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 § 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.
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.
Claims 1-4 and 6 are rejected under 35 U.S.C. 103 as being unpatentable over In et al. (US Pat. 11,312,637) in view of Kinniard (US Pat. 5,891,237) and Cahill et al. (US 2021/0347701).
Considering Claims 1 and 2: In et al. teaches a ceramic thermal spray coating (3:57-4:3) comprising a ceramic granule powder selected from the group consisting of Y2O3, YOF, YF3, Y4Al2O9, Y3Al5O12, and YAlO3 (4:4-17).
In et al. does not teach add the claimed organic compound. However, Kinniard teaches adding an ammonium salt (Example 1) of an acid that can be stearic acid (a C18 mono carboxylic acid) (5:5-29) to an metal oxide powder (3:33-47) in an amount of 0.5 to 2 weight percent of the metal oxide powder (5:30-50). In et al. and Kinniard are analogous art as they are concerned with the same field of special technical feature, namely forming free flowing metal oxide powders. It would have been obvious to a person of ordinary skill in the art to have added the ammonium stearate to the coating material of In et al., as in Kinniard, and the motivation to do so would have been, as Kinniard suggests, to produce free flowing powders (7:14-27) that is durable in handling and shipment (3:33-47).
In et al. is silent towards the angle of repose of the particles. However, Cahill et al. teaches a ceramic microparticle powder having an angle of repose of less than 40, preferably less than 25 degrees (¶0079). The angle of repose results from the particles having a substantially spherical shape and uniform size (Abstract). In et al. and Cahill et al. are analogous art as they are concerned with a similar technical difficulty, namely forming free flowing ceramic powders. It would have been obvious to a person of ordinary skill in the art to have formed a powder with the claimed angle of repose, by forming spherical free flowing particles using the technique of Kinniard, and the motivation to do so would have been, as Cahill et al. suggests, to form a free flowing particle that are excellent for real life applications (¶0079).
Considering Claims 3 and 4: In et al. teaches the granule powder as having aggregates of 5 to 50 microns preprepared from raw materials having a size of 50 to 900 nm (4:46-60).
Considering Claim 6: Kinniard teaches the same compound as the instant claims, namely ammonium stearate. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over In et al. (US Pat. 11,312,637) in view of Kinniard (US Pat. 5,891,237) and Cahill et al. (US 2021/0347701) as applied to claim 4 above, and further in view of Padmanabhan et al. (Materials Chemistry and Physics, 106, 2007, 416-421).
Considering Claim 5: In et al., Kinniard, and Cahill et al. collectively teach the coating material of claim 1.
In et al. does not teach the claimed particle size distribution. However, Padmanabhan et al. teaches that a narrow particle size distribution is desirable for plasma spray operations (Section 3.1). As such, a person of ordinary skill in the art would consider the particle size distribution to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the particle size distribution through routine experimentation, and the motivation to do so would have been, to maximize the coating efficiency of the coating process (Section 3.1).
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 1-4 and 6 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,312,637 in view of Kinniard (US Pat. 5891,237) and Cahill et al. (US 2021/0347701).
Considering Claims 1 and 2: Claim 1 of Patent ‘637 teaches a ceramic thermal spray coating comprising a ceramic granule powder selected from the group consisting of Y2O3, YOF, YF3, Y4Al2O9, Y3Al5O12, and YAlO3. Claim 1 of Patent ‘637 teaches the granule powder as having aggregates of 5 to 50 microns preprepared from raw materials having a size of 50 to 900 nm.
Patent ‘637 does not teach add the claimed organic compound. However, Kinniard teaches adding an ammonium salt (Example 1) of an acid that can be stearic acid (a C18 mono carboxylic acid) (5:5-29) to an metal oxide powder (3:33-47) in an amount of 0.5 to 2 weight percent of the metal oxide powder (5:30-50). Patent ‘637 and Kinniard are analogous art as they are concerned with the same field of special technical feature, namely forming free flowing metal oxide powders. It would have been obvious to a person of ordinary skill in the art to have added the ammonium stearate to the coating material of Patent ‘637, as in Kinniard, and the motivation to do so would have been, as Kinniard suggests, to produce free flowing powders (7:14-27) that is durable in handling and shipment (3:33-47).
Patent ‘637 is silent towards the angle of repose of the particles. However, Cahill et al. teaches a ceramic microparticle powder having an angle of repose of less than 40, preferably less than 25 degrees (¶0079). The angle of repose results from the particles having a substantially spherical shape and uniform size (Abstract). Patent ‘637 and Cahill et al. are analogous art as they are concerned with a similar technical difficulty, namely forming free flowing ceramic powders. It would have been obvious to a person of ordinary skill in the art to have formed a powder with the claimed angle of repose, by forming spherical free flowing particles using the technique of Kinniard, and the motivation to do so would have been, as Cahill et al. suggests, to form a free flowing particle that are excellent for real life applications (¶0079).
Considering Claim 6: Kinniard teaches the same compound as the instant claims, namely ammonium stearate. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. See MPEP § 2112.01.
Claim 5 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 11,312,637 in view of Persky et al. (US Pat. 8,470,458) as applied to claim 4 above, and further in view of Padmanabhan et al. (Materials Chemistry and Physics, 106, 2007, 416-421).
Considering Claim 5: Claim 1 of Patent ‘637, Kinniard, and Cahill et al. collectively teach the coating material of claim 1.
Claim 1 of Patent ‘637 does not teach the claimed particle size distribution. However, Padmanabhan et al. teaches that a narrow particle size distribution is desirable for plasma spray operations (Section 3.1). As such, a person of ordinary skill in the art would consider the particle size distribution to be a result effective variable. It would have been obvious to a person of ordinary skill in the art to have optimized the particle size distribution through routine experimentation, and the motivation to do so would have been, to maximize the coating efficiency of the coating process (Section 3.1).
Response to Arguments
Applicant's arguments filed July 6, 2016 have been fully considered but they are not persuasive, because:
A) The applicant’s argument that Kinniard does not teach the organic compound being retained in the structure is not persuasive. Kinniard teaches that the neutralized carboxylic acid reacts with the surface of the metal oxide to form a bound metal soap on the surface (6:32-67). While the non-reacted salt is removed by washing, the bound metal soap reads on the “organic compound modified on a surface” of the metal oxide, as the claim allows for modification of the neutralized carboxylic acid, such as the release of the cation and the reaction to form an ester group.
B) In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., the angle of repose is achieved by the organic compound and not the geometry of the particles) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As the claim only requires the claimed angle of repose, the fact that it is achieved by a different means in the prior art is not germane to the patentability of the claim.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIAM J HEINCER whose telephone number is (571)270-3297. The examiner can normally be reached M-F 7:30-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mark Eashoo can be reached at 571-272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LIAM J HEINCER/Primary Examiner, Art Unit 1767
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