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 1-12 in the reply filed on 4/24/2026 is acknowledged.
Claims 13-26 are withdrawn.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 contains the trademark/trade name Durazane 1500 and Durazane 1800. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe an organopolysilazane and, accordingly, the identification/description is indefinite. The trademark holder can change the formulation of Durazane 1500 and Durazane 1800 at their discretion which would change the scope of the claim, and thus make the claim scope indefinite.
The examiner notes that the dispersant described in claim 1 is referred to as Disperbyk-2070 in the specification.
Claim 10 requires the solution to be sprayed in a “humid” environment. However, the term “humid” is a relative term of degree. It is not clear what atmosphere would be considered “humid”.
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.
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, 7, 9, 11, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHOI et al. “A high compatibility SiOCN coating on stainless steel” (Feb. 2023) in view of YU et al. (US 5,208,192).
Regarding claims 1, 7, and 12,
CHOI teaches a polymer derived ceramic from a perhydropolysilazane on steel which is especially useful for (steel) nuclear waste storage canisters abstract. The reference more generally notes that polymer derived ceramics can form other ceramics such as SiC and SiCN and can be applied to steel Introduction. The formation of ceramic from the polysilazane is applied to a steel substrate (storage container) and pyrolyzed at 800°C Experimental. The polymer derived ceramic is provided in a solution of dibutyl ether but does not teach including a dispersant.
However, YU teaches that when making a preceramic composition the polysilazane mixture can be mixed with a solvent with polyisobutenyl succinimide or other dispersant column 2 lines 57-65. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to include a dispersant in the polysilazane composition to improve the dispersion of the composition.
Regarding claim 9,
After coating the composition, YU teaches drying the solution/slurry before pyrolysis columns 3-4. The drying and pyrolyzing are both post heating that occur at different temperatures.
Regarding claim 11,
CHOI teaches spin coating and YU teaches dip coating experimental parts, respectively. Both processes are considered “other physical deposition” processes.
Claim(s) 2-5 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHOI et al. “A high compatibility SiOCN coating on stainless steel” (Feb. 2023) in view of YU et al. (US 5,208,192) further in view of GUNTHNER et al. “High performance environmental barrier coatings, Part I: Passive filler loaded SiCN system for steel” (June 2011).
Regarding claims 2-5,
CHOI teaches a polymer derived ceramic from a perhydropolysilazane on steel but does not expressly teach including fillers in the composition. However, GUNTHNER teaches a polysilazane preceramic composition that further includes passive fillers such as ZrO2 Experimental. The passive fillers reduce shrinkage and prevents the formation of defects, cracks and delamination Introduction. At the time of filing the invention it would have been prima facie obvious to add a passive filler of ZrO2 to the preceramic composition of CHOI to prevent the formation of cracks in the protective layer.
Claim(s) 4 and 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHOI et al. “A high compatibility SiOCN coating on stainless steel” (Feb. 2023) in view of YU et al. (US 5,208,192) further in view of TORREY et al. “Processing of Polymer-Derived Ceramic Composite Coatings on Steel” (2007).
Regarding claims 4 and 6,
CHOI teaches a polymer derived ceramic from a perhydropolysilazane on steel but does not expressly teach including the claimed fillers in the composition. However, TORREY teaches a polysilazane preceramic composition that further includes reactive (active) fillers such as TiSi2 Introduction and Experimental. The active fillers act as expansion agents, similar to the passive fillers above reduce shrinkage Experimental and conclusion. At the time of filing the invention it would have been prima facie obvious to add a active filler of TiSi2 to the preceramic composition of CHOI to prevent shrinkage during conversion of the polymer to ceramic.
Claim(s) 8 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over CHOI et al. “A high compatibility SiOCN coating on stainless steel” (Feb. 2023) in view of YU et al. (US 5,208,192) further in view of WINTERS (US 2022/0267617).
Regarding claim 8,
CHOI teaches a polymer derived ceramic from a perhydropolysilazane on steel but does not teach using Durazane 1500 or Durazane1800. However, WINTERS teaches a similar coating for steel sheets in which a polysilazane is converted to ceramic abstract. WINTERS further teaches using Durazane 1800 because it has good adhesion, hardness and barrier properties [0036]. At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use Durazane 1800 as a simple substitution of known polysilazanes used as preceramic polymers on steel and has the benefit of good adhesion, hardness and barrier properties.
Regarding claim 10 and 11,
CHOI teaches spin coating and YU teaches dip coating experimental parts, respectively, but the references do not teach spray coating in a humid atmosphere. However, WINTERS teaches when applying the preceramic polysilazane to a steel substrate, spray coating and dip coating processes can be used [0072]. The spray coating is not limited in any way and is interpreted to include spraying in room/atmospheric temperature and humidity (humid atmosphere). At the time of filing the invention it would have been prima facie obvious to one of ordinary skill in the art to use a spray coating process instead of a spin coating process as a simple substititon of known equivalent processes for applying preceramic polysilazane to steel.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AUSTIN MURATA whose telephone number is (571)270-5596. The examiner can normally be reached M-F 8:30-5.
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/AUSTIN MURATA/Primary Examiner, Art Unit 1712
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