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 .
Examiner Notes
Claims 1-5 are currently pending, of which claim 1 has been amended.
Claim Rejections - 35 USC § 103
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.
Claims 1-2 and 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Iwasawa (US 2017/0152189) and further in view of Eto et al. (US 2012/0040132).
Regarding claims 1 and 4, Iwasawa discloses plasma-resistant member comprising a base material and a layer structural component formed by aerosol deposition on the surface of the base material (0014). The base material comprises a ceramic (0028).
Applicant’s specification teaches that the aerosol deposition method results in each of the crystallites on the surface of the underlayer being irregular without being aligned in a specific direction (0019). Therefore, as Iwasawa teaches aerosol deposition of the layer structural component the orientation of each crystallite on the surface of the layer on the protective film side would not be aligned and irregular as claimed.
Iwasawa does not teach a protective film covering a surface of the layer structural component that grows while being influenced by the orientation of the crystallite direction below the protective film.
Eto, in the analogous field of structural members teaches a protective film formed on a component (0023).The protective film comprises a base film (51) and a plasma protective film (53) which is an upper film formed on the base film (0036).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the member of Iwasawa to include a plasma-protective film, as taught by Eto, providing further plasma resistance to the underlying film layer(s) (0037).
Iwasawa in view of Eto do not expressly teach that the protective film grows while being influenced by the orientation of the crystallite directly below it. However, Iwasawa teaches the crystallite orientation and discussed above. Furthermore, Eto teaches that the plasma protective film may be formed for example by gas deposition method (0051), which is the same method applicant discloses results in the protective film growth being influenced by the crystallite orientation (e.g., see paragraph 0025 of the specification). Thus, the claimed growth influence of the protective film would be expected of the prior art (MPEP 2112).
Alternatively, please note that claim 1 includes product by process language with regards to the recitation of the protective film growth. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Regarding claim 2, while Iwasawa teaches the crystallite size of the layer structural component is small (0014-0015), Iwasawa does not disclose the size in relation to the average crystallite size in the base material.
However, Iwasawa teaches the same materials for the base material and layer structural component (e.g., alumina and polycrystalline yttria, respectively (0028)) as well as the same method of deposition of the underlayer (i.e., aerosol deposition), the size relationship of the average crystalline size being smaller than average crystallite size in the base material would be expected of the prior art member.
Once a reference teaching product appearing to be substantially identical is made the basis of a rejection, and the examiner presents evidence or reasoning tending to show inherency, the burden shifts to the applicant to show an unobvious difference. "[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product. Whether the rejection is based on inherency’ under 35 U.S.C. 102, on prima facie obviousness’ under 35 U.S.C. 103, jointly or alternatively, the burden of proof is the same, and its fairness is evidenced by the PTO’s inability to manufacture products or to obtain and compare prior art products." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977)), see MPEP 2112. Applicant has not clearly shown an unobvious difference between the instant invention and the prior art’s product.
Regarding claim 5, Eto teaches the protective film formed by e.g., spraying or gas deposition method (0051).
Please note, claim 5 includes product by process language with regards to the recitation of “is formed by”. The above arguments establish a rationale tending to show the claimed product is the same as what is taught by the prior art. “[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process.” (In re Thorpe, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product. In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Iwasawa in view of Eto as applied to claim1 above, and further in view of Ohmi et al. (US 2009/0142588).
Regarding claim 3, Iwasawa discloses the limitations of claim 1 as discussed above. Iwasawa does not teach layer thicknesses and thus does not teach that the layer structural component is thinner than the protective film.
Ohmi, in the analogous field of structural members for semiconductors (0001) teaches protective film comprising a first coating layer (2) and a second coating layer (3) formed on a base material (1) (Fig. 1, 0031).
Ohmi teaches where the first coating layer has a thickness of 10 nm or more and 1 micrometer or less (0012) and the second coating has a thickness of about 200 micrometers (0019). Thus, it teaches a underlayer thinner than the protective coating (MPEP 2144.05).
A person of ordinary skill in the art before the effective filing date of the claimed invention would have found it obvious for the layer structural component of Iwasawa to be thinner than the protective film, as taught by Ohmi, imparting corrosion resistance against irradiation of ions or radicals and preventing corrosion of the surface of the base layer thereby reducing contamination of the base substrate (0019).
Response to Arguments
Applicant's arguments filed 08/27/2026 have been fully considered but they are not persuasive. Applicant argues that the rejection does not identify any teaching or technical reasoning establishing the physical relationship between the crystallographic condition of the underlayer surface and the growth of the protective film.
The examiner notes that the rejection has been updated to address this newly added limitation. Specifically, it is noted that Eto teaches the protective layer may be applied by the same method as disclosed in applicants specification which results in the influence on the growth of the film.
It must further be emphasized that it is the patentability of the product that is in issue and not the patentability of the process steps employed to prepare the product. See MPEP section 2113. Applicant has not pointed out a structure difference of the protective film.
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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALICIA WEYDEMEYER whose telephone number is (571)270-1727. The examiner can normally be reached M-Th 9-4.
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, Frank Vineis can be reached at 571-270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALICIA J WEYDEMEYER/Primary Examiner, Art Unit 1781
