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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 2/13/2026 has been entered.
Election/Restrictions
Newly submitted claims 22 and 23 are each directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
Independent claims 22 and 23 are each a new Group distinct from the Restriction Requirement 5/15/2024, with each of the new Groups lacking unity of invention for a special technical feature that does not make a contribution over the prior art, as further demonstrated below by the 103 rejections.
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 Accordingly, claims 22 and 23 are withdrawn from consideration as being directed to a non-elected invention.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 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 1-2, 4-7, 10-16, and 18-21 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.
Amended claim 1 recites “performing a deposition process in an inert atmosphere, wherein the inert atmosphere is free of carbon-reactive gases” (emphasis added). There is no support in the Specification that the inert atmosphere is “free” of any or all “carbon-reactive gases”, which also impermissibly introduces new matter since an express exclusion of certain elements (e.g. free of carbon-reactive gases) implies permissible inclusion of all other elements not so expressly excluded (e.g. metallic-containing gases, silicon-containing gases, etc.) [MPEP 2173.05(i)]. Claims 2, 4-7, 10-16, and 18-21 are also rejected as depending on claim 1.
Amended claim 14 recites “the carbon content of the CrC transition layer is controlled by an average power applied to the carbon-containing target” (emphasis added). There is no support in the Specification for a general ‘controlling by average power to a carbon-containing target’ thereby results in the controlling of the carbon content, in particular at para 0035, 0040, and 0044 of the published Specification (see p. 5 Remarks 2/13/2026). Examiner notes that para 0040 teaches controlling carbon content “by increasing the average power (PAV) to the graphite targets” (emphasis added). Claim 15 is also rejected as depending on claim 14.
New claim 18 recites a limitation of “the ion irradiating of Cr+ ions and the co-sputtering from the carbon-containing target occur simultaneously during formation of the CrC transition layer”. There is no specific support in the Specification, in particular at para 0029, 0044, 0047, 0052-0053, 0068, 0085-0087, 0091-0092, 0099-0101, and 0103, for the limitation.
New claim 19 recites “the carbon content of the CrC transition layer is controlled independently of reactive gas flow” (emphasis added). There is no specific support in the Specification, in particular at para 0029, 0044, 0047, 0052-0053, 0068, 0085-0087, 0091-0092, 0099-0101, and 0103, that the carbon content is controlled independent of reactive gas flow.
New claim 20 recites “the pulsed power applied to the at least one Cr target produces an ionized chromium flux that is enhanced relative to a direct-current sputtering process” (emphasis added). There is no specific support in the Specification, in particular at para 0029, 0044, 0047, 0052-0053, 0068, 0085-0087, 0091-0092, 0099-0101, and 0103, for the comparison between the pulsed power and a direct-current sputtering process.
New claim 21 recites “the CrC transition layer is formed as an adhesion-promoting layer between a substrate and an overlying coating” (emphasis added). There is no specific support in the Specification, in particular at para 0029, 0044, 0047, 0052-0053, 0068, 0085-0087, 0091-0092, 0099-0101, and 0103, since the published Specification (US 2024/0093344) at least at para 0018 states “at least a metallic adhesion promoting layer, such as Cr deposited directly onto the surface of a substrate, followed by a particular dense metal carbide transition layer produced by co-sputtering HiPIMS, such as CrxCx” (emphasis added) and para 0039 states “the Cr adhesion promoting layer”; thus the Specification defines the metallic layer of Cr is an adhesion promoting layer, and not the CrC transition layer.
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 14-15 and 18-20 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.
Amended claim 14 recites the limitation "the carbon-containing target". There is insufficient antecedent basis for this limitation in the claim. New claim 18 also recites "the carbon-containing target" and is similarly rejected. Claims 15 and 18-19 are also rejected as depending on claim 14.
New claim 20 recites the limitation "the pulsed power". 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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-2, 4-7, 10-16, and 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (JP No. 2016128599, machine translation cited below) in view of Krassnitzer et al (US 10,060,026).
With respect to claims 1, 13, and 16, Ito discloses a method of producing an “intermediate layer” including a “first layer” of Cr and a “second layer” that comprises a “gradient composition layer” of Cr-C (i.e. claimed “CrC transition layer”), the method comprises a sputter deposition process (e.g. unbalanced magnetron sputtering or UBMS) of applying power to a Cr target in an inert atmosphere of Ar gas (argon gas) that is absent of hydrocarbon gas (i.e. claimed “free of carbon-reactive gases”) to deposit the first layer, and applying power to a Cr target to ion irradiate Cr+ ions a surface of the CrC transition layer during depositing (i.e. claimed “growth”) of the CrC transition layer from the Cr target and a C target (para 0018, 0039-0040, 0042, and 0055), wherein the CrC transition layer has ‘a proportion of carbon to a total of Cr and carbon’ (also referred to as “carbon proportion” or “carbon ratio”) of between 40-80 atomic% (para 0018-0023), which is within the claimed “a carbon content of the CrC transition layer is defined by Cr1-xCx where 0.4<x<0.85” (MPEP 2144.05, I).
However Ito is limited in that while the sputter deposition process has power applied to the Cr and C targets (para 0040), a specific pulsing power and power density applied to the Cr target is not suggested.
Krassnitzer teaches a method of a sputter deposition process to produce Cr-C layers from respective targets of Cr and C (Abstract; claims 1 and 5), similar to the method of Ito. Krassnitzer further teaches the sputter deposition process uses “High Power Impulse Sputtering (HIPIMS)” to the target of Cr with a power density exceeding 500 W/cm2 with a pulse duration 2000 ms (2 ms) to ion irradiate Cr+ ions onto a deposition surface (Abstract; col. 1, lines 1-6; col. 2, lines 6-17). Krassnitzer cites the advantage of the power density and pulse duration to the target of Cr as keeping targets in a desired work mode independently from one another despite a reactive gas (such as a hydrocarbon) being present (col. 1, lines 3-14; claim 8).
