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
Applicant’s amendments, filed 4/27/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claims 23 and the cancellation of claim 31,33, 39-40and the addition of new claims 42-46. Claims 23-30, 34-38, 41-46 remain pending, with claims 34-38 and 41 withdrawn from consideration due to a restriction requirement.
Response to Arguments
Applicant’s amendments, filed 4/27/2026, have been fully considered and are deemed moot as they are directed to newly added claim requirements that are specifically addressed hereinafter.
Applicant’s arguments related to Pawlowski (Suspension and solution thermal spray coatings) are noted but not persuasive. Applicant’s acknowledge that Pawlowski disclose flame combustion thermal spraying, but argues that the reference focus almost exclusively on plasma spraying and then maintains “a person ordinary skill reading Pawlowski would therefore be directed primarily toward plasma based approaches”. The examiner disagrees with this assertions as acknowledged by the Applicant, Pawlowski discloses plasma spraying or flame combustion spraying and is not limited to plasma spraying. A reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Labs., Inc. 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir. 1989), cert. denied, 493 U.S. 975 (1989). Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In re Susi, 440 F.2d 442, 169 USPQ 423 (CCPA 1971). "A known or obvious composition does not become patentable simply because it has been described as somewhat inferior to some other product for the same use." In re Gurley, 27 F.3d 551, 554, 31 USPQ2d 1130, 1132 (Fed. Cir. 1994).
Here, Pawlowski explicitly discloses thermal spraying using either plasma spraying or combustion flame spraying “Table 1. Collection of reviewed methods of solution and suspension thermal spraying.” Specifically, using either plasma or combustion as the energy input to the working gas would have been recognized by one of ordinary sill in the art as known alternatives to each other for thermal spraying process for solution or suspension thermal spraying. The mere presence of plasma spraying of the Figures in Pawlowski is not dispositive as the reference would suggest to one of ordinary skill in the art the use of combustion would be a well-known and predictable thermal spraying technique.
All other arguments are deemed to be moot as unsupported by factual evidence and are therefore deemed mere attorney speculation.
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.
Claim(s) 23-27, 30, 42-43 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US .
Claim 23: Hunt discloses a method of applying a coating to a metallic substrate, comprising: providing a metallic substrate to be coated, inserting the metallic substrate into a reactive area of a thermal source, inserting precursor compounds into the reactive area of the thermal source to produce coating additives, and coating of the metallic substrate with the coating additives (Figure 1a and accompanying text, Examples 2, Stainless steel). Hunt discloses the coating of the metallic substrate is within the reactive area of the thermal source (see Figure 1a and accompanying text, as the reactive “area” is broadly drafted and thus the area of the substrate of Figure 1 can be considered within the broadly drafted “reactive area”).
Hunt disclose the precursor compounds comprise solid dissolved in water (see Example 4, Ag was deposited from a solution of Ag nitrate in ethanol with 10% water”)
Hunt discloses the combustion burner and the reactive area is a localized reaction zone within the flame (see e.g. Figures 1A and 1B and accompanying text)
Claim 24: Hunt process would include pretreatment as broadly drafted (i.e. movement to the reactive area for treatment, etc.)
Claim 25: Hunt discloses a temperature that anticipates the range as claimed (“The flame also heated the substrate to a temperature of 550o-650oC.”)
Claim 26: Hunt discloses a dosing device (see column 6, lines 32-34,“ depositions can be performed by feeding solution through a nebulizer”)
Claim 27: Hunt discloses oxidizing chemicals and further additives (see e.g. see Example 4, “Ag was deposited from a solution of Ag nitrate in ethanol with 10% water”)
Claim 30: Hunt discloses coating on one side, which is partial (see Figures)
Claim 42: Hunt discloses a metal salt in water (“Ag nitrate in ethanol with 10% water”)
Claim 43: Hunt discloses the targeted insertion of precursor compounds into the reactive area of the thermal source takes place with the addition of oxidizing chemicals (“Ag nitrate in ethanol with 10% water”)
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.
