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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 2 and 5 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 2 recites wherein elemental boron may be the boron compound. Elemental boron is an element (i.e. is not a compound) and therefore it is unclear if the boron compound is required to be a compound that includes boron or merely requires boron to be present.
Claim 5 recites wherein the oxygen reactant compound comprises silicon dioxide. However, silicon dioxide is chemically stable because silicon and oxygen are present in stoichiometric amounts. In the interest of advancing prosecution, the disputed limitation will refer to a silicon compound that forms silica (i.e. consistent with instant claim 4) because the instant specification does not provide support for a substoichiometric oxide of silicon.
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.
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.
Claims 1-5 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Holzl et al. (US 5,286,565).
Claim 1: Holzl teaches a carbon body (i.e. a substrate) to which oxidation-resistant coatings are applied (i.e. an oxidation protection system; i.e. being a coating is considered to be disposed on an outer surface of the substrate) (Col. 3, l. 60 to Col. 4, l. 2). The coated carbon body has an outer refractory coating and an intermediate glass forming coating (Col. 3, l. 9-19). A glass forming intermediate coating is deposited on the etch surface of the carbon body (i.e. is disposed over the outer surface) and may contain boron oxide, boron carbide, borides of zirconium (i.e. zirconium boride), etc. (i.e. these are a boron compound) and comprises a primary glass forming species (i.e. a first glass compound) (Col. 4, l. 35-58). The outer refractory coating (i.e. considered to be disposed on the boron layer since the refractory coating is an outer coating) may comprise carbides, borides, or nitrides of silicon (i.e. comprising a silicon compound), zirconium, tantalum, hafnium, niobium, titanium, aluminum boride, or nitride or mixtures thereof, and may also comprise silicon oxynitride (Col. 6, l. 41-45), wherein the silicon may be in excess of stoichiometry (Col. 3, l. 1-8), and the amount of silicon in excess of the stoichiometric amount reacts with any oxygen to form a glass silicon oxide (i.e. a second glass compound) (Col. 2, l. 17-22).
Claim 2: Holzl teaches the intermediate coating (i.e. the boron layer) may contain boron (i.e. elemental boron), boron oxide, boron carbide, borides of zirconium (i.e. zirconium boride), etc. (i.e. these are a boron compound) (Col. 4, l. 35-58). The outer refractory coating (i.e. the silicon layer) may comprise carbides, borides, or nitrides of silicon (i.e. a silicon compound of silicon carbide), etc. (Col. 6, l. 41-45).
Claim 3: Holzl teaches that boron carbide reacts with oxygen to form glass-like boron oxide (Col. , l. 41-52) (i.e. boron carbide in the boron layer is an oxygen reactant compound). Silicon in excess of the stoichiometric amount reacts with any oxygen to form a glassy silicon oxide (Col. 2, l. 3-30) (i.e. silicon in the silicon layer is an oxygen reactant compound).
Claim 4: Holzl teaches that silicon in excess of the stoichiometric amount reacts with any oxygen to form a glassy silicon oxide (i.e. silica) (Col. 2, l. 3-30) (i.e. silicon in the silicon layer is an oxygen reactant compound and is a silica forming component).
Claim 5: Holzl teaches that the intermediate coating (i.e. the boron layer) may contain boron carbide, etc. (i.e. a boron compound) (Col. 4, l. 35-58). The outer refractory coating (i.e. the silicon layer) may comprise carbides, borides, or nitrides of silicon (i.e. a silicon compound of silicon carbide), etc. (Col. 6, l. 41-45). Silicon in excess of the stoichiometric amount reacts with any oxygen to form a glassy silicon oxide (i.e. silica) (Col. 2, l. 3-30) (i.e. silicon in the silicon layer is an oxygen reactant compound and is a silica forming component; see indefiniteness outlined above).
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 6 is rejected under 35 U.S.C. 103 as being unpatentable over Holzl et al. (US 5,286,565) as applied to claim 3 above, and further in view of Bentson et al. (US 5,298,311, previously cited).
Claim 6: The teachings of Holzl regarding claim 3 are outlined above. Holzl teaches a carbon body (i.e. a substrate) to which oxidation-resistant coatings are applied (i.e. an oxidation protection system; i.e. being a coating is considered to be disposed on an outer surface of the substrate) (Col. 3, l. 60 to Col. 4, l. 2). The coated carbon body has an outer refractory coating and an intermediate glass forming coating (Col. 3, l. 9-19). The intermediate coating is provided on an etched carbon body (Col. 4, l. 35-45), wherein the etching of the carbon body with gaseous boron oxide forms boron carbide and provides the beneficial results of acting as a reservoir for the intermediate coating thereby increasing the volume of the material available for reaction with oxygen (Col. 3, l. 41-52). However, Holzl does not disclose the instantly claimed pretreatment layer.
