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 .
Election/Restrictions
Newly submitted claims 24, 26, and 28 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons: in the election of October 3, 2024, the applicant elected a ceramic for the body, chromium for the first coating, and the alternative of a diamond-like carbon or tetragon amorphous carbon for the second coating. However, newly presented claims 24, 26, and 28 are not drawn to these individual elections and they were not elected during the original election of October 3, 2024.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 24, 26, and 28 withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
In the rejection below, misnumbered claims 23-30 are being referenced as to how the claims should be properly listed as, renumbered claims 33-40.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-10, 31, 32, 39, and 40 are rejected under 35 U.S.C. 102a1 as being clearly anticipated by Ichijo et al. (JP 2005340400 A).
Regarding claim 1, Ichijo discloses:
A wire bonding tool [capillary for wire bonding; figure 1] comprising:
a body portion including a tip portion [see figure 3];
a first coating applied to the tip portion [first layer of composite film (5); page 5], wherein the first coating is applied to an activated surface of the tip portion, the activated surface having a changed surface energy such that it is more likely to attract coating particles of the first coating [Note that this limitation is not further limiting since it is a product by process limitation and provides no structural difference. Even so, Ichijo performs a plasma cleaning step; page 2]; and
a second coating applied to the first coating [second layer of composite film (5); page 5].
Regarding claim 2, Ichijo discloses:
wherein the body portion includes at least one of a ceramic, a metal alloy, a metal matrix composite, and a ceramic matrix composite [ceramic; page 5].
Regarding claims 3-5, Ichijo discloses:
wherein the first coating is resistant to at least one of corrosion and wear [note that since the first layer is the same as those recited in claim 5 it naturally follows that it possesses these claimed properties];
wherein the first coating includes at least one of a metal, a metallic compound, and a ceramic [a metal, metal oxide, or metal carbide thin film; page 5]; and
the first coating includes at least one of chromium, titanium, chromium carbide, chromium nitride and titanium nitride [one or more of aluminum, titanium, chromium, iron, nickel, tungsten, silicon, etc., or aluminum oxide, titanium oxide, titanium carbide, chromium oxide, chromium carbide, iron oxide; page 6].
Regarding claims 6 and 7, Ichijo discloses:
wherein the first coating has a thickness of 0.5 to 10/2 microns [0.5µm; page 5].
Regarding claims 8-10, Ichijo discloses:
wherein the second coating is resistant to at least one of stiction and friction [note that since the second layer is the same as that recited in claim 10 it naturally follows that it possesses these claimed properties],
wherein the second coating is carbon-based [diamond-like carbon (DLC); pages 1, 5, and 6]; and
wherein the second coating includes at least one of a diamond-like carbon [diamond-like carbon (DLC); pages 1, 5, and 6], a non-hydrogenated diamond-like carbon, a tetragon amorphous carbon, and a carbon-based coating.
Regarding claims 31 and 40, Ichijo discloses:
wherein the second coating has a thickness of 0.1/0.3 to 5/10 microns [2 micron; pg. 5].
Regarding claim 32, Ichijo discloses:
wherein the first coating is applied to an uncoated tip portion of the wire bonding tool [no other coating is applied prior to applying the metal/metal oxide/carbide layer].
Regarding claim 39, Ichijo discloses:
wherein the second coating is applied to a further activated surface of the tip portion including the first coating, the further activated surface of the tip portion having a further changed surface energy such that it is more likely to attract coating particles of the second coating [Note that this limitation is not further limiting since it is a product by process limitation and provides no structural difference. Even so, Ichijo applies plasma during the entire coating process; page 2].
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 33 is rejected under 35 U.S.C. 103 as being unpatentable over Ichijo et al. (JP 2005340400 A) as applied to claim 1 above, and further in view of SPT “Bonding Capillaries Bonding evolution”.
Regarding claim 33, Ichijo does not teach:
wherein the body portion includes a ceramic matrix composite.
