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 without traverse of Group I, claims 1-13, in the reply filed on 29 April 2026, is acknowledged.
The requirement is still deemed proper and is therefore made FINAL.
Claims 14-25 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 29 April 2026.
Double Patenting
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).
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).
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.
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.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 18/790,377 in view of Wisneskie (US 5,534,293).
Instant claim 1 and claim 1 of the ‘377 application both recite a composite part comprising a substrate; a subsurface layer comprising graphite with a cellular structure; a graphitic layer; wherein the graphitic layer comprises graphite in an amount greater than the graphite present in said subsurface layer.
Instant claim 1 differs from claim 1 of the ‘377 application insofar as reciting a ceramic coating on said graphitic layer.
In a related field of endeavor, Wisneskie teaches that carbon based materials maintain their strength relatively well at high temperatures but tend to erode in the presence of high-velocity gas flow and are susceptible to chemical attack (Col. 1, l. 33-43). To address these drawbacks, the exposed surfaces of flow-handling devices composed of graphite or other carbon based materials are often treated by forming a layer of ceramic material on the exposed surface to improve the resistance to abrasion, particulate impact, and chemical attack (Col. 1, l. 44-55).
Wisneskie is analogous to the ‘377 application and the instant application inasmuch that Wisneskie addresses known drawbacks of exposed surfaces made of graphite and other carbon based materials. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify claim 1 of the ‘377 application to include a layer of ceramic material (i.e. a ceramic coating) on the exposed carbon surface to improve the resistance to abrasion, particulate impact, and chemical attack, and one would have had a reasonable expectation of success.
This is a provisional nonstatutory double patenting rejection.
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.
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.
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) 1-5 and 11-13 are rejected under 35 U.S.C. 103 as being unpatentable over Kaplan et al. (US 5,283,109) in view of Tour et al. (US 2019/0330064).
Claim 1: Kaplan teaches high temperature structural materials wherein a coating comprising a plurality of very thin alternating layers comprised of hafnium or zirconium carbide (i.e. hafnium carbide would have been obvious as a specifically named choice) and silicon carbide (i.e. the carbide coating is a ceramic coating) is formed on a temperature resistant substrate (i.e. the structure is a composite part having a substrate and a ceramic coating) (Col. 1, l. 4-11). Kaplan teaches the coating as being oxidation resistant and used for coating a high temperature resistant substrate such as carbon-carbon composite, etc. (Col. 2, l. 45-66). The outermost layer is preferably silicon carbide, and the first layer of the coating forms an interlayer between the coating the substrate (Col. 2, l. 65-68). The interlayer is generally preferably silicon carbide where the substrate is a carbon-carbon composite, but may include a different material and may be selected so as to minimize as much as possible the effect of the mismatch in the coefficients of thermal expansion between the coating and the substrate (Col. 2, l. 68 to Col. 3, l. 11). To minimize cracking, a carbon paste of carbon powder and liquid carrier was first applied as a layer to a carbon-carbon composite and cured before applying a coating of hafnium carbide-silicon carbide layers because the carbon interlayer served to form a slightly ductile interlayer which absorbs some of the stress caused by mismatched coefficients of thermal expansion (Col. 5, l. 28-50). Kaplan teaches that varying the chemical vapor deposition operating parameters permits adjustment of the thickness of the respective hafnium or zirconium carbide and silicon carbide layers, and individual layers except for the interlayer are about 1-10 microns in thickness which does not need to be uniform in thickness, the interlayer may be as much as 20 microns or more, and the final layer which is exposed to the environment is silicon carbide (Col. 5, l. 64 to Col. 6, l. 9). The coating process is preferably continuous with no interruptions between the formation of the alternating carbide layers (Col. 6, l. 10-17). Kaplan teaches an interlayer that includes a carbon layer and the interlayer can minimize as much as possible the effect of the mismatch in the coefficients of thermal expansion between the coating and the substrate (Col. 3, l. 4-6), and further teaches that the substrate may be selected with the view of minimizing the difference between the coefficients of thermal expansion between the substrate and the coating, such as graphite which has a coefficient of expansion closer to that of the coating than is carbon-carbon composite. However, the instantly claimed subsurface layer and relative graphite in the graphitic layer are not disclosed.
In a related field of endeavor, Tour teaches a method to form laser-induced graphene (“LIG” as defined in para. 0006) from a wide variety of carbon precursors by means of multiple lasing (para. 0009). Sources of carbon include polymers, cellulose-based materials, amorphous carbon, charcoal, activated carbon, coke, etc. (paras. 0011-0012), and most other carbon sources (para. 0013). A 3D graphene object (i.e. the graphene is considered to be graphite, which is simply many layers of graphene, due to being 3-dimensional) can be printed via the exposure of one or more carbon precursors to laser irradiation, wherein single exposures of a laser can be employed but preferably multiple exposures would be used (para. 0014). This method and materials are substantially identical to the method and materials of the instant application (paragraph spanning p. 2-3 and paragraph spanning p. 5-6 of the instant specification) and is considered to result in the instantly claimed subsurface layer comprising graphite with a cellular structure and the graphitic layer with graphite in a greater amount in the graphitic layer than in the subsurface layer because substantially identical materials treated in a substantially identical manner will have substantially identical properties and functions. See MPEP § 2112.01.
