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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 11/25/2025 has been entered.
The amendment filed 11/25/2025 has been entered. Claims 2-8, 11-12, and 16 have been canceled. New claim 19 has been added. Claims 1, 9-10, 13-15, and 17-19 are pending in the application. The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claim Rejections - 35 USC § 103
Claims 1, 9-10, 13-15, and 17-19 are rejected under 35 U.S.C. 103 as being unpatentable over Falabella (Fabrication of amorphous diamond films) in view of Man (US2022/0364224A1).
Falabella teaches amorphous diamond (a:D) films and a method of producing the a:D films on a substrate using a filtered cathodic arc system with a graphite cathode wherein the produced a:D films have the sp3 bond character of crystalline diamond, but lack a long-range ordered structure, and demonstrate Vickers hardness above 8000 Hv (e.g. about 78.5 GPa), hydrogen content below 0.1% (as in instant claim 1), density of 2.7 ± 0.3 g/cc, and adhesion on tungsten carbide (as in instant claim 14) and silicon substrates above 70 MPa (Abstract; Section 3, first paragraph). Falabella teaches that the fine structure of a:D was characterized by transmission electron microscopy (TEM) which showed no evidence of any ordered structure down to 1 nm (Abstract). Falabella produces films up to 8 µm thick on cemented tungsten carbide tool bits (“cutting tool” as in instant claims 1 and 14) and polished silicon wafers (Abstract, Section 3. Experimental details), with a tungsten carbide tool bit coated with 8 µm of a:D exhibiting a hardness of 10,000 Hv ± 10%, although the value “may be an overestimate of the hardness of the coating” given the discussion on page 84, first column, noting that the measured hardness may be affected by various parameters, with other results showing a hardness of 35.2 GPa for an indenter radius of 2 µm and load of 50 mN (page 84). Falabella teaches that with respect to the fine structure of a:D, the TEM indicated its amorphous nature and lack of any order as evident in the uniform random pattern, wherein as evidenced by the bright field TEM image shown in Fig. 2, there are no contrast regions with an equivalent circle diameter of 10 nm or more (Section 3.5, Fig. 2), reading upon and/or rendering obvious the claimed “wherein in the hard carbon film, an area percentage of black regions with an equivalent circle diameter of 10 nm or more is 0.7% or less, wherein the area percentage of black regions is measured in a high angle annular dark field scanning transmission electron microscope image of a cross section of the hard carbon film” as in instant claim 9, especially given that the sample areas may be arbitrarily selected and the determination of “black” regions is not specifically defined or limited by the instant claims.
Falabella teaches that the “density, hardness and intrinsic stress level of a:D depend on the ratio of sp3 to sp2 bonds”, wherein “[i]n general, the higher the sp3 fraction, the higher all three get” and that this “ratio can be affected by the conditions of deposition: incident energy, substrate surface temperature, and impurity concentration,” wherein the deposition conditions can be varied to provide a range of hardness and stress levels (Section 4). Falabella also teaches that the extraordinary properties of a:D make a:D suitable for coating of cutting tools wherein “a:D can potentially increase the life and precision of cutting edges, reducing replacement time and costs” (Section 2) and further teaches that surfaces of “metrology blocks, caliper faces and precision slides can be coated and polished to provide hard, smooth and wear resistant surfaces that will not change dimensions or scratch the parts under test” allowing more confidence in the continued accuracy of the tools and prolong the life of the equipment (Section 2). Falabella teaches that “[d]ue to the wear resistance and biocompatibility of a:D, the potential is great for coating scalpels” wherein if “a suitable technique is developed to allow a coated blade to achieve the sharpness of a natural diamond scalpel, the potential benefits are tremendous” given that “[i]ncisions made by diamond scalpels heal up to five times faster than those made with steel blades, reducing recovery times, and hospital costs, for many surgical procedures,” but that the high cost of diamond scalpels limits their use (Section 2).
