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 .
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.
Claims 1-5, 15-17 and 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Dudon et al. (US 2016/0369407).
Claims 1-5, 15-17 and 20: Dudon teaches a process of forming a film of metal particles on a surface (Abst.), comprising the steps of: depositing an adhesive layer on a substrate by spraying the adhesive material onto the substrate (Abst.; ¶ 0063); and spraying metal particles, such as NiAl, onto the adhesive layer to form a metal particle layer (¶¶ 0023-0024, 0032-0033) having a thickness of 0.2mm (i.e. 200 µm) (¶ 0107).
While Dudon does not discuss whether this particle layer minimizes x-ray scattering artifacts, Dudon teaches using the same materials to form the same layer as that which applicant discloses to have the claimed property of minimizing x-ray scattering artifacts (see, e.g., ¶ 0036 of the specification which discusses metal particles that are a combination of aluminum and nickel). Therefore, this feature is considered inherent in the process of Dudon.
Claims 1, 6-8, 11, 13 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rogers et al. (US 2012/0321785).
Claims 1, 6-8, 11, 13, 15 and 16: Rogers teaches a process of forming a layer of carbon nanotubes (i.e. claimed high electron density material) (Abst.) comprising the steps of: forming an adhesive layer on a substrate (¶ 0045); and spraying a slurry of carbon nanotubes (i.e. claimed nanofluid, claimed suspension and claimed nanomaterial) onto the adhesive to form a layer of carbon nanotubes (¶¶ 0025, 0045).
While Rogers does not discuss whether this particle layer minimizes x-ray scattering artifacts, Rogers teaches using the same materials to form the same layer as that which applicant discloses to have the claimed property of minimizing x-ray scattering artifacts. Therefore, this feature is considered inherent in the process of Rogers.
Claims 1 and 9 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Beguiristain et al. (US 2003/0089856).
Claims 1 and 9: Beguiristain teaches a process of forming a layer of a mineral oil on a substrate to improve the smoothness of the surface (¶ 0042). Though Beguiristain does not expressly teach that this minimizes scattering, it is considered an inherent feature both because Beguiristain teaches the same type of layer using the same material as that which applicant discloses to have this property and because improving the smoothness of a surface will necessarily reduce scattering of radiation sources, like x-rays.
Claims 1 and 11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Imamura et al. (US 5,158,854).
Claims 1 and 11: Imamura teaches a process of forming a layer of siloxane (i.e. claimed silicone polymer) on a substrate (Abst.; 1:13-27). Though Imamura does not expressly teach that this minimizes scattering, it is considered an inherent feature because Imamura teaches the same type of layer using the same material as that which applicant discloses to have this property.
Claims 1 and 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bethune (US2005/0197272).
Claims 1 and 14: Bethune teaches a process of forming a layer of kaolin having a thickness of 20-30µm on a substrate (¶ 0032). Though Bethune does not expressly teach that this minimizes scattering, it is considered an inherent feature because Bethune teaches the same type of layer using the same material as that which applicant discloses to have this property (see, e.g., ¶¶ 0039, 0041 of the specification).
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.
Claims 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Dudon in light of Pethe et al. (US 2007/0269935).
Claims 18 and 19: Dudon fails to teach that the adhesive is dissolvable. However, Pethe teaches a process of applying a material to a substrate using an adhesive to adhere the material (Abst.) and explains that the adhesive is desirably dissolvable in a solvent in order to allow the removal of deposited material in areas of the substrate where deposited material is not desired (¶ 0038). Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have selected a dissolvable adhesive in order to have allowed removal of NiAl in portions of the substrate where a coating was not desired with the predictable expectation of success.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Beguiristain in light of Goia et al. (US 2006/0207385).
Claim 10: Beguiristain teaches that the mineral oil smooths the surface of the substrate, but fails to teach that vegetable oil can be used. Goia teaches that either vegetable oil or mineral oil can be used to provide a smooth surface on a substrate (¶ 0020). The simple substitution of one known element for another to obtain predictable results is prima facie obvious. MPEP § 2143. Thus, it would have been obvious to one of ordinary skill at the time of filing to have selected vegetable oil in place of mineral oil with the predictable expectation of success.
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 1-7 and 15-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of U.S. Patent No. 11,183,314. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘314 Patent claims the same subject matter as the instant claims.
Claims 1-7 and 15-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-12 of U.S. Patent No. 11,657,924. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘924 Patent claims the same subject matter as the instant claims.
Claims 1, 9-11, 15 and 20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 12,176,123. Although the claims at issue are not identical, they are not patentably distinct from each other because the ‘123 Patent claims the same subject matter as the instant claims.
Allowable Subject Matter
Claim 12 is 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.
None of the prior art on record, taken individually or in combination, fairly teaches or suggests an x-ray scatter mitigation material which comprises a fluid silicone polymer which includes one of the claimed metals.
US5,158,854 is also cited for teaching a fluid silicone polymer which would inherently mitigation x-ray scattering, but fails to teach that that polymer includes one of the claimed metals.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Robert A Vetere whose telephone number is (571)270-1864. The examiner can normally be reached M-F 7:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Cleveland can be reached at (571) 270-1034. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT A VETERE/ Primary Examiner, Art Unit 1712
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