DETAILED ACTION
This is in response to communication received on 3/20/26.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of AIA 35 U.S.C. code not present in this action can be found in previous office actions dated 1/21/26.
Election/Restrictions
Applicant's election with traverse of Group I, Claims 1-12 and 15-16 in the reply filed on 3/20/26 is acknowledged. The traversal is on the ground(s) that there is no undue search burden. This is not found persuasive because this not a proper response to a Unity of Invention requirement. The Unity of Invention requirement was based on the lack of a shared special technical feature in view of the art on record, as further illustrated in the rejection below. As such this argument cannot be considered persuasive as it does not address the reasoning that was actually applied.
The requirement is still deemed proper and is therefore made FINAL.
Claim Rejections - 35 USC § 102
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) 1-2, 6-8, 11-12, 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by George et al. US 2016/0351443 hereinafter GEORGE.
As for claim 1, GEORGE teaches “The present invention relates to a method and a composition comprising a polymer substrate having free volume and/or a porous surface” (abstract, lines 1-3), i.e. A
method for forming a barrier deposit within a substrate comprising defects.
GEORGE teaches “The polymer substrate is generally held in a chamber that can be evacuated to low pressures. Each reactant is introduced sequentially into the reaction zone, typically together with an inert carrier gas. Before the next reactant is introduced, the reaction by-products and unreacted reagents are removed,” (paragraph 50, lines 1-2), i.e. wherein the method comprises introducing the substrate into a reaction space.
GEORGE teaches “As such, an ALD process using TMA as a reactant is particularly suitable for depositing inorganic materials onto a wide range of organic polymers. TMA ALD reactions usually form alumina (Al2O3 ); an illustrative example of an overall reaction of this type is 2Al(CH3)3 +3H2O-AI2O3 +6CH4.” (paragraph 59, lines 4-9), and while GEORGE teaches providing the reactants sequentially (paragraph 104-105), Examiner notes that the first chemical is present during the introduction of water as it is necessary for the reaction to take place such that, i.e. the substrate contains water and/or is exposed to water, and simultaneously the substrate is exposed to a first chemical, wherein the first chemical is configured to react with the water.
GEORGE teaches “Because most polymer surfaces have small pores and imperfections, the inorganic material often is deposited discontinuously or unevenly at first, until a number of reaction cycles have been completed. In this initial, nucleation phase, the reactions are not self-limiting. However, as more reaction cycles are repeated, individual deposits of inorganic material tend to grow together and interconnect to form a continuous coating. Thus, by selection of the polymer substrate and the number of times the ALD reaction sequence is conducted, the inorganic deposits may be formed as a plurality of individual particles or a continuous or semi-continuous film. It is believed, again without limiting the invention to any theory, that by interconnecting individual deposits of inorganic material that are formed in the first few reaction cycles, the inorganic material forms "bridges" between these deposits” (paragraph 58, lines 1-16), i.e.
As for claim 2, GEORGE teaches “As such, an ALD process using TMA as a reactant is particularly suitable for depositing inorganic materials onto a wide range of organic polymers. TMA ALD reactions usually form alumina (Al2O3 ); an illustrative example of an overall reaction of this type is 2Al(CH3)3 +3H2O-AI2O3 +6CH4.” (paragraph 59, lines 4-9), i.e. wherein the first chemical is selected from a group consisting of metal halides, metal organics or organometals.
As for claim 6, GEORGE teaches “The present invention relates to a method and a composition comprising a polymer substrate having free volume and/or a porous surface” (abstract, lines 1-3), i.e. wherein the substrate is formed of polymer, paper, ceramic, porous metal, porous glass, and/or wood.
As for claim 7, GEORGE teaches “The present invention relates to a method and a composition comprising a polymer substrate having free volume and/or a porous surface” (abstract, lines 1-3), i.e. wherein the substrate is formed of a barrier coating on a web formed of polymer, paper, and/or wood.
As for claim 8, GEORGE teaches “The present invention relates to a method and a composition comprising a polymer substrate having free volume and/or a porous surface” (abstract, lines 1-3), i.e. wherein the substrate is porous.
