DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. 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.
Response to Arguments
3. Applicant's arguments filed 4/7/2026 have been fully considered but they are not persuasive.
4. The applicant argues that Nott U.S. 2018/0280075 fails to teach the amended claim language of claim 1, which was previously recited in claim 7. Specifically, the applicant argues that Nott does not teach a removal depth of each removed portion of the plurality of removed portions is less than the coating application thickness, and cites that Nott does not teach a method of having applied a coating layer and then removing portions of the coating layer (see page 7 of the Remarks). However, the examiner disagrees.
5. Nott teaches that there is a coating layer applied and then portions of said coating layer are removed (see para 0099, “a first jaw member 109a having an electrically conductive electrode surface that is generally coated with an electrically non-conducting non-stick coating 335. The non-stick coating 335 comprises a patterned coating 345 created by the removal of circular portions 340 of the non-stick coating. In one non-limiting example, such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”). This is relied upon in the Non-Final Office Action (see pg. 3 of the NFOA). While another embodiment of Nott teaches a different method of forming the coating applied (Fig. 5; para 0105), this embodiment is only relied upon by the Examiner to teach the limitation of the amount of the removed portion compared to the coating thickness (para 0104, “recessed features may extend partially through a thickness of the electrode”). It is also noted that Nott teaches that the shape/size of the removed portions may be altered in order to adjust the area that is covered by the coating (para 0117, “It may be understood that the percent total surface area of the electrode covered by the patterned non-stick coating 1045a as depicted in FIG. 10A may be adjusted by altering any one or more of the number, size, or shape of the one or more circular portions 1040a removed from the non-stick coating 1035a”). Therefore, the combination of these embodiments, one teaching the method/order of steps of forming the coating and removing the coating, as well as teachings about the various sizes/shapes of the non-coated areas, teaches the limitation of “a removal depth… is less than the coating application thickness…”, since it has been held that a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results (In re Dailey et al., 149 USPQ 47) and a change in size is generally recognized as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)). Therefore, the previous rejections stand.
6. The applicant states similar arguments for the amendments of claims 11 and 17. Therefore, the rejections of these claims also stand in view of the remarks above.
Claim Rejections - 35 USC § 103
7. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
8. Claims 1, 3, 5, 17, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Nott U.S. 2018/0280075 (herein referred to as “Nott”) and in view of Sahbari U.S. 6,475,966 (herein referred to as “Sahbari”).
9. Regarding Claim 1, Nott teaches a method of manufacturing a surgical instrument that includes a tissue contacting surface operable to apply radio frequency (RF) energy to tissue (Fig. 1A, para 0089), the method comprising:
(a) applying a hydrophobic coating that includes silicone to a base surface of the tissue contacting surface to form an applied coating layer having a coating application thickness (Fig. 2, ref num 235; para 0096, “As depicted in FIG. 2, a non-stick coating 235 may be deposited on or otherwise placed in direct physical communication with the electrode surface”; Table 1, “silicone dioxide – silica”); and
(b) removing portions of the applied coating layer to form a plurality of removed portions of coating (Fig. 3, ref num 335, 340, 345; para 0099, “The non-stick coating 335 comprises a patterned coating 345 created by the removal of circular portions 340 of the non-stick coating”),
wherein a removal depth of each removed portion of the plurality of removed portions is less than the coating application thickness such that from 10% to 50% of the applied coating layer is removed from the base surface (para 0116, “FIG. 10A depicts a first jaw member 1009a having a patterned non-stick coating 1045a on an electrode surface comprising a non-stick coating 1035a from which one or more circular portions 1040a have been removed, thereby uncovering the electrode surface therebelow”; para 0117, “It may be understood that the percent total surface area of the electrode covered by the patterned non-stick coating 1045a as depicted in FIG. 10A may be adjusted by altering any one or more of the number, size, or shape of the one or more circular portions 1040a removed from the non-stick coating 1035a”; para 0160, “ the first energy delivery surface has a first area and the at least portion of the first energy delivery surface comprising the patterned coating has a second area”; para 0161-0163 describe different ratios of the areas between the first energy delivery surface and the patterned coating, implicit that the removed portions may be 1 0-100% of the coating thickness; also see Fig. 5, ref num 545; para 0104, “one or more recessed features may extend partially through a thickness of the electrode”; it has been held that a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results (In re Dailey et al., 149 USPQ 47) and a change in size is generally recognized as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)).
