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 .
Status of Claims
Claims 1, 7-8, and 13-28 are currently pending;
Claims 1, 8, and 13 are amended;
Claim 28 is new.
Status of Rejections Pending since the Office Action of 08/26/2025
The rejections of claims 8 and 13-27 have been replaced with new 103 rejections in view of Tan, Fadner, Andersen, and Tan in view of Mitsuda;
The rejections of claims 1 and 7 have been replaced with new 103 rejections in view of Althues in view of Tan.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1, 7-8, 13, 16-17, and 20-24 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument (in reference to the prior art Shigeta). A new ground(s) of rejection is made in view of Althues in view of Tan, Tan, Tan in view of Mitsuda, Fadner, and Andersen.
Specification
The disclosure is objected to because of the following informalities:
Paragraph [0024] of the instant specification states that “Fig. 4 illustrates the method of applying tungsten carbide by physical vapor deposition.” In addition, paragraphs [0007] and [0027] both refer to the formation of tungsten carbide as done by physical vapor deposition. However, paragraph [0037] that describes figure 4, including the descriptions of blocks 401, 402, and 403, describes a chemical vapor deposition process of forming tungsten carbide, not a physical vapor deposition process.
Appropriate correction is required.
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 13 and 20-28 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.
Claim 13 recites the limitation "the copper underlayer" in lines 6-7. There is insufficient antecedent basis for this limitation in the claim. Claims 20-27 are also rejected based on their dependency on claim 13.
Claim 28 recites the limitation "the tungsten carbide underlayer" in line 2. There is insufficient antecedent basis for this limitation in the claim.
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.
Claims 1, 7, and 28 are rejected under 35 U.S.C. 103 as being unpatentable over Althues et al. (US-20210320288-A1), hereinafter Althues, in view of Tan et al. (CN-110029299-A), hereinafter Tan.
Regarding claim 1, Althues teaches a method of forming a dry electrode film (Abstract; method of producing a dry film), the method comprising: contacting a surface hardened roller with a dry electrode or dry electrode precursor powder (Abstract; a dry powder mixture is processed in to the dry film by a first and second roller 2a and 2b; fig. 1; [0036] powder mixture makes its way to identical chrome-plated calender rolls 2a and 2b), wherein the surface hardened roller includes an underlayer ([0036] chrome plated calender rolls 2a and 2b) that contacts an outer surface of the roller core (rollers inherently have a roller core; [0036] the calender rolls 2a and 2b would inherently have a core), wherein the surface hardened roller includes a roller core, wherein the surface hardened roller includes a hardening layer of at least diamond-like coating or tungsten carbide ([0015]; the first or second roll can have a modification comprising a coating that can be a diamond-like carbon), imparting at least one force on the dry electrode or the dry electrode precursor powder with the surface hardened roller in order to form the dry electrode film (fig. 1; [0036] calender rolls 2a and 2b; [0018] the dry film is formed by the first and second rolls with a linear force).
Althues fails to teach an underlayer comprised of tungsten carbide and an underlayer having a thickness of about 1 µm to about 50 µm and a hardening layer of a thickness of 1 µm to about 300 µm.
Tan is considered analogous to the claimed invention because they are in the same field of coatings for rolls in electrode manufacture ([0013]). Tan teaches an underlayer comprised of tungsten carbide having a thickness of about 1 µm to about 50 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm) that contacts an outer surface of the roller core (fig. 1; [0033] roll substrate 1 with underlayer 2 of tungsten carbide contacting), wherein the surface hardened roller includes a hardening layer of at least diamond-like coating or tungsten carbide (fig. 1; [0033]; outer tungsten carbide coating 3) of a thickness of 1 µm to about 300 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm; therefore, the outer layer is 40 to 2990 µm; [0041] outer layer thickness of 0.05 mm, or 50 µm). In the case where the claimed ranges "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, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Althues and replaced the chrome plating and diamond-like carbon coating of Althues with the underlayer and hardening layers of tungsten carbide of Tan. Doing so causes significantly fewer surface pits and fewer cracks in the surface of the roller and improves the pressure resistance and toughness of the coating on the roll surface (Tan [0072]) as opposed to ordinary chrome and tungsten carbide coated rolls (Tan [0007]).
