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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/27/2026 has been entered.
Claim Objections
Claims 1, 16 and 19 are objected to because of the following informalities:
In reference to claims 1 and 16, in line 17 amend “the course-grained layer” to “the at least one course-grained layer”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
In reference to claim 19, in lines 17-18, amend “the course-grained layer” to “the at least one course-grained layer”, in order to ensure consistency and proper antecedent basis in the claim language. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claim 10 is 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.
In reference to claim 10, the limitations “two of the layer” is recited in line 2. It is unclear what is meant by “two of the layer”, for example is two of the layers meant to refer to (1) two of the layers of different microstructures including each of the layers including the at least one fine-grained intermediate layer, the at least one coarse-grained layer and the at least one outermost fine-grained layer, (2) the at least one fine-grained intermediate layer and the at least one coarse-grained layer, (3) the at least one coarse-grained layer and the at least one outermost fine-grained layer or (4) at least two of the at least one fine-grained intermediate layer, the at least one course-grained layer and the at least one outermost fine-grained surface layer. For the purpose of compact prosecution, “two of the layers are stacked atop the surface” will be interpreted as the at least two of the at least one fine-grained intermediate layer, the at least one coarse-grained layer or the at least one outermost fine-grained layer are stacked atop the surface. However, clarification is requested.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-6, 8, 10-14 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Sato et al. (WO 2022/123818) (Sato) in view of Kirihara et al. (JP 2006-169609) (Kirihara).
It is noted that when utilizing WO 2022/123818, the disclosures of the reference are based on US 2024/0018680 which is an English language equivalent of the reference. Therefore, the paragraphs cited with respect to WO 2022/123818are found in US 2024/0018680. Further, the examiner has provided a machine translation of JP 2006-169609 with the Office Action mailed 09/05/2025. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1, 4, 6 and 16, Sato teaches an Ag-coated material used as a material for contacts and terminal components of connectors ([0001]) (corresponding to a coating; a contact). The Ag-coated material includes a base material and an Ag film on the base material ([0019]) (corresponding to a surface of a substrate; the coating comprising layers; a substrate having a surface; and a coating on the surface).
The Ag film including alternately laminated at least three Ag layers with average crystal gain sizes different by three times or more ([0019]) (corresponding to layers of different microstructures which extend generally parallel to the surface). The Ag layers of alternately laminated three Ag layers with average crystal grain sizes different from each other by three times or more means that an Ag layer with a small average crystal grain size, D1a, an Ag layer with a larger average crystal grain size, D2, and an Ag layer with a small average crystal grain size, D1b, are laminated in this order ([0069]). The average crystal grain size of the Ag layer with small crystal grain size is 0.005 µm or more and 0.2 µm or less (i.e., 5-200 nm) ([0072]) (corresponding to the layers include at least one fine-grained intermediate layer containing silver grains exhibiting a nano-crystalline grain size having an average grain size below 1000 nanometers; the layers including at least one coarse-grained layer located adjacent to the at least one fine-grained intermediate layer and containing silver grains exhibiting a grain size which is on average larger than that of the at least one fine-grained intermediate layer, the at least one coarse-grained layer having different microstructures and performances than the at least one fine-grained intermediate layer; and the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained layer containing silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer; the at least one outermost fine-grained surface layer having different microstructures and performances from the at least one coarse-grained layer and the at least one fine-grained intermediate layer).
Sato does not explicitly teach the Ag layer with a small average crystal grain size, D1a, contains graphite particles, as presently claimed.
Kirihara teaches a contact member including a particle-containing metallic film including carbon particles in the terminal portion of a substrate comprising the contact member (Abstract). The metal source of the plating solution may be silver (Ag) ([0017]). The carbon particles may be graphite and have an average particle size of 10 nm to 0.2 µm ([0014]; [0015]) (corresponding to containing graphite particles; the graphite particles have a nano-scale size having an average size below 250 nanometers in the at least one fine-grained intermediate layer).
Kirihara further teaches if the average particle size of the carbon particles is too large, for example, when used for surface treatment of terminal parts including all contact parts of contact members, the low contact resistance and foreign matter adhesion prevention effects cannot be obtained; additionally, if the average particle size is too small, it may be difficult to prepare such a plating solution ([0014]). Kirihara further teaches a functional graded material as the microparticle-containing metal film of the contact member ([0044]). The content of carbon microparticles (i.e., graphite) increases toward the upper side (surface side), so that the lower surface (surface facing the substrate) of the metal film is formed mostly of metal and the content of carbon microparticles on the upper surface (surface) is high. This provides hardness and reinforces the overall strength ([0044]).
