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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 6/9/2026 has been entered.
Claim Interpretation
The term “incompatible” as recited in claim 1 (and also in claims 4 and 5) has been interpreted in view of Specification para 0048 stating ““Incompatible” elements and alloys, as used herein, cannot practicably be mixed in their respective amounts and used to fabricate (e.g., by casting, forging, or powder pressing) a solid structure of the cathode 200 (e.g., the main body 202 or an insert 218 of the cathode 200) having sufficient strength and/or ductility to withstand mechanical loads experienced during manufacture and/or use of the cathode without prematurely breaking apart (i.e., failing)”.
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.
Claim 30 is 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.
Claim 30 (dependent on claim 28) recites “the recessed surface on a first side and which opens to the end surface on a second side” (emphasis added), and claim 28 recites “the recessed surface on a first side and which opens to the end surface on a second side” (emphasis added). There is no support for distinct ‘first and second sides’ in claim 30 from the ‘first and second sides’ of claim 28.
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 1-5, 7-11, 21-23, and 25-31 are rejected under 35 U.S.C. 103 as being unpatentable over Ramalingam (US 5,298,136) in view of Yu (KR 19990002342, machine translation cited below) and Krassnitzer et al (US 9,165,749).
With respect to claims 1-2 and 25, Ramalingam discloses in figs. 13-14 a cathode [140] for use in arc coatings (i.e. claimed “ion deposition process”) (col. 9, lines 19-68; col. 10, lines 1-22); figs. 13-14 depict the cathode [140] comprises: a main body defining a working surface thereof and fabricated from a first deposition material, and plural “inserts” [141A]-[141F] coupled to the main body of the cathode [140] and spaced from a center region, wherein the inserts [141A]-[141F] each are at least partially exposed at the working cathode surface (as shown in fig. 14), and the inserts [141A]-[141F] has at least one that includes a second deposition material different from the first deposition material (col. 9, lines 17-27 and 46-50; claim 28). Ramalingam further discloses the first and second materials are vaporizable via electric arc generated at the working cathode surface (as further shown in fig. 14 as “arc path” [152]) to deposit a coating of an alloy or compound (col. 9, lines 46-68; col. 10, lines 1-6). Since the first deposition material of the cathode [140] is structurally distinct and separate from the second deposition material of the inserts [141A]-[141F], the second deposition material is considered as “incompatible” with the first deposition material.
However Ramalingam is limited in that the cathode comprising the main body defining a “sunk working surface” for the working cathode surface is not suggested.
Yu teaches a cathodic arc source including a cathode comprising a main body defined by either a conventional flat surface in fig. 2 (similar to Ramalingam’s figs. 13-14) or a “recessed surface” (i.e. claimed “sunk working surface”) in figs. 1 and 3-5 (p. 2 and 4); figs. 1 and 3-5 each show the sunk working surface includes an “arc emission preventing wall” [111a],[113a],[114a] defining: a peripheral edge; a recessed surface [111s],[112s],[113s],[114s] in a center region and lower than the peripheral edge; a downwardly-extending surface extending between the peripheral edge and the recessed surface [111s],[112s],[113s],[114s]; an end surface formed opposite the sunk working surface; and a side edge extending between the peripheral edge and the end surface (p. 2-4). Yu cites the advantages of the sunk working surface including the arc emission preventing wall as stably controlling an arc flow generated on a target surface to improve efficiency of target metal, performance of a coating film, and coating efficiency (p. 1 and 3)
It would have been obvious to one of ordinary skill in the art to incorporate the sunk working surface and the arc emission preventing wall of Yu into the main body of Ramalingam to gain the advantages of stably controlling an arc flow generated on a target surface to improve efficiency of target metal, performance of a coating film, and coating efficiency.
However the combination of references Ramalingam and Yu is further limited in that a centrally located opening for an insulated insert positioned in the center region of the recessed surface is not suggested.