As Kaplan teaches a high temperature structure with carbide coating and carbon/graphite interlayer and Tour teaches formation of 3D graphene (i.e. graphite) from carbon sources, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the interlayer of Kaplan (i.e. initially applied as a carbon paste of carbon powder and liquid carrier) by laser irradiation as taught by Tour to form graphene (i.e. graphite) using multiple passes of the laser (i.e. Tour teaches multiple exposures are preferable; para. 0014) because Kaplan teaches that graphite has a coefficient of expansion closer to that of the coating than is carbon-carbon composite and the interlayer can minimize as much as possible the effect of the mismatch in the coefficients of thermal expansion between the coating and the substrate, and one would have had a reasonable expectation of success.
Claim 2: Kaplan teaches that the individual layers of hafnium or zirconium carbide and silicon carbide are from about 1-10 microns in thickness and the coating is from 5 to 30 mils in thickness (Col. 5, l. 64 to Col. 6, l. 9). This thickness overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Claim 3: Kaplan teaches a coating comprising a plurality of very thin alternating layers comprised of hafnium or zirconium carbide (i.e. hafnium carbide would have been obvious as a specifically named choice) and silicon carbide (i.e. the carbide coating is a ceramic coating) formed on a temperature resistant substrate (Col. 1, l. 4-11).
Claims 4 and 11: Kaplan teaches a coating comprising a plurality of very thin alternating layers comprised of hafnium or zirconium carbide (i.e. hafnium carbide would have been obvious as a specifically named choice) and silicon carbide (Col. 1, l. 4-11) and that the coating process is preferably continuous with no interruptions between the formation of the alternating carbide layers (Col. 6, l. 10-17), which is considered to teach formation of a mixed layer of hafnium carbide and silicon carbide as the composition is changed from one layer to the alternating layer.
Claim 5: Kaplan does not specifically teach the instantly claimed ratio, but teaches that the individual layers of hafnium or zirconium carbide (i.e. HfC is obvious) and silicon carbide (SiC) are from about 1-10 microns in thickness which does not need to be uniform in thickness (Col. 5, l. 64 to Col. 6, l. 9). Since the layers do not need to be the same thicknesses, the volume percent ratio of HfC to SiC overlaps the instantly claimed range (e.g. when SiC layers are toward the lower end of the range of thickness and the HfC layers are toward the upper end of the range of thickness). See MPEP § 2144.05.
Claims 12-13: Kaplan teaches a coating comprising a plurality of very thin alternating layers comprised of hafnium or zirconium carbide (i.e. hafnium carbide would have been obvious as a specifically named choice) and silicon carbide (Col. 1, l. 4-11). Since a plurality of alternating layers are present, the first couple layers correspond to the instantly claimed ceramic layer and a subsequent layer of HfC is considered to be a carbide coating on the ceramic coating. Since alternating layers may be hafnium carbide or zirconium carbide, it would have been obvious to one of ordinary skill in the art before the effective filing date for a subsequent layer to be ZrC (i.e. as the carbide coating) because this is considered an art recognized equivalent for the intended purpose, and one would have had a reasonable expectation of success.
Allowable Subject Matter
Claims 6-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
The closest prior art is the teachings of Kaplan in view of Tour as outlined above. However, the carbide (i.e. ceramic) coating is made by a CVD or sputtering (i.e. vapor methods) and therefore would not include a surfactant or particulate filler.
Regarding a slurry or other wet coating method, Wisneskie (US 5,534,293) teaches ceramic-coated carbon-based surfaces suitable for exposure to hot gases wherein the outer surface may include carbides of silicon and various metals, etc. (Col. 1, l. 19-55). Wisneskie teaches a slurry coating technique as an alternative to CVD and can be used to produce a protective coating of carbides on a graphite surface (Col. 2, l. 26-63). The slurry contained a mixture of Si, Hf, and Cr and was applied to a pyrolytic graphite surface and then formed into a coating that comprised of several layers containing various metal carbides and silicon carbide (Col. 3, l. 1-17). The carrier fluid is an organic lacquer which may contain nitrocellulose, thixotrope (MPA-60) (i.e. a surfactant), and acetone for thickening the consistency of the slurry, with the amount of thixotrope (i.e. surfactant) being about 4.8% (calculated from the amounts shown for the slurry composition in Col. 4, l. 46-67). However, to form HfC by reaction of elemental hafnium with carbon from the surface, the slurry coated surface is heated, and as a result other materials in the slurry become removed from the surface so that the composition of the surface layer is limited to materials formed from the elements hafnium and carbon (Col. 3, l. 41-64).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rousseau (US 5,284,685) teaches a carbon-carbon composite material for heat protection and having in sequence a silicon carbide layer, an intermediate coating that may be HfC, and an outer layer of oxide not containing silicon.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
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