DETAILED ACTION
Election/Restrictions
Applicant's election with traverse of Claims 1-18 in the reply filed on 18 June 2026 is acknowledged. The traversal is on the ground(s) that examination of all identified groups would not present a burden (see Response at Pg. 5). This is not found persuasive because the identified groups of inventions are directed to diverse statutory classes, and examination of one is not necessarily coextensive with another.
The requirement is still deemed proper and is therefore made FINAL.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02 May 2024 has been considered by the examiner.
Claim Rejections - 35 USC § 102
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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
1. Claims 1-12, 14-16, and 18 are rejected under 35 U.S.C. 102(a)(1) and/or (a)(2) as being anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Coley et al.; On the Stability of Amorphous Silica Coatings for High-temperature Service; Materials Science and Engineering, A121 (1989) 461-466; (“Coley”), with Special Metals Corporation; Incoloy® Alloy 800H & 800HT; available at www.specialmetals.com; 2004; (“SMC”) serving as evidence of the composition of Incoloy 800H regarding Claims 10-11, 12, 14, and 16.
With regard to Claims 1-9, Coley teaches a process comprising providing a substrate featuring an amorphous silicon-containing coating and exposing the coating to a temperature between 700 and 800 degrees Celsius wherein the amorphous silicon-containing coating does not crystallize (see Abstract; Pgs. 461-462). The aim of Coley’s study is that of protection of high-temperature alloys for high-temperature service in aggressive environments (see Title; Pg. 461); however the reference does not expressly teach components. To the extent that the identified aims of Coley are not implicitly directed to components intended for high-temperature service in aggressive environments, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed such components as an object of study in the method of Coley in order to discern performance and coating stability thereof.
With regard to Claim 10, Coley teaches migration and diffusion of substrate and coating constituents (see Abstract; FIGs. 1, 7; Pgs. 464-465). Coley also observes transport among the substrate and layers thereon facilitated by chromium oxide (see Pg. 464). The substrate material of Coley, Incoloy 800H (see Abstract; Pgs. 461-462) comprises carbon (see SMC at Pgs. 1-2). Coley does not expressly remark upon carbon migration; however at least some migration of substrate constituents to an intermediary layer residing between the substrate and overlying amorphous coating is reasonably inferred based on the observations and analysis of Coley, thus the reference is understood to contemplate the existence of a carbon-silicon containing coating residing between the substrate and amorphous silicon-containing layer thereon.
With regard to Claim 11, Coley teaches oxide layers positioned between the substrate and overlying amorphous silicon-containing layer (see Pg. 461, FIG. 1).
With regard to Claims 12, 14, and 16, Coley teaches substrates composed of Incoloy 800H (see Abstract; Pgs. 461-462). SMC describes Incoloy 800H as an austenitic ferrous- and nickel-based stainless steel alloy (see Pgs. 1, 7).
With regard to Claim 15, Coley teaches austenitic stainless steel substrates as discussed; however the reference does not expressly teach martensitic stainless steel. As noted, Coley is directed to amorphous silicon-containing coatings on surfaces subject to high-temperatures and aggressive environments. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed the coating of Coley on any stainless steel substrates subject to such conditions, including martensitic stainless steel, with a reasonable expectation of success in protecting the material, particularly in instances where high temperature machinery in an aggressive environment requires martensitic stainless steel.
With regard to Claim 18, SMC describes Incoloy 800H as suitable for high-temperature applications subject to oxidation, carburization, and corrosion. It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed Incoloy 800H components coated as taught by Coley in the claimed types of processes with a reasonable expectation of success.
2. Claims 10-11 and 13 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Coley as evidenced by SMC as applied to Claim 1, and further in view of US 2021/0139381 to Jackson et al. (“Jackson”).
With regard to Claims 13 and 17, Coley does not teach non-ferrous and/or ceramic substrates. Jackson is directed to composite materials suitable for use in aerospace applications, and teaches ceramic fibers coated with amorphous silicon-containing material, featuring a silicon carbide intermediary layer (see Abstract; ¶¶ [0002], [0019], [0021]). It would have been obvious to one of ordinary skill in the art at the time the invention was filed to have employed non-ferrous and/or ceramic substrates in the method of Coley with a reasonable expectation of success in producing a coating on a component suitable for use in high-temperature and aggressive environments, such as aerospace applications.
With regard to Claims 10-11, Jackson teaches a silicon carbide interface layer between a substrate and an overlying amorphous silicon-containing layer (see Abstract) thus demonstrating that carbon-silicon layers per Claim 10 are known in the art and thus obvious to employ as intermediate coatings. As noted, Coley teaches the presence of oxide layers per Claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael P Rodriguez whose telephone number is (571)270-3736. The examiner can normally be reached 9:00 - 6:00 Eastern M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at 571-272-1418. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Michael P. Rodriguez/Primary Examiner, Art Unit 1712
Prosecution Insights