Krassnitzer teaches in figs. 20-22 a target (i.e. cathode) [1] with a target front face (i.e. working surface) [2] for an arc deposition source and an end surface (Abstract; col. 1, lines 6-18; col. 11, lines 10-33; col. 12, lines 38-46), similar to the cathode and arc deposition source of Ramalingam and Yu. Krassnitzer further depicts in figs. 20-22 a “cover” (i.e. claimed “insulated insert”) [20] of an “electrically insulated” material positioned in a central area (i.e. center region) of the cathode [1] and separate from an outer surface (e.g. location of the inserts [141A]-[141F] from Ramalingam) (col. 11, lines 10-15), where the insulated insert [20] is capable of having a cathode spot of an electric arc avoid the central area of the working surface [2] while constraining the cathode spot of the electric arc over the working surface [2] outside the central area (e.g. rejects the electric arc at the central area of the working surface [2] and driving the electric arc away from the insulated insert [20]) (col. 4, lines 38-44; col. 11, lines 10-33); fig. 22 further shows the insulated insert [20] as “counter-sunk” in a centrally located opening (col. 11, lines 29-33), and suggests for the cover [20] to be “counter-sunk flush with the target front face” (i.e. the insulated insert [20] is flush, or the claimed “entirely received”, in the centrally located opening in working surface [2] while an end of the insulated insert [20] is exposed at the working surface [2]) (col. 4, lines 58-62). Krassnitzer cites the advantage of the insulated insert [20] as effectively preventing spark or arc from the working surface [2] onto a surface of the insulated insert [20] to reduce “splatter formation” (col. 4, lines 38-62).
It would have been obvious to one of ordinary skill in the art to incorporate the insulated insert [20] of Krassnitzer into a centrally located opening in the center region of the recessed surface and separate from the inserts [141A]-[141F] of the combination of references to gain the advantage of reducing splatter formation by preventing spark or arc at the insulated insert [20].
With respect to claim 3, the combination of references Ramalingam, Yu, and Krassnitzer has: Ramalingam depicting in figs. 13-14 two inserts [141B],[141E] are arranged and spaced circumferentially at the recessed surface (of Yu) of the cathode [140] (col. 19-27 and 51-62).
With respect to claims 4 and 5, modified Ramalingam further discloses the inserts [141A]-[141F] are each made of different materials (col. 9, lines 19-23), thus the second deposition material of at least one of the inserts [141A]-[141F] is different than a third deposition material of a second one of the inserts [141A]-[141F]. Since the first deposition material of the cathode [140] is structurally distinct and separate from the third deposition material of the second one of the inserts [141A]-[141F], the third deposition material is considered as “incompatible” with the first deposition material.
With respect to claim 7, Krassnitzer further teaches the insulated insert [20] is capable of facilitating controlling movement of the cathode spot of the electric arc generated at the working surface [2] (col. 4, lines 38-62; col. 11, lines 10-33), wherein the insulated insert [20] is made of either Al2O3 (alumina) or BN (boron nitride) (col.4, lines 1-57; col. 11, lines 16-17).
With respect to claims 8 and 9, modified Ramalingam further suggests that depositions materials are selectable from titanium (Ti) and zirconium (Zr) (col. 9, lines 19-24; col. 10, lines 2-6; col. 12, lines 2-5); thus the first and second deposition materials are suggested to respectively be Ti and Zr, or Zr and Ti.
With respect to claims 10 and 11, modified Ramalingam further depicts in figs. 13-14 each of the inserts [141A]-[141F] is retained in a corresponding opening (each formed in the recessed surface [111s], [112s],[113s],[114s] of the sunk working surface shown in Yu’s figs. 1 and 3-5) in the main body of the cathode [140] via friction fit against cylindrical walls of each corresponding opening (col. 9, lines 19-21; claim 28).
With respect to claim 21, the combination of references Ramalingam, Yu, and Krassnitzer has: Ramalingam depicting in figs. 13-15 each corresponding opening (containing each of the inserts [141A]-[141F]) extends through the working surface (e.g. Yu’s recessed surface) and through the end surface of the main body.
