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
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.
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.
Claims 1, 3-9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Cahalen et al. (US 2017/0253008) (Cahalen).
In reference to claims 1, 7-9 and 11, Cahalen teaches an article ([0005]) (corresponding to an article). The article includes a substrate and a coating formed on the substrate ([0005]). The coating includes a metal layer comprising an alloy that includes at least one precious metal and at least one other metal ([0030]) (corresponding to a first layer comprising an alloy). The precious metal is selected from the group consisting of Pd, Pt, Ag, Au and combinations thereof and the other metal is selected from Ni, W, Mo, Co and Cu ([0030]).
Given that Cahalen discloses the alloy that overlaps the presently claimed alloy, including a precious metal selected from the group consisting of Pd, Pt, Ag, Au and combinations thereof and another metal selected from Ni, W, Mo, Co and Cu, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use a combination of Pt and Au or Pt, Au and Pd as the precious metal and Ni or W as the other metal, which is both disclosed by Cahalen and encompassed within the scope of the present claims.
Cahalen further teaches the metal layer has a nanocrystalline microstructure with a number-average size of crystalline grains less than 200 nm ([0031]) (corresponding to an average grain size of the alloy is less than or equal to 1000 nm; the alloy is nanocrystalline alloy).
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As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Cahalen further teaches the coating includes a first metallic layer 120 ([0020]) (corresponding to a second layer). FIG. 1, provided right, shows that first metallic layer 120 is adjacent to the metal layer comprising Pt, Au and W (i.e., third metallic layer 140).
In reference to claim 3, Cahalen teaches the limitations of claim 1, as discussed above. Cahalen further teaches the coating includes the first metallic layer 120 comprising nickel ([0020]) (corresponding to the second layer comprises a nickel (Ni)). FIG. 1, provided right, shows that first metallic layer 120 is adjacent to the metal layer comprising Pt, Au and W (i.e., third metallic layer 140) (corresponding to second layer adjacent to the first layer).
In reference to claim 4, Cahalen teaches the limitations of claim 3, as discussed above. Cahalen further teaches the coating includes a second metallic layer 130 formed on the first metallic layer 120 ([0023]) (corresponding to a third layer, adjacent the second layer). The second metallic layer 130 comprises a silver-based alloy ([0024]) (corresponding to third layer comprising a silver (Ag) alloy).
In reference to claim 5, Cahalen teaches the limitations of claim 4, as discussed above. Cahalen further teaches a fourth metallic layer 150 disposed on the second metallic layer 130 ([0034]) (corresponding to a fourth layer, adjacent the third layer). The fourth metallic layer 150 comprises an alloy of rhodium with one or more other metals (e.g., precious metals) ([0034]) (corresponding to a second alloy). The fourth metallic layer has a number-average size of crystalline grains less than 20 nm ([0035]) (corresponding to an average grain size of the second alloy is less than or equal to 1000 nm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Cahalen further teaches precious metals include Ru, Rh, Os, Ir, Pd, Pt, Ag, and/or Au ([0030]). Given that Cahalen discloses the fourth metallic layer comprising the alloy that overlaps the presently claimed second alloy, including a rhodium alloy comprising one or more other precious metal wherein the precious metals include Ru, Os, Ir, Pd, Pt, Ag, and/or Au, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use Pt and Pd, Ag or Au as the one or more other metals, which is both disclosed by Cahalen and encompassed within the scope of the present claims.
In reference to claim 6,Cahalen teaches the limitations of claim 5, as discussed above. Cahalen further teaches an intervening strike layer comprising Pd is formed between the first metallic layer and the second metallic layer ([0023]) (corresponding to a layer of gold and/or palladium between any one of the first layer, the second layer, the third layer, and/or the fourth layer).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Cahalen as applied to claim 7 above, and further in view of Bowen et al. (US 2020/0095653) (Bowen).
In reference to claim 10, Cahalen teaches the limitations of claim 7, as discussed above. Cahalen teaches the third metallic layer (i.e., first layer) is the alloy including one or more precious metals selected from the group consisting of Pt, Pd, Au and combinations thereof and at least one other metal selected from Ni, W and Mo ([0030]).
Cahalen does not explicitly disclose the Pt is present in the alloy in the largest wt% relative to the second element and/or third element, as presently claimed.
Bowen teaches a platinum-nickel-based ternary or higher alloy used in electronic device components (Abstract; [0001]; [0044]). The alloy includes platinum at about 65 to about 80 wt.%, nickel at about 18 to about 27 wt.% of the alloy and alloying elements totaling about 2 to about 8 wt.% of the alloy, wherein the alloying elements are one or more of Pd, Mo, W or any combination thereof ([0017]) (corresponding to the Pt is present in the alloy in the largest wt% relative to the second element and/or third element). The compositions provides an alloy with increased strength and a lower level of reactivity ([0097]).
In light of the motivation of Bowen, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the alloy of the third metallic layer comprise platinum at about 65 to about 80 wt.%, nickel at about 18 to about 27 wt.% of the alloy and alloying elements totaling about 2 to about 8 wt.% of the alloy, wherein the alloying elements are one or more of Pd, Mo, W or any combination thereof, in order to provide the third metallic layer with increased strength and low reactivity, and thereby arriving at the presently claimed invention.
Response to Arguments
In response to amended claim 7, the previous Claim Objections of record are withdrawn.
In response to amended claim 5, the previous 35 U.S.C. 112(b) rejections of record are withdrawn.
Applicant primarily argues:
“Applicant continues to respectfully disagree with this rejection. Independent claim 1 recites an alloy that comprises platinum and a second element from a short list of elements that includes Mo, W, Pd, Au, Ag, Sb, and Bi. The average grain size of the alloy is less than or equal to 1000 nm. The teaching in Cahalen is too broad to make obvious the more specific composition and grain size recited in claim 1. In other words, Cahalen fails to include a teaching with sufficient specificity to render obvious claim 1.”
Remarks, p. 4-5
The examiner respectfully traverses as follows:
Sufficient specificity is not a requirement for showing obviousness, rather MPEP 2131.03 requires sufficient specificity when the prior art is intended to anticipate the claimed range.
The examiner recognizes that Cahalen does not disclose a specific example to anticipate the claimed invention. However, as discussed in the rejection above, Cahalen discloses an article including a coating having at least two layers, one of the layers including at least one precious metal and at least one other metal ([0005]; [0030]). The precious metal is selected from the group consisting of Pd, Pt, Ag, Au and combinations thereof and the other metal is selected from a group consisting of Ni, W, Mo, Co and Cu ([0030]).
While the alloy of the metal layer including at least one precious metal includes alloying elements selected from a list, the fact remains that it would have been obvious to choose any of the elements listed above, including Pt and Mo, W, Pd, Au or Ag, absent evidence to the contrary. Further, the mere fact that a reference teaches alternatives does not by itself render any particular alternative any less obvious. See Merck, 874 F.2d at 807; Susi, 440 F.2d at 445; Kubin, 561 F.3d at 1359.
The average grain size of the metal layer comprising one or more precious metals and at least one other metal is less than 200 nm ([0031]). The range disclosed by Cahalen is fully within the presently claimed range. Therefore, absent evidence to the contrary, one of ordinary skill in the art would be able to select an average grain size within the presently claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Therefore, Applicant's arguments filed 09/26/2025 have been fully considered but they are not persuasive.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at (571) 272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARY I OMORI/Primary Examiner, Art Unit 1784