Nott fails to teach removing portions of the applied coating layer with a plasma etching method.
Sahbari teaches a method of removing portions of a coating layer with a plasma etching method (Col. 2, lines 38-43). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 2, lines 38-43, “It has been surprisingly found that plasma etching polymeric residue may be easily and cleanly removed from substrates using an alkaline system. Such plasma etching polymeric residue may be effectively removed according to the present invention without corrosion of underlying metal layers”). Since Nott teaches the removing portions of the coating layer via mechanical removal (Nott, para 0099, “such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott and apply a plasma etching method to remove portions of the coating layer, as this would produce the same expected result.
10. Regarding Claim 3, Nott teaches the hydrophobic coating is a PDMS-like coating, a PTFE-like coating, a fluoropolymer coating, a silicone dip or spray coating, and/or a parylene coating (para 0084, “Polytetrafluoroethylene (PTFE) is one such material”; also see Table 1; para 0124, “Patterned coatings were made from a non-stick coating of an electrically non-conducting material (a form of polytetrafluoroethylene)…”).
11. Regarding Claim 5, Nott teaches the plurality of removed portions are moved in a random orientation to form an unpattern orientation or removed portions (Fig. 4, ref num 435; para 0102, “the non-stick coating 435 depicted in FIG. 4 is not a patterned coating. Thus, the non-stick coating 435 depicted in FIG. 4 comprises a plurality of coating defects (observable as discolorations and pin-holes) in the surface of the non-stick coating 435 which may be understood as unintended and non-repeatable features of the coating”).
12. Regarding Claim 17, Nott teaches a surgical instrument (Fig. 1A) comprising:
(a) a shaft assembly (Fig. 1A, ref num 104); and
(b) an end effector extending distally from the shaft assembly (Fig. 1B, ref num 108), wherein the end effector includes a tissue contacting surface configured to apply energy to treat tissue (Fig. 1A, ref nums 111a/111b), wherein the tissue contacting surface includes at least one of an ultrasonic blade or an electrode (para 0092, “one or more electrodes in the first jaw 109a and one or more electrodes in the second jaw member 109b”), the tissue contacting surface comprising:
(i) a base surface configured to contact the tissue (Fig. 2, ref num 220; para 0096, “As depicted in FIG. 2, a non-stick coating 235 may be deposited on or otherwise placed in direct physical communication with the electrode surface”);
(ii) a hydrophobic coating layer that includes silicone on the base surface having a coating application thickness (Fig. 2, ref num 235; para 0096, “As depicted in FIG. 2, a non-stick coating 235 may be deposited on or otherwise placed in direct physical communication with the electrode surface”; Table 1, “silicone dioxide – silica”); and
(iii) a plurality of removed portions of the hydrophobic coating layer to be removed (Fig. 3, ref num 335, 340, 345; para 0099, “The non-stick coating 335 comprises a patterned coating 345 created by the removal of circular portions 340 of the non-stick coating),
wherein a removal depth of each removed portion of the plurality of removed portions is less than the coating application thickness such that from 10% to 50% of the applied coating layer is removed from the base surface (para 0116, “FIG. 10A depicts a first jaw member 1009a having a patterned non-stick coating 1045a on an electrode surface comprising a non-stick coating 1035a from which one or more circular portions 1040a have been removed, thereby uncovering the electrode surface therebelow”; para 0117, “It may be understood that the percent total surface area of the electrode covered by the patterned non-stick coating 1045a as depicted in FIG. 10A may be adjusted by altering any one or more of the number, size, or shape of the one or more circular portions 1040a removed from the non-stick coating 1035a”; para 0160, “ the first energy delivery surface has a first area and the at least portion of the first energy delivery surface comprising the patterned coating has a second area”; para 0161-0163 describe different ratios of the areas between the first energy delivery surface and the patterned coating, implicit that the removed portions may be 1 0-100% of the coating thickness; also see Fig. 5, ref num 545; para 0104, “one or more recessed features may extend partially through a thickness of the electrode”; it has been held that a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results (In re Dailey et al., 149 USPQ 47) and a change in size is generally recognized as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)).
Nott fails to teach removing portions of the applied coating layer with a plasma etching method.