Claim(s) 23-30 and 42-43, 45-46 is/are rejected under 35 U.S.C. 103(a) as being obvious over US 8629371 by Oberste-Berghaus et al. taken with Bai et al. or vice versa each further in view of Pawlowski (Suspension and solution thermal spray coatings) or Hunt.
Claim 23: Oberste-Berghaus et al. discloses a method of applying a coating to a metallic substrate, comprising: providing a metallic substrate to be coated, inserting the metallic substrate into a reactive area of a thermal source, inserting precursor compounds into the reactive area of the thermal source to produce coating additives, and coating of the metallic substrate with the coating additives (Figure 1 and accompanying text, Figure 2, Example 1 and 2). Oberste-Berghaus et al. discloses the coating of the metallic substrate is within the reactive area of the thermal source (see Figure 1 and accompanying text, as the reactive “area” is broadly drafted and thus the area of the substrate of Figure 1 can be considered within the broadly drafted “reactive area”).
Oberste-Berghaus et al. discloses the compounds are nanoparticles with a particle size of e.g. 29-80 nm at Example 1 and similar sizes are taught at Example 2); however, fails to disclose the precursor compounds comprise solid dissolved in water. However, Bai, also in the art of applying a coating to a metallic substrate discloses the precursors compounds supplied to the thermal source include suspensions or solution precursors (see Introduction). Bai discloses the suspensions include nanoparticles with a water solvent and discloses the suspensions are prepared by dissolving submicron or nanoparticle solids in water (see section 2.1). Therefore, taking the references collectively, providing the precursors compounds via a dissolved solid in water would have been obvious as a known method for supply precursors to a thermal spraying process.
Alternatively, Bai et al. discloses a method of applying a coating to a metallic substrate, comprising: providing a metallic substrate to be coated, inserting the metallic substrate into a reactive area of a thermal source, inserting precursor compounds into the reactive area of the thermal source to produce coating additives, and coating of the metallic substrate with the coating additives (Section 5.1, 5.2, Figures 11-15, Figure 18). Bai discloses the precursor compounds include solids dissolved in water (see Introduction as it relates to SPPS with water as solvent and Section 2.1). Bai et al. discloses the coating of the metallic substrate is within the reactive area of the thermal source (see Figure 11 and 15 and accompanying text, as the reactive “area” is broadly drafted and thus the area of the substrate of Figure 11 and 15 can be considered within the broadly drafted “reactive area”). Bai discloses the coating of the substrate is within the reactive area of the thermal source, the flame of the plasma, see Figure 11. Bai et al. discloses a continuous liquid jet or linear speed of the jet, i.e. what can reasonably be considered partially automated (see 2.2.2, Table 1). Bai discloses using this method in the alternative to coating using solid particles or suspension and therefore taking the references collectively it would have been obvious to one of ordinary skill in the art at the time of the invention to have modified Oberste-Berghaus et al. to use the dissolved metal salt in water as such is illustrated by Bai as known alternative and predictable results would have followed (i.e. deposition of a layer onto a metallic substrate).
As for the requirement of a non-plasma thermal source from a combustion burner wherein the reactive area is a reaction zone within a combustion flame, the Examiner cites here Pawlowski, also in the art of thermal spray coatings using a liquid or suspension and discloses the use of combustion flame (see abstract, Table 1), including for depositing TBC coatings (see 8.3) and a flame (see Figure 16 or 18 “plasma or flame”, Figure 18 related to “combustion flame”), where the combustion flame would meet the requirement of combustion burner and combustion flame as claimed.
Examiner cites here Hunt, also in the art of thermal spraying and discloses the plasma spraying or combustion spraying are known alternative to each other for solution deposition (“A plasma torch also can be used in a manner similar to a flame to achieve the same CCVD results. Reagents are sprayed through a plasma torch and deposited onto the substrate.”, see column 10, lines 5-25).
