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 .
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.
Claims 1-3, 5-12 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (USPGPub 2015/0283307) in view of Beard et al. (US6438400) and Tverberg et al. (US6228445).
Regarding claims 1-3 and 5-8, Smith teaches that it is known to thermal chemical vapor deposit (claim 1) a silicon [0037] and hydrogen containing coating from a source as that may include dimethylsilane [0037]on the surface of stainless steel (claim 6) tube [0019-0026] after oxidizing the surface [0028]. Smith fails to teach the general process steps of providing the oxidized stainless steel of the current claims prior with the exception of the steps listed above. However, Beard teaches that a known method of providing an oxidized stainless steel surface may include providing a stainless steel (of implicitly known iron and chromium levels because the material is stainless steel) and passivating the surface by treating the surface with a nitric acid oxidizer (col. 9, lines 8-63) which would form a surface having the varied lower chromium concentration claimed wherein rinsing may be performed thereafter wherein an oxidizing caustic composition is employed to oxidize the surface prior art further coating. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the stainless oxidation steps of Beard for those of Smith as a simple substitution of a known stainless oxidation method used prior to further coating for another method of the same type wherein the results of the substitution would have been predictable based upon the teachings of Beard. The teachings of Smith in view of Bear are as shown above. Smith in view of Beard fails to teach wherein the passivating oxide is “non-nitric”. However, Tverberg teaches that citric acid is a known alternative to nitric acid for the passivation of stainless steel (see Description of the Preferred Embodiments, second paragraph). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the citric acid of Tverberg for the nitric acid of Smith in view of Beard as a simple substitution of one known passivating acid employed on stainless steels for another wherein the substitution would have been predictable based upon the teachings of Tverberg.
Regarding claims 9, 11-12 and 14-16, Smith teaches that it is known to thermal chemical vapor deposit (claim 1) a silicon [0037] and hydrogen containing coating from a source as that may include dimethylsilane [0037]on the surface of stainless steel (claim 6) tube [0019-0026] after oxidizing the surface [0028]. Smith fails to teach the general process steps of providing the oxidized stainless steel of the current claims prior with the exception of the steps listed above. However, Beard teaches that a known method of providing an oxidized stainless steel surface may include providing a stainless steel (of implicitly known iron and chromium levels because the material is stainless steel) and passivating the surface by treating the surface with a nitric acid oxidizer (col. 9, lines 8-63) which would form a surface having the varied lower chromium concentration claimed wherein rinsing may be performed thereafter wherein an oxidizing caustic composition is employed to oxidize the surface prior art further coating. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the stainless oxidation steps of Beard for those of Smith as a simple substitution of a known stainless oxidation method used prior to further coating for another method of the same type wherein the results of the substitution would have been predictable based upon the teachings of Beard. The teachings of Smith in view of Bear are as shown above. Smith in view of Beard fails to teach wherein the passivating oxide is “non-nitric”. However, Tverberg teaches that citric acid is a known alternative to nitric acid for the passivation of stainless steel (see Description of the Preferred Embodiments, second paragraph). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the citric acid of Tverberg for the nitric acid of Smith in view of Beard as a simple substitution of one known passivating acid employed on stainless steels for another wherein the substitution would have been predictable based upon the teachings of Tverberg.
Regarding claim 10, it is not stated that precipitates would be expected in the oxide of Smith in view of Beard and Tverberg nor would one of ordinary skill in the art have reason to expect their presence.
Regarding claims 17-19, Smith teaches that it is known to thermal chemical vapor deposit (claim 1) a silicon [0037] and hydrogen containing coating from a source as that may include dimethylsilane [0037]on the surface of stainless steel (claim 6) tube [0019-0026] after oxidizing the surface [0028]. Smith fails to teach the general process steps of providing the oxidized stainless steel of the current claims prior with the exception of the steps listed above. However, Beard teaches that a known method of providing an oxidized stainless steel surface may include providing a stainless steel (of implicitly known iron and chromium levels because the material is stainless steel) and passivating the surface by treating the surface with a nitric acid oxidizer (col. 9, lines 8-63) which would form a surface having the varied lower chromium concentration claimed wherein rinsing may be performed thereafter wherein an oxidizing caustic composition is employed to oxidize the surface prior art further coating. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the stainless oxidation steps of Beard for those of Smith as a simple substitution of a known stainless oxidation method used prior to further coating for another method of the same type wherein the results of the substitution would have been predictable based upon the teachings of Beard. The teachings of Smith in view of Bear are as shown above. Smith in view of Beard fails to teach wherein the passivating oxide is “non-nitric”. However, Tverberg teaches that citric acid is a known alternative to nitric acid for the passivation of stainless steel (see Description of the Preferred Embodiments, second paragraph). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the citric acid of Tverberg for the nitric acid of Smith in view of Beard as a simple substitution of one known passivating acid employed on stainless steels for another wherein the substitution would have been predictable based upon the teachings of Tverberg.
Claims 4, 13 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Smith et al. (USPGPub 2015/0283307) in view of Beard et al. (US6438400) and Tverberg et al. (US6228445) ( as applied to claims 1-3, 5-12 and 14-19 above and further in view of R1 (“SilconNert Inert Coating for Gas Flow Path” Silcotek, 2011, pp. 1-9).
Regarding claim 4, the teachings of Smith in view of Beard and Tverberg are as shown above. Smith in view of Beard and Tverberg fails to teach wherein the tube to be treated is a gas chromatograph component. However, R1 teaches that it is known to coat stainless steel tubing used in gas chromatography with silicon coatings in order to improve test quality. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gas chromatography tubing of R1 for the metal tubing of Smith in view of Beard and Tverberg as a simple substitution of one known stainless steel tubing component coated with silicon for another wherein the results of said substitution would have be predictable based upon the teachings of Smith in view of Beard and Tverberg and R1 combined.
Regarding claim 13, the teachings of Smith in view of Beard and Tverberg are as shown above. Smith in view of Beard and Tverberg fails to teach wherein the tube to be treated is a gas chromatograph component. However, R1 teaches that it is known to coat stainless steel tubing used in gas chromatography with silicon coatings in order to improve test quality. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gas chromatography tubing of R1 for the metal tubing of Smith in view of Beard and Tverberg as a simple substitution of one known stainless steel tubing component coated with silicon for another wherein the results of said substitution would have be predictable based upon the teachings of Smith in view of Beard and Tverberg and R1 combined.
Regarding claim 20, the teachings of Smith in view of Beard and Tverberg are as shown above. Smith in view of Beard and Tverberg fails to teach wherein the tube to be treated is a gas chromatograph component. However, R1 teaches that it is known to coat stainless steel tubing used in gas chromatography with silicon coatings in order to improve test quality. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the gas chromatography tubing of R1 for the metal tubing of Smith in view of Beard and Tverberg as a simple substitution of one known stainless steel tubing component coated with silicon for another wherein the results of said substitution would have be predictable based upon the teachings of Smith in view of Beard and R1 combined.
Response to Arguments
The applicants’ arguments are largely moot, based upon a previously provided combination of references. However, it is noted that the applicants attack on Smith and Beard appear to be entirely related to each reference failing to teach the entirety of the limitations set out in the claims. However, the claims herein were all rejected using a combination of references wherein the Court has long held that attacking a single reference for failing to teach a plurality of teachings provided by a plurality of references provided in a 103-type rejection is incapable of overcoming a prima facie case of obviousness.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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