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 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.
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.
Claim(s) 1 and 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2015/0307715) in view of Ahn et al. (KR 20150113546).
Regarding claim 1, Sato et al. teaches slurry for thermal spraying including particles containing a rare earth oxyfluoride and a dispersing medium, wherein the particles have an average particle size of 0.01 to 10 μm (See Abstract) and a content of 1 mass % to 80 mass % (paragraph [0029]). Sato et al. teaches dispersants, i.e. anti-agglomerating agent and solvents including water and organic solvents may be used (paragraphs [0024] and [0031]).
Sato et al. fails to teach amount and use of an organic compound for the anti-agglomerating agent.
However, Ahn et al. teaches a ceramic suspension for thermal spray coating comprising dispersant in an amount of 1 to 20% (Abstract, page 6), wherein the dispersant includes ammonium polyacrylic acid, polyethylene imine, or 2-phosphonobutane tricarboxylic acid (page 6), i.e. organic compound.
It would have been obvious to one of ordinary skill in the art to include dispersant in an amount as presently claimed in the slurry of Sato et al. in order to control viscosity and to stabilize the dispersion (page 7).
Regarding the limitation of the slurry being a “suspension plasma spraying” slurry and “for use as a spray material for suspension plasma spraying in an atmosphere containing an oxygen-containing gas”, applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. suspension plasma spraying slurry for use as a spray material for suspension plasma spraying in an atmosphere containing an oxygen-containing gas, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art invention and further that the prior art structure which is a slurry identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Regarding claim 3, Sato et al. teaches wherein the rare earth element is at least one element selected from the group consisting of yttrium (Y), gadolinium (Gd), holmium (Ho), erbium (Er), ytterbium (Yb), and lutetium (Lu) (paragraph [0013]).
Regarding claim 4, the claimed limitation is considered intended use as set forth above.
Allowable Subject Matter
Claim 2 is 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENG HUANG whose telephone number is (571)270-7387. The examiner can normally be reached on Monday-Thursday from 7 AM to 5 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Callie Shosho, can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENG YUAN HUANG/Primary Examiner, Art Unit 1787
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