Regarding claim 7, modified Althues teaches all of the limitations of claim 1. Althues also teaches that the surface hardened roller is at least one of a nip roller or a calendering roller (fig. 1; [0036], calender rolls 2a and 2b).
Regarding claim 28, modified Althues teaches all of the limitations of claim 1. Modified Althues also teaches wherein the hardening layer contacts an outer surface of the tungsten carbide underlayer (Tan fig. 1; [0033]).
Claims 8 and 14-19 are rejected under 35 U.S.C. 103 as being unpatentable over Tan et al. (CN 110029299 A), hereinafter Tan
Regarding claim 8, Tan teaches a system comprising: a roller ([0033]; fig. 1; roll substrate 1; [0010] coated roll) comprising: an underlayer comprised of one of tungsten carbide, a diamond like coating, copper, or chrome (fig. 1; [0019] inner tungsten carbide coating 2 having a thickness of about 1 µm to about 50 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm); and a hardening layer of tungsten carbide (fig. 1; [0019]; outer tungsten carbide coating 3) of a thickness of 1 µm to about 300 µm (total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm; therefore, the outer layer is 40 to 2990 µm; [0041] outer layer thickness of 0.05 mm, or 50 µm) that contacts an outer surface of the underlayer (fig. 1; [0019]). In the case where the claimed ranges "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).
Regarding claim 14, Tan teaches all of the limitations of claim 8. Tan does not teach the process described in claim 14 of wherein the hardening layer of tungsten carbide is deposited on the underlayer in a low pressure environment using volatile precursors comprising tungsten hexachloride and one or more of hydrogen, methane, or methanol. However, the claim is directed to the system of claim 8, not to a method claim. Therefore, the claim is being interpreted as a product-by-process claim. Tan does teach the product system of a hardening layer of tungsten carbide deposited on the surface of the underlayer on a roller (fig. 1; [0019] inner tungsten carbide coating 2 and outer tungsten carbide coating 3). "[E]ven though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process." In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Regarding claim 15, Tan teaches all of the limitations of claim 8. Tan also teaches that the underlayer thickness is about 1 µm to about 25 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm). In the case where the claimed ranges "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).
Regarding claim 16, Tan teaches all of the limitations of claim 8. Tan also teaches wherein the underlayer thickness is about 25 µm to about 50 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm). In the case where the claimed ranges "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).
Regarding claim 17, Tan teaches all of the limitations of claim 8. Tan also teaches that the hardening layer thickness is about 1 µm to about 100 µm (total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm; therefore, the outer layer is 40 to 2990 µm; [0041] outer layer thickness of 0.05 mm, or 50 µm). In the case where the claimed ranges "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).
Regarding claim 18, Tan teaches all of the limitations of claim 8. Tan also teaches that the hardening layer thickness is about 100 µm to about 200 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm; therefore, the outer layer is 40 to 2990 µm; [0060] outer layer thickness of 0.15 mm, or 150 µm). In the case where the claimed ranges "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).
Regarding claim 19, Tan teaches all of the limitations of claim 8. Tan also teaches wherein the hardening layer thickness is about 200 µm to about 300 µm ([0020]; total thickness of both inner and outer layer is 50 -3000 µm wherein the inner layer is 10-1000 µm; therefore, the outer layer is 40 to 2990 µm; [0048]; [0054] outer layer has a thickness of 0.3 mm, or 300 µm). In the case where the claimed ranges "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).
Alternatively, claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Tan as applied to claim 8 above, and further in view of Mitsuda et al. (JP-2000119790-A), hereinafter Mitsuda.
Regarding claim 14, Tan teaches all of the limitations of claim 8.