SPT teaches wire bonding capillaries are formed out of an ultra-pure Al²O³ fine grade ceramic powder-high-density material for non-fine pitch, and composite ceramic (AZ) material for gold wire bonding or standard and ultra-fine pitch applications; pg. 26.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to make the Ichijo capillary of composite ceramic (AZ) material in order to perform gold wire bonding or standard and ultra-fine pitch applications.
Claim 35 is rejected under 35 U.S.C. 103 as being unpatentable over Ichijo et al. (JP 2005340400 A) as applied to claim 1 above, and further in view of Hsiao (US 2007/0246371 A1).
Regarding claim 35, Ichijo does not teach:
wherein the first coating includes chromium nitride.
Hsaio teaches DLC film (12) and intermediate adhesion film (14) wherein film (14) can be selected from the group consisting of chromium film, chromium nitride, chromium carbide, and any combination thereof; 0012.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the first Ichijo layer or include CrN since it is a known option, minus any unexpected results.
Claim 37 is rejected under 35 U.S.C. 103 as being unpatentable over Ichijo et al. (JP 2005340400 A) as applied to claim 1 above, and further in view of Aurora Scientific Corp “What is DLC (Diamond-Like Carbon)?”
Regarding claim 37, Ichijo does not teach:
the second coating includes a tetragonal amorphous carbon.
Aurora teaches several DLC including tetrahedral amorphous carbon (ta-C).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to select any DLC based on desired properties or cost, minus any unexpected results.
Claim 35 and 37 are rejected under 35 U.S.C. 103 as being unpatentable over Ichijo et al. (JP 2005340400 A) as applied to claim 1 above, and further in view of Calico Coatings “DLC Coatings”.
Regarding claims 35 and 37, Ichijo does not teach:
wherein the first coating includes chromium nitride; and
the second coating includes a tetragonal amorphous carbon.
Calico teaches a CrN + taC coating; see Certess Carbon TC example.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the Calico Certess Carbon TC coating for that of Ichijo due to its hardness value.
Response to Arguments
Applicant's arguments filed 5/8/25 have been fully considered but they are not persuasive.
The applicant argues, “Ichijo does not disclose or suggest applying either the first or second coating to the activated surface.”
Note that this limitation is not further limiting since it is a product-by-process limitation and provides no structural difference;
“[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, 227 USPQ 964,966). Once the Examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing an unobvious different between the claimed product and the prior art product (In re Marosi, 710 F.2d 798, 802, 218 USPQ 289, 292 (Fed. Cir. 1983), MPEP 2113).
Even so, Ichijo activates the surface with plasma as noted in the following paragraph:
“Next, the formation of the DLC composite film 5 will be described in detail. First, the ceramic substrate 1 is placed in a predetermined position of a film forming apparatus capable of generating DC discharge plasma in a vacuum vessel, and the surface of the ceramic substrate 1 is heated and cleaned. Next, plasma is generated and a plasma cleaning process is continuously performed. Next, one or more of aluminum, titanium, chromium, iron, nickel, tungsten, silicon, etc., or aluminum oxide, titanium oxide, titanium carbide, chromium oxide, chromium carbide, iron oxide, etc., previously placed in the film forming apparatus. , Tungsten oxide, tungsten carbide, silicon oxide, silicon carbide, and the like. The lower layer film is formed on the face surface 3 and the inclined face surface 4 which are ionized in plasma and biased to a negative voltage. Is deposited. Next, hydrocarbon gas introduced into the film forming apparatus and hydrocarbon ions generated in the plasma discharge and excited radicals collide with the face surface 3 and the inclined face surface 4 on which the lower layer film is formed to be solidified. A DLC composite film 5 is formed.”
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure; see PTO 892.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CARLOS J GAMINO whose telephone number is (571)270-5826. The examiner can normally be reached M-F 9-6.
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/CARLOS J GAMINO/Examiner, Art Unit 1735
/KEITH WALKER/Supervisory Patent Examiner, Art Unit 1735