In light of the motivation of Kirihara, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include functionally graded carbon particles throughout the Ag film of Sato, such as graphite particles having an average particle size of 10 nm to 0.2 µm, in order to impart low contact resistance, provide foreign matter adhesion prevention effects to the Ag film of the contact member and provide hardness and reinforcement to the overall strength of the Ag-coated material, and thereby arriving at the presently claimed invention.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
While Sato teaches the Ag-coated material is for contacts and terminal components for connectors, such as those in electric vehicles ([0001]; [0014]-[0015]). However, the recitation in the claims that the coating is “for transmitting electrical current in an automotive plug connection for charging an EV-battery” (claim 1) and a contact is for “electrical charging” and “for use in an automotive plug connection” (claim 16) are merely intended use. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for transmitting electrical current in an automotive plug connection for charging an EV-battery, electrical charging, for use in an automotive plug connection, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
In reference to claim 2, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato further teaches a laminate structure wherein the Ag layer with a small average crystal grain size is an outermost layer ([0069]; [0088]; [0118]) (corresponding to the at least one outermost fine-grained surface layer is an outermost layer of the coating).
In reference to claim 3, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato teaches the average crystal grain size of the Ag layer with a small average crystal grain size is 0.005 µm or more and 0.2 µm or less (i.e., 5-200 nm) ([0072]) (corresponding to silver grains of the outermost fine-grained surface layer exhibiting a nano-crystalline grain size having an average grain size below 1000 nm).
In reference to claim 5, Sato in view of Kirihara teaches the limitations of claim 2, as discussed above. Sato teaches the outermost layer covers the entire surface of the base material (Fig. 1). Thus, it is clear the outermost Ag layer with a small average crystal grain size, D1b, covers the surface with an areal fraction of 100%, which falls within the presently claimed range (corresponding to the at least one outermost fine-grained surface layer covers the surface with an areal fraction of at least 10%).
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In reference to claim 8, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Kirihara teaches fine carbon particles 1 dispersed in the metal coating film 4 are parallel to the surface of the substrate 1 (FIG. 1, provided right; [0032]) (corresponding to the graphite articles are extended along the at least one fine-grained intermediate layer generally parallel to the surface).
In reference to claim 10, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato further teaches the Ag film including the alternately laminate Ag layers, vertically stacks the layers upon each other ([0118]) (corresponding to on average along a section of the surface, two of the layers are stacked atop the surface).
In reference to claim 11, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato further teaches the average crystal grain size of the Ag layer 2 is 0.3 µm or more and 1 µm or less ([0077]) (corresponding to the at least one coarse-grained layer exhibits a micro-crystalline grain size having an average grain size above 1 micrometer and below 5 micrometers).
In reference to claim 12, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato teaches the Ag layer 2 comprises silver grains ([0106]-[0108]) (corresponding to the at least one course-gained layer contains predominantly silver grains).
In reference to claim 13, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato further teaches an underlying layer comprising Ni (nickel) or thin intermediate layer of Ag formed between the base material and the Ag film ([0092]-[0093]) (corresponding to the at least one coarse-grained layer includes an adhesion layer containing at least one of Ag, Ni, Pd, Fe, Sn and/or a Cu-flash deposited directly on the surface of the substrate).
Claim 13 defines the product by how the product was made (i.e., flash deposited). Thus, claim 13 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an adhesion layer. Sato in view of Kirihara suggests such a product.
In reference to claim 14, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above. Sato in view of Kirihara teaches the carbon particles include a combination of graphite and carbon nanotubes ([0015]) (corresponding to the at least one fine-grained intermediate layer contains self-lubricating particles including at least one of carbon nanotubes (CNT’s)).
Given that the carbon particles of Sato in view of Kirihara include carbon nanotubes, which is substantially identical to the presently claimed self-lubricating particles in composition, it is clear the carbon nanotubes of Sato in view of Kirihara would intrinsically be self-lubricating particles. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. MPEP 2112.01.
In reference to claim 17, Sato in view of Kirihara teaches the limitations of claim 16, as discussed above. Sato further teaches the base material comprises Cu (copper), Cu alloy or stainless steel ([0067]) (corresponding to the substrate includes at least one of copper, a copper alloy, aluminum, and an aluminum-alloy).
In reference to claim 18, Sato in view of Kirihara teaches the limitations of claim 16, as discussed above. Sato further teaches the base material is flat (FIG. 1) (corresponding to the substrate is one of at least partially rotationally symmetric or flat).
Claims 1-8, 10-12 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger et al. (US 2011/0256356) (Tomantschger), with claims 16-18 alternatively further taken in view of Sato.
In reference to claims 1-2, 6-7 and 10, Tomantschger teaches engineered articles with metallic material coatings having layers of varying properties thereon, wherein the varying property is grain size (Abstract, [0010]-[0011]). The coating is applied to at least part of a surface of a substrate ([0009]) (corresponding to a coating on a surface of a substrate; the coating comprising: layers of different microstructures and performances).