Tan teaches that the hardening layer is deposited on the underlayer ([0018]-[0022]).
Tan fails to teach that the hardening layer of tungsten carbide is deposited on the underlayer in a low pressure environment using volatile precursors comprising tungsten hexachloride and one or more of hydrogen, methane, or methanol ([0018] teaches different methods including a plasma-deposition-physical vapor deposition).
Mitsuda is considered analogous to the claimed invention because they are in the same field of coatings ([0008]). Mitsuda teaches that tungsten carbide can be formed from chemical vapor deposition or physical vapor deposition ([0020]). Mitsuda teaches a low pressure environment ([0020] 100-300 Torr) using volatile precursors comprising tungsten hexachloride and one or more of hydrogen, methane, or methanol ([0020] forming tungsten carbide using a plasma CVD method with tungsten hexafluoride and hydrogen).
Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Tan’s method to use tungsten hexachloride and one or more of hydrogen, methane, or methanol such as in Mitsuda for forming the tungsten carbide. Doing so is an art known equivalent of forming tungsten carbide.
Claim(s) 13, 20, and 24-26 are rejected under 35 U.S.C. 103 as being unpatentable over Fadner (US-4601242-A).
Regarding claim 13, Fadner teaches a system comprising: a roller (col. 5, line 23) comprising: an underlayer comprised of copper (col. 5, lines 30-35 copper) having a thickness of about 1 µm to about 300 µm (col. 8, lines 11-12; 0.2 to 0.3 mil, which is equivalent to 5.08 µm to 7.62 µm; claim 6; 0.1 to 0.5 mils which is equivalent to 2.54 to 12.7 µm); and a hardening layer (col. 5, lines 30-35; hard wear-resistant ceramic layer; col.7, lines 25-33 ceramic materials such as aluminum oxide and tungsten carbide; col. 9, lines 6-15 aluminum oxide layer) of a thickness of 1 µm to about 300 µm (col. 8, lines 40-46 1 to 2 mils that is equivalent to 25 to 50 microns; claim 5; 5 to 100 microns) that contacts an outer surface of the copper underlayer (fig. 6). In the case where the claimed ranges "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).
The embodiment of Fadner does not teach that the hardening layer is one of diamond-like coating or tungsten carbide. Fadner does teach that the hardening layer is a ceramic material of aluminum oxide (col. 5, lines 30-35; hard wear-resistant ceramic layer; col. 9, lines 6-15 aluminum oxide layer). Fadner also teaches that the ceramic materials can include either aluminum oxide or tungsten carbide for the same purpose (col.7, lines 25-33 ceramic materials such as aluminum oxide and tungsten carbide), and that modifications and variations within the scope of the invention can be considered (col. 9, lines 24-30). Therefore, it would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention that the aluminum oxide ceramic layer of the embodiment in Fadner (col. 9, lines 6-15 aluminum oxide layer) could have been replaced with the art recognized equivalent tungsten carbide layer also disclosed in Fadner (col.7, lines 25-33) to yield the predictable result of a hard layer with the required hydrophobic and oleophilic qualities (col. 7, line 25 – col. 8 line 10).
Regarding claim 20, Fadner teaches all of the limitations of claim 13. Fadner also teaches that the underlayer thickness is about 1 µm to about 50 µm (col. 8, lines 11-12; 0.2 to 0.3 mil, which is equivalent to 5.08 µm to 7.62 µm; claim 6; 0.1 to 0.5 mils which is equivalent to 2.54 to 12.7 µm). In the case where the claimed ranges "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).
Regarding claim 24, Fadner teaches all of the limitations of claim 13. Fadner also teaches that the hardening layer thickness is about 1 µm to about 50 µm (col. 8, lines 40-46 1 to 2 mils that is equivalent to 25 to 50 microns; claim 5; 5 to 100 microns). In the case where the claimed ranges "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).