As such, taking the references collectively it would have been obvious to have modified Oberste-Berghaus et al. with Bai or via versa to have modified the plasma spraying with combustion spraying “burner” and a “flame” would have been obvious as Pawlowski and Hunt each individually discloses a thermal spray system for solutions or suspensions are known in the art to include either plasma jet spraying or combustion burner/flame as instantly claimed. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim 24: Oberste-Berghaus et al. discloses preparing the metallic substrate for coating of the metallic substrate comprising pre-treating the metallic substrate (Example 1, Example 2, see heating the substrate). The scope of the claims is broadly drafted and does not define the pretreating that is within the scope of this claim and thus pretreating the substrate can include any number of steps, including moving or heating as taught by Oberste-Berghaus et al. Bai et al. discloses preparing the metallic substrate for coating of the metallic substrate comprising pre-treating the metallic substrate (Figure 15, see e.g. bond coat). The scope of the claims is broadly drafted and does not define the pretreating that is within the scope of this claim and thus pretreating the substrate can include any number of steps, including moving or heating as taught by Bai et al.
Claim 25: Oberste-Berghaus et al. discloses coating of the metallic substrate occurs at a substrate temperature between 0° C. and 800° C (example 1 at 200C and example 2 at 400 or 300C, each of which reads on the claim scope). Bai et al. discloses coating of the metallic substrate occurs at a substrate temperature between 0° C. and 800° C (see Table 1). The temperature of the substrate is taught as being within the range as claimed and therefore additionally makes obvious the claimed range (i.e. 200, 300 and 400C).
Claim 26: Oberste-Berghaus et al. discloses the inserting the precursor compounds into the reactive area of the thermal source is through a dosing device (examples 1 and 2 related to injection orifice). Bai et al. discloses the inserting the precursor compounds into the reactive area of the thermal source is through a dosing device (Figure 11 and 14, see device for supplying solution/suspension).
Claim 27: Oberste-Berghaus et al. discloses inserting the precursor compounds into the reactive area of the thermal source comprises adding at least one of: inert gases (nitrogen gas, reasonably inert gas as claimed) and further additives (ethanol additive), see examples. Oberste-Berghaus et al. disclose argon at column 6, lines 62-64. Bai et al. discloses inserting the precursor compounds into the reactive area of the thermal source comprises adding at least one of: inert gases (Bai et al. disclose argon at 2.2.1)
Claim 28 and 42: Oberste-Berghaus et al. discloses the compounds are nanoparticles with a particle size of e.g. 29-80 nm at Example 1 and similar sizes are taught at Example 2). This disclosure meets the claimed requirements. Bai et al. discloses the compounds are nanoparticles with a particle size of e.g. few tens of nanometers, see Section 3 or nano solid particles at section 2.1. This disclosure meets the claimed requirements.
Claim 29: Oberste-Berghaus et al. discloses all that is taught above and discloses inserting the precursor compounds into the reactive area; however, fails to disclose the claimed outflow rate. However, the outflow rate of the precursor compounds would have been recognized as a result effective variable, directly affecting the coating (too little precursor will not provide enough material for deposition and too much material detrimental to the process). As such it would have been obvious to one of ordinary skill in the art to have determined the outflow rate through routine experimentation to reap the benefits of depositing the desired coating on the substrate. Bai discloses the precursor feed rate is a result effective variable (Section 5.2 stating “role of precursor feed rate on the formation of vertically cracked coatings”). Additionally, the outflow rate of the precursor compounds would have been recognized as a result effective variable, directly affecting the coating (too little precursor will not provide enough material for deposition and too much material detrimental to the process). As such it would have been obvious to one of ordinary skill in the art to have determined the outflow rate through routine experimentation to reap the benefits of depositing the desired coating on the substrate.