Hence, with respect to the instantly claimed invention, Falabella teaches a cutting tool comprising a base material and a film arranged on the base material wherein the film includes a hard carbon film on an outermost surface thereof; the film is at a cutting surface of the cutting tool; the hard carbon film is amorphous; the hard carbon film includes a first region sandwiched between a surface of the hard carbon film and an imaginary plane P that may be at a distance of 40 nm from the surface of the base material, given the thicknesses taught by Falabella; the deposited hard carbon film may be polished to provide a hard, smooth, wear resistant surface; the hard carbon film has a hydrogen content below 0.1%, reading upon the claimed content ratio of 0.4 atom% or less, and although Falabella clearly teaches that the amorphous carbon film has sp3 bond character and that the density, hardness and intrinsic stress level of the amorphous carbon depend on the ratio of sp3 to sp2 bonds wherein the higher the sp3 fraction, the higher all three properties get and teaches and/or suggests a morphology as in instant claim 9, Falabella does not specifically teach a ratio of the {sp2/(sp2+sp3)} x 100 in the “first region” of 0.5 to 2.0 as in formula 2 as instantly claimed. However, given that Falabella clearly teaches that the deposition conditions can be varied to provide a range of hardness and stress levels and that the amorphous carbon film may be utilized as a coating on the cutting edge of different cutting tools, e.g., drill bit, scalpel, etc., wherein it is well established in the art that a hard carbon coating on such tools, particularly surgical cutting tools may be pure tetrahedral amorphous carbon with all or substantially all sp3 (as evidenced by Shener-Irmakoglu, US2014/0135806A1, Entire document, particularly Paragraphs 0020 and 0049, Claim 10; or Kumar as discussed previously on the record), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum deposition conditions to maximize or increase the sp3 content (→100%) and thus minimize or reduce the sp2 content (→0%) to provide the desired high hardness for a particular end use of the coated cutting tool. It is also noted that is well established in the art that the surface of a deposited hard carbon film may have impurities formed thereon such that after deposition, the surface can be polished to remove said impurities and improve the quality of the deposited film as taught by Man (Abstract, Paragraphs 0001, 0014, 0096-0097 Claim 1) and/or may be polished after deposition to provide desired surface smoothness as taught by Falabella such that removal of surface impurities and any sp2 content formed therefrom on the surface of the deposited hard carbon film would increase the overall sp3 content of the “first region” of the hard carbon film, and hence, absent any clear showing of criticality and/or unexpected results over the teachings of Falabella, the claimed invention as recited in instant claims 1 and 9 would have been obvious over Falabella in view of Man given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claims 10 and 17, as noted above, Falabella teaches that the produced films or coatings were up to 8 µm thick, with one analyzed film having a thickness of 2.4 µm (page 85) falling within the claimed thickness ranges as recited in instant claims 10 and 17, and hence the claimed invention as recited in instant claims 10 and 17 would have been obvious over the teachings of Falabella in view of Man.
With respect to instant claims 13 and 19, Falabella further teaches that it is known that adhesion between a substrate and a:D coating can be improved by forming an adherent interface such as by depositing “a thin layer of carbide-forming metal” before coating with a:D, and given that Falabella teaches that a mixed Si-C interlayer of about 2 nm may be formed by carbon penetrating the substrate surface such that “[o]n carbide-forming materials the adhesion is sufficient to produce thick coatings without the compressive stress causing delamination of the coating as long as the bias voltage is kept above 120 V during deposition” (Introduction, Sections 3.4-3.5), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to incorporate a thin carbide-forming metal interlayer as taught by Falabella, having a similar thickness as the Si-C interlayer of about 2 nm, falling within the claimed range, to improve adhesion between the a:D coating and the substrate material based upon the substrate material to be coated as taught by Falabella, wherein metals or elements as recited in instant claims 13 and 19 are obvious carbide-forming metals in the art and hence would have been obvious to one having ordinary skill in the art such that absent any clear showing of criticality and/or unexpected results, the claimed invention as recited in instant claim 13 and 19 would have been obvious over the teachings of Falabella in view of Man given that it is prima facie obviousness to use a known technique to improve similar devices in the same way.