Tomantschger further teaches the layered structure of the coating comprising multiple sublayers with different properties (i.e., grain sizes) stacked on top of each other, wherein the grain size varies by at least 10% from layer to layer ([0009]) (corresponding to layers extend generally parallel to the surface; on average along a section of the surface, two of the layers are stacked atop the surface). The microstructure is changed within the fine-grained crystalline range (i.e., 2-10,000 nm) and/or from fine-grained crystalline to coarse-grained crystalline ([0014]-[0015]) (corresponding to the layers including at least one fine-grained intermediate layer; the layers including at least one coarse-grained layer located adjacent to the fine-grained layer exhibiting a grain size which is on average larger than that of the fine-grained layer).
The coating material is a metal matrix composite including Ag and particulates, such as graphite ([0100]) (corresponding to containing silver grains and containing graphite particles). The fine grained microstructure has a grain size ranging from 2 nm to 10,000 nm and the particulate have an average particle size below 10,000 nm ([0015]; [0100]) (corresponding to a nano-crystalline grain size having an average grain size below 1000 nanometers; the graphite particles have a nano-scale size having an average size below 250 nanometers in the at least one fine grained intermediate layer; the silver grains in the at least one fine grained intermediate layer have a nano-crystalline grain size having an average size above 300 nm).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Tomantschger further teaches the fine-grained material is contained in multiple layers that represent at least 5% the cross-sectional thickness of the total deposit ([0014]). The coating includes an outer surface employing grain refinement and inclusion of particulates and underlying layers of coarse-grains ([0111]; [0118]). Thus, it is clear the coating includes multiple fine-grained layers and underlying coarse-grain layers, wherein the outermost layer of the coating is fine-grained (corresponding to the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained surface layer containing silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer; the at least one outermost fine-grained surface layer is an outermost layer of the coating).
In light of the disclosure by Tomantschger that the coating includes a coarse-grained layer followed by reducing the grain-size of the coating and incorporating particles, wherein the fine-grained material is contained in multiple layers, the grain size is varied by more than 10% in a layer direction, the particle content is varied between layers, and the outer surface is has a fine grained structure ([0014]; [0016]; [0110]; [0111]; [0124]; [0126]; [0134]; [0137]). It would have been obvious to one of ordinary skill in the art to have the coating include the coarse-grained layer and multiple fine-grained layers thereon, wherein the fine-grained layers vary in grain size by more than 10% and vary in the content of particles, in order to provide a coating that provides ductile and brittle layers and has a surface with high hardness, and thereby arriving at the presently claimed invention.
While there is no disclosure that the coating is “for transmitting electrical current in an automotive plug connection for charging an EV-battery” as presently claimed. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for transmitting electrical current in an automotive plug connection for charging an EV-battery, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
In reference to claims 3 and 4, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger teaches grain refinement at an outer surface of the coating and inclusion of particulates to form a metal matrix composite in the outer surface, thereby providing an outer surface with reduced grain-size and having graphite particulates ([0111]; [0134]; [0149]). The fine-grained microstructure has a grain size from 2 nm to 10,000 nm ([0015]) (corresponding to silver grains of the outermost fine-grained surface layer exhibiting a nano-crystalline grain size having an average grain size below 1000 nanometers; the at least one outermost fine-grained surface layer includes graphite particles).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 5, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger teaches the layers are on at least part of the surface of the substrate and the layers are stacked on top of each other ([0009]). Thus, it is clear when the layers cover the entire surface of the substrate the outer layer cover the entire surface of the substrate (i.e., 100%) (corresponding to the at least one outermost fine-grained surface layer covers the surface with ana real fraction of at least 10%).
In reference to claim 8, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger further teaches the particulates are a part of the plating bath and deposited with the metallic material ([0101]). Thus, it is clear the particulates are dispersed within and throughout the fine-grained layers (corresponding to the graphite particles are extended along the at least one fine-grained intermediate layer generally parallel to the surface).
In reference to claim 11, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger teaches the changing microstructures maybe within the fine-grained crystalline grain range, i.e., 2 to 10,000 nm ([0014]-[0015]). The grain size is varied by at least 10% from layer to layer ([0009]). Therefore, it is clear when the microstructure includes a fine-grained layer having a grain size from 300-1000 nm the course-grained layer will have a grain size of at least 330-1100 and at most 10000 nm (i.e., 10 µm) (corresponding to the at least one coarse-grained layer exhibits a micro-crystalline grain size having an average grain size above 1 micrometer and below 5 micrometers). Tomantschger further teaches a coarse-grained layer having an average grain size of about 5 microns ([0184]; Table 12), about 5 microns overlaps the presently claimed range.