As for claim 11, GEORGE teaches “The applied inorganic material can impart many desirable properties to the polymer substrate, depending on the particular substrate, inorganic material and end-use application. In many instances, the inorganic material forms a continuous film on the surface of the polymer substrate. This continuous film can form a barrier to diffusion of gasses and vapors such as hydrocarbons, water and oxygen, through the coated polymer” (paragraph 76, lines 1-8), i.e. wherein the method comprises forming the barrier deposit within the substrate for minimizing diffusion of molecules from surrounding environment of the substrate into and/or through the substrate.
As for claim 12, GEORGE teaches “The deposited inorganic material may provide an electrical insulating… layer on the polymer substrate” (paragraph 83, lines 1-3), i.e. wherein the method comprises forming the barrier deposit within the substrate for reducing the electrical conductivity of the substrate.
As for claim 15, GEORGE teaches “The deposited inorganic material may provide an electrical insulating… layer on the polymer substrate” (paragraph 83, lines 1-3), i.e. wherein the use of the method of claim 1 for reducing electrical conductivity of the substrate.
As for claim 16, GEORGE teaches “The applied inorganic material can impart many desirable properties to the polymer substrate, depending on the particular substrate, inorganic material and end-use application. In many instances, the inorganic material forms a continuous film on the surface of the polymer substrate. This continuous film can form a barrier to diffusion of gasses and vapors such as hydrocarbons, water and oxygen, through the coated polymer” (paragraph 76, lines 1-8), i.e. use of the method of claim 1 for minimizing diffusion of molecules from surrounding environment of the substrate into and/or through the substrate.
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.
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) 3, 5, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over George et al. US 2016/0351443 hereinafter GEORGE.
As for claim 3, GEORGE teaches “The temperature at which the ALD reactions are conducted is therefore generally below 550K, and preferably below 400K, more preferably below about 373K, and especially below 350K, with the upper temperature limit being dependent on the particular organic polymer to be coated” (paragraph 48, lines 10-15). It is expected that a person of ordinary skill in the art at the time of the invention could have converted the Kelvin to a Celsius CLAIMED RATIO/VALUE, which overlap with the instant claimed range of wherein the diffusion treatment is carried out at a temperature of 0 - 1000 °C, or 20 - 600 °C, or 40 - 400 °C, or 60 - 300 °C, or 80 - 200 °C, or 100 - 150 °C. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d
As for claim 5, GEORGE discusses the amount of cycles of the reaction effects the thickness and pore reduction of the film (paragraph 58), “It has been found that very often, the inorganic material formed in the first one or several reaction sequences tends to be deposited discontinuously. As the reaction sequences are continued, the initially discontinuous deposits will often become interconnected as further inorganic material is deposited” (paragraph 74, lines 6-11), and “The thickness of the PMMA film on the QCM sensor used in this Example is 1300 A. The Al2O3 ALD was performed at 86° C. using a t1 -t2- pulse; t2 is the purge time after the TMA pulse; t3 is the H2O reactant pulse; and t4 is the purge time after the H2O pulse. All times were measured in seconds” (paragraph 103).
It would have been obvious to one of ordinary skill in the art before the effective filing date to design the time of the reaction such that the desired thickness is achieved. Discovery of optimum value of result effective variable in known process is ordinarily within the skill of the art. In re Boesch, CCPA 1980, 617 F.2d 272, 205 USPQ215.
As for claim 9, GEORGE teaches “In many preferred embodiments, the deposits of inorganic material form an ultrathin conformal coating. By "ultrathin", it is meant that the thickness of the coating is up to about 100 nanometers (nm)” (paragraph 75, lines 1-4), i.e. a range that overlaps with wherein the thickness of the formed barrier deposit is 1 - 10000 nm, or 5 - 500 nm, or 20 - 100 nm. In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler, 116 F.3d 1465, 1469-71, 43 USPQ2d, 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over George et al. US 2016/0351443 hereinafter GEORGE as applied to claim 1 above, and further in view of Kivioja et al. US PGPub 20200385857 hereinafter KIVIOJA.
As for claim 4, GEORGE is silent on wherein the substrate comprises a first outer surface and a second outer surface, which is opposite to the first outer surface, and the diffusion treatment is carried out by arranging, in the reaction space, a different pressure on a side of the first outer surface of the substrate than on a side of the second outer surface of the substrate, wherein the pressure difference results in diffusion of water and the first chemical into the defects of the substrate.
KIVIOJA teaches “A method for manufacturing a coated item 10 in a chemical deposition reactor and a coated item produced by the method are provided” (abstract, lines 1-3) and “The basics of ALD growth mechanism are known to a skilled person. ALD is a chemical deposition method based on sequential introduction of at least two reactive precursor species to at least one substrate” (paragraph 41, lines 1-4).