Sahbari teaches a method of removing portions of a coating layer with a plasma etching method (Col. 2, lines 38-43). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 2, lines 38-43, “It has been surprisingly found that plasma etching polymeric residue may be easily and cleanly removed from substrates using an alkaline system. Such plasma etching polymeric residue may be effectively removed according to the present invention without corrosion of underlying metal layers”). Since Nott teaches the removing portions of the coating layer via mechanical removal (Nott, para 0099, “such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott and apply a plasma etching method to remove portions of the coating layer, as this would produce the same expected result.
13. Regarding Claim 20, Nott teaches the hydrophobic coating is a PDMS-like coating, a PTFE-like coating, a fluoropolymer coating, a silicone dip or spray coating, and/or a parylene coating (para 0084, “Polytetrafluoroethylene (PTFE) is one such material”; also see Table 1; para 0124, “Patterned coatings were made from a non-stick coating of an electrically non-conducting material (a form of polytetrafluoroethylene)…”).
14. Claims 2 and 9-13 are rejected under 35 U.S.C. 103 as being unpatentable over Nott and Sahbari, and further in view of Robinson U.S. 10,709,497 (herein referred to as “Robinson”).
15. Regarding Claim 11, Nott teaches a method of manufacturing a surgical instrument that includes a tissue contacting surface operable to apply radio frequency (RF) energy to tissue (Fig. 1A, para 0089), the method comprising:
(d) applying a hydrophobic coating that includes silicone to a base surface of the tissue contacting surface to form an applied coating layer having a coating application thickness (Fig. 2, ref num 235; para 0096, “As depicted in FIG. 2, a non-stick coating 235 may be deposited on or otherwise placed in direct physical communication with the electrode surface”; Table 1, “silicone dioxide – silica”); and
(e) removing portions of the applied coating layer to form a plurality of removed portions of coating (Fig. 3, ref num 335, 340, 345; para 0099, “The non-stick coating 335 comprises a patterned coating 345 created by the removal of circular portions 340 of the non-stick coating”),
wherein a removal depth of each removed portion of the plurality of removed portions is equal to the coating application thickness such that from 10% to 50% of the applied coating layer is removed from the base surface (para 0116, “FIG. 10A depicts a first jaw member 1009a having a patterned non-stick coating 1045a on an electrode surface comprising a non-stick coating 1035a from which one or more circular portions 1040a have been removed, thereby uncovering the electrode surface therebelow”; para 0117, “It may be understood that the percent total surface area of the electrode covered by the patterned non-stick coating 1045a as depicted in FIG. 10A may be adjusted by altering any one or more of the number, size, or shape of the one or more circular portions 1040a removed from the non-stick coating 1035a”; para 0160, “ the first energy delivery surface has a first area and the at least portion of the first energy delivery surface comprising the patterned coating has a second area”; para 0161-0163 describe different ratios of the areas between the first energy delivery surface and the patterned coating, implicit that the removed portions may be 1 0-100% of the coating thickness; also see Fig. 5, ref num 545; para 0104, “one or more recessed features may extend partially through a thickness of the electrode… the one or more recessed features may extend completely through the thickness of the electrode”; para 0105, “The patterned non-stick coating 545 depicted in FIG. 5 may be fabricated by removing portions from the surface of the electrode to form the recessed features”; it has been held that a change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results (In re Dailey et al., 149 USPQ 47) and a change in size is generally recognized as being within the level of ordinary skill in the art (In re Rose, 105 USPQ 237 (CCPA 1955)).
Nott fails to teach removing portions of the applied coating layer with a plasma etching method; and a) loading the tissue contacting surface into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface.
Robinson teaches a method of analogous art, wherein the method further comprises:
(a) loading the tissue contacting surface into a vacuum chamber (Col. 11, lines 37-39, “Uncoated jaw members (e.g., jaw members 310) are loaded into a vacuum plasma deposition chamber of a plasma system”);
(b) decreasing a pressure of the vacuum chamber (Col. 11, lines 39-43, “The chamber is then pumped down to form a vacuum within the chamber. After the vacuum is established, ionizable media, such as, oxygen is supplied into the chamber at any suitable rate until a set point pressure is reached”); and
(c) plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface (Col. 11, lines 48-50, “Once the desired pressure is reached, oxygen plasma is ignited for a first period of time at a first power level to prepare the surface for coating”).