Claim 30: Oberste-Berghaus et al. discloses a process that results in coating of the metallic substrate is a partial coating (See Figure 1, coating on one surface is a partial coating as claimed). Bai et al. discloses a process that results in coating of the metallic substrate is a partial coating (See Figure 15, coating on one surface is a partial coating as claimed).
Claim 42: Bai discloses the precursor compounds include solids dissolved in water (see Introduction as it relates to SPPS with water as solvent and Section 2.1)
Claim 43: Bai discloses the precursor compounds include solids dissolved in water (see Introduction as it relates to SPPS with water as solvent and Section 2.1), where water is a known oxidizing chemical as claimed. Pawlowski discloses air (Section 4. Transport and injection of liquids into jets and flames, and Figure 12a, compressed air), where air is a known to include oxygen.
Claim 45: Oberste-Berghaus et al. discloses the coatings are grey in color (Example 1) and thus the includes the presence of a colorant as broadly drafted by the applicant (i.e. the color has a grey color and thus must include some colorant material). As the applicant’s have broadly drafted the claims to merely require a generic colorant and does not define such, the prior art that discloses a color meets this broadly drafted requirement.
Claim 46: Pawlowski discloses a particles size that overlaps the range as claimed (see Figure 22 and accompanying text) and discloses the result effective nature of such and therefore it would have been obvious to have determined the optimum particle size to provide the optimum coating (see section 6.1 related to the relationship between particle size and splashing/velocity). The outflow rate of the precursor compounds would have been recognized as a result effective variable, directly affecting the coating (too little precursor will not provide enough material for deposition and too much material detrimental to the process). As such it would have been obvious to one of ordinary skill in the art to have determined the outflow rate through routine experimentation to reap the benefits of depositing the desired coating on the substrate. See also Pawlowski at section 4, (“The flowrate of delivered liquid is controlled”), illustrating the desire to control the flow of the liquid into the flame, which would encompass the outflow as claimed.
Claim(s) 23-30 and 42-43, 45-46 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oberste-Berghaus et al. with Bai and Pawlowski and Hunt taken with DE 102017216139, hereinafter DE 139.
Claims 23-30 and 42-43, 45-46: While the examiner maintains the position as set forth above, the examiner cites here DE 139, which discloses a dosing device that adds the precursor compounds into the reactive area (figure 1 and accompanying text) and thus it would have been obvious to use the dosing device as taught by DE 139 with a reasonable expectation of predictable results in the addition of the precursors to the chamber.
While the examiner maintains the position as set forth above, the examiner notes DE 139 discloses the coating of the substate is within the reactive area (see Figure 1) and thus using such an arrangement would have been obvious to one of ordinary skill in the art as a known and suitable method for coating.
Claim 24: While the examiner maintains the position as set forth above, the examiner cites here DE 139, which discloses cleaning the substrate prior to deposition using thermal spraying (0052) and therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have cleaned the substrate as such is a known pretreatment for the substrate to prepare for coating.
Claim(s) 44 is/are rejected under 35 U.S.C. 103 as being unpatentable over Oberste-Berghaus et al. with Bai and Pawlowski and Hunt alone or taken with DE 139 each further in view of EP-0413296-A1, hereinafter EP 296.
Oberste-Berghaus et al. with Bai and Pawlowski and Hunt alone or taken with DE 139 discloses all that is taught above and discloses depositing an oxide material via thermal/plasma spraying and discloses including air/oxygen; however, fails to disclose the inclusion of ozone or H2O2. However, EP 296 also in the art of depositing an oxide material via thermal/plasma spraying and discloses including air or ozone into the flame so as to provide additional oxygen source to the thermal spray system (pages 2-3) and therefore taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have modified Oberste-Berghaus et al. with Bai and Pawlowski and Hunt alone or taken with DE 139 to include ozone, as Pawlowski discloses air enrichment for depositing oxide materials and EP 296 discloses that oxide deposition via thermal spraying and including air and/or ozone as means for controlling the oxygen content in the deposited film.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached on 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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