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 .
Examiner’s Note
The claims should be on a separate page from the abstract
Claim Objections
Claim 2 is objected to because of the following informalities: “coating in inert” should be “coating is inert”. Appropriate correction is required.
Claim 4 is objected to because of the following informalities: It appears that “silicon species” should be “silicon-based species” for consistency. Appropriate correction is required.
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 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 10,767,259 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a liquid chromatography device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 8).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
Claims 1-4 and 7-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-4 of U.S. Patent No. 10,895,009 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a metallic component that is a chromatographic column having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
Claims 1-4 and 6-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 12,655,517 B2 (App. # 17/125,371). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of coating a liquid chromatographic instrument component having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 12).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 21, 25-26, 31-32, 34-35, 37, 39-44 of copending Application No. 18/125,052 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a liquid chromatographic component having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 31 and 21).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-5, and 7-11 of copending Application No. 18/649,035 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a liquid chromatographic component having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claim 1).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/649,268 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a liquid chromatographic device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 2).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/649,302 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a liquid chromatographic device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claim 1).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-9 of copending Application No. 18/649,231 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a liquid chromatographic device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 3).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-4, and 7-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 19/644,762 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of coating a liquid chromatographic device having a lumen with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claim 1).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/649,004 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 3).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-11 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/649,199 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 3).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-10 of copending Application No. 18/649,171 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a method of using a device having a lumen coated with SiC, Si3N4, SiOxCy, SiOxNy or SiCxHy (co-pending claims 1 and 2).
Therefore it would have been obvious to one of ordinary skill in the art that the specific device of the copending claims would fall within the broadly disclosed device of the present claims and thereby one would arrive at the present invention from the copending claims.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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.
Claims 1-3, 5, 7, 10 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Dawes et al. (US 2005/0077222, hereinafter “Dawes”).
In regard to claims 1-3, 5, 7, 10 and 11, Dawes discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assembly (abstract). The separation column is preferably a micro capillary or nano liquid chromatography column ([0026]), also a metal frit and a metal sheath (i.e. liquid chromatography component; having a lumen with an interior surface)([0017]-[0018]), wherein the column has frits on both ends (i.e. terminating in first and second frits) ([0025]). The separation column is preferably made of glass lined metal tubing (i.e. a device for holding a sample comprising a lumen having an inert coating on an inner surface, the coating comprising at least one silicon species including a material selected from SiO2; wherein the coating is inert to the sample within the device; wherein the device comprises metal that receives the coating)([0026]).
It would have been obvious to one of ordinary skill in the art to choose any material disclosed for the separation column, including glass lined metal tubing and thereby arrive at the claimed invention.
Regarding claim 2, given that the coating is inert, and is identical to the instantly claimed coating, and given that the claims do not limit what the sample is, it is the examiner’s position that it will intrinsically be inert to the sample within the device or it would have been obvious to one of ordinary skill in the art to pick a sample to which the coating is inert so as to not interfere with the chromatography.
Regarding claim 3, it is the examiner’s position that it would have been obvious to use two layers of glass on the column because this would merely amount to duplicating parts. It is noted that mere duplication of parts has no patentable significance unless a new and unexpected result is produced (In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960)).
Regarding claim 5, while there is no specific disclosure that the glass is uniform along the length of the lumen, it is the examiner’s position that it would have been obvious to use a glass lining that is uniform in thickness along the length of the lumen so that the liquid chromatography column would have a steady and even flow of the sample therethrough. Further, given that the glass liner is the same composition throughout and does not vary in composition, it is intrinsically uniform in composition along the length of the lumen.
Regarding claim 7, given that glass is generally considered to be an amorphous material, it is the examiner’s position that the coating is amorphous.
Regarding claim 10, Although Dawes does not disclose formed via vapor phase process with one or more molecular precursors in the gas phase as claimed, it is noted that “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process”, In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985) . Further, “although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious difference between the claimed product and the prior art product”, In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir.1983). See MPEP 2113.
Therefore, absent evidence of criticality regarding the presently claimed formed via vapor phase process with one or more molecular precursors in the gas phase and given that Dawes meets the requirements of the claimed device, Dawes clearly meets the requirements of the present claims.