Regarding claim 25, Fadner teaches all of the limitations of claim 13. Fadner also teaches that the hardening layer thickness is about 50 µm to about 100 µm (col. 8, lines 40-46 1 to 2 mils that is equivalent to 25 to 50 microns; claim 5; 5 to 100 microns). In the case where the claimed ranges "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).
Regarding claim 26, Fadner teaches all of the limitations of claim 13. Fadner also teaches that the hardening layer thickness is about 100 µm to about 200 µm (col. 8, lines 40-46 1 to 2 mils that is equivalent to 25 to 50 microns; claim 5; 5 to 100 microns). In the case where the claimed ranges "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).
Alternatively, claims 13 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Andersen (US-4503769-A).
Regarding claim 13, Andersen teaches a system comprising: a roller comprising: an underlayer comprised of copper having a thickness of about 1 µm to about 300 µm (fig. 4; col. 4, lines 32-47; electrolytic copper layer 35 of 4 to 10 mils, which is equivalent to 101.6 to 254 µm); and a hardening layer of one of diamond-like coating or tungsten carbide a thickness of 1 µm to about 300 µm (col. 4, lines 48-61; hard surface coating 36 of tungsten carbide with a thickness of 2 to 8 mils, which is equivalent to 50.8 to 203.2 µm; claim 15 tungsten carbide) that contacts an outer surface of the copper underlayer (fig. 4, layers 35 and 36 are in contact). In the case where the claimed ranges "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).
Regarding claim 21, Andersen teaches all of the limitations of claim 13. Andersen also teaches wherein the underlayer thickness is about 50 µm to about 100 µm (fig. 4; col. 4, lines 32-47; electrolytic copper layer 35 of 4 to 10 mils, which is equivalent to 101.6 to 254 µm). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 22, Andersen teaches all of the limitations of claim 13. Andersen also teaches wherein the underlayer thickness is about 100 µm to about 200 µm (fig. 4; col. 4, lines 32-47; electrolytic copper layer 35 of 4 to 10 mils, which is equivalent to 101.6 to 254 µm). In the case where the claimed ranges "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).
Regarding claim 23, Andersen teaches all of the limitations of claim 13. Andersen also teaches wherein the underlayer thickness is about 200 µm to about 300 µm (fig. 4; col. 4, lines 32-47; electrolytic copper layer 35 of 4 to 10 mils, which is equivalent to 101.6 to 254 µm). In the case where the claimed ranges "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).
Regarding claim 24, Andersen teaches all of the limitations of claim 13. Andersen also teaches that the hardening layer thickness is about 1 µm to about 50 µm (col. 4, lines 48-61; hard surface coating 36 of tungsten carbide with a thickness of 2 to 8 mils, which is equivalent to 50.8 to 203.2 µm). A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985).
Regarding claim 25, Andersen teaches all of the limitations of claim 13. Andersen also teaches that the hardening layer thickness is about 50 µm to about 100 µm (col. 4, lines 48-61; hard surface coating 36 of tungsten carbide with a thickness of 2 to 8 mils, which is equivalent to 50.8 to 203.2 µm). In the case where the claimed ranges "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).
Regarding claim 26, Andersen teaches all of the limitations of claim 13. Andersen also teaches that the hardening layer thickness is about 100 µm to about 200 µm (col. 4, lines 48-61; hard surface coating 36 of tungsten carbide with a thickness of 2 to 8 mils, which is equivalent to 50.8 to 203.2 µm). In the case where the claimed ranges "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).
Regarding claim 27, Andersen teaches all of the limitations of claim 13. Andersen also teaches wherein the hardening layer thickness is about 200 µm to about 300 µm (col. 4, lines 48-61; hard surface coating 36 of tungsten carbide with a thickness of 2 to 8 mils, which is equivalent to 50.8 to 203.2 µm). In the case where the claimed ranges "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).
Conclusion
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/M.L.K./Examiner, Art Unit 1722
/ANCA EOFF/Primary Examiner, Art Unit 1722
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