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 is advised that on page 1 of the Response to Restriction Requirement, applicant states “This restriction is made without traverse”. However then proceeds to present arguments traversing the restriction requirement. Therefore the response is being treated as a made with traverse though applicant explicitly states that this restriction is made without traverse.
Applicant's election with traverse of claims 1-14 in the reply filed on 8/22/26 is acknowledged. The traversal is on the ground(s) that:
In regards to applicant’s argument that distinctness has not been established between the process and apparatus claims of Groups I & III because the restriction does not address each claim feature or establish that the process as claimed can be practiced by another and materially different apparatus; the Office does not find this argument convincing because the apparatus is a vacuum coating system which inherently requires that the coating material is in the vapor state whereas the process is directed towards a method of measuring emitted material in any state – gas, liquid, or solid – and thus can be performed with apparatus designed for emitting liquid or solid material instead of vapor deposition and thus can be practiced with a materially different apparatus as argued. Applicant is advised that the process as recited is not limited to vacuum coating.
In regards to applicant’s argument that the CRM of Group II cannot be classified as an apparatus for restriction purpose; the Office does not find this argument convincing because the CRM is a physical item that is used to perform a process and thus can be considered an apparatus for restriction purposes.
In regards to applicant’s argument that the assertion that the process of Group I can be performed manually instead of by a computer is insufficient for showing distinctness between the process and apparatus of Groups I & II; the Office does not find this argument convincing because the process claims of Group I do not require the use of a computer and every step of claim 1 can be performed manually without the aid of a computer whereas the apparatus of group II inherently requires the use of a computer. Applicant is advised that an individual can reasonably be expected to be capable of reading outputs on a screen and turning an knob in response to the outputs which reads on the process.
In regards to applicant’s argument that distinctness has not been established between the CRM and apparatus of Groups II & III because the restriction does not address each claim feature or establish that the process as claimed can be practiced by another and materially different apparatus; the Office does not find this argument convincing because the apparatus is a vacuum coating system which inherently requires that the coating material is in the vapor state whereas the process is directed towards a method of measuring emitted material in any state – gas, liquid, or solid – and thus can be performed with apparatus designed for emitting liquid or solid material instead of vapor deposition and thus can be practiced with a materially different apparatus as argued. Applicant is advised that the CRM as recited is not limited to vacuum coating.
In regards to applicant’s argument that the examples are not sufficient for the reasons for distinctness between each group; as per MPEP § 806, the burden of showing distinctness is on the Examiner to provide an example, but the example need not be documented and to rebut the example, applicant must prove or provide a convincing argument that the alternative provided by the Examiner cannot perform the process or be performed by the apparatus and in the instant case, applicant has not provided any arguments that it is not possible but instead argued that the provided
In regards to applicant’s argument the Restriction Requirement does not establish the serious search and/or examination burden because the Examiner did not provide a explanation to how each enumerated reasons apply; the Office does not find this argument convincing because the requirement is an assertion that the burden is present because one or more of the reasons may apply but does not require specific details of how they apply. However, to clarify for applicant, there is a serious search burden because each of the inventions have a different classification and thus the prior art for each of them can be and will be located in different portions of the prior art; because the process and CRM are not limited to vapor phase deposition art outside of vapor phase deposition will be pertinent; different search strategies will be required for finding prior art for each group; as put forth below, Group I is rejected under 35 U.S.C. § 101 whereas applicant is advised that the apparatus would not necessarily have a similar 35 U.S.C. §101 issue.
The requirement is still deemed proper and is therefore made FINAL.
Claims 15-17 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected CRM and apparatus, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 8/22/26.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1: The claim recites the following abstract ideas:
determining a data variable…(a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). See MPEP §2106.04(a)(2)(III).)
The claim recites the following additional elements which, considered individually and as an ordered combination, do not integrate the abstract idea into a practical application:
A method… (Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).)
controlling a control element…( Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f); Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).)
The claim includes additional elements that are not sufficient to amount to significantly more than the judicial exception because they are mere data gathering:
a first response of a sensor…(mere data gathering. See MPEP §2106.05(g).)
a second response of a sensor…(mere data gathering. See MPEP §2106.05(g).)
Claims 2-14: Claims 2-14 recite the additional limitations directed towards determining, type of data, obtaining data, and selecting parameters.
These additional elements are not sufficient to amount to significantly more than the judicial exception because they are insignificant extra-solution activity (see MPEP §2106.05(g)).
Claim Rejections - 35 USC §§ 102 & 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 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.
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.
Claims 1-14 are rejected under 35 U.S.C. 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Suduo et al. (US PG Pub 2009/0304906; hereafter ‘906). As evidenced by Rahtu (Rahtu and Ritala, Appl. Phys. Lett., Vol. 80, No. 3, 21 January 2002; hereafter Rahtu).
Claim 1: ‘906 discloses a method (title) comprising:
determining a data variable representing an actual state of a rate at which a coating material is emitted (abstract & ¶s 42-54) based on:
a first response of a sensor before the sensor is exposed to the coating material (¶s 46-50), and
a second response of the sensor after the sensor has been exposed to the coating material (¶s 46-50); and
controlling a control element configured to influence the rate based on the data variable (¶s 42-54).
