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 .
Election/Restrictions
Applicant’s election without traverse of Group I, claims 1-12 and 14-15, in the reply filed on 28 November 2025 is acknowledged.
Claims 13 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 28 November 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1 July 2024 was considered by the examiner.
Claim Interpretation
A claim preamble must be read in the context of the entire claim. MPEP 2111.02,II The determination of whether preamble recitations are structural limitations or mere statements or use can be resolved only on review of the entirety of the record to gain an understanding of what the inventors actually invented and intended to encompass by the claim as drafted without imparting extraneous limitations from the specification. Id. If the body of a claim fully and intrinsically sets forth all of the limitations of the claimed invention and the preamble merely states the purpose or intended use of the invention, rather than any distinct definition of any of the claimed inventions limitations, then the preamble is not considered a limitation and is of no significance to claim instruction. Id.
During examination, statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether or not the recited purpose or intended use results in a structural difference between the claimed invention and the prior art. MPEP 2111.02,II.
In the instant case, claim 1 sets forth in the preamble that the claim is directed to “[a] metal structural member used in cooperation with a gallium-based liquid metal” with the body of the claim setting forth that the layer is to be in contact with this liquid metal. Here, the structural limitations of the metal structural member in the claim sets forth all the limitations of the claimed invention and the references to the gallium-based liquid metal appears to be merely setting forth the intended use of the product. Further, the term “used” in the preamble provides further support that this is an intended use.
Therefore, the Office is interpreting the limitations directed to the gallium-based liquid metal to be intended use limitations. If the Applicant intended the gallium-based liquid metal to be a necessary component and not merely an intended use of the claimed product, Applicant is encouraged to amend the claims to clearly set forth this intention and provide for the gallium-based liquid being a necessary component within the claimed product.
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 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 10 recites the broad recitation iron or alloys thereof, and the claim also recites stainless steel which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For the purposes of examination, the Office is interpreting the narrower language to be merely exemplary.
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.
Claims 1-10 and 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent Application Publication Number 2018/0312990 (Jones).
In regard to independent claim 1 and dependent claim 12, Jones is directed to the use of electrodeposited amorphous nickel phosphorus alloys for oil and gas equipment. (¶2) Amorphous metallic glass type structure of high phosphorus electroless nickel deposits is thought to provide the basis for outstanding corrosion resistance provided by the electroless nickel plating. (¶4)
Jones sets forth providing amorphous NiP deposits containing a high phosphorus amount of 11% or higher that are applied on a variety of components. (¶19) This corresponds to a high phosphorus nickel alloy layer. The coatings can be applied to pipes or rods. (¶17) In particular, the nickel coatings can be provided on steel components. (¶18) The steel pipes or rods would correspond to the claimed metal structural member.
As to the intended use limitations of the being in contact with the gallium-based liquid metal, Jones sets forth a pipe component that is provided with the NiP coating. Gallium-based liquid metal is capable of flowing through the pipe. The type of gallium-based liquid metal can also one as set forth in instant claim 12. Therefore, the product of the prior art would be capable of meeting the intended use limitations.
As to claim 2, Jones sets forth providing amorphous NiP deposits containing a high phosphorus amount of 11% or higher that are applied on a variety of components. (¶19) Jones explicitly teaches a NiP deposit with 11 to 13% phosphorus. (¶40) This falls within the claimed range.
As to claims 3-6, Jones sets forth providing a steel with a 0.002” electrolytic NiP coating. (¶40) This corresponds to 50.8 microns. This falls within the claimed ranges.
As to claims 7-8, Jones sets forth that the component may be a pipe. (¶17) The pipe is capable of having gallium-based liquid metal flow through it. Therefore, the product meets the intended use limitation of gallium-based liquid metal flowing through it. It would also be a component that is in contact with gallium-based liquid metal in such a situation.
As to claim 9, Jones sets forth a pipe, which would have a surface that is curved.
As to claim 10, the nickel coatings can be provided on steel components. (¶18) This corresponds to an alloy of iron.
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.
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.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Jones as applied to claim 1 above, and further in view of CN 101169215 (CN ‘215).
As set forth above in regards to independent claim 1, Jones is directed to a pipe that is provided with a NiP coating. This reference does not set forth the presence of an additional nanocomposite ceramic coating.
In the same field of endeavor of coatings provided on structural metal substrates, including pipes, CN ‘215 is directed to surface protection of tubes. (Lines 14-15) Corrosion, scaling, waxing, and abrasion of steel pipes are main factors that cause the life of steel pipe products to be short and maintenance cost to be high. (Lines 23-24) A functional layer is provided with a common heavy-duty coating-based coating and a nano-scale coating made by adding a functional nano-scale as a modifier and a coupling agent. (Lines 159-160) The functional nanoscales include ceramic nanoscales. (Lines 162-164) This provides further anti-corrosion, anti-scaling, and anti-wear functions. (Lines 139-142)
It would have been obvious to one of ordinary skill in the art to have utilized the nano-scale coating, including the ceramic nano-scale coating, as set forth by CN ‘215 within the pipe structure of Jones. One of ordinary skill in the art would have been motivated by the desire and expectation of combining prior art elements according to known methods to yield predictable results, including providing a coating means by which the lifespan of the pipe would increase due to improves wear and corrosion resistance.
Claims 1-5, 8-10, 12, and 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Number 9,666,437 (Urano).
In regards to independent claim 1 and dependent claims 2, 8, and 12, Urano is directed to a method for manufacturing a semiconductor device including a semiconductor chip. The semiconductor chip includes first and second front surface electrodes that are formed by laminating, inter alia, nickel-phosphorus on a semiconductor chip. (8:26-37) An aluminum-silicon layer is provided on which the nickel-phosphorus film is provided. (8:26-37) This would correspond to the metal structural member. The nickel-phosphorus plated film has a function of improving adhesion to a solder layer and contains from 2 to 10 wt. % phosphorus. (8:37-43) The upper values of this range would be considered to be high phosphorus nickel alloys. Therefore, a prima facie case of obviousness is established.
This component is capable of use in contact with a gallium-based liquid metal. Therefore, it meets the claimed intended use limitations of the gallium-based liquid metal and being a component that is in contact with a gallium-based liquid metal.
As to claims 3-5, the thickness of the nickel-phosphorus plated film may be greater than 3 microns and less than 6 microns. (8:46-50) This range overlaps the claimed ranges.
As to claim 9, as seen in Figures 9-10, the structure is planar.
As to claim 10, an aluminum-silicon layer is provided on which the nickel-phosphorus film is provided. (8:26-37) This corresponds to an alloy of aluminum.
As to claims 14 and 15, the member is used in conjunction with a heat sink. (2:1-6) The product is a semiconductor chip. (2:46-50) Therefore, such a product would be part of a heat dissipation of computer chips as set forth in the instant claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Daniel Schleis whose telephone number is (571)270-5636. The examiner can normally be reached 10 AM to 4 PM Monday through Friday.
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, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Daniel J. Schleis
Primary Examiner
Art Unit 1784
/Daniel J. Schleis/Primary Examiner, Art Unit 1784