With respect to instant claims 14-15, as noted above, Falabella teaches examples wherein the substrate to be coated is a tungsten carbide (WC) cutting tool as in instant claim 14, and although Falabella does not specifically teach a substrate or base material composed of cubic boron nitride as recited in instant claim15, given that cubic boron nitride is an obvious, functionally equivalent base material in the art to WC-based cemented carbide (as previously discussed on the record and/or as evidenced by Fukui, Col. 5, lines 15-23), the claimed invention as recited in instant claims 14-15 would have been obvious over the teachings of Falabella in view of Man, particularly given that it is prima facie obviousness to simply substitute one known element for another to obtain predictable results.
With respect to instant claim 18, given that the limitations thereof are process limitations in the product claim that do not appear to provide any additional structural and/or material limitations to the claimed cutting tool to differentiate the claimed invention from the teachings of Falabella in view of Man, particularly given that both Falabella and Man teach polishing the deposited hard carbon film as noted above, the claimed invention as recited in instant claim 18 would have been obvious over the teachings of Falabella in view of Man.
Claims 1, 9-10, 13-15, and 17-19 are (further) rejected under 35 U.S.C. 103 as being unpatentable over Falabella (Fabrication of amorphous diamond films) in view of Man (US2022/0364224A1) and further in view of Kato (US2015/0371833A1). The teachings of Falabella in view of Man are discussed in detail above and incorporated herein by reference wherein Falabella does not specifically teach the sp2/sp3 relationship as recited in instant claim 1, and although Falabella utilizes a vacuum arc discharge process under an argon atmosphere, Falabella in view of Man does not specifically teach the process steps as recited in instant claim 18, particularly utilizing a glassy carbon target for the film forming process. However, it is further noted that Kato teaches a similar carbon thin film manufacturing method and a hard carbon thin film formed on a substrate as in Falabella, wherein the method is a vacuum arc discharge method utilizing a vitreous carbon negative electrode material as a target which provides improvements over utilizing graphite (as in Falabella), such as extremely few or almost no particles released from the vitreous carbon (e.g., similar to the purpose of the filter in the filtered arc discharge process of Falabella), with one specific embodiment including the steps of providing a vitreous or glassy carbon target in a film forming apparatus, introducing argon gas into the film forming apparatus to provide an argon atmosphere, and evaporating and ionizing the vitreous or glassy carbon target by performing vacuum arc discharge to deposit the hard carbon thin film on the substrate as in instant claim 18; and given that Kato teaches that the carbon thin film manufacturing method may be utilized to produce an amorphous carbon thin film, a diamond-like carbon thin film, a tetrahedral amorphous carbon film (e.g., an amorphous carbon film that is hydrogen-free and substantially sp3), an amorphous hard carbon thin film, and a hard carbon thin film (Entire document, particularly Abstract, Paragraphs 0009-0019, 0110-0149, and 0610-0621, Figs. 1-4 and 83-84), it would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to utilize a glassy carbon target as in the method taught by Kato to further improve the amorphous carbon film in the invention taught by Falabella in view of Man, and to determine the optimum amount of the resulting as-deposited hard carbon film to remove during the polishing step as taught by Falabella and/or Man to remove all of the surface impurities and provide the desired surface smoothness for a particular end use. Hence, absent any clear showing of criticality and/or unexpected results over the teachings of Falabella, the claimed invention as recited in instant claims 1, 9-10, 13-15, and 17-19 would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention based upon the teachings of Falabella in view of Man and in further view of Kato, given that it is prima facie obviousness to use a known technique to improve similar devices in the same way, and one having ordinary skill in the art would reasonably expect the resulting hard carbon film produced by the same method as in the instant invention to exhibit similar properties as instantly claimed.
Response to Arguments
Applicant's arguments filed 11/25/2025 have been fully considered but are moot in view of the new grounds of rejection presented above wherein Falabella specifically teaches a hydrogen content of 0.4 atom% or less as recited in amended claim 1 and argued by the Applicant, and clearly teaches that a higher sp3 content provides higher hardness wherein the deposition process conditions can be varied to control the sp3 content and resulting hardness.
Any objection or rejection from the prior office action not restated above has been withdrawn by the Examiner in light of Applicant’s claim amendments and arguments filed 11/25/2025.
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/MONIQUE R JACKSON/Primary Examiner, Art Unit 1787