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In reference to claim 12, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger teaches the metal matrix composite comprises Ag and graphite particulates ([0093]-[0100]). The particulates can be includes in the metallic layer from 2.5% to 75% by volume ([0150]). Given that Tomantschger teaches the particulates can be included in any layer in an amount from 2.5-75% by volume which overlaps the presently claimed (i.e., when present in an amount of less than 50% the layer would be predominately silver), it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the 2.5% or more and less than 50% of particulates in the silver metallic layer, which is both taught by Tomantschger and encompassed within the scope of the present claims and thereby arrive at the claimed invention.
In reference to claims 14-15, Tomantschger teaches the limitations of claim 1, as discussed above. Tomantschger teaches the metallic material contains particulates such as graphite, carbon nanotubes, diamond, polytetrafluoroethylene and MoS2 ([0100]; [0150]) (corresponding to the at least one fine-grained intermediate layer/ the at least one coarse-grained layer contains self-lubricating particles including at least one of: Nano-diamond, Lead (Pb), Molybdenum (Mo), Mo-Sulfide, Polytetrafluoroethylene (PTFE), carbon nanotubes (CNT’s), Graphene, Ag-sulfide, W-sulfide and Carbon Fluoride (CFx)). Given that Tomantschger teaches including particulates that overlaps the presently claimed self-lubricating particles, it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to have the layers include graphite and at least one of carbon nanotubes, diamond, MoS2 and polytetrafluoroethylene, which is both taught by Tomantschger and encompassed within the scope of the present claims.
Given that the particulates of Tomantschger are substantially identical to the presently claimed self-lubricating particles in composition, it is clear that the particulates of Tomantschger would inherently be self-lubricating particles. “Products of identical chemical composition can not have mutually exclusive properties.” In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). 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. Id. (MPEP 2112.01).
Tomantschger further teaches variable property variation in particulate content, particulate particle size and shape and/or particulate chemistry can be carried out to control particle-dependent mechanical property such as wear resistance or can be alternatively carried out to vary coefficient of thermal expansion of metal matrix composite ([0137]). Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include particulate additives including graphite and at least one of diamond, MoS2, polytetrafluoroethylene or carbon nanotubes in each of the layers, in order to provide a metal matrix composite having the desired particle-dependent mechanical property.
Further, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to adjust the particulate content and particulate size in each of the Ag layers, including over the presently claimed, in order to provide the desired wear resistance and thermal stability in each of the Ag layers, given that it is disclosed by Tomantschger and since it has been held that discovering an optimum value of result effective variable involves only routine skill in the art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980).
A particular parameter can be recognized as a result-effective variable, i.e., a variable which achieves a recognized result, and the determination of the optimum or workable ranges of said variable might be characterized as routine experimentation (see MPEP 2144.05.II.B.).
It has been held that the discovery of the optimum value of a result effective variable in a known process is ordinarily within the skill in the art. In re Boesch and Slaney, 205 USPQ 215 (CCPA 1980).
In reference to claims 16-18, Tomantschger teaches engineered articles with metallic material coatings having layers of varying properties thereon, wherein the varying property is grain size (Abstract, [0010]-[0011]). The coating is applied to at least part of a surface of a substrate ([0009]) (corresponding to a substrate having a surface and a coating on the surface, the coating including layers of different microstructures and performances). The substrate is a metal or alloy of Al or Cu and the surface of the substrate is flat ([0012]; [0104]) (corresponding to the substrate includes at least one of copper, a copper alloy, aluminum, and aluminum-alloy; the substrate is one of at least partially symmetric or flat).
Tomantschger further teaches the layered structure of the coating comprising multiple sublayers with different properties (i.e., grain sizes) stacked on top of each other, wherein the grain size varies by at least 10% from layer to layer ([0009]) (corresponding to layers extend generally parallel to the surface). The microstructure is changed within the fine-grained crystalline range (i.e., 2-10,000nm) and/or from fine-grained crystalline to coarse-grained crystalline ([0014]-[0015]) (corresponding to the layers including at least one fine-grained intermediate layer; the layers including at least one coarse-grained layer located adjacent to the fine-grained intermediate layer exhibiting a grain size which is on average larger than that of the fine-grained intermediate layer).
The coating material is a metal matrix composite including Ag and particulates, such as graphite ([0100]) (corresponding to containing silver grains and containing graphite particles). The fine grained microstructure has a grain size ranging from 2 nm to 10,000 nm ([0015]) (corresponding to a nano-crystalline grain size having an average grain size below 1000 nanometers).
Given that Tomantschger teaches the metal matrix composite that overlaps the presently claimed layers, including silver and graphite particulates ([003]-[0100], it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the silver and graphite particulates as the metal matrix composite material, which is both disclosed by Tomantschger and encompassed within the scope of the present claims.
Tomantschger further teaches the fine-grained material is contained in multiple layers that represent at least 5% the cross-sectional thickness of the total deposit ([0014]). The coating includes an outer surface employing grain refinement and inclusion of particulates and underlying layers of coarse-grains ([0111]; [0118]). Thus, it is clear the coating includes multiple fine-grained layers and underlying coarse-grain layers, wherein the outermost layer of the coating is fine-grained (corresponding to the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained surface layer containing silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer; the at least one outermost fine-grained surface layer is an outermost layer of the coating).
