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
Response to Arguments
Applicant’s arguments with respect to drawing objection is considered. Applicant has stated that “Although Figure 3 does not show “continuous” as recited in the claim, this is not necessary for understanding of the claim’. Applicant has further stated, ‘one with ordinary skill in the art would clearly understand the ‘continuous process’ in light of detailed description paragraph 0030. The argument is not found persuasive. First, the applicant has admitted that the figure 3 does not show ‘continuous process’; second, the applicant’s reference to paragraph 0030 only satisfies ‘written description’ requirement under 35 USC 112, but this is not rejection under 112, rather this is a drawing objection is under 35 USC 1.83(a),which requires drawings to show “every feature of the invention specified in the claim”.
As to Claims 1 and 15, the examiner has withdrawn previous 112(b) rejection, however, the amendment now includes ‘non-solid’ lubricant, the amendment necessitates 112(a) written description, new matter rejection.
As to rejection of Claim 20 on 112(b) ground, the applicant’s argument related to recitation of ‘square roughness’, is persuasive, and therefore, 112(b) rejection for claim 20 is withdrawn.
As to rejection of claims 5-7 and 16-18 on 112(b) ground, the Applicant has argued that paragraph 0034 of the specification describes second embodiment with coating 120 of solid lubricant and caverns filled with auxiliary material and the plasma treatment. Numeral 120 is shown in figure 4, which is described as first embodiment. Paragraphs 0034, 0035 may satisfy written description requirement under 112(a), however, since there is no drawing showing cavern and solid lubricant on the surface receiving plasma treatment, the examiner has added claims 5-7, 16-18, under drawing objection.
As to the 102 rejection based on Neibaur, Applicant has argued, Neibaur merely discloses a vacuum based deposition process (e.g. sputtering) of applying solid material. Examiner respectfully disagrees. The reference does disclose sputtering, and therefore, the reference uses non-solid lubricant to coat the surface. This applies to claims 1 and 15. As to rejection of claims 15 and 19 based on De Cloet. The reference discloses vapor deposition that satisfies non-solid lubricant.
As to 103 rejection, the applicants arguments are not found persuasive. The disclosure and claims, as presented presents number of issues including drawing objection and 12 first paragraph issues.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the ‘the plasma treatment in the changing step is part of a continuous process in which the electrically conductive contact element passes through the plasma treatment’ recited in claim 8, must be shown or the feature(s) canceled from the claim(s). It is noted that none of the drawings show ‘continuous process in which the contact element passes through. Further, for claims 5-7 and claims 16-18, recites cavern enclosed or disposed under/below contact surface’ coupled with the plasma treatment recited in the parent claims 1 and 15, is not shown in any of the figures. No new matter should be entered. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claims 1-20 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.
Claim 1 recites “applying a non-solid lubricant’ and Claim 15 recites “non-solid lubricant’. The specification paragraph 0019, states “(f)or example, the lubricant 106 may comprise oil, grease, a paste, an acid, or another solid lubricant such as graphite, carbon nanotubes, MoS2, or mixture thereof. However, the list of lubricants disclosed does not specifically include ‘non-solid’ lubricant. The phrase ‘non-solid’ lubricant is interpreted to be broader than the list of lubricants listed in paragraph 0019 (for example gas or vapor).
Claims 5-7, and 16-18 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.
Claim 5 recites ‘a plurality of caverns enclosed under the contact surface.’ Claim 5 depends from Claim 1 and inherits all the limitations of claim 1, including non-solid lubricant. It is noted that Figures 1, 3 and 4, are directed to first embodiment, which does not include caverns. Figure 2 is directed to another embodiment (instant specification paragraph 0021), which includes caverns and also include auxiliary material. Instant specification paragraph 034 and 0035 does describe second embodiment and refers to solid lubricant 120, cavern filled with auxiliary material and paragraph 0035 describes plasma treatment for solid lubricants (carbon or carbon nano tubes). There is no figure provided for the second embodiment. The plasma treatment is disclosed in figure 3 (first embodiment), and there is no plasma treatment disclosed for another embodiment of figure 2.
Since Claims 5-7 and 16-18, would include recitation of non-solid lubricant, and paragraphs 0034, 0035 is directed to solid lubricant, the description of paragraphs 0034, 0035 does not seem to apply to all the claims (such as claims 5-7; and claims 16-18) which recite cavern and depend on the parent claim (such as 1 and 15) which recites non-solid lubricant and ‘plasma treatment’ . Thus disclosure fail to meet ‘written description’ and ‘possession’ requirements under 35 USC 112, first paragraph for claims 5-7 and 16-18.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1, 3, 8, 13, 15 and 19, as best understood, are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by Neibaur (US 20030219622).
