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 .
Response to Amendment
This Office Action is in response to the Applicant’s amendment filed on March 10, 2026. Claim 1 has been amended. Claims 6-9 have been added. Claims 1-9 are pending.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot because the new ground of rejection does not rely on the 102(a)(1) rejection specifically challenged in the argument.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “powder supply unit”, “gas supply unit” in claim 1 and “guide member” in claim 5.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
The specification is devoid to provide any corresponding structure associated to the limitations “powder supply unit” and “gas supply unit” in claim 1.
In light of the specification, the limitation “guide member” in claim 5 is being interpreted as “cylindrical copper guide member” described in paragraph 0029.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
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 limitations “powder supply unit” and “gas supply unit” in claim 1 invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid to provide any corresponding structure associated to the limitations “powder supply unit” and “gas supply unit” in claim 1. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
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.
Claims 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Fukanuma (WO 2019/009206 A1).
With regard to claim 1, Fukanuma discloses a film deposition apparatus (1) used in a thermal spraying method, the film deposition apparatus comprising: a nozzle (30) to which a powder as a film deposition raw material and a working gas are separately supplied (as shown in Fig.1, part of working gas is supplied via supply nozzle 23 and film deposition raw material is supplied via powder nozzle 42); wherein the nozzle includes a nozzle pipe (34), a ceramic pipe (32/33, see Par. [0033]) connected to an upstream portion of the nozzle pipe (34) through which the working gas flows, and a nozzle holder (25) into which the ceramic pipe is inserted (Fig. 3), the nozzle holder includes a first portion (24/31) extending in a first direction in which the working gas flows through the nozzle holder (Fig. 3), the film deposition apparatus further comprises a pipe (13) through which the powder is supplied to the nozzle (30), the pipe (13) connecting the first portion (24/31, Fig. 1), a portion of the pipe (13), which is connected to the first portion (24/31), extends in a second direction intersecting the first direction (Fig. 3 shows vertical direction as second direction intersecting horizontal direction in area 31).
Fukanuma does not explicitly disclose that the ceramic pipe harder than the nozzle pipe.
However, Fukanuma further discloses that the nozzle pipe (34) and the ceramic pipe (32/33) are part of the spray nozzle (30, see Par. [0032]), each part of the spray nozzle can be made out of stainless steel, tool steel, silicon nitride ceramics, zirconia ceramics, silicon carbide ceramics (see Par. [0033]). It known by one of ordinary skill in the art that ceramic is harder than steel.
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the nozzle of Fukanuma, by making the ceramic pipe (32/33) out of silicon carbide ceramics and the nozzle pipe (34) out of stainless steel based on the teaching of Fukanuma in paragraph 0030, since the modification is a simple substitution of one known element for another to obtain predictable results is one of ordinary skill in the art (MPEP 2143 B).
With regard to claim 2, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 1 above. Fukanuma further discloses that the ceramic pipe (32/33), is disposed in a region adjacent to an intersection portion inside the nozzle holder (25) between a flow path of the working gas and a flow path of the powder and on a downstream side of the working gas flowing through the adjacent region (Fig. 3).
With regard to claim 3, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 1 above. Fukanuma does not disclose that a length of the ceramic pipe along the first direction is 10 mm or more and 20 mm or less.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to modify the nozzle of Fukanuma by having a length of the ceramic pipe along the first direction is 10 mm or more and 20 mm or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or working ranges involves only routine skill in the art. See MPEP 2144.05.II. In the instant case, changing nozzle dimension, which achieves the recognized result of controlling fluid flow characteristics such as spray performance, and as such the nozzle dimension is recognized in the art as a result effective variable. Further, a one of ordinary skill in the art would have had a reasonable expectation of success at modifying the Fukanuma nozzle as changes to nozzle design, including dimensions, are well within the level of skill of the art. Finding the optimal maximum dimension would therefore be simply a matter of routine experimentation.
With regard to claim 4, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 1 above. Fukanuma further discloses that the ceramic pipe is made of any one selected from the group consisting of zirconia, silicon nitride, and alumina (Par. [0033]).
With regard to claim 6, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 1 above. Fukanuma further discloses that the ceramic pipe consists of ceramic (32/33).
With regard to claim 7, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 6 above. Fukanuma further discloses that the nozzle pipe consists of stainless steel (Par. [0032]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Fukanuma in view of Chen (CN 99232052 U).
With regard to claim 5, the device of Fukanuma as modified discloses the invention as disclosed in the rejection of claim 1 above. Fukanuma further discloses that a guide member (tubular member between 48 and 34 shown in Fig. 3) that surrounds the nozzle pipe (34) and the ceramic pipe (32/33) and contacts the nozzle pipe and the ceramic pipe, except the guide member is made of copper.
Chen teaches a sprayer comprising a guide member is made of copper (page 3 lines 2-3).
It is noted by the Examiner that the prior art to Chen and the instant invention are directed to spraying a mixture of gas and powder. In accordance with MPEP 2141.01(1), a reference is analogous art to the claimed invention if: (1) the reference is from the same field of endeavor as the claimed invention (even if it addresses a different problem); or (2) the reference is reasonably pertinent to the problem faced by the inventor (even if it is not in the same field of endeavor as the claimed invention). In this instant case, the prior art to Chen is reasonably pertinent to the problem faced by the inventor.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the guide member of Fukanuma, by making it out of copper as taught by Chen, since copper is low cost, corrosion resistance and durable.
Allowable Subject Matter
Claims 8-9 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.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOEL ZHOU whose telephone number is (571)270-1163. The examiner can normally be reached Mon-Fri 9AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ARTHUR HALL can be reached at 5712701814. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOEL . ZHOU
Primary Examiner
Art Unit 3752
/QINGZHANG ZHOU/Primary Examiner, Art Unit 3752
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