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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 13, 2026 has been entered.
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, 2, 4, 5, and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Link (US 2021/0128782) in view of Hong (US 2014/0065394).
Regarding claim 1, Link teaches a method for introducing a soft metal (Ag) into a hard coating (TiN) during a physical vapor deposition process for coating medical implants ([0052-0063], wherein the hard coating has greater hardness than the soft metal, said method comprising:
providing a substrate medical implant [0052];
and depositing the hard coating on the implant using vapor deposition wherein the soft metal is Ag and the soft metal is deposited to start layer formation and the layer formation is interrupted in order to avoid coalescence in such a way that the soft metal forms islands contained in the hard coating [0042], wherein the islands are surrounded by and separated by the hard coating [0042-0043], and wherein the hard coating (TiN) comprises at least one of the group consisting of metal nitrides and carbides in combination with at least one of the metals selected from the group consisting of Ti [0042];
Link does not teach depositing a bonding layer on the substrate medical implant.
Link does not teach restarting depositing the hard coating on the bonding layer after the layer formation is interrupted, subsequently interrupting the layer formation, and repeating the restarting and interrupting process until the coating on the medical implant is formed.
Hong is directed to forming a multilayered coating of TiN/AgTiN by PVD on a component because it would increase the hardness and provide lower friction of the component ([0042]). Hong teaches depositing a bonding layer (20, implanted Ti) on the substrate before depositing a TiN layer following by a AgTiN layer by PVD would increase adhesion to the substrate [0049]. Hong teaches the current applied to the Ag target is repeatedly turned on and off to provide the layers. Therefore Hong teaches restarting depositing the hard coating on the bonding (20) layer after the layer formation is interrupted, subsequently interrupting the layer formation, and repeating the restarting and interrupting process until the coating is formed ([0015]).
Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Link by restarting depositing the hard coating on the bonding layer after the layer formation is interrupted, subsequently interrupting the layer formation, and repeating the restarting and interrupting process until the coating is formed, as taught by Hong because it would increase the hardness of the coating and decrease the friction of the coating surface ([0013]).
Regarding claim 2, Link teaches the hard coating is TiN ([0042-0043]).
Regarding claim 4, Link teaches the Ag is deposited in islands in the AgTiN coating [0025].
Regarding claim 5, Hong teaches the coating having islands of soft metal has improved cohesive strength compared to a coating having layers of soft metal. See Hong at [0013].
Regarding claim 7, Link teaches the medical implant is an articulating medical implant [0011], [0053].
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Link and Hong as applied to claim 2 above in view of Colmenares (US 2013/0224274 as cited on IDS).
Regarding claim 3, Link teaches the hard coating comprises an AgTiN coating but does not teach a top layer comprising TiN.
Colmenares is directed to vapor depositing a coating of TiN/Ag and teaches the hard coating comprises an AgTiN coating (5) and a top layer comprising TiN (9, Fig. 5; [0061-0062]. It teaches multiple layers of varying concentration of AgTiN with outer layer 9 having a reduced concentration of Ag in the TiN coating. Layer 9 reads on a top layer “comprising TiN” because it teaches a layer made of TiN.
Therefore it would have been obvious to one of ordinary skill in the art at the time of the invention to modify the method of Link by providing a top layer comprising TiN, as taught by Colmenares, because it would provide an improved adhesion to the substrate [0041] [0059] and allow for a reservoir of silver for the outer layer to be contained in an intermediate layer [0060].
Response to Arguments
Applicant's arguments filed May 13, 2026 have been fully considered but they are not persuasive.
In response to applicant's argument that Hong is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Hong appears pertinent to the problem with which the inventor is concerned, higher hardness and lower friction [0042-0043] and resistance to wear under high loads (durability [0010]).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN J BRAYTON whose telephone number is (571)270-3084. The examiner can normally be reached 9AM-5PM EST M-F.
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JOHN J. BRAYTON
Primary Examiner
Art Unit 1794
/JOHN J BRAYTON/Primary Examiner, Art Unit 1794
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