In light of the disclosure by Tomantschger that the coating includes a coarse-grained layer followed by reducing the grain-size of the coating and incorporating particles, wherein the fine-grained material is contained in multiple layers, the grain size is varied by more than 10% in a layer direction, the particle content is varied between layers, and the outer surface is has a fine grained structure ([0014]; [0016]; [0110]; [0111]; [0124]; [0126]; [0134]; [0137]). It would have been obvious to one of ordinary skill in the art to have the coating include the coarse-grained layer and multiple fine-grained layers thereon, wherein the fine-grained layers vary in grain size by more than 10% and vary in the content of particles, in order to provide a coating that provides ductile and brittle layers and has a surface with high hardness, and thereby arriving at the presently claimed invention.
While there is no disclosure that the substrate is “an electric charging contact for use in an automotive plug connection” as presently claimed. Applicants attention is drawn to MPEP 2111.02 which states that “if the body of a claim fully and intrinsically sets forth all the limitations of the claimed invention, and the preamble merely states, for example, the purpose or intended use of the invention, rather than any distinct definition of any of the claimed invention’s limitations, then the preamble is not considered a limitation and is of no significance to claim construction”. Further, MPEP 2111.02 states that statements in the preamble reciting the purpose or intended use of the claimed invention must be evaluated to determine whether the purpose or intended use results in a structural difference between the claimed invention and the prior art. Only if such structural difference exists, does the recitation serve to limit the claim. If the prior art structure is capable of performing the intended use, then it meets the claim.
It is the examiner’s position that the preamble does not state any distinct definition of any of the claimed invention’s limitations and further that the purpose or intended use, i.e. for transmitting electrical current in an automotive plug connection for charging an EV-battery, recited in the present claims does not result in a structural difference between the presently claimed invention and the prior art and further that the prior art structure which is identical to that set forth in the present claims is capable of performing the recited purpose or intended use.
Alternatively, Tomantschger does not explicitly teach an electric charging contact, as presently claimed.
Sato teaches an Ag-coated material including an Ag film made by alternately laminated at least three Ag layers with average crystal grain sizes different by three times or more ([0019]). Sato further teaches Ag-coated material is used as a material for contacts and terminal components of connectors of electric vehicles ([0001]; [0015]).
In light of the disclosure by Sato that Ag-coated materials are used as contacts and terminal components of connector of electric vehicles, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the silver coated engineering material of Tomantschger be used as a contact or terminal components of connectors of electric vehicles, in order to provide a contact having good wear-resistance, conductivity and contact reliability (Sato, [0004]; [0015]).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Kirihara as applied to claim 1 above, and further in view of Detection and quantification of 2H and 3R phases in commercial graphene-based materials (Seehra).
In reference to claim 9, Sato in view of Kirihara teaches the limitations of claim 1, as discussed above.
Sato in view of Kirihara does not explicitly teach the graphite particles are hexagonal graphite, as presently claimed.
Seehra teaches graphite has hexagonal layers in the 2H or 3R arrangement (Fig. 1). The 3R phase is less stable than the 2H phase and transforms to the 2H phase at temperatures above about 1000ºC (p. 821).
In light of the disclosure of Seehra, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the graphite of Sato in view of Kirihara be hexagonal graphite 2H, in order to provide a more stable graphite particle in the Ag-coated material, and thereby arriving at the presently claimed invention.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger as applied to claim 1 above, and further in view of Seehra.
In reference to claim 9, Tomantschger teaches the limitations of claim 1, as discussed above.
Tomantschger does not explicitly teach the graphite particles are hexagonal graphite, as presently claimed.
Seehra teaches graphite has hexagonal layers in the 2H or 3R arrangement (Fig. 1). The 3R phase is less stable than the 2H phase and transforms to the 2H phase at temperatures above about 1000ºC (p. 821).
In light of the disclosure of Seehra, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the graphite of Tomantschger be hexagonal graphite 2H, in order to provide a more stable graphite particle in the metal matrix composite, and thereby arriving at the presently claimed invention.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger as applied to claim 1 above, and further in view of Sato.
In reference to claim 13, Tomantschger teaches the limitations of claim 1, as discussed above.
Tomantschger does not explicitly teach an adhesion layer containing at least one of Ag, Ni, Pd, Fe, Sn and/or Cu-flash deposited directly on the surface of the substrate, as presently claimed.
Sato teaches an Ag-coated material including an Ag film made by alternately laminated at least three Ag layers with average crystal grain sizes different by three times or more ([0019]). An underlying layer comprising Ni or Ag is provided between a base material and the Ag film ([0028]; [0091]-[0093]) (corresponding to an adhesion layer containing at least one of Ag, Ni on the surface of the substrate). The underlying layer prevents diffusion of the base material into the Ag film and degrading the heat resistance.
