DETAILED ACTION
Election
Applicant’s election with traverse of Group II, as well as the species of titanium, in the reply filed on May 21, 2026, is acknowledged. Claims 1-12 and 20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Applicant has narrowly traversed the species restriction between titanium and chromium, and the examiner has withdrawn the requirement.
Claim Objections
Claim 13 is objected to for grammatical discrepancies. The penultimate line reads, “at least one gas inlet pipe configured to [sic] gas for a nonreactive…” It appears that a critical verb is missing from this sentence, such as supply.
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.
Claim 15 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. This claim reads, “wherein the rack rotates around the target material.” As the examiner understands the invention, the turntable (90) rotates the rack (20) which bears the target material (30), whereby the “target material” is the outermost layer of the hardware set (80) ([0022]; Fig. 1). Thus, it would seem the rack rotates with the target material/hardware set rather than rotating “around the target material.” Correction is required. To promote compact prosecution, the examiner will accept the prior art disclosure of a rack which is actuated to rotate as satisfying the contested limitation.
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 13-19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Herklotz et al., US 4,798,663.
Claims 13-14: Herklotz discloses an apparatus for applying a finish, comprising:
A rack (9) configured to hold a workpiece in a chamber and to distribute the finish on the workpiece (Fig. 1);
A vacuum pump (2) to create a vacuum in the apparatus (3, 3-5);
An electric input (6) to increase a voltage of a target material (3, 41-50);
A heating element (15) to increase a temperature in the apparatus (3, 36-40);
Plural gas inlet pipes (3, 4) for supplying nonreactive and reactive coatings (3, 6-9).
Regarding the recitation of a “hardware set,” the examiner observes that the article worked upon by the apparatus does not constitute a basis for patentability, as it has been concluded expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining the patentability of the apparatus (Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969)). It can simply be observed that Herklotz’s rack is capable of bearing a “hardware set.”
Claim 15: The rack (9) is rotatable around central axis (10) and its own vertical axis (12) (3, 28-35).
Claim 16: The necessary effect of the voltage engendered by the electric input (6) is to ionize the workpiece’s target material (3, 10-25).
Claim 17: A necessary effect of ionizing the workpiece’s target material is to induce a reaction with the gas supplied to the chamber.
Claims 18-19: These limitations constitute recitations of intended use, whereby the prior art must merely demonstrate the structural capacity to reproduce the enumerated functions under the direction of an operator – it has been held that a recitation drawn to the intended manner of employing a claimed apparatus does not differentiate said apparatus from a prior art apparatus satisfying the claimed structural limitations (Ex parte Masham, 2 USPQ2d 1647 (1987)). The operator of Herklotz’s system can simply modulate the operating capacity of the pump from a first value to a second value.
Conclusion
The following prior art is made of record as being pertinent to Applicant’s disclosure, yet is not formally relied upon: Sawyers, US 6,543,631. Sawyers provides a rack (10) configured to hold a hardware set, a vacuum pump, an electric input to increase a voltage of a target material, and a gas inlet pipe (Fig. 1).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN K FORD whose telephone number is (571)270-1880. The examiner can normally be reached on 11-7:30 PM. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Parviz Hassanzadeh, can be reached at 571 272 1435. The fax phone number for the organization where this application or proceeding is assigned is 571 273 8300.
/N. K. F./
Examiner, Art Unit 1716
/KARLA A MOORE/ Primary Examiner, Art Unit 1716
Prosecution Insights