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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 10/22/2025 has been entered.
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.
Claim1, 3, 5-6, 8, and 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.
Amended claim 1 recites a limitation “said cation lattice is formed by the elements Al, Ta, Si, Cr, and Ti, wherein said elements are present in a content ranging 10 at.-% to 40 at.-%”. There is no support in the Specification for that these five elements (Al, Ta, Si, Cr, and Ti) are in the content range of 10-40 at.% for the following reasoning:
Specification p. 4 states “The term multi-principal element alloy is used for indicating that all alloy elements are present in a content range between 10 at.% and 40.at%, so that it cannot be considered that one of the elements is present in a dominant quantity” (emphasis added); and
Specification p. 4 also states “the PVD coating comprises or consists of a multi-principal element alloy comprising TMN, AIN and Si3N4., where TM is one or more transition metals and thus TMN is a nitride of TM, AIN is aluminum nitride and Si3N4 is silicon nitride”.
Thus according to the Specification, the “multi-principal element alloy” having the content range of 10-40 at.% would also appear to necessarily include elements of the anion lattice (e.g. nitrogen), which are not presently recited for the content range.
Claims 3, 5-6, 8, and 17-19 are also rejected as depending on claim 1.
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 1, 3, 5-6, 8, and 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.
Amended claim 1 recites the limitation "the elements". There is insufficient antecedent basis for this limitation in the claim since it is unclear as to whether “the elements” is intended to refer back to the “five or more elements” or distinct ‘elements’ thereof. Claims 3, 5-6, 8, and 17-19 are also rejected as depending on claim 1.
Amended claim 1 recites “said elements are present in a content ranging 10 at.-% to 40 at.-%” (emphasis added), rendering the claim unclear as to the significance, if any, of the emphasized portions.
Claim 18 is indefinite as depending from now canceled claim 4, and has not been further examined on the merits.
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.
Claims 1, 3,5-6, 8, 17, 19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al (i.e. REF1, US 8,025,956) in view of Yamamoto (i.e. REF2, US 7,521,131).
With respect to claims 1, 3, 17, REF1 discloses a method for producing a “hard film” (i.e. claimed “coating”) excellent in wear and oxidation resistance via at least one PVD coating layer (Abstract; col. 4, lines 48-60), wherein the method comprises from Example 1: evaporating target materials of at least five elements of Al, Si, Cr, and M (wherein M is Ti and/or Zr, Hf, V, Nb, Ta, Mo, and W at col. 2, lines 60-63) from at least one target [6a] via “cathode discharge arc ion plating” (AIP, e.g. claimed “PVD technique”) in a “vacuum chamber” (i.e. claimed “coating chamber”) [1] that comprises oxygen and nitrogen as reactive gases to form the coating (fig. 1; col. 1, lines 57-67; col. 2, lines 32-35; col. 5, lines 1-9; col. 6, lines 11-32), wherein the coating is:
(M)aCrbAlcSidBeYfZ, M being Ti and Ta at col. 2, lines 60-63, and Z being NO and/or CNO, wherein a+b+c+d+e+f=1, and wherein 0<a≤0.3; 0.05≤b≤0.4; 0.4≤c≤0.8; 0≤d≤0.2; 0≤e≤0.2; and 0.01≤f0.1, (a, b, c, d, e and f show atomic ratios of M, Cr, Al, Si, B and Y respectively) (col. 1, lines 57-67; col. 2, lines 51-63);
B is not present since e equals zero, resulting in the coating being (M)30Cr5-40Al40Si0-20Y1-10;
Table 2, Samples 50-53 teach that when two elements comprise M, atomic amounts of the two elements are split evenly, meaning the coating (M)30Cr5-40Al40Si0-20Y1-10 is now Ti15Ta15Cr5-40Al40Si0-20Y1-10;
Since Cr is 5-40 at%, Si is 0-20 at%, and Y is 1-10%, when Si is 10 at% and Y is 1 at%, Cr is 19 at%, resulting in the coating being Ti15Ta15Cr19Al40Si10Y1.
Thus the coating of Ti15Ta15Cr19Al40Si10Y1 reads on the claimed “said cation lattice [of the coating] is formed by the elements Al, Ta, Si, Cr, and Ti, wherein said elements are present in a content ranging 10 at.-% to 40 at.-%” of claim 1.
However REF1 is limited in that while a specific substrate temperature of 550oC is taught for “bodies” (i.e. substrates) (Example 1, lines 18-32), a substrate temperature range is not specifically suggested.
REF2 teaches a method for producing a “hard coating” having superior wear and oxidation resistance via at least on PVD coating layer (Abstract), similar to the method of REF1. Also similar to REF1, REF2 teaches the method comprises evaporating target materials via AIP from at least one target of at least five elements of Cr, Al, Si, B, and Ti in a vacuum chamber that comprises nitrogen as reactive gas (col. 10, lines 40-62; col. 15, lines 10-30). REF2 further teaches a substrate temperature range of “base material” (i.e. substrate) from 300-800oC (which overlaps with the 550oC of REF1) to reduce residual stress between the hard coating and substrate (col. 11, lines 7-23), with Examples 1 and 4-5 each teaching a specific substrate temperature of about 500oC with Example 5 teaching the at least one target of the Cr, Al, Si, B, and Ti (col. 20, lines 29-34; col. 26, lines 4-64; col. 28, lines 35-40).
