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 .
Response to Arguments
The amendment to claim 13 is sufficient to overcome the objection to the claim and so the objection to claim 13 has been withdrawn.
The amendments to claims 1 and 13 are sufficient to overcome the rejections under 35 USC 102 and so the rejection of claims 1, 8, and 13 under 35 USC 102 have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 17-19 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 17-19 recite “the coat layer is allowed to contact with fluid”. It is unclear what allows the coat to contact a fluid and the specification fails to provide further detail on how this is done. This suggest that Applicant did not have possession of this aspect of the claimed invention at the time of filing. The Examiner would like to note that amending the claim to recite that “the coat layer is configured to contact a fluid” would overcome the rejection.
Claims 17-19 recite “the forming the plurality of first grooves includes a riblet structure by which a resistance of the coat layer to the fluid is reducible”. The specification fails to provide support for specifically forming a riblet structure with the forming of the first grooves. This is be new matter.
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 17-19 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.
Claims 17-19 recite “the coat layer is allowed to contact with fluid”. It is unclear how the coat layer is allowed to contact a fluid. This renders the claim indefinite.
Allowable Subject Matter
Claims 1, 4, and 6-13 are allowed.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1:
Closest prior art: Kulkarni et al. (US 8,357,454)
Kulkarni discloses a processing method comprising: forming a plurality of second grooves, each of which has a second depth on a surface of a coat layer formed on a base member, each of which has a first depth that is smaller than the second depth on the surface of the coat layer at a pitch that is smaller than a pitch of the plurality of second grooves.
The closest prior art fails to disclose or suggest measuring the plurality of second grooves; and based on a measured result of the plurality of second grooves, forming a plurality of first grooves.
Claims 4 and 6-8 are allowed, because they depend upon claim 1.
Regarding claim 9:
Closest prior art: Kulkarni et al. (US 8,357,454)
Kulkarni discloses a processing method comprising: a plurality of second grooves that are formed on a surface of a coat layer on a base member, forming a plurality of first grooves, each of which has a first depth that is smaller than a second depth of the plurality of second groove grooves, on the surface of the coat layer at a pitch that is smaller than a pitch of the plurality of second grooves.
The closest prior art fails to disclose or suggest measuring a plurality of second grooves that are formed on a surface of a coat layer formed on a base member; and based on a measured result of the plurality of second grooves forming a plurality of first grooves.
Claims 10-13 depend upon claim 9 and so are allowable.
Regarding claim 14:
Closest prior art: Kulkarni et al. (US 8,357,454)
Kulkarni discloses a processing method comprising: forming a plurality of second grooves, each of which has a second depth on a surface of a coat layer formed on a base member; and forming a plurality of first grooves, each of which has a first depth that is smaller than the second depth on the surface of the coat layer at a pitch that is smaller than a pitch of the plurality of second grooves.
The closest prior art fails to disclose or suggest measuring a position of the plurality of second grooves that are formed on the surface of the coat layer formed on a base member; and based on a measured result of the plurality of second grooves forming a plurality of first grooves, each of which has a first depth that is smaller than the second depth on the surface of the coat layer at a pitch that is smaller than a pitch of the plurality of second grooves based on a measured result of the plurality of second grooves and wherein a position of the plurality of first grooves is determined based on a measured result of the position at which the plurality of second grooves are formed.
Claims 15-16 depend upon claim 14 and so are allowed.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE M CHRISTENSEN whose telephone number is (571)270-3275. The examiner can normally be reached M-F 9-5 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Courtney Heinle can be reached at 571-270-3508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DMC/Examiner, Art Unit 3745
/COURTNEY D HEINLE/Supervisory Patent Examiner, Art Unit 3745