DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on January 27, 2026 was received. Claims 15 and 24 were amended. Claims 3-4 and 16-17 were canceled. Claims 27-31 were added. Claims 1-2, 5-14 and 25 were withdrawn.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued February 20, 2025.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 January 27, 2026 has been entered.
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 15, 18-24 and 26-31 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.
Regarding claim 15, the specification and original claims do not provide any support for “predominantly columnar grains and discrete non-columnar regions interspersed among the columnar grains”. The specification only provide support for the mixed columnar and non-columnar microstructure and the figures. However, the figures aren’t clear to show the such specific mixed microstructure as claimed. Specifically, it is unclear what is “predominantly” mean without further description. For purpose of examination, any amount is considered to read on “predominantly”. However, Applicant should clarify what is intended, without new matters.
Regarding claim 27, the specification and original claims do not provide any support for the non-columnar grains being equiaxed.
Regarding claim 28, the specification and original claims do not provide any support for the average grain size of the columnar grains is at least five times grater than the average grain size of the non-columnar grains.
Regarding claim 29, the specification and original claims do not provide any support for the microstructure includes a matrix of columnar grains and a plurality of equiaxed grains distributed within the columnar grain matrix. The specification only provide support for the mixed columnar and non-columnar microstructure and the figures. However, the figures aren’t clear to show the such specific mixed microstructure as claimed.
Regarding claim 30, the specification and original claims do not provide any support for the layer is in the form of monolithic layer and the think film exhibiting a dual grain morphology including columnar grains and non-columnar grains, wherein the non-columnar grains are dispersed among the columnar grains. The specification only provide support for the mixed columnar and non-columnar microstructure and the figures. However, the figures aren’t clear to show the such specific mixed microstructure as claimed.
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 claim rejections under 35 U.S.C. 103 as being unpatentable over Eriksson (WO2019048507), in alternative, further in view of Yamagata (US5366564), on claims 15, 18-24 and 26 are withdrawn, because the claims have been amended.
Claims 15, 18-24 and 26-31 are rejected under 35 U.S.C. 103 as being unpatentable over Eriksson (WO2019048507) in view of Oginoya (JPH08972B2).
Regarding claim 15, It is noted that the instant claim is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a 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 Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985).
Eriksson teaches a coating comprising AlTiN based film deposited by PVD process (abstract), wherein the AlTiN based film has a AlXTi1-XN structure (AlaTib)(NcArd)y with d is 0, c is 1, a+b = 1, c+d =1, a and b are atomic fraction of the concentration of aluminum and titanium, and a is more than 0.75 (page 5 second paragraph, page 2 last paragraph) (aluminum rich AlXTi1-XN based thin film having an aluminum content of more than 70 at% based on the total amount of aluminum and titanium in the thin film, producible by a PVD process, which is claim 1 process). Eriksson teaches the film has a cubic crystal structure (abstract, and page 3 fifth paragraph). Eriksson teaches the film has a columnar microstructure (page 7 third paragraph, figure 4). Eriksson teaches the columnar structure contributes to the were resistance characteristic to characteristics (pages 1-3).
Eriksson does not explicitly teach the mixed columnar and non-columnar microstructure. However, Oginoya teaches a method of forming a corrosion and wear resistance film by mixing the aluminum and titanium nitride (AlTiN) (Description; Function, last paragraph, also page 4 of the machine translation; Example 4). Oginoya teaches to include equiaxed structure (non-columnar) in the film to enhance the corrosion resistance of the film (Function, also page 3-4 of the machine translation), wherein the film can be formed with mixture of equiaxed crystals and columnar crystals with by adjusting the process parameter in the range between the ranges being used to form pure equiaxed crystal layer and pure columnar crystal layer (Example 4). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the non-columnar structure in the process/product to yield the desired corrosion resistance for the thin film. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Since Erickson also teaches to optimize the process parameters to achieve the columnar structure (substrate bias, N2 partial pressure, substrate temperature (page 1) transition phase can be achieve (page 17), the combination of references teaches the mixed columnar and columnar structure can be achieved by adjusting the parameters to be in the range between the ranges for forming columnar and noncolumnar structure. It is reasonably expected that the microstructure comprises columnar grains and discrete non-columnar regions interspersed among the columnar grains as these structures are being formed at the same time. It would have been within the skill of the ordinary artisan to adjust and optimize the amount of columnar and non-columnar compoonent in the produce to yield the desired levels of corrosion resistance (from non-columnar structure disclosed by Oginoya) and wear resistance (from columnar structure as disclosed by Eriksson). Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the equiaxed structure (non-columnar) in the film as suggested by Oginoya in the product of Eriksson, because Oginoya teaches it enhances the corrosion resistance of the film (Function, also page 3-4 of the machine translation).
