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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 27 April 2026 has been entered.
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 1-4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Abe et al. (JP2000-256850 – machine translation provided by applicant).
Considering claim 1, Abe teaches a base material with a DLC coating having high adhesion (abstract). An example is taught of a stainless steel substrate with a first layer of SiC formed thereon (e.g. a bottom layer), a second layer (e.g. a blended layer) formed stepwise as shown in Fig.3a (reproduced below) of mixed materials of the bottom layer and DLC such that the second layer comprises plural sublayers each corresponding to a different ratio of the first layer material and DLC where the ratio of SiC:DLC is lower in sublayers to the left of the Figure and greater in sublayers to the right of the Figure, and then a subsequent DLC layer (e.g. a top layer) such that the material of the first layer decreases to zero at the interface of the second layer with the DLC layer (Paragraphs 11-13; Fig.3a). As such, Abe anticipates that which is claimed.
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Considering claims 2-4, Abe teaches where the first layer comprises SiC (Paragraphs 12-13).
Considering claim 6, Fig 3a of Abe above demonstrates where the ratio decreases monotonically.
Claim Rejections - 35 USC § 103
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 1-4 and 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Da Rocha Mordente et al. (US 2016/0305014 – hereafter ‘Mordente’) in view of Mitsuda et al. (US 2011/0094628).
Considering claim 1,Mordente teaches a coating for a cylinder of DLC (Paragraph 14) where the coating comprises a support layer of Si, a transition layer having a gradient layer where the content of Si is gradually reduced and the quantity of carbon is increased in the direction orthogonal to the substrate which increases the percentage of DLC, and an upper layer essentially of DLC (Paragraph 34). However, Mordente does not teach where transition layer (i.e. blended layer) comprises a plurality of sub-layers with ratio as claimed.
In a related field of endeavor, Mitsuda teaches a DLC film formed on an intermediate layer (abstract) having a high hardness and low friction coefficient (Paragraph 5). The coating comprises an intermediate layer and a DLC film (Paragraph 14). An example is taught in Figs.3A-3C (reproduced below) of substrate (12) coated with a metal atom derived from the substrate including Si, etc. (Paragraph 40). Fig.3C depicts an underlayer substantially of the metal with an intermediate layer (14) thereon comprised of plural sub-layers of both metal and DLC carbon such that lower layers start with essentially zero DLC and successive layers have a high ratio of metal to carbon and further layers have a lower ratio of metal to carbon, with upper layer (16) of DLC thereon (Paragraphs 55, 57, and 61). The graded intermediate layer is taught to prevent peeling due to mismatch of the CTE of the substrate and coating (Paragraph 19).
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As both Mordente and Mitsuda teach DLC coatings they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Mordente with the graded intermediate layer having different Si:DLC ratios as taught by Mitsuda as this is known to prevent peeling due to mismatch of the CTE of the substrate and coating and one would have had a reasonable expectation of success.
Considering claims 2-4, Mordente teaches where Si is graded in the intermediate layer (Paragraph 34) and Mitsuda teaches where the graded material may be Al, Mg, Si, etc. (Paragraph 40).
Considering claim 6, Fig.3C of Mitsuda above depicts a monotonic decrease in the ratio of metal and DLC.
Considering claim 7, Mitsuda teaches where the ratio of the metal atoms and carbon atoms is based upon the negative bias applied to the substrate (Paragraphs 56-57) and as the negative bias is reduced the carbon content increases (Paragraphs 59-60) indicating that the ratio of metal:carbon is a result effective variable determined through routine experimentation. See MPEP 2144.05(II)(A).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Da Rocha Mordente et al. (US 2016/0305014 – hereafter ‘Mordente’) in view of Mitsuda et al. (US 2011/0094628) as applied to claim 1 above further in view of Massler et al. (US 2004/0038033 – previously cited).
Considering claim 5, the teachings of Mordente and Mitsuda are outlined above. Mordente and Mitsuda teach DLC coatings, but do not teach the claimed sp2 and sp3 bonded carbon atoms.
In a related field of endeavor, Massler teaches a layer system for wear protection on a substrate comprising an adhesion layer, a transition layer, and a diamond-like carbon layer (abstract). The adhesion layer material is selected from Groups IV-VI and include Ti, Cr, and Si (Paragraph 30). The transition layer is a gradient layer containing the metal of the adhesion layer and free carbon and carbide phases such that the increase of the carbon content and reduction of the metal phase continue until a layer is formed that is exclusively of carbon and preferably hydrogen (Paragraphs 33-34). The gradient layer may be either continuous or a series of individual layers rich in metal and rich in carbon provided for a further reduction of layer stresses (Paragraph 33). Massler also teaches where a DLC slipping layer is included (Paragraphs 47-48) and where this comprises sp2 and sp3 bonded carbon (claim 2) and where this is advantageous for wear- and corrosion-protection (Paragraph 25).
As Mordente, Mitsuda, and Massler all teach DLC films they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the teachings of Mordente and Mitsuda and to include the DLC having sp2 and sp3 bonded carbon as this is advantageous for wear- and corrosion-protection and would have had a reasonable expectation of success.
Response to Arguments
Applicant’s arguments, see remarks section II, pp.8-12, filed 27 April 2026, with respect to 35 USC 103 rejections in view of Massler have been fully considered and are persuasive. The rejection of claims 1-7 has been withdrawn. Massler does not adequately teach the claimed ratio differential per the amendment filed 27 April 2026.
Applicant's arguments filed 27 April 2026 regarding 35 USC 102(a)(1) rejections in view of Abe have been fully considered but they are not persuasive. Applicant’s arguments are addressed as follows:
Applicant argues that Abe does not teach the claimed ratio differential of lower ratio sub-layers toward the bottom and higher ratio sub-layers toward the top layer regarding the intermediate layer (remarks p.6 last paragraph – p.8 continuing paragraph). This is not persuasive as outlined in Fig.3a above, Abe teaches a different ratio of the first layer material and DLC where the ratio of SiC:DLC is lower in sublayers to the left of the Figure and greater in sublayers to the right of the Figure. This is considered to meet applicant’s amended claim as the instant claims merely require a difference in the ratio and do not specify any particular concentration per sub-layer, nor thickness thereof, nor any particular structural feature to differentiate over the teachings of Abe. As such, the prior rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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