DETAILED ACTION
A response, presenting arguments but not amendments, was entered on 4/8/26.
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 .
Response to Arguments
Applicant argues that the cited art fails to teach a “deposition material” because the cited art teaches a coating rather than a material which can be used to form a coating. This is not persuasive. Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. MPEP § 2112.01(I). In this case, the recitation of a “deposition material” is directed to the intended use of the composition. The cited art teaches each claim limitation about the material and therefore anticipates claim 1 regardless of whether the cited art teaches the same intended use of the composition.
Additionally, applicant’s argument that “deposition material” requires that the composition is capable of being deposited is a narrow interpretation of this term. A deposition material could also refer to a material after it has been deposited and would include a coating formed from the deposition material. This term does not appear to be defined in the specification in the narrower manner that applicant is arguing.
Claim Rejections - 35 USC § 102
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.
Claims 1-3 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wu et al. (US 2020/0024194).
Claims 1 and 2: Wu et al. (US 2020/0024194) teaches a composition for depositing a corrosion resistant coating which protects from plasma (Abst.; ¶ 0002), the composition comprising: a solid solution including Y2O3 (¶ 0038) and ZrO2, wherein the ZrO2 is present at 10 mol% (¶¶ 0039-0040) and wherein the solid solution has a hexagonal (i.e. claimed hexahedral) crystal structure (¶ 0039).
Claim 3: Wu also teaches the inclusion of other materials, such as hafnium oxide which is present at an amount of 10-20 mol% (¶ 0032).
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.
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 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wu in light of Wu et al. (US 2018/0240648, hereinafter Wu II).
Claim 4: Wu teaches that other metal oxides can be included (¶ 0032), but fails to teach Nb2O3. Wu II teaches a composition for forming a plasma corrosion resistant film (Abst.) comprising a solid solution of Y2O3 and explains that the solid solution can also include Nb2O3 (¶¶ 0034-0037). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected Nb2O3 as the additional metal oxide in Wu with the predictable expectation of success.
Allowable Subject Matter
Claims 5 and 6 are 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.
None of the prior art on record, taken individually or in combination, fairly teaches or suggests all the limitations of claims 5 or 6. Furthermore, the specification evidences the unexpected results associated with these claimed features.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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