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 with traverse of Claims 1-7 and 20 in the reply filed on 5/26/2026 is acknowledged. The traversal is on the ground(s) that the special technical feature shared by the claims makes a contribution over the prior art. This is not found persuasive because as set forth below, all of the claim limitations of claims 1-7 and 20 are taught by the prior art, and thus do not make a contribution.
The requirement is still deemed proper and is therefore made FINAL.
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.
Claims 1-7 and 20 are 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.
In claim 1, it is unclear if the phrase “comprises coating the structure with different layers, forming a stacking of layers, comprising at least a superconducting layer” includes all of these limitations together in sequence, or is including these limitations in the alternative.
Regarding claims 2 and 5-7, the phrase "for example" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 3 “preferably a high temperature” is unclear whether the temperature limitations are part of the claimed invention.
Claim 5 recites the limitation "the surface". There is insufficient antecedent basis for this limitation in the claim.
As to claim 7, the “and/or” phrasing makes it unclear as to what is actually claimed.
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.
Claim(s) 1-5 and 7 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Selvamanickam et al. (US 2006/0115580 A1; hereafter Selva)
As to claim 1, Selva teaches a method for coating a surface of a structure, the method comprising steps of:- placing a structure inside a chamber (18 Fig 1), at least one ejector being located inside the chamber and oriented towards a surface to be coated of the structure (24 Fig 1);- enclosing the chamber (Fig 1);- forming a vacuum in the chamber (para 0063, 20 Fig 1); and then - injecting vapor through the at least one ejector towards the surface, while causing a relative motion between the structure and the at least one ejector (para 0049-0053), wherein injecting vapor comprises coating the structure with different layers, forming a stacking of layers, comprising at least a superconducting layer (para 0056, 0104, 0112, Fig. 8).
As to claim 2, the precursor is evaporated in the vaporizer 44 (para 0063).
As to claim 3, the method comprises heating to a temperature in para 0054, 0056.
As to claim 4, the method includes a buffer layer in para 0050, with the among the multiple layers in para 0056, 0104, 0112.
As to claims 5 and 7, the flow is lateral, or laminal in the abstract and is injected in an oblique manner as shown in the Figures.
Claim(s) 1-7 and 20 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Youm et al. (US 6147033; hereafter Youm)
As to claim 1, Youm teaches a method for coating a surface of a structure, the method comprising steps of:- placing a structure inside a chamber (Fig 2), at least one ejector being located inside the chamber and oriented towards a surface to be coated of the structure (Fig 2, col 4 lines 16-36);- enclosing the chamber (Fig 2);- forming a vacuum in the chamber (claim 1); and then - injecting vapor through the at least one ejector towards the surface, while causing a relative motion between the structure and the at least one ejector (claim 1, col 4 lines 16-36), wherein injecting vapor comprises coating the structure with different layers, forming a stacking of layers, comprising at least a superconducting layer (col 5 lines 3-35).
As to claim 2, the precursor is evaporated (col 4 lines 16-36).
As to claim 3, the method comprises heating to a temperature in (col 4 et seq).
As to claim 4, the method includes a buffer layer col 5 lines 3-35.
As to claims 5 and 7, the flow would be expected to be laminal and is injected in an oblique manner as shown in the Figures.
As to claims 6 and 20, rotation is used around a cylinder Figs 1-2, col. 3 lines 10-32.
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(s) 5-6 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Selva in view of Youm.
Selva teaches the limitations of claims 5-6 and 20 but does not include rotation or a cylinder as the relative motion. Youm is a similar process making a similar product that includes rotation as relative motion, creating a laminar flow, in a cylinder shape in Figs 1-2, col. 3 lines 10-32 in order to have more uniform deposition. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Selva to include rotation as relative motion, creating a laminar flow, with the object to be coated in a cylinder shape as taught by Youm in order to have more uniform deposition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/ Primary Examiner, Art Unit 1718
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