KIVIOJA teaches “Fluidic flow through the essentially fluid-permeable material 100 can be controlled by pressure difference generated across said material with the evacuation pump and a number of regulating devices, such as switch valves equipped with mass-flow controller(s) and/or gas flow meter (s), for example. Other control means include conventional appliances, such as gas- and pressure sensors. The chemical deposition reactor advantageously comprises an ( automated) control system, implemented as a computer unit, for example, and comprising at least one processor and a memory with an appropriate computer program or software. By adjusting pressure difference generated across the essentially fluid-permeable substrate walls, formation of coating(s) 1, 2 with varying composition and/or other properties can, in turn, be regulated. By regulating pressure difference, velocity of fluid flowing into the reaction space 101 via the reaction chamber (Pout) and via the fluidpermeable substrate holder (Pin) can be adjusted” (paragraph 75-76), i.e. wherein the substrate comprises a first outer surface and a second outer surface, which is opposite to the first outer surface, and the diffusion treatment is carried out by arranging, in the reaction space, a different pressure on a side of the first outer surface of the substrate than on a side of the second outer surface of the substrate, wherein the pressure difference results in diffusion of the reactants into the defects of the substrate
It would have been obvious to include the pressure differential of KIVIOJA in the process of GEORGE such that it includes wherein the substrate comprises a first outer surface and a second outer surface, which is opposite to the first outer surface, and the diffusion treatment is carried out by arranging, in the reaction space, a different pressure on a side of the first outer surface of the substrate than on a side of the second outer surface of the substrate, wherein the pressure difference results in diffusion of water and the first chemical into the defects of the substrate because KIVIOJA teaches the such a pressure differential across the pores allows for control of the velocity of the fluid/gas going through the pore and the formation of the coatings can be regulated.
Claim(s) 10 is rejected under 35 U.S.C. 103 as being unpatentable over George et al. US 2016/0351443 hereinafter GEORGE as applied to claim 1 above, and further in view of Yushin et al. US PGPub 2022/0131125 hereinafter YUSHIN.
As for claim 10, GEORGE is silent on wherein the substrate comprises a first outer surface and a second outer surface, opposite to the first outer surface, and wherein one of the first outer surface and the second outer surface of the substrate is exposed to one of water and the first chemical, and the other of the first outer surf ace and the second outer surface is exposed to the other one of water and the first chemical.
YUSHIN teaches “In an aspect, a functional, a conformal surface layer coating on an internal surface of pores of a porous substrate may be formed via exposure to gas streams of precursor molecules in an atomic-layer deposition (ALD) reactor” (abstract, lines 1-4).
YUSHIN further shows in Fig. 3B wherein reactants/gases are exposed from either side of continuous substrate, and that “In contrast to 300AofFIG. 3A, the ALD deposition in 300B of FIG. 3B takes place from both sides of the substrate. The rollers 304 may provide both mechanical support and help with directing the gas flow through substrate pores. In some designs, the symmetric design shown in this example can balance the forces on the substrate since the forces of the flowing gas nozzles from each size may compensate each other and the forces of the exhaust (e.g., vacuum) nozzles may similarly compensate each other, this helping the substrate to remain flat” (paragraph 152, lines 12-22), i.e. wherein the substrate comprises a first outer surface and a second outer surface, opposite to the first outer surface, and wherein one of the first outer surface and the second outer surface of the substrate is exposed to one reactant, and the other of the first outer surf ace and the second outer surface is exposed to the other one of the reactant.
It would have bene obvious to use the apparatus of YUSHIN to apply the coating of GEORGE such that it includes wherein the substrate comprises a first outer surface and a second outer surface, opposite to the first outer surface, and wherein one of the first outer surface and the second outer surface of the substrate is exposed to one of water and the first chemical, and the other of the first outer surf ace and the second outer surface is exposed to the other one of water and the first chemical because YUSHIN teaches such a device allows for continuous coating of a porous substrate with an even coating and that such a process helps the substrate stay flat under the action of the flowing gasses in and out of the pores.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KRISTEN A DAGENAIS whose telephone number is (571)270-1114. The examiner can normally be reached 8-12 and 1-5.
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/KRISTEN A DAGENAIS/Examiner, Art Unit 1717
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