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Dawes et al. (US 2005/0077222, hereinafter “Dawes”) in view of Smith et al. (US 2012/0251797, hereinafter “Smith”).
In regard to claims 1-11, Dawes discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assembly (abstract). The separation column is preferably a micro capillary or nano liquid chromatography column ([0026]), also a metal frit and a metal sheath (i.e. liquid chromatography component; having a lumen with an interior surface)([0017]-[0018]), wherein the column has frits on both ends (i.e. terminating in first and second frits) ([0025]). The separation column is preferably made of glass lined metal tubing (i.e. a device for holding a sample comprising a lumen; wherein the device comprises metal)([0026]).
Dawes is silent with regard to the lumen having an inert coating comprising a silicon species including a material selected from the group consisting of SiO2, SiC, Si3N4, SiOxCy, SiOxNy, SiCxHy or mixtures thereof.
Smith discloses a chemical vapor deposition coating that is inert (abstract, [0033]). The method includes thermal decomposition of dimethylsilane to achieve desired surface properties ([abstract]). The coating layer can be a functionalized layer, in which the amorphous carbosilane is oxidized to form an oxidized layer of amorphous carboxysilane (i.e. SiC, SiOxCy, SiCxHy)([0047]). It is noted that there is additionally a diffusion layer 108 and a functionalized layer 110 ([0038]-[0039]). The coating is formed on any suitable substrate ([0035]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized coating layer of an amorphous carboxysilane of Smith on the metal tubing of Dawes before the application of glass motivated by the expectation of forming a separation column that has improved chemical resistance, improved inertness, and improved adhesion over non-diffusion coatings ([Smith 0037]). Alternatively, it is noted that the coating could be applied to the glass layer. Alternatively, it is the examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized coating layer of an amorphous carboxysilane of Smith on the entirety of the metal sheath of Dawes motivated by the expectation of forming a sheath that has improved chemical resistance, improved inertness, and improved adhesion over non-diffusion coatings ([Smith 0037]).
It is the examiner’s position that it would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized coating layer of an amorphous carboxysilane of Smith on the metal sheath of Dawes motivated by the expectation of forming a frit/sheath that has improved chemical resistance, improved inertness, and improved adhesion over non-diffusion coatings ([Smith 0037]).
Regarding claim 2, given that the coating is inert, and is identical to the instantly claimed coating, and given that the claims do not limit what the sample is, it is the examiner’s position that it will intrinsically be inert to the sample within the device or it would have been obvious to one of ordinary skill in the art to pick a sample to which the coating is inert so as to not interfere with the chromatography.
Regarding claims 3-4, the glass layer could be considered the second layer comprising a silicon based species. Alternatively, the functionalized surface layer and the layer beneath the functionalized layer could be considered the two layers comprising a silicon based species (i.e. two or more layers each comprising a silicon-based species; different silicon species).
Regarding claim 5, while there is no specific disclosure that the coating is uniform along the length of the lumen, it is the examiner’s position that it would have been obvious to use a coating that is uniform in thickness along the length of the lumen so that the liquid chromatography column would have a steady and even flow of the sample therethrough. Further, given that the coating is the same composition vapor deposited on the surface and not formed by different compositions in different positions on the surface, it is the examiner’s position that it would be uniform in composition and also it would have been obvious to coat the coating uniformly in structure and composition along the length of the column to provide the desirable properties of improved chemical resistance, improved inertness, and improved adhesion evenly over the entire column.
Regarding claim 6, modified Dawes discloses that the coating has thickness of between about 0.1 micrometers to about 3.0 micrometers (i.e. overlapping about 10 nm to about 5 µm)([Smith 0038]).
Regarding claim 7, the coating is amorphous (Smith [0038],[0047]).
Regarding claim 8, The coating layer can be a functionalized layer, in which the amorphous carbosilane is oxidized to form an oxidized layer of amorphous carboxysilane (i.e. SiOxCy)(Smith [0047]).
Regarding claim 9, the coating comprises an amorphous array of Si-C bonds (Smith [0038]).
Regarding claim 10, modified Dawes discloses a chemical vapor deposition coating that is inert (Smith: abstract, [0033]). The method includes thermal decomposition of dimethylsilane to achieve desired surface properties (i.e. formed via a vapor phase process with one or more molecular precursors in the gas phase)(Smith: [abstract]).
