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 .
Response to Amendment
This is a response to the amendment filed 3/11/2026. Claims 1 and 10 have been amended.
Response to Arguments
Applicant’s arguments with respect to the prior art rejection have been fully considered and are persuasive. These rejections have been withdrawn.
Applicant has not filed a Terminal Disclaimer, nor provided reasons for why the previous ODP rejection in view of U.S. Patent No. 11,384,420, which claims nitriding under similar conditions to form an adhesion promoting layer, should be withdrawn. As such, the ODP rejection is not overcome and is re-stated herein.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-13, 15 and 16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of U.S. Patent No. 11,384,420 in view of Dobbyn et al. (US 2009/0068375), Cheng et al. (US 9,406,485), and/or Tabata et al., (US 2014/0123897). Although the claims at issue are not identical, they are not patentably distinct from each other because all elements currently claimed are also present in U.S. Patent No. 11,384,420, except for dielectric barrier discharge plasma generation. However, U.S. Patent No. 11,384,420 teaches generating non-thermal plasma comprising monatomic nitrogen in air at atmospheric pressure in a confined plasma forming region, and exposing the substrate downstream from the confined plasma forming region using a nozzle and nitriding metal to metal nitride to provide an adhesion promoting layer via the plasma.
Thus, U.S. Patent No. 11,384,420 claims generating a plasma in a confined plasma-forming region to generate a downstream plasma plume. Dielectric barrier discharge (DBD) is a well-known non-thermal, AP plasma generating method that occurs in a confined space between electrodes having discharge barriers, and generates a plasma to be applied downstream therefrom to a substrate (See, for example, Dobbyn et al., Fig.4 4 and page 6, paragraphs [0055]-[0056], wherein electrodes [41],[42] spaced by an open gap and having dielectric barriers [48],[49] therebetween form a plasma to be applied to a downstream substrate [55]; and Cheng et al., col. 1, line 65 to col. 2, line 6, teaching dielectric barrier discharge can pass a substrate to be treated directly between the electrode or else be used as a downstream device where reactive gases flow between the electrodes to create plasmas). Further, DBD is well-known to form either oxidizing or nitriding plasmas based on source gas (See, for example, Tabata et al., US 2014/0123897, page 3, paragraph [0030], indicating dielectric barrier discharge can generate an oxidizing or nitriding plasma merely as a function of the source gas), such plasma known for nitriding and oxidizing repectively. Thus, based on the confined spaced, AP, non-thermal generation method in U.S. Patent No. 11,384,420, only a few suitable methods would have been practical, including DBD. Thus, based on the conditions claimed in U.S. Patent No. 11,384,420, i.e. in air at atmospheric pressure to generate a non-thermal plasma, for nitriding, it would have been obvious to utilize first and second electrodes separated by a gap and having a dielectric barrier to generate the plasma as a downstream plume because dielectric barrier discharge is one of a few suitable methods for generating plasma plumes capable of nitriding under the recited conditions.
Allowable Subject Matter
Claims 1-13, 15 and 16 would be allowable if a Terminal Disclaimer is filed to overcome the ODP rejection above.
The following is a statement of reasons for the indication of allowable subject matter: Dielectric barrier discharge (DBD) is a well-known non-thermal, AP plasma generating method that occurs in a confined space between electrodes having discharge barriers, and generates a plasma to be applied downstream therefrom to a substrate (See, for example, Dobbyn et al., US 2009/0068375, Fig.4 4 and page 6, paragraphs [0055]-[0056], wherein electrodes [41],[42] spaced by an open gap and having dielectric barriers [48],[49] therebetween form a plasma to be applied to a downstream substrate [55]; and Cheng et al., US 9,406,485, col. 1, line 65 to col. 2, line 6, teaching dielectric barrier discharge can pass a substrate to be treated directly between the electrode or else be used as a downstream device where reactive gases flow between the electrodes to create plasmas). Further, DBD is well-known to form either oxidizing or nitriding plasmas based on source gas (See, for example, Tabata et al., US 2014/0123897, page 3, paragraph [0030], indicating dielectric barrier discharge can generate an oxidizing or nitriding plasma merely as a function of the source gas).
Yancy (US 2018/0363124) also forms plasma in air in an essentially identical process using DBD but uses the plasma for etching and thus does not forming a metal nitride layer from the bulk metal. Fujimura et al. (US 2007/0190801) teaches forming a metal nitride layer from a bulk metal using a plasma formed in a confined region that may be at atmospheric pressure. However, Fujimura et al. teaches evacuating the region prior to forming the plasma to create a controlled atmosphere without air since the presence of air is considered undesirable since it may impart impurities to the layer (See page 10, paragraph [0151]).
Kim et al. (US 2016/0217979) teaches metal nitriding process using non-thermal plasma generation in air at atmospheric pressure in a plasma generating region and exiting as a plume through a nozzle to nitridize metals via the plasma (See page 3, paragraph [0045], page 4, paragraph [0076], and page 6, paragraph [0109]). However, the process using microwave plasma generation and teaches away from dielectric barrier discharge (See page 1, paragraph [0005]).
Thus, the claimed method of forming a non-thermal plasma comprising monatomic nitrogen in air at atmospheric pressure in a confined region having a first electrode and second electrode separated via a gap and having a dielectric barrier between the electrodes, and emitting the plasma through a nozzle to form a metal nitride layer from the metal atoms of a bulk metal, is considered obvious in view of the prior art.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SCOTT W DODDS whose telephone number is (571)270-7653. The examiner can normally be reached M-F 10am-6pm.
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/SCOTT W DODDS/ Primary Examiner, Art Unit 1746