In a related field of endeavor, Bentson teaches carbon/carbon structural composites treated to resist oxidation in high temperature oxidizing environments (Col. 1, l. 5-14). Bentson teaches that borate glasses for protection of carbon/carbon composites have a drawback of B2O3 glasses being degraded by hydrolysis and leaching (Col. 2, l. 28-34). Bentson teaches that the carbon/carbon substrate matrix and paint sealant initially each include boron or a boron oxide precursor and other refractory oxides or refractory oxide precursors so that, in an oxidizing atmosphere, boron and refractory oxide precursors scavenge oxygen to form oxides and together form a glass, wherein these oxides expand to fill the pores within the composite and also to completely cover its inner structural surfaces (Col. 3, l. 45-59). Bentson teaches an inner sealant layer having boron and other metals or metalloids in elemental form and/or as an oxide dispersed throughout a carbonaceous binder so that the oxidizing environment forms oxides within the pores of the inner sealant layer (Col. 4, l. 10-29). The metal or metalloid oxides may be provided in the form of SiO2, etc. (Col. 5, l. 57-60). Bentson teaches an outer sealant layer containing boron, silicon, etc. in a carbonaceous binder (Col. 4, l. 30-59).
As Holzl and Bentson both teach a carbon body (i.e. a carbon/carbon composite is a carbon body) having an oxidation protection multilayer coating, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the oxidation protection system of Holzl to include an inner sealant layer (i.e. a pretreatment layer) with an outer sealant layer (i.e. as a boron layer) as taught by Bentson because the boron and refractory oxide precursors will scavenge oxygen and together form a glass that expand to fill the pores within the composite and completely cover its inner structural surfaces, and one would have had a reasonable expectation of success. In other words, the modification provides where the intermediate glass forming layer of Holzl is substituted for the inner sealant layer and outer sealant layer of Bentson, and would still include the outer refractory coating of Holzl.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Holzl et al. (US 5,286,565) as applied to claim 4 above, and further in view of Walker et al. (US 7,501,171, previously cited).
Claim 7: The teachings of Holzl regarding claim 4 are outlined above. Holzl teaches that silicon in excess of the stoichiometric amount reacts with any oxygen to form a glassy silicon oxide (i.e. silica) (Col. 2, l. 3-30) (i.e. silicon in the silicon layer is an oxygen reactant compound and is a silica forming component). However, Holzl does not teach an additional sealing layer over the silicon layer.
In a related field of endeavor, Walker teaches a C-C composite component that is coated with an anti-oxidant system (i.e. an oxidation protection system disposed on a substrate; i.e. being a coating is considered where the coating is disposed on an outer surface of the substrate) (Col. 3, l. 7-20). The component is covered by a protective undercoating of phosphorus-containing glass and the undercoating is covered by a protective overcoating (Col. 3, l. 7-20). The undercoating layer is formed from a phosphoric acid-based penetrant salt solution that can contain B2O3 (i.e. a boron compound) and various phosphates (Col. 3, l. 60 to Col. 4, l. 14). The overcoating contains a silicate binder and particulate silicon carbide (i.e. a silicon layer comprising a silicon compound) (Col. 4, l. 16-57). Walker teaches that the overcoat may be coated with a protective coating of phosphorus-containing glass (Col. 5, l. 7-27), which is also known in the art to be applied as a retardant solution to a silicon carbide-coated C-C composite.
As Holzl and Walker both teach a system for protecting a carbon body (i.e. a C-C composite component is a carbon body) from oxidation using layers of glass including a glassy layer that includes boron, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the oxidation-resistant coating of Holzl to include an additional protective coating of phosphorus-containing glass on a layer containing silicon carbide (i.e. on the silicon layer of Holzl) as taught by Walker (i.e. as a simple combination of prior art elements according to known methods to yield predictable results; see MPEP 2143-I-A), and one would have had a reasonable 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.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,319,622. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘622 patent both recite an oxidation protection system disposed on an outer surface of a substrate, the oxidation protection system, comprising; a boron layer (a boron-glass layer) disposed over the outer surface, the boron layer comprising a boron compound and a first glass compound; and a silicon layer (a silicon-glass layer) disposed on the boron layer, the silicon layer comprising a silicon compound and a second glass compound.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 12,344,564. Although the claims at issue are not identical, they are not patentably distinct from each other because they contain the following overlapping subject matter:
Instant claim 1 and claim 1 of the ‘564 patent both recite an oxidation protection system disposed on an outer surface of a substrate, the oxidation protection system, comprising; a boron layer (a boron-glass layer) disposed over the outer surface, the boron layer comprising a boron compound and a first glass compound; and a silicon layer (a silicon-glass layer) disposed on the boron layer, the silicon layer comprising a silicon compound and a second glass compound.
Conclusion
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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