It would have been obvious to one of ordinary skill in the art to incorporate the power density and pulse duration of Krassnitzer applied to the Cr target of Ito to gain the advantage of keeping both Cr and C targets operating in a desired work mode independently from one another despite a reactive gas (such as a hydrocarbon) being present (Ito, para 0040).
With respect to claims 2 and 10, modified Ito further discloses a substrate temperature is maintained during the sputter deposition process between room temperature (e.g. about 20-25oC) up to 200oC (para 0042), with a specific example of the substrate temperature being 100oC (para 0055); thus the substrate temperature is maintained between 100-200oC.
With respect to claim 4, modified Ito further discloses a total pressure set between 0.1-5.0 Pa, with Ar pressure set to a ratio of 30-100% of the total pressure (para 0042), which overlaps with the claimed “Ar pressure of about 0.1 to about 0.6 Pa” (MPEP 2144.05, I and II).
With respect to claims 5, 7, and 11-12, modified Ito further discloses the sputter deposition process comprises a negative bias greater than 40 V (para 0041), with a specific example of the negative bias being 200 V (para 0055).
With respect to claim 6, the combination of references Ito and Krassnitzer has: Ito teaching to have the negative bias operate with (e.g. claimed “synchronized with”) power applied to the Cr and C targets (para 0040-0041); and Krassnitzer also teaching to “synchronize” a negative bias applied to a substrate with power applied to the targets of Cr and C (fig. 2; col. 3, lines 21-22 and 56-61; claim 6).
With respect to claims 14 and 15, the combination of references Ito and Krassnitzer has: Ito further teaching the sputter deposition process comprises co-sputtering of the Cr and C targets such that the carbon content is controlled by having power (e.g. the pulsed power of Krassnitzer) to the Cr target decreased and increasing the power (e.g. the pulsed power of Krassnitzer) to the C target (para 0040); Ito also suggests keeping power constant to the Cr and/or C targets while changing a ratio of hydrocarbon gas (para 0040 and 0055-0056).
With respect to claims 18 and 19, modified Ito further discloses the ion irradiate Cr+ ions on the surface of the CrC transition layer occurs with co-sputtering of the Cr and C targets (para 0018, 0039-0040, 0042, and 0055), with controlling of Ar gas flow for the inert atmosphere and power input to the Cr target controlling the carbon content (para 0040 and 0056), thus the carbon content is controlled independently of reactive gas flow.
With respect to claim 20, the combination of references the combination of references Ito and Krassnitzer has: Krassnitzer teaching that the HIPIMS to the target of Cr “will result in a high ionized proportion of the sputtered material” (i.e. ionized Cr flux) (col. 3, lines 1-22; claims 1 and 5), which is considered to be enhanced compared with a conventional direct current (DC) sputtering process.
With respect to claim 21, modified Ito further discloses the CrC transition layer (i.e. second layer) is formed as an adhesion-promoting layer between a substrate and an overlying coating of diamond-like carbon (DLC) (para 0008-0009 and 0015).
Response to Arguments
Applicant’s Remarks on p. 5-8 filed 2/13/2026 are addressed below.
112 Rejections
Claim 14 has been amended to clarify “co-sputtering” and “target”; the previous 112(a) and 112(b) rejections are maintained for the new reasoning set forth above.
103 Rejections
On p. 5-6, Applicant argues that Ito does not teach the claimed method of the ‘deposition process is in a “purely inert atmosphere”’ (e.g. claimed “free of carbon-containing gases”) as recited by amended claim 1.
The Examiner respectfully disagrees.
First, there is no support in the Specification for “free of carbon-containing gases” as discussed above in the 112 rejection, nor does the atmosphere being “free of carbon-containing gases” necessarily also mean the atmosphere is purely or only inert gas as also discussed above in the 112 rejection.
Second, Ito teaches that during the deposition process for the intermediate layer comprising the first and second layers, the first layer is deposited in a purely inert atmosphere of Ar gas, and the second layer of the CrC transition layer is deposited in an inert atmosphere with a hydrocarbon gas, which reads on the method of claim 1.
On p. 5-7, Applicant argues that the combination of Ito and Krassnitzer does not teach the claimed “ion irradiating Cr+ ions onto a surface of the CrC transition layer during the growth of the CrC transition layer by applying to at least one Cr target pulses of a length […] above 0.05 ms with a power density of greater than 500 W/cm2” as recited by amended claim 1.
The Examiner respectfully disagrees since the combination has Ito teaching to deposit the CrC transition layer with the Cr and C targets using the sputter deposition process (para 0018, 0039-0040, 0042, and 0055), and Krassnitzer teaching for the sputter deposition process to apply the “High Power Impulse Sputtering” (HIPIMS) to the Cr target with the power density exceeding 500 W/cm2 with the pulse duration 2000 ms (2 ms) (Abstract; col. 1, lines 1-6; col. 2, lines 6-17), thereby ion irradiating Cr+ ions onto a deposition surface (such as the CrC transition layer during growth). Thus the combination Ito and Krassnitzer reads on the method of claim 1.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL A BAND whose telephone number is (571)272-9815. The examiner can normally be reached Mon-Fri, 9am-5pm EST.
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/MICHAEL A BAND/Primary Examiner, Art Unit 1794
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