It is commonly known in the art that forming a non-stick coating on an electrode surface may use a plasma vacuum system (Fig. 5; Col. 11, lines 30-36). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott to include the steps listed above in order to prepare the electrode and form a non-stick coating, as these steps are a commonly accepted method within the art.
Sahbari teaches a method of removing portions of a coating layer with a plasma etching method (Col. 2, lines 38-43). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 2, lines 38-43, “It has been surprisingly found that plasma etching polymeric residue may be easily and cleanly removed from substrates using an alkaline system. Such plasma etching polymeric residue may be effectively removed according to the present invention without corrosion of underlying metal layers”). Since Nott teaches the removing portions of the coating layer via mechanical removal (Nott, para 0099, “such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott and apply a plasma etching method to remove portions of the coating layer, as this would produce the same expected result.
16. Regarding Claims 2 and 12, Nott fails to teach the act of applying utilizes plasma enhanced chemical vapor deposition (PECVD) to form the applied coating layer.
Robinson teaches applying coating layers via PECVD (Col. 6, lines 18-21, “ the non-stick coating is a polydimethylsiloxane coating formed by plasma-enhanced chemical vapor deposition (“PECVD”) of hexamethyldisiloxane (“HMDSO”)”). Since this achieves the same expected result of reducing the sticking of tissue to a conductive layer (Robinson, Col. 6, lines 21-27; Nott, para 0083), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott to apply the coating layer via PECVD.
17. Regarding Claim 9, Nott fails to teach the method further comprising:(a) loading the tissue contacting surface into a vacuum chamber; (b) decreasing a pressure of the vacuum chamber; and (c) plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface.
Robinson teaches a method of analogous art, wherein the method further comprises:
(a) loading the tissue contacting surface into a vacuum chamber (Col. 11, lines 37-39, “Uncoated jaw members (e.g., jaw members 310) are loaded into a vacuum plasma deposition chamber of a plasma system”);
(b) decreasing a pressure of the vacuum chamber (Col. 11, lines 39-43, “The chamber is then pumped down to form a vacuum within the chamber. After the vacuum is established, ionizable media, such as, oxygen is supplied into the chamber at any suitable rate until a set point pressure is reached”); and
(c) plasma treating the base surface after decreasing the pressure of the vacuum chamber to clean and activate the tissue contacting surface (Col. 11, lines 48-50, “Once the desired pressure is reached, oxygen plasma is ignited for a first period of time at a first power level to prepare the surface for coating”).
It is commonly known in the art that forming a non-stick coating on an electrode surface may use a plasma vacuum system (Fig. 5; Col. 11, lines 30-36). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott to include the steps listed above in order to prepare the electrode and form a non-stick coating, as these steps are a commonly accepted method within the art.
18. Regarding Claim 10, Nott fails to teach the act of plasma treating is performed prior to the act of applying the hydrophobic coating and uses at least one of oxygen or argon.
Robinson teaches the act of plasma treating is performed prior to the act of applying the hydrophobic coating and uses at least one of oxygen or argon (Col. 11, lines 48-50 and 54-55, “Once the desired pressure is reached, oxygen plasma is ignited for a first period of time at a first power level to prepare the surface for coating… It also prepares surfaces for subsequent processing (e.g., application of the non-stick coating 400)…”). It is commonly known in the art that forming a non-stick coating on an electrode surface may use a plasma vacuum system (Fig. 5; Col. 11, lines 30-36). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott to include the steps listed above in order to prepare the electrode and form a non-stick coating, as these steps are a commonly accepted method within the art.
19. Regarding Claim 13, Nott teaches the hydrophobic coating is a PDMS-like coating, a PTFE-like coating, a fluoropolymer coating, a silicone dip or spray coating, and/or a parylene coating (para 0084, “Polytetrafluoroethylene (PTFE) is one such material”; also see Table 1; para 0124, “Patterned coatings were made from a non-stick coating of an electrically non-conducting material (a form of polytetrafluoroethylene)…”).
20. Claim 4 are rejected under 35 U.S.C. 103 as being unpatentable over Nott and Sahbari, and further in view of En U.S. 6,066,567 (herein referred to as “En”).
21. Regarding Claim 4, Nott fails to teach the plasma removal method is selected from argon plasma removal.
En teaches a method of removing portions of a coating layer with a plasma etching method (Abstract; Col. 2, lines 1-20). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 1, lines 53-56). Since Nott teaches the removing portions of the coating layer via mechanical removal (Nott, para 0099, “such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott and apply a plasma etching method, such as argon plasma removal. to remove portions of the coating layer, as this would produce the same expected result.
22. Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nott and Sahbari, and further in view of non-patent literature reference Adhesion Behavior of Textured Electrosurgical Electrode in an Electric Cutting Process by Zhou (herein referred to as “Zhou”).
23. Regarding Claim 6, Nott fails to teach removed portion of the plurality of removed portions has a diameter of from about 10 micrometers to about 150 micrometers.
Zhou teaches a method of analogous art (Abstract), such that a removed portion has a diameter from about 10 micrometers to about 150 micrometers (Results and Discussion, 3.1 “The diameter and depth of micro-dimples are 50 and 12 μm, respectively”). Since Nott teaches varying sizes of the removed portions (para 0117, “It may be understood that the percent total surface area of the electrode covered by the patterned non-stick coating 1045a as depicted in FIG. 10A may be adjusted by altering any one or more of the number, size, or shape of the one or more circular portions 1040a removed from the non-stick coating 1035a”), then it would have been an obvious matter of design choice to have the diameter of the removed portions be between 10 and 150 micrometers, since such a modification would have involved a mere change in the size of a component. A change in size is generally recognized as being within the level of ordinary skill in the art. In re Rose, 105 USPQ 237 (CCPA 1955).
24. Claim 14 are rejected under 35 U.S.C. 103 as being unpatentable over Nott Sahbari, and Robinson, and further in view of En.
25. Regarding Claim 14, Nott fails to teach the plasma removal method is selected from argon plasma removal.
En teaches a method of removing portions of a coating layer with a plasma etching method (Abstract; Col. 2, lines 1-20). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 1, lines 53-56). Since Nott teaches the removing portions of the coating layer via mechanical removal (Nott, para 0099, “such circular portions 340 may be removed by machining the non-stick coating 335 by a tool such as, in one non-limiting example, by an end-mill”), then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Nott and apply a plasma etching method, such as argon plasma removal. to remove portions of the coating layer, as this would produce the same expected result.
Double Patenting
26. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
27. A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
28. The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
29. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
30. Claims 1-3, 9-13, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-13, and 15-20 of copending Application No. 18/784,247 (reference application) in view of Sahbari U.S. 6,475,966. The claims of the reference application ‘247 teach all the limitations recited in the claims of the present invention, except for “removing portions of the applied coating layer with a plasma etching method to form a plurality of removed portions of coating. However, Sahbari teaches a method of removing portions of a coating layer with a plasma etching method (Col. 2, lines 38-43). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 2, lines 38-43, “It has been surprisingly found that plasma etching polymeric residue may be easily and cleanly removed from substrates using an alkaline system. Such plasma etching polymeric residue may be effectively removed according to the present invention without corrosion of underlying metal layers”). Since this is a common method of removing layers, then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the reference application and apply a plasma etching method to remove portions of the coating layer, as this would produce the same expected result.
31. This is a provisional nonstatutory double patenting rejection.
32. Claims 1-3, 9-13, and 17-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 7-13, and 15-20 of copending Application No. 18/784,271 (reference application) in view of Sahbari U.S. 6,475,966 The claims of the reference application ‘271 teach all the limitations recited in the claims of the present invention, except for “removing portions of the applied coating layer with a plasma etching method to form a plurality of removed portions of coating. However, Sahbari teaches a method of removing portions of a coating layer with a plasma etching method (Col. 2, lines 38-43). This provides an easy and clean method to remove the coating layer without disturbing the underlying conductive layers (Col. 2, lines 38-43, “It has been surprisingly found that plasma etching polymeric residue may be easily and cleanly removed from substrates using an alkaline system. Such plasma etching polymeric residue may be effectively removed according to the present invention without corrosion of underlying metal layers”). Since this is a common method of removing layers, then it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the reference application and apply a plasma etching method to remove portions of the coating layer, as this would produce the same expected result.
33. This is a provisional nonstatutory double patenting rejection.
Conclusion
34. THIS ACTION IS MADE FINAL. 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.
35. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANNIE L SHOULDERS whose telephone number is (571)272-3846. The examiner can normally be reached Monday-Friday (alternate Fridays) 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Joseph Stoklosa can be reached at 571-272-1213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANNIE L SHOULDERS/ Examiner, Art Unit 3794
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