Regarding claim 18, Eriksson teaches the hardness of the film is more than 44 GPa, which is inside of the claimed range (page 6 fourth paragraph). Eriksson also teaches the hardness governs the wear resistance (page 1). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the hardness of the thin film to yield the desired wear resistance. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 19, Eriksson teaches the reduced Young’s modulus is more than 350 GPa, which is inside of the claimed range (page 6 first paragraph). Eriksson also teaches the elastic modulus governs the wear resistance (page 1). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the elastic modulus of the thin film to yield the desired wear resistance. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 20, Eriksson teaches the film shows a compressive stress of 1 to 6, which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 21, Oginoya teaches the adhesiveness governs the level of defect of the coating which affects the corrosion and wear resistance (Description)
Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the adhesiveness of the thin film (which including when the coating thickness is at least 5µm) for the desired level of corrosion and wear resistance. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 22, Eriksson teaches the thin film is a multilayer film (page 18 second paragraph).
Regarding claim 23, Eriksson teaches the thin film has an aluminum atomic fraction of over 0.75 (75 percent) based on the total amount of aluminum and titanium in the thin film (page 2 fourth paragraph).
Regarding claim 24, Eriksson teaches the layer thickness is 3 micrometer (page 19 fourth paragraph).
Regarding claim 26, It is noted that the instant claim is a product-by-process claim. “Even though product-by-process claims are limited by and defined by the process, determination of the patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in a 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 Thrope, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). In this case, the Eriksson in view of Oginoya teaches the thin film with the high adhesion, which is the same as the claimed thin film with high adhesion formed from deposition using ceramic targets and arc discharge.
Regarding claim 27, Oginoya teaches the non-columnar grains are equiaxed and are reasonable expected to be located at grain boundaries between columnar grains as they two structures are being formed at the same time (Function, also page 3-4 of the machine translation). It is well settled that limitations relating to the size or proportion were not sufficient to patentably distinguish over the prior art which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the dimension/proportion (aspect ratio) was significant (MPEP 2144.04 IV. A.). Thus, it would be obvious to one of ordinary skill in the art to have the equiaxed grains size at average aspect ratio of less than 2 as claimed.
Regarding claim 28, It is well settled that limitations relating to the size or proportion were not sufficient to patentably distinguish over the prior art which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the dimension/proportion was significant (MPEP 2144.04 IV. A.). Thus, it would be obvious to one of ordinary skill in the art to have the average grain size of the columnar grains at least five times greater than the average grain size of the non-columnar grains as claimed.
Regarding claim 29, Eriksson teaches the columnar grains are crystallographically textures (pages 1-3) and Oginoya teaches the non columnar grains is equiaxed structure which are intricially randomly oriented (Function, also page 3-4 of the machine translation),
Regarding claim 30, Eriksson teaches a coating comprising AlTiN based film deposited by PVD process (abstract), wherein the AlTiN based film has a AlXTi1-XN structure (AlaTib)(NcArd)y with d is 0, c is 1, a+b = 1, c+d =1, a and b are atomic fraction of the concentration of aluminum and titanium, and a is more than 0.75 (page 5 second paragraph, page 2 last paragraph) (aluminum rich AlXTi1-XN based thin film having an aluminum content of more than 70 at% based on the total amount of aluminum and titanium in the thin film, producible by a PVD process, which is claim 1 process). Eriksson teaches the film has a cubic crystal structure (abstract, and page 3 fifth paragraph). Eriksson teaches the film has a columnar microstructure (page 7 third paragraph, figure 4). Eriksson teaches the columnar structure contributes to the were resistance characteristic to characteristics (pages 1-3). While Eriksson does not explicitly teach the cubic crystal structure is face centered cubic, however, it is reasonably expected that the claimed aluminum titanium nitride film intricially has the same face centered cubic crystal structure as they are the same materials and formed by the same process (PVD).