It would have been obvious to one of ordinary skill in the art to incorporate the substrate temperature range of 300-800oC of REF2 for the substrate temperature of REF1 to gain the advantage of reducing residual stress
In summary, since the combination of references REF1 and REF2 teaches evaporating the at least one target of Cr, Al, Si, Ti, and Ta (in addition to Y) using the AIP with the reactive gases of oxygen and nitrogen to form the at least one PVD coating layer having Al, Ta, Si, Cr, and Ti each at 10-40 at% at the substrate temperature of 300oC, a prima facie case of either anticipation or obviousness has been established that the combination of references also teaches the resulting at least one PVD coating layer being “a multi-anion HEA-oxynitride structure which comprises a cation lattice formed of five or more elements and an anion lattice formed of two or more elements, whereas two of said two or more elements present in said anion lattice are oxygen and nitrogen”, wherein the “cation lattice formed of five or more elements” is the Cr, Al, Si, Ti, and Ta (in addition to Y), “said cation lattice [of the coating] is formed by the elements Al, Ta, Si, Cr, and Ti, wherein said elements are present in a content ranging 10 at.-% to 40 at.-%”, and the “anion lattice are oxygen and nitrogen” is the oxygen and nitrogen from the reactive gases (MPEP 2112.01, I).
With respect to claim 5, the combination of references REF1 and REF2 has REF1 teaching to apply a negative bias voltage to the substrates of 20-100 V for the coating (Example 1, lines 29-32), and REF2 teaching to apply a negative bias to the substrate of 30-200 V, and specifically 30-50 V (col. 10, lines 64-67; col. 11, lines 1-6; col. 20, lines 52-55).
With respect to claims 6 and 19, the combination of references REF1 and REF2 has REF1 teaching in fig. 1 to have the at least one target [6a] be plural targets [6a] of the target materials that simultaneously deposit onto the substrate (Example 3, col. 11, lines 14-24), and REF2 teaching in figs. 3-4 evaporating four targets of the target materials simultaneously to deposit onto the substrate (col. 6, lines 48-51, Examples 1-8).
With respect to claim 8, REF2 teaches that the substrate temperature is “preferable” at 300oC (col. 11, lines 8-16), with it being held that: differences in temperature (e.g. 300oC and claimed “ranges between 200 and 250oC”) will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical since it is not inventive to discover the optimum or workable ranges by routine experimentation, especially in view of Applicant’s Specification at p. 7, lines 5-7 stating “Preferably, the substrate temperature during the production of the coating structure is between 100oC and 400oC, in some cases more preferably between 150oC and 300oC, in particular between 200oC and 250oC” (MPEP 2144.05, II, A).
With respect to claim 21, REF1 and REF2 each teach similar methods of depositing hard coatings of similar elements; REF2 is silent as to the hard coating comprising yttrium; thus REF2 suggests not including yttrium in the hard coating.
Response to Arguments
Applicant’s Remarks on p. 5-8 filed 10/22/2025 are addressed below.
112 Rejections
Claim 21 has been canceled; the previous rejection is moot.
103 Rejections
On p. 6-7, Applicant argues that REF1 (Yamamoto, US 8,025,956) does not teach the limitation of “said cation lattice is formed by the elements Al, Ta, Si, Cr, and Ti, wherein said elements are present in a content ranging 10 at.-% to 40 at.-%” (emphasis added) as recited by amended claim 1.
The Examiner respectfully disagrees for the new reasoning provided above for how REF1 does teach Al, Ta, Si, Cr, and Ti being present each at 10-40 at% in the cation lattice, with Y also present; claim 1 does not specifically exclude Y (or any other element) nor limit the cation lattice to only the five specifically recited elements (Al, Ta, Si, Cr, and Ti )as argued by Applicant on p. 7 since claim 1 recites “a cation lattice formed of five or more elements” (emphasis added).Thus REF1 teaches the cation lattice is formed from more than five elements as recited by claim 1, wherein elements Al, Ta, Si, Cr, and Ti are present at 10-40 at% as also recited by claim 1.
On p. 6-7, Applicant also argues that REF2 (Yamamoto, US 7,521,131) does not teach the limitation of “a substrate temperature in said PVD technique ranges 150-300oC” (emphasis added) as recited by amended claim 1.
The Examiner respectfully disagrees since REF2 teaches a substrate temperature range of “base material” (i.e. substrate) from 300-800oC (which overlaps with the 550oC of REF1) to reduce residual stress between the hard coating and substrate (col. 11, lines 7-23); it has been held that in the case where the claimed ranges (150-300oC) “overlap or lie inside ranges (300-800oC) disclosed by the prior art” a prima facie case of obviousness exists (MPEP 2144.05, I). In addition Applicant’s Specification at p. 7, lines 5-7 states “Preferably, the substrate temperature during the production of the coating structure is between 100oC and 400oC, in some cases more preferably between 150oC and 300oC, in particular between 200oC and 250oC”, with it being held that differences in temperature will not support patentability of subject matter encompassed by the prior art unless there is evidence indicating such temperature is critical, since it is not inventive to discover optimum or workable ranges vai routine experimentation (MPEP 2144.05, II, A).
Rejoinder
The Request is noted.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794