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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/09/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed on 04/28/2026, with respect to Claims 1-10 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Martin et. Al. (US 2005/0064196 A1) ,Claims 1-11 are rejected under 35 U.S.C. 103 as being unpatentable over Itadani et al. (US 2018/0010690 A1) and further in view of Martin, Claim 1, 3-5, and 10-11 rejected under 35 U.S.C. 103 as being unpatentable over by Arai (US 2019/0178386 A1) and further in view of Martin. and have been fully considered and are persuasive. The rejection of the claims have withdrawn. However, upon further consideration, a new ground(s) of rejection is made set forth below.
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007).
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.
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-10 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by Martin et. Al. (US 2005/0064196 A1) ("Martin" herein- cited previously).
Claim 1
Martin discloses a sliding component having a sliding surface performing relative sliding,
wherein a base material of the sliding component is directly coated with a film containing of glassy non-graphitized carbon (i.e. hard carbon),
the sliding surface is formed by the film and is softer than the base material, and has a thickness of 1 µm to 100 µm. (i.e. film thickness of 0.3 to 2.0 .µ.m) [0010-0013, 0017-0021, 0023-0025 ]
Since Martin discloses the same composition comprising a non-graphitized carbon or hard carbon with a base material, it would be a glassy non-graphitized carbon and be softer than the base material.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 2
Martin discloses the sliding component according to claim 1, wherein the film further contains graphite. [0017-0018]
Claim 3
Martin discloses the sliding component according to claim 1, wherein the film contains a filler with a dimension equal to or less than a film thickness of the film. [0017-0022]
Claims 4, 5, 7, 8, 9, 10, and 11
Since Martini discloses the same composition comprising a carbon with a filler such as graphite, it would have a high-thermal conductivity filler and a low-coefficient friction filler than the glassy carbon included in the film.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses
and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 6
Martin discloses the sliding component according to claim 2, wherein the film contains a filler with a dimension equal to or less than a film thickness of the film. [0017-0018]
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim 1, 3-5, and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over by Arai (US 2019/0178386 A1) ("Arai" herein- cited previously) and further in view of Martin.
Claim 1
Arai discloses a sliding component having a sliding surface performing relative sliding, [0070-0071]
wherein a base material of the sliding component is directly coated with a film containing of glassy carbon [0083] and the sliding surface is formed by the film [0075-0084]
Wherein the glassy carbon is softer than the base material (i.e. SiC) and wherein the film has a thickness of 1 µm to 100 µm. [0081, 0083]
Arai however does not exilically disclose the glassy carbon is non-graphitized carbon (i.e. hard carbon).
Martin teaches the above limitation. (See paragraphs 0010 & 0018 →Martin teaches this limitation in that an aspect of the present invention resides in a low-friction sliding member comprising a base material having a surface. A hard carbon thin film is formed at least a part of the surface of the base material. the low-friction sliding member according to the present invention comprises the base material having the surface. At least a part of the surface is coated with the hard carbon thin film. Examples of the hard carbon thin film are thin films formed of a DLC (diamond-like carbon) material which is an amorphous material principally formed by carbon element, of which carbon-carbon bond includes a diamond structure (sp.sup.3 bond) and a graphite bond (sp.sup.2 bond). Specific examples include a-C (amorphous carbon) formed solely of carbon, a- C:H (hydrogenated amorphous carbon) containing hydrogen, and MeC containing partially a metal element such as titanium (Ti) or molybdenum (Mo). From the viewpoint of obtaining a large friction reducing effect, the DLC material to be used has a smaller hydrogen content preferably, not higher than 20 atomic %, more preferably, not higher than 5 atomic %, further more preferably not higher than 1 atomic %, and further more preferably not higher than 0.5 atomic %. It is also preferable to use a-C based or type DLC material containing substantially not hydrogen.) for the purpose of having a low- friction sliding member. [0010]
Accordingly, it would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify Arai, with the above limitation, as taught by Martin, in order to have a low-friction siding member.
Since Aria teaches the same composition comprising a non-graphitized carbon with a filler comprising a SiC, it would be a glassy carbon included in the thin film and be softer than the base material.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at .1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 3
Arai discloses the sliding component according to claim 1, wherein the thin film contains a filler with a dimension equal to or less than a film thickness of the film. [0079- 0081]
Claims 4 and 5
Since Arai discloses the same composition comprising a glassy carbon with a filler, it would have a high-thermal conductivity filler and a low-coefficient friction filler than the glassy carbon included in the film.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7F Supp 773, 22 USPQ 313 (EDNY1934).
Claim 10 and 11 .
Since Arai discloses the same composition comprising a glassy carbon with a filler, it would have a high-thermal conductivity filler and a low-coefficient friction filler than the glassy carbon included in the film.
"Products of identical chemical composition cannot have mutually exclusive properties". A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant disc loses and /or claims are necessarily present. See MPEP 2112.01 (I), In re Best, 562 F2d at 1255, 195 USPQ at 433, Titanium Metals Corp V Banner, 778 F2d 775, 227 USPQ 773 (Fed Cir 1985) , In re Ludtke, 441 F2d 660, 169 USPQ 563 (CCPA 1971) and Northam Wareen Corp V DF Newfield Co, 7 F Supp 773, 22 USPQ 313 (EDNY1934).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SILVANA C RUNYAN whose telephone number is (571)270-5415. The examiner can normally be reached M-F 7:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sue Lui can be reached at 571-272-5539. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SILVANA C RUNYAN/Primary Examiner, Art Unit 1616 07/13/2026
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