In light of the motivation of Sato, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have a Ni or Ag layer on the surface of the substrate underlying the metallic coating of Tomantschger, in order to prevent diffusion of the substrate into the silver coating and degradation of the heat resistance, and thereby arriving at the presently claimed invention.
Further, claim 13 defines the product by how the product was made (i.e., flash deposited). Thus, claim 13 is a product-by-process claim. For purposes of examination, product-by-process claims are not limited to the manipulation of the recited steps, only the structure implied by the steps. See MPEP 2113. In the present case, the recited steps imply a structure having an adhesion layer. Tomantschger in view of Sato suggests such a product.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Sato in view of Kirihara and Woo et al (US 2015/0217654) (Woo).
In reference to claims 19-21, Sato teaches a silver-coated material excellent in heat-resistant adhesion and bending workability, suitable for use as materials for contacts and terminal components of electric vehicles ([0014]-[0018]) (corresponding to an electric charging contact). The Ag-coated material includes a base material and an Ag film on the base material ([0019]) (corresponding to a substrate having a surface and a coating on the surface).
The Ag film including alternately laminated at least three Ag layers with average crystal gain sizes different by three times or more ([0019]; Fig. 1) (corresponding to the coating including layers of different microstructures which extend generally parallel to the surface). The Ag film includes Ag layer 1 comprising Ag with a small average crystal grain size and Ag layer 2 comprising Ag with a larger average crystal grain size than the Ag layer 1 ([0021]). The average crystal grain size of the Ag layer 1 is 0.005 µm or more and 0.2 µm or less (i.e., 5-200 nm) ([0072]) (corresponding to the layers include at least one fine-grained intermediate layer containing silver grains exhibiting a nano-crystalline grain size having an average grain size below 1000 nm; the layers including at least one coarse-grained layer located adjacent to the fine-grained intermediate layer and containing silver grains exhibiting a grain size which is on average larger than that of the fine-grained layer).
Sato further teaches the Ag film includes an Ah layer with a small average crystal grain size, an Ag layer with a larger average crystal grain size and an Ag layer with a small average crystal grain size ([0069]). More specifically, the laminate of three or more layers is as follows, base material – Ag layer 2- Ag layer 1- Ag layer 2- Ag layer 1 ([0088]; [0118]) (corresponding to the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained surface layer containing silver grains exhibiting a grain size which is on average than that of the course-grained layer).
Sato does not explicitly teach (1) the Ag layer 1 contains graphite particles and (2) an automotive charging connection, as presently claimed.
With respect to (1), Kirihara teaches a contact member including a particle-containing metallic film including carbon particles in the terminal portion of a substrate comprising the contact member (Abstract). The metal source of the plating solution may be silver (Ag) ([0017]). The carbon particles may be graphite and have an average particle size of 10 nm to 0.2 µm ([0014]; [0015]) (corresponding to containing graphite particles).
Kirihara further teaches if the average particle size of the carbon particles is too large, for example, when used for surface treatment of terminal parts including all contact parts of contact members, the low contact resistance and foreign matter adhesion prevention effects cannot be obtained; additionally, if the average particle size is too small, it may be difficult to prepare such a plating solution ([0014]).
In light of the motivation of Kirihara, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to include carbon particles, such as graphite particles having an average particle size of 10 nm to 0.2 µm, in order to impart low contact resistance and the ability to prevent the adhesion of foreign matter to the Ag film of the contact member.
With respect to (2), Woo teaches an electric vehicle including a power supply, a cable having first and second ends, the first end attached to the power supply, the cable comprising a charging conductor and a cooling conduit and a connector attached to the second end of the cable, the connector having a form factor corresponding to a charge port of the electric vehicle ([0002]). The charging cable has the connector and a connector housing, wherein the connector is designed to be compatible with a charging inlet installed on the electric vehicle ([0020]) (corresponding to an automotive charging connection for charging a battery of an electric vehicle, the automotive charging connection comprising: one of a charging inlet configured to be fixed to the electric vehicle or a charging gun configured to be plugged into a charging inlet of the electric vehicle; an electric charging contact help by the one of the charging inlet of the charging gun; t). The electric contacts are held within an armature made of a plastic material ([0031]) (corresponding to the one of the charging inlet of the charging gun includes a housing holding the electric charging contact, the housing being made from polymer).
The cooling conduit serves to convey a coolant along the length of the charging conductor so as to remove some or all heat generated by the flow of electric energy. The conduit can provide cooling along essentially the entire length of the cable and within the charging connector ([0021]) (corresponding to a cooling element for cooling the electric charging contact).
