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 .
DETAILED ACTION
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 1-3, 5-13, and 16 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.
The limitations incorporated into claim 1 from since cancelled claim 4 contain one issue of indefiniteness. In brief, there are four possible different configurations listed in the alternative, and while three of the four are definite (and allowable), one of the four is indefinite. These limitations are annotated below.
1) wherein a plurality of respectively identical or different first MoaNx support layers is provided between the substrate and the outer cover layer of amorphous carbon and/or
2) wherein a plurality of respectively identical or different second MobNy support layers is provided between the substrate and the outer cover layer of amorphous carbon and/or
3) wherein the first MoaNx support layer and/or the second MobNy support layer contains a proportion of metallic Mo, wherein a phase mixture of Mo and Mo2N in the first MoNx (emphasis added) support layer and a phase mixture of Mo and Mo2N in the second MobNy support layer respectively, is adjusted by adjusting a nitrogen content x and y, respectively, between 5at% and 20at%, with x +a= 100 at% and y + b = 100 at% and/or
4) wherein the first MoaNx support layer and/or the second MobNy support layer are composed of pure Mo2N phases and their phase mixtures β-Mo2N and γ-Mo2N, and/or of Mo2N/MoN phase mixtures and/or of pure MoN phases.
Limitation 3) is indefinite for two reasons. First, the first MoNx support layer lacks antecedent basis. Next, the respective contents of MoaNx support layer and MobNy support layer conflicts what are respectively set forth in the first and second clauses of claim 1. Namely, limitation 3) resets x and/or y to be between 5at% and 20at%. This clearly conflicts with the requirement that 25 at% ≤ x ≤ 55at% and 35 at% ≤ y ≤ 45 at%.
As claims 2, 3, 5-13, and 16 depend on claim 1, and as the respective limitations of the dependent claims do not resolve the aforementioned issue in claim 1, claims 2, 3, 5-13, and 16 are also held to be rejected.
Claim 5 is 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 5 is indefinite, for it seeks to broaden the meanings of MoaNx and MobNy as already set forth in claim 1. Specifically, the inclusion of any additional element (which is expressly required) contradicts the proviso of nitrogen content and molybdenum content summing up to 100 at%. Furthermore, with the proviso of c/d = 3, the maximum content of N is 25 at%. This is below the minimum of 35 at% for the MobNy layer. Furthermore, were this implemented for the MoaNx layer, Mo would have to be 75 at%, which contradicts to maximum of 55 at% set forth in claim 5. This claim is further indefinite for attempting to provide two definitions of “x”, as (MoxMz) as recited seeks to redefine “x” that is already associated with “x” of MoaNx layer.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 5 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 5 seeks to broaden the meanings of MoaNx and MobNy as already set forth in claim 1. As such, claim 5 is not a proper dependent claim.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim Objections and Allowable Subject Matter
Claim 1 amended to remove limitation 3) as discussed in ¶ 3 above is considered to be allowable over the art.
Should the suggestions in ¶ 11 above be implemented, to be in allowable form, claim 1 must be rewritten so that any remaining limitations originating from original claim 4 are clearly separated. Specifically, the limitations as a group must be further indented, and each one of the limitations recited in the alternative be separated from the others. Please refer to the formatting used in ¶ 3 above. Failure to do so shall result in an Ex Parte Quayle Action.
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached on (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781