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 1-11, in the reply filed on May 24, 2026 is acknowledged.
Claims 12-19 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected composition and method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 24, 2026.
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.
Claims 1-5 and 7-10 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (US 2015/0152540) in view of Hamaya et al. (US 2014/0057078).
Regarding claim 1, Sato discloses a plasma processing apparatus component with high corrosion resistance comprising a base material, an underlayer and a yttrium oxide film, see abstract and [0020]. The underlayer, which corresponds to the claimed lower layer, comprises yttrium oxide, has a thickness of 40 to 300 microns and a density of 85 to 95% [0039-0042]; see MPEP 2144.05 I regarding overlapping ranges. Note that a density of 95% corresponds to a porosity of 5%.
The reference fails to disclose the yttrium oxide coating as a yttrium fluoride coating.
Regarding claim 1, Hamaya discloses a rare earth element oxyfluoride sprayed article comprising a substrate with a sprayed coating [0014]. Additionally, the reference discloses the rare earth element as yttrium [0017]. The spray material can be prepared by mixing rare earth element oxide and rare earth element fluoride [0023]. The sprayed coating typically has a thickness of 50 to 500 microns [0027]; see MPEP 2144.05 I regarding overlapping ranges.
It would have been obvious to one of ordinary skill in the art at the time of the invention for the yttrium oxide coating of Sato to comprises the yttrium oxyfluoride of Hamaya in order to provide a higher corrosion resistance, see Hamaya [0009]
While Hamaya does not disclose the claimed porosity, given the similar composition and bulk density, it is expected the claimed and disclosed coatings with have a similar porosity, see above discussion, Applicant’s Specification Table I & Hamaya abstract; see also MPEP 2112.01 I & II.
Regarding claim 2, Hamaya discloses the coating contains yttrium fluoride and yttrium oxyfluoride, see abstract and [0018 & 0023]. The sprayed coating typically has a thickness of 50 to 500 microns and an oxygen content of 3 to 15% by weight [0014 and 0027]; see MPEP 2144.05 I.
While the reference does not specifically disclose the claimed hardness, given the similar composition and method of making the coating, it is expected that the claimed and disclosed coatings will have similar properties regarding hardness, see Applicant’s Specification Table I & Hamaya Table I; see also MPEP 2112.01 I & II.
Regarding claim 3, while the reference does not specifically disclose the claimed amount of cracking, it is expected the disclosed and claimed coatings will have a similar amount of cracking given the similar composition and method of making the coatings, see above discussion, Applicant’s Specification Table I & Hamaya Table I; see also MPEP 2112.01 I & II.
Regarding claim 4, while the reference does not disclose the claimed porosity, given the similar composition and bulk density, it is expected the claimed and disclosed coatings with have a similar porosity, see above discussion, Applicant’s Specification Table I & Hamaya abstract; see also MPEP 2112.01 I & II.
Regarding claim 5, the reference discloses the coating contains yttrium fluoride and yttrium oxyfluoride, see abstract and [0018 & 0023].
Regarding claim 7, the reference discloses the coating contains yttrium fluoride and yttrium oxyfluoride, see abstract and [0018 & 0023]. The sprayed coating typically has a thickness of 50 to 500 microns and an oxygen content of 3 to 15% by weight [0014 and 0027]; see MPEP 2144.05 I. Additionally, the reference discloses the sprayed coating has a carbon content of not more than 0.1% by weight [0014]; see MPEP 2144.05 I.
While the reference does not specifically disclose the claimed hardness, given the similar composition and method of making the coating, it is expected that the claimed and disclosed coatings will have similar properties regarding hardness, see Applicant’s Specification Table I & Hamaya Table I; see also MPEP 2112.01 I & II.
Regarding claim 8, while the reference does not specifically disclose the claimed amount of cracking, it is expected the disclosed and claimed coatings will have a similar amount of cracking given the similar composition and method of making the coatings, see above discussion, Applicant’s Specification Table I & Hamaya Table I; see also MPEP 2112.01 I & II.
Regarding claim 9, while the reference does not disclose the claimed porosity, given the similar composition and bulk density, it is expected the claimed and disclosed coatings with have a similar porosity, see above discussion, Applicant’s Specification Table I & Hamaya abstract; see also MPEP 2112.01 I & II.
Regarding claim 10, the reference discloses the coating contains yttrium fluoride and yttrium oxyfluoride, see abstract and [0018 & 0023].
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.
Claims 1-11 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-15 of U.S. Patent No. 12,152,307 in view of Sato et al. (US 2015/0152540). U.S. Patent 12,152,307 in view of Sato discloses the claimed corrosion resistant multilayer structure with the claimed composition and properties, see above discussion and claims 1-15 of U.S. Patent 12,152,307.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LAURA A AUER whose telephone number is (571)270-5669. The examiner can normally be reached Monday - Friday 9 am - 4 pm EST.
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/LAURA A AUER/Primary Examiner, Art Unit 1783
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