Regarding claim 11, it is noted that the column and the sheath may be metal (i.e. metal that receives the coating)([0017]-[0018], [0026]).
Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Henry et al. (US 2002/0176800 A1) in view of Smith et al. (US 2012/0251797, hereinafter “Smith”).
In regard to claims 1-11, Henry discloses a liquid chromatography system that includes a separation column having an internal bore and an end fitting assemblies, wherein the liquid chromatography column comprises metal, stainless steel and end-fittings containing frits that may be stainless steel (i.e. a device for holding a sample comprising a lumen; wherein the device comprises metal) (abstract, [0022], claim 6, [0057]).
Henry is silent with regard to the lumen having an inert coating comprising a silicon-based species, the inert coating including a material selected from the group consisting of SiO2, SiC, Si3N4, SiOxCy, SiOxNy, SiCxHy or mixtures thereof.
Smith discloses a chemical vapor deposition coating that is inert (abstract, [0033]). The method includes thermal decomposition of dimethylsilane to achieve desired surface properties ([abstract]). The coating layer can be a functionalized layer, in which the amorphous carbosilane is oxidized to form an oxidized layer of amorphous carboxysilane (i.e. SiC, SiOxCy, SiCxHy)([0047]). It is noted that there is additionally a diffusion layer 108 and a functionalized layer 110 ([0038]-[0039]). The coating is formed on any suitable substrate ([0035]).
It would have been obvious to one of ordinary skill in the art at the time of the invention to utilize the functionalized coating layer of an amorphous carboxysilane of Smith on the entirety of metal tubing (including the inner lumen) of Henry motivated by the expectation of forming a separation column that has improved chemical resistance, improved inertness, and improved adhesion over non-diffusion coatings ([Smith 0037]).
Regarding claim 2, given that the coating is inert, and is identical to the instantly claimed coating, and given that the claims do not limit what the sample is, it is the examiner’s position that it will intrinsically be inert to the sample within the device or it would have been obvious to one of ordinary skill in the art to pick a sample to which the coating is inert so as to not interfere with the chromatography.
Regarding claims 3-4, the functionalized surface layer and the layer beneath the functionalized layer could be considered the two layers comprising a silicon based species (i.e. two or more layers each comprising a silicon-based species; different silicon species).
Regarding claim 5, while there is no specific disclosure that the coating is uniform along the length of the lumen, it is the examiner’s position that it would have been obvious to use a coating that is uniform in thickness along the length of the lumen so that the liquid chromatography column would have a steady and even flow of the sample therethrough. Further, given that the coating is the same composition vapor deposited on the surface and not formed by different compositions in different positions on the surface, it is the examiner’s position that it would be uniform in composition and also it would have been obvious to coat the coating uniformly in structure and composition along the length of the column to provide the desirable properties of improved chemical resistance, improved inertness, and improved adhesion evenly over the entire column.
Regarding claim 6, modified Henry discloses that the coating has thickness of between about 0.1 micrometers to about 3.0 micrometers (i.e. overlapping about 10 nm to about 5 µm)([Smith 0038]).
Regarding claim 7, the coating is amorphous (Smith [0038],[0047]).
Regarding claim 8, The coating layer can be a functionalized layer, in which the amorphous carbosilane is oxidized to form an oxidized layer of amorphous carboxysilane (i.e. SiOxCy)(Smith [0047]).
Regarding claim 9, the coating comprises an amorphous array of Si-C bonds (Smith [0038]).
Regarding claim 10, modified Henry discloses a chemical vapor deposition coating that is inert (Smith: abstract, [0033]). The method includes thermal decomposition of dimethylsilane to achieve desired surface properties (i.e. formed via a vapor phase process with one or more molecular precursors in the gas phase)(Smith: [abstract]).
Regarding claim 11, Henry discloses that the column comprises metal, stainless steel (i.e. metal that receives the coating) (abstract, [0022], claim 6, [0057]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C YAGER whose telephone number is (571)270-3880. The examiner can normally be reached 9-6 EST M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Aaron Austin can be reached at (571) 272-8935. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES C YAGER/Primary Examiner, Art Unit 1782
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