Regarding Claim 1, Neibaur discloses a method for treating an electrically conductive contact element [0016], comprising: applying a non-solid lubricant (MoSx-metal composite [0018, 0046]) to at least a partial region of a contact surface [0037] of the electrically conductive contact element [0017], the contact surface is metallic (copper, copper alloy); and changing the contact surface by plasma treatment to convert the non-solid lubricant into a coating of a solid lubricant on the partial region of the contact surface. Note, after initial coating step, argon plasma is used [0049]. Also, the method steps describes sputtering [0022, 0023], hence the lubricant is in non-solid form.
Regarding Claim 3, Neibaur discloses the method of claim 1, wherein a plasma in the plasma treatment is excited in a pressure range from 1 mbar to 8 bar [0049].
Regarding Claim 8, Neibaur discloses the method of claim 1, wherein the plasma treatment in the changing step is part of a continuous process in which the electrically conductive contact element passes through the plasma treatment [0044].
Regarding Claim 13, Neibaur discloses the method of claim 1, wherein the costing of the solid lubricant has a thickness of 1 nm to 300 nm [0018, .1 micro meter =100 nanometer] .
Regarding Claim 15, Neibaur discloses an electrically conductive contact element [0016], comprising: a metallic contact surface having a coating of a non-solid lubricant (MoSx-metal composite [0018, 0046]) produced by treatment of a lubricant layer with a plasma [0049]. Note that the method steps describes sputtering [0022, 0023], hence the lubricant is in non-solid form.
It is noted that Claim 15 is a product by process claim, and even 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 19, Neibaur discloses the electrically conductive contact element of claim 15, wherein the metallic contact surface includes tin, and/or nickel, and/or silver, and/or copper, and/or alloys of tin, nickel, silver, and copper [0017].
Claim(s) 15 and 19 are rejected under 35 U.S.C. 102(a1/a2) as being anticipated by De Cloet et al (US 2014/0162506).
Regarding Claim 15, Cloet et al. discloses an electrically conductive contact element [0026], comprising: a metallic contact surface having a coating of a solid lubricant (silver plating [0028]) produced by treatment of a non-solid (vapor) lubricant layer with a plasma [0031].
Please note that vapor deposition is disclosed and plasma treatment is applied after plating. Further, this is a product by process claim, and even 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, such as plasma treatment.
Regarding Claim 19, Cloet et al. discloses the electrically conductive contact element of claim 15, wherein the metallic contact surface includes tin, and/or nickel, and/or silver, and/or copper, and/or alloys of tin, nickel, silver, and copper [0028].
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.
Claim(s) 2, 4-7, 9-12, 14, 16-18 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Neibaur (US 20030219622) in view of Leidner et al (US 2019/0173214).
As discussed above, Neibaur discloses claimed invention as claimed in 1, 3, 8, 13, 15 and 19, except for a surface texture, recited in claim 2; plasma power requirement recited in Claim 4; a plurality of caverns enclosed under the contact surface recited in Claims 5 and 16; auxiliary material filled in caverns recited in claims 6 and 17; various material for auxiliary material recited in Claims 7 and 18; the plasma treatment being irradiation with a plasma flame and time for plasma flame recited in claims 9 and 10; the plasma flame exits the nozzle, as recited in claim 11; the distance of contact surface to the plasma nozzle recited in claim 12; thickness of lubricant recited in claim 14; and square roughness recited in claim 20.
Leidner et al. discloses a contact structure with a plurality of elevation 15 and recesses 17 (figure 2C) (Claim 2) or roughness (claim 20); Leidner et al. also discloses caverns 7, filled with auxiliary material 9, the auxiliary materials being antioxidants, corrosion inhibitors, lubricants, or acids [0034] (Claims 5, 6, 7, 16, 17, 18).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to provide surface texture with caverns, and caverns filled with auxiliary material, in the contact of Neibaur as suggested by Leidner et al. so as to obtain optimum lubrication under varieties of operating conditions (vibration, temperature, power).
As to the limitations recited in claims 9-14 related to plasma flame, the dwell time, distance of nozzle and lubricant thickness, these are result effective variables, and under ‘obvious to try’ line of reasoning, it would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to try plasma flame, the appropriate dwell time, distance of nozzle, etc., to obtain proper lubricant thickness on the substrate.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/TULSIDAS C PATEL/Supervisory Patent Examiner, Art Unit 2834
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