Eriksson does not explicitly teach the mixed columnar and equiaxed grains structure. However, Oginoya teaches a method of forming a corrosion and wear resistance film by mixing the aluminum and titanium nitride (AlTiN) (Description; Function, last paragraph, also page 4 of the machine translation; Example 4). Oginoya teaches to include equiaxed structure (non-columnar) in the film to enhance the corrosion resistance of the film (Function, also page 3-4 of the machine translation), wherein the film can be formed with mixture of equiaxed crystals and columnar crystals with by adjusting the process parameter in the range between the ranges being used to form pure equiaxed crystal layer and pure columnar crystal layer (Example 4). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the non-columnar structure in the process/product to yield the desired corrosion resistance for the thin film. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Since Erickson also teaches to optimize the process parameters to achieve the columnar structure (substrate bias, N2 partial pressure, substrate temperature (page 1) transition phase can be achieved (page 17), the combination of references teaches the mixed columnar and columnar structure can be achieved by adjusting the parameters to be in the range between the ranges for forming columnar and noncolumnar structure. It is reasonably expected that the microstructure comprises a matric of columnar grains and a plurality of equiaxed grains distributed within the columnar grain matrix as these structures are being formed at the same time. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the equiaxed structure (non-columnar) in the film as suggested by Oginoya in the product of Eriksson, because Oginoya teaches it enhances the corrosion resistance of the film (Function, also page 3-4 of the machine translation).
Regarding claim 31, Eriksson teaches a monolithic coating comprising AlTiN based film deposited by PVD process (abstract), wherein the AlTiN based film has a AlXTi1-XN structure (AlaTib)(NcArd)y with d is 0, c is 1, a+b = 1, c+d =1, a and b are atomic fraction of the concentration of aluminum and titanium, and a is more than 0.75 (page 5 second paragraph, page 2 last paragraph) (aluminum rich AlXTi1-XN based thin film having an aluminum content of more than 70 at% based on the total amount of aluminum and titanium in the thin film, producible by a PVD process, which is claim 1 process). Eriksson teaches the film has a cubic crystal structure (abstract, and page 3 fifth paragraph). Eriksson teaches the film has a columnar microstructure (page 7 third paragraph, figure 4). Eriksson teaches the columnar structure contributes to the were resistance characteristic to characteristics (pages 1-3).
Eriksson does not explicitly teach the mixed columnar and equiaxed grains structure. However, Oginoya teaches a method of forming a corrosion and wear resistance film by mixing the aluminum and titanium nitride (AlTiN) (Description; Function, last paragraph, also page 4 of the machine translation; Example 4). Oginoya teaches to include equiaxed structure (non-columnar) in the film to enhance the corrosion resistance of the film (Function, also page 3-4 of the machine translation), wherein the film can be formed with mixture of equiaxed crystals and columnar crystals with by adjusting the process parameter in the range between the ranges being used to form pure equiaxed crystal layer and pure columnar crystal layer (Example 4). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the amount of the non-columnar structure in the process/product to yield the desired corrosion resistance for the thin film. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. Since Erickson also teaches to optimize the process parameters to achieve the columnar structure (substrate bias, N2 partial pressure, substrate temperature (page 1) transition phase can be achieved (page 17), the combination of references teaches the mixed columnar and columnar structure can be achieved by adjusting the parameters to be in the range between the ranges for forming columnar and noncolumnar structure. It is reasonably expected that the the non-columnar grains are dispersed among the columnar grains as these structures are being formed at the same time. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the equiaxed structure (non-columnar) in the film as suggested by Oginoya in the product of Eriksson, because Oginoya teaches it enhances the corrosion resistance of the film (Function, also page 3-4 of the machine translation).
Response to Arguments
Applicant’s arguments with respect to claims 15, 18-24 and 26 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.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kurapov (WO2019048507)
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/NGA LEUNG V LAW/Examiner, Art Unit 1717
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