With respect to claim 22, modified Ramalingam further suggests in figs. 13-15 at least one of the inserts [141A]-[141F] includes: opposed end surfaces and a length therebetween equal to a length of the main body; and a surface of the at least one of the inserts [141A]-[141F] extending to the end surface of the main body.
With respect to claim 23, the combination of references Ramalingam, Yu, Krassnitzer has: Ramalingam further suggesting in figs. 1-2 and 14 the exposed portions of the two inserts [141B],[141E] (Ramalingam col. 4, lines 31-36; col. 9, lines 19-21; claim 28) to be flush with the working surface (e.g. Yu’s recessed surface).
With respect to claim 26, Yu further teaches in figs. 1 and 3-5 a distance between the downwardly-extending surface and peripheral edge is less than 50% of a diameter of the sunk working surface (p. 2-4).
With respect to claim 27, Yu further teaches in figs. 1 and 4 the downwardly-extending surface includes a chamfered configuration and is angled with respect to the recessed surface [111s], [112s],[113s],[114s] peripheral edge within an angle range between 10-80o (p. 2-4).
With respect to claim 28, the combination of references Ramalingam, Yu, and Krassnitzer has: Krassnitzer depicting in figs. 20-22 the centrally located opening comprises a cylindrical bore having an opening at the working surface [2] (i.e. Yu’s recessed surface) on a first side and which opens to the end surface of a second side.
With respect to claims 29 and 30, the combination of references Ramalingam, Yu, Krassnitzer has: Ramalingam further depicts in figs. 13-14 each of the inserts [141A]-[141F] is substantially entirely received in a corresponding second opening (each formed in the recessed surface [111s], [112s],[113s],[114s] of the sunk working surface shown in Yu’s figs. 1 and 3-5), wherein figs. 13-14 depict each of the corresponding second openings spaced from the center region, and each of the corresponding second openings comprise a cylindrical bore which opens to the working surface (e.g. Yu’s recessed surface) on the first side and opens to the end surface on the second side.
With respect to claim 31, the combination of references Ramalingam, Yu, Krassnitzer has: Krassnitzer showing in figs. 20-22 the centrally located opening of the insulated insert [20] at the center region having a first diameter of about half a diameter of the cathode [1] (para 0018 and 0025); and Ramalingam showing in figs. 13-14 the corresponding second openings for the inserts [141A]-[141F] (col. 9, lines 19-21), wherein fig. 13 shows each of the corresponding second openings (for each of the inserts [141A]-[141F]) having a second diameter that is smaller than a diameter of the center region; thus the second diameter of each of the corresponding second openings is smaller than the first diameter of the centrally located opening of Krassnitzer.
Response to Arguments
Applicant’s Remarks on p. 6-10 filed 5/13/2026 are addressed below.
Claim Objections
Claims 1, 7, and 25 have been amended to clarify as the “insulated insert”; the previous objections have been withdrawn.
112 Rejections
On p. 6, Applicant argues that claim 30 depends on claim 29, and therefore no new matter issue is present for two distinct ‘first and second sides’ for the claimed “recessed surface”.
The Examiner respectfully disagrees since while claim 30 is directly dependent on claim 29, claim 29 then depends on claim 28; thus claim 30 is dependent on claim 28. As such, limitations (e.g. first and second sides of the recessed surface) of claim 30 do depend on limitations from claim 28; thus the new matter issue is present for distinct ‘first and second sides of the recessed surface’. The previous 112(a) rejection is maintained.
Claim 1 has been amended to clarify the “centrally located opening”; the previous 112(b) rejection has been withdrawn.
103 Rejections
Applicant’s arguments on p. 6-10 with respect to amended claim 1 have been considered but are moot because the arguments do not apply to the new combination of references Ramalingam, Yu, and Krassnitzer being applied in the current rejection.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, James Lin can be reached at (571) 272-8902. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL A BAND/Primary Examiner, Art Unit 1794