However, if ‘906 does not necessarily teach that the first response is before exposure to the coating material it would have been obvious to use an uncoated sensor measurement as the baseline for the process and thus a first measurement of prior to contacting the sensor with the coating material because there are a limited number of choices and it is prima facie obvious to choose from the limited number of choices and it is well recognized in the art to use t=0 as the initial measurement when determining a deposition rate.
Claim 2:The determining of the data variable is further based on a time duration for which the sensor is exposed to the coating material (amount deposited over time, ¶s 48-49).
Claim 3: The first response of the sensor occurs before the sensor is heated (the first response is without depositing and thus has not been heated be the vapor).
However, if ‘906 does not necessarily sense the first response before deposition has begun it would have been obvious to one of ordinary skill in the art at the time of filing to sense the first response prior to beginning deposition because it is prima facie obvious to choose between a limited number of options and selecting prior to deposition provides a baseline to determine how much material is deposited.
Claim 4: The sensor is not exposed to the coating material during the first response (¶s 48-50).
However, if ‘906 does not necessarily sense the first response before deposition has begun it would have been obvious to one of ordinary skill in the art at the time of filing to sense the first response prior to beginning deposition because it is prima facie obvious to choose between a limited number of options and selecting prior to deposition provides a baseline to determine how much material is deposited.
Claim 5: As evidenced by Rahtu, the first and second response of the sensor are a function of a temperature of the sensor (title and abstract).
Claim 8: The sensor comprises a quartz crystal which is exposed to the coating material (see ¶ 46).
Claim 9: ‘906 teaches controlling a control element configured to influence a time duration for which the sensor is exposed to the coating material and an amount of the coating material to which the sensor is exposed between the first and second response (¶s 49-54).
Claim 10: The data variable is further determined based on an additional data variable of at least a portion of the time duration for which a mas flow of the coating material to which a mass flow of the coating material to which the sensor is exposed is time-dependent (rate is time dependent and the QCM is used to determine the rate based on the mass deposited over time; ¶s 43-46).
Claim 11: The mass flow is a function of the gas flow and the gas flow is a function of a position of the valve for each source (i.e. a shutter; see Fig. 1 & ¶ 96) thus it is apparent that the mass flow is a function of a position of the shutter. Additionally, the sensor is located relative to the shutter (see Fig. 1) it is apparent that the mass flow is a function of a position of the shutter relative to the sensor given that they are both present and the process works.
Claim 12: A rate is determined by the data and thus it is apparent that a time dependence of a mass flow of the coating material to which the sensor is exposed is taken into account when determining the data variable.
Claim 13: The first response of the sensor is time zero before absorption of the coating material and thus before the sensor is heated by being exposed to the coating material (see above, ‘906 either anticipates using t=0 as the first response measurement or it would have been obvious to measure at t=0 as stated above and thus no heating by exposure to the coating material would have occurred).
Claims 6-7 & 14 are rejected under 35 U.S.C. 103 as being unpatentable over ‘906 as applied above, and further in view of Rahtu. As evidenced by Rahtu.
Claim 6: ‘906 is directed towards the use of quartz crystal microbalances to control deposition rate (¶s 42-54) during vapor deposition (abstract).
‘906 does not teach a time period for a pulse of coating material or that the time period that the sensor is exposed the coating material ends is before the sensor reaches thermal equilibrium.
However, Rahtu, which is also directed towards a vapor deposition method (title & abstract) and a method of compensating for temperature effects in QCM measurements (title) discloses using deposition cycles of 20 seconds (see Fig. 1) wherein the crystal is never in thermal equilibrium during the process (the reference crystal continuously shifts during the process and this drift/shift is subtracted from the measurement crystal to obtain the corrected data, see Fig. 1).
It would have been obvious to one of ordinary skill in the art at the time of filing to use a pulse/cycle time of ~20 seconds during the process as taught by Rahtu because it is an art recognized pulse time for vapor deposition and would have predictably been suitable for film formation.
Claim 7: The combination does not teach that the pulse time is less than or equal to 10 seconds.
However, pulse time of coating material is a result effect variable based on the desired coating thickness and it is prima facie obvious to optimize the pulse time to obtain the desired thickness. "Where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." See MPEP 2144.05(II)(B).
Claim 14: ‘906 does not teach when the second response of the sensor is taken nor that it is after the sensor has cooled down.
However, Rahtu, which is also directed towards a vapor deposition method (title & abstract) and a method of compensating for temperature effects in QCM measurements (title) discloses using deposition cycles of 20 seconds (see Fig. 1) wherein the crystal is never in thermal equilibrium during the process (the reference crystal continuously shifts during the process and this drift/shift is subtracted from the measurement crystal to obtain the corrected data, see Fig. 1). Rahtu further teaches that measurements can be performed after heating has being turned off (i.e. cooling, see Fig. 4).
It would have been obvious to one of ordinary skill in the art at the time of filing to incorporate the teachings of Rahtu into the process ‘906 such that heating can be turned off during the process and thus the monitoring and second response measurements can be performed as the sensor cooled because it is an art recognized process in the field and would have predictably provided the coating as desired.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES M MELLOTT whose telephone number is (571)270-3593. The examiner can normally be reached 8:30AM-4:30PM CST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curtis Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/James M Mellott/ Primary Examiner, Art Unit 1759
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