In light of the disclosure by Woo of including connectors in the charging system, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the Ag-coated connector material of Sato in view of Kirihara in the charging system, in order to provide a charging system that provides more electric power fed through the charging cable, a thinner and lighter charging cable, the use of less copper and a more flexible and easier to handle charging cable (Woo, [0019]), and thereby arriving at the presently claimed invention.
Claims 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger in view of Sato and Woo.
In reference to claims 19-21, Tomantschger teaches engineered articles with metallic material coatings having layers of varying properties thereon, wherein the varying property is grain size (Abstract, [0010]-[0011]). The coating is applied to at least part of a surface of a substrate ([0009]) (corresponding to a substrate having a surface and a coating on the surface, the coating including layers of different microstructures and performances).
Tomantschger further teaches the layered structure of the coating comprising multiple sublayers with different properties (i.e., grain sizes) stacked on top of each other, wherein the grain size varies by at least 10% from layer to layer ([0009]) (corresponding to layers extend generally parallel to the surface). The microstructure is changed within the fine-grained crystalline range (i.e., 2-10,000nm) or from fine-grained crystalline to coarse-grained crystalline ([0014]-[0015]) (corresponding to the layers including at least one fine-grained intermediate layer; the layers including at least one coarse-grained layer located adjacent to the fine-grained intermediate layer exhibiting a grain size which is on average larger than that of the fine-grained intermediate layer).
The coating material is a metal matrix composite including Ag and particulates, such as graphite ([0100]) (corresponding to containing silver grains and containing graphite particles). The fine grained microstructure has a grain size ranging from 2 nm to 10,000 nm ([0015]) (corresponding to a nano-crystalline grain size having an average grain size below 1000 nanometers).
Given that Tomantschger teaches the metal matrix composite that overlaps the presently claimed layers, including silver and graphite particulates ([003]-[0100], it therefore would be obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention, to use the silver and graphite particulates as the metal matric composite material, which is both disclosed by Tomantschger and encompassed within the scope of the present claims.
Tomantschger further teaches the fine-grained material is contained in multiple layers that represent at least 5% the cross-sectional thickness of the total deposit ([0014]). The coating includes an outer surface employing grain refinement and inclusion of particulates and underlying layers of coarse-grains ([0111]; [0118]). Thus, it is clear the coating includes multiple fine-grained layers and underlying coarse-grain layers, wherein the outermost layer of the coating is fine-grained (corresponding to the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained surface layer containing silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer; the at least one outermost fine-grained surface layer is an outermost layer of the coating).
Tomantschger further teaches the fine-grained material is contained in multiple layers that represent at least 5% the cross-sectional thickness of the total deposit ([0014]). The coating includes an outer surface employing grain refinement and inclusion of particulates and underlying layers of coarse-grains ([0111]; [0118]). Thus, it is clear the coating includes multiple fine-grained layers and underlying coarse-grain layers, wherein the outermost layer of the coating is fine-grained (corresponding to the layers including at least one outermost fine-grained surface layer located exterior of the at least one course-grained layer and the at least one fine-grained intermediate layer, the at least one outermost fine-grained surface layer containing silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer; the at least one outermost fine-grained surface layer is an outermost layer of the coating).
In light of the disclosure by Tomantschger that the coating includes a coarse-grained layer followed by reducing the grain-size of the coating and incorporating particles, wherein the fine-grained material is contained in multiple layers, the grain size is varied by more than 10% in a layer direction, the particle content is varied between layers, and the outer surface is has a fine grained structure ([0014]; [0016]; [0110]; [0111]; [0124]; [0126]; [0134]; [0137]). It would have been obvious to one of ordinary skill in the art to have the coating include the coarse-grained layer and multiple fine-grained layers thereon, wherein the fine-grained layers vary in grain size by more than 10% and vary in the content of particles, in order to provide a coating that provides ductile and brittle layers and has a surface with high hardness.
Tomantschger does not explicitly teach (1) the substrate is an electric charging contact and (2) an automotive charging connection, as presently claimed.
With respect to (1), Sato teaches an Ag-coated material including an Ag film made by alternately laminated at least three Ag layers with average crystal grain sizes different by three times or more ([0019]). Sato further teaches Ag-coated material is used as a material for contacts and terminal components of connectors of electric vehicles ([0001]; [0015]).
In light of the disclosure by Sato that Ag-coated materials are used as contacts and terminal components of connector of electric vehicles, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the silver coated engineering material of Tomantschger be used as a contact or terminal components of connectors of electric vehicles, in order to provide a contact having good wear-resistance, conductivity and contact reliability (Sato, [0004]; [0015]).
