016 and 0028). Meschter teaches the suitable rare earth oxide containing compounds for the EBC are rare-earth monosilicate, rare-earth disilicates and rare-earth phosphate (REPO4), wherein RE is Sc, Y, La, Ce, Pr, Sm, Eu, Gd, Tb, Dy, Ho, Er, Tm Yb or Lu (paragraph 0024). Rare-earth monosilicate/rare-earth disilicates and rare-earth phosphate in forming EBC on a surface of a substrate by air plasma spraying are considered as functionally equivalent material as evidenced by Meschter. Therefore, it would have been obvious to one of ordinary skill in the art to substitute rare-earth phosphate for rare-earth monosilicate/rare-earth disilicates and rare-earth phosphate as the inner core particles for the core shell particle feedstock in air plasma spraying in method/product as disclosed by Hofener in view of Grossman
Response to Arguments
Applicant's arguments filed on June 22, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Hofener teaches the outer shell made of synthetic resin layer has a thickness in range of 10nm to 300nm (paragraph 0058) and outer shell made of synthetic resin layer has a thickness of below 1µm (paragraph 0156), which is significantly smaller than that recited in the claim 1.
Here is no disclosure or suggestion inf Hofener or Grossman that rare earth monosilicate and rare earth disilicate particles are susceptible to agglomeration like the particles disclosed by Hofener, thus, there is not apparent motivation to provide rare earth monosilicate and rare earth disilicate particles with the coatings disclosed by Hofner.
In response to Applicant’s arguments, please consider the following comments:
Hofener disclosures of the outer shell made of synthetic resin layer has a thickness in range of 10nm to 300nm (paragraph 0058) and outer shell made of synthetic resin layer has a thickness of below 1µm (paragraph 0156) are merely examples, while Hofener’s broader disclosure states that the outer shell of the particle has a minimum thickness to accomplish high chemical and mechanical stability of the particles, but able to be removed quickly during the combustion flame or plasma flame to leave no residues (paragraph 0073). It is well settled that nonpreferred and alternative embodiments constitute prior art and disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments (see MPEP 2123 II). The rejection is based establishing that the shell thickness is result effective variable which is thick enough to provide high chemical and mechanical stability of the particle, which would be reasonably expected to be depend on the environment or heating requirement and the inner core materials during storage or plasma spraying; but still thin enough to able to be removed quickly during the combustion flame or plasma flame to leave no residues (paragraph 0073). Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, that the art teaches away from the claimed invention, the claimed variable was not recognized in the prior art to be a result-effective variable or that the prior art disclosure of the variable is within a range that is so broad in light of the dissimilar characteristics of the members of the range as to not invite optimization by one of skill in the art (MPEP 2144.05 III). It is noted that applicant has not established the criticality of the claimed range, has not shown that the art teaches away from the claimed invention, has not shown that the claimed variable was not recognized in the prior art to be a result-effective variable or has not shown that the claimed parameter is disclosed in a very broad range in the prior art.
Hofener teaches the core shell system with the shell additive is useful for the powdered coating materials for thermal spraying (paragraph 0018) to break up agglomerate which creates non-uniform sprayed coating (paragraph 0013), wherein the powder (inner material which is intended to be the coating material for the spraying) can be inorganic particles which are oxides, carbides, halides, nitrides, mixture, mineral, metal oxides etc, (paragraphs 0145-0147), such large amount of choices indicates that Hofener is not particularly specific on the choice of the inner core material and the shell coating is intended for any air plasma spraying inorganic particles to break up agglomerates. Since Grossman teaches rare earth monosilicate/disilicate are sprayed by air plasma spray to form a coating and rare earth monosilicate/disilicate particles are inorganic particles , it would be obvious to one or ordinary skill in the art to use rare earth silicate inner core (coating material/inner core) in Hofener’s particles for the air plasma feedstock with the outer shell to avoid agglomerate of the particles feedstocks during spraying where such agglomerates create non-uniform in the sprayed coating.
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.
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