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Last updated: April 15, 2026
Application No. 18/469,850

VARIABLE HARDNESS NANOCOMPOSITE COATING

Final Rejection §103
Filed
Sep 19, 2023
Examiner
MCDONALD, RODNEY GLENN
Art Unit
1794
Tech Center
1700 — Chemical & Materials Engineering
Assignee
Southwest Research Institute
OA Round
3 (Final)
63%
Grant Probability
Moderate
4-5
OA Rounds
3y 4m
To Grant
92%
With Interview

Examiner Intelligence

Grants 63% of resolved cases
63%
Career Allow Rate
782 granted / 1241 resolved
-2.0% vs TC avg
Strong +29% interview lift
Without
With
+29.4%
Interview Lift
resolved cases with interview
Typical timeline
3y 4m
Avg Prosecution
53 currently pending
Career history
1294
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
54.0%
+14.0% vs TC avg
§102
18.4%
-21.6% vs TC avg
§112
17.3%
-22.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1241 resolved cases

Office Action

§103
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 . Election/Restrictions Claims 1-10 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 28, 2024. 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. 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. Claim(s) 11-19, 21, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. (U.S. Pat. 9,523,146) in view of Shimoda (JP-2007277663). INDEPENDENT CLAIM 11: Regarding claim 11, Lin et al. teach a method of coating a metal part for an engine with a magnetron sputtering system having a process chamber including a magnetron and a Ti target (a method of coating piston rings (metal part-for an engine) comprising sputtering titanium from a magnetron target in a process chamber; claim 1) comprising: placing said metal part into said process chamber (piston rings maybe provided as a substrate 202 Into the process chamber 200; column 7 tines 25-26); reducing gas pressure in said chamber (gas in the process chamber 200 may be evacuated and the gas pressure reduced; column 7 lines 28-29), supplying an inert gas to said process chamber and generating a plasma for said inert gas (inert gas may be supplied to the chamber: forming plasma; column 7 lines 32-33, 58-59); supplying nitrogen to said process chamber (