With respect to (2), Woo teaches an electric vehicle including a power supply, a cable having first and second ends, the first end attached to the power supply, the cable comprising a charging conductor and a cooling conduit and a connector attached to the second end of the cable, the connector having a form factor corresponding to a charge port of the electric vehicle ([0002]). The charging cable has the connector and a connector housing, wherein the connector is designed to be compatible with a charging inlet installed on the electric vehicle ([0020]) (corresponding to an automotive charging connection for charging a battery of an electric vehicle, the automotive charging connection comprising: one of a charging inlet configured to be fixed to the electric vehicle or a charging gun configured to be plugged into a charging inlet of the electric vehicle; an electric charging contact help by the one of the charging inlet of the charging gun; t). The electric contacts are held within an armature made of a plastic material ([0031]) (corresponding to the one of the charging inlet of the charging gun includes a housing holding the electric charging contact, the housing being made from polymer).
The cooling conduit serves to convey a coolant along the length of the charging conductor so as to remove some or all heat generated by the flow of electric energy. The conduit can provide cooling along essentially the entire length of the cable and within the charging connector ([0021]) (corresponding to a cooling element for cooling the electric charging contact).
In light of the disclosure by Woo of including connectors in the charging system, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to use the coted connector material of Tomantschger in view of Sato in the charging system, in order to provide a charging system that provides more electric power fed through the charging cable, a thinner and lighter charging cable, the use of less copper and a more flexible and easier to handle charging cable (Woo, [0019]), and thereby arriving at the presently claimed invention.
Response to Arguments
In response to amended claims 1, 7, 16 and 19 the previous Claim Objections of record are withdrawn. However, upon further consideration of the claims a new set of Claim Objections is set forth above.
Applicant primarily argues:
“Claim 1 specifically recites that the layers are of different microstructures and performances. More particularly, claim 1 is amended to specifically note that the at least one outermost fine-grained surface layer has different microstructures and performances than the at least one coarse-grained layer and has different microstructures and performances than the at least one fine-grained intermediate layer. In contrast, Sato’s film repeats the Ag layer 1, Ag layer 2, such that the outermost fine grained surface layer is the same as the fine grained intermediate layer (for example, both are Ag layer 1).”
Remarks, p. 8-9
The examiner respectfully traverses as follows:
Sato teaches the Ag film may include layers of alternately laminated at least three Ag layers ([0068]). The Ag layers of alternately laminated three Ag layers with average crystal grain sizes different from each other by three times or more means that an Ag layer with a small average crystal grain size (average grain size = D1a), an Ag layer with a large average crystal grain size (average grain size = D2) and an Ag layer with a small average crystal grain size (average grain size = D1b) are laminated in the order, both D2/D1a and D2/D1b are 3 or more ([0069]). Sato does not require D1a and D1b be the same.
Additionally, Sato in view of Kirihara teaches the carbon particles of graphite are functionally graded through the Ag film. The content of the carbon microparticles increases towards the upper side so that the lower portion of the metal film is formed mostly of metal and the content of the carbon microparticles in the upper portion is high. Therefore, it is clear the Ag layer closest to the base material will have a different microstructure and performance than the Ag layer furthers from the base material because of the content of the graphite microparticles.
Applicants further argue:
“Turning to the rejection based on Tomantschger, Tomantschger describes metallic structures with variable properties. However, nowhere does Tomantschger describe a coating having layers arranged as claimed including an outermost fine-grained surface layer located exterior of the course-grained layer, wherein the outermost fine-grained surface layer contain silver grains exhibiting a grain size which is on average smaller than that of the course-grained layer. Moreover, Tomantschger does not disclose a coating structure wherein the at least one coarse-grained layer has different microstructures and performances than the at least one fine-grained intermediate layer and the at least one outermost fine-grained surface layer has different microstructures and performances than the at least one coarse-grained layer and the at least one fine-grained intermediate layer.”
Remarks, p. 9
The examiner respectfully traverses as follows:
As discussed in the rejection above, Tomantschger teaches the fine-grained material is contained in multiple layers that represent at least 5% the cross-sectional thickness of the total deposit ([0014]). The coating includes an outer surface employing grain refinement, includes particulates and underlying layers of coarse-grains ([0111]; [0118]). Thus, it is clear the coating includes multiple fine-grained layers and underlying coarse-grain layers, wherein the outermost layer of the coating is fine-grained.
Tomantschger further teaches that the coating includes a coarse-grained layer followed by reducing the grain-size of the coating and incorporating particles, wherein the fine-grained material is contained in multiple layers, the grain size is varied by more than 10% in a layer direction, the particle content is varied between layers, and the outer surface is has a fine grained structure ([0014]; [0016]; [0110]; [0111]; [0124]; [0126]; [0134]; [0137]). Absent evidence to the contrary, it is the examiner’s position it would have been obvious to one of ordinary skill in the art to have the coating include the coarse-grained layer and multiple fine-grained layers thereon, wherein the fine-grained layers vary in grain size by more than 10% and vary in the content of particles, in order to provide a coating that provides ductile and brittle layers and has a surface with high hardness, and thereby arriving at the presently claimed invention.
Therefore, Applicant's arguments filed 05/27/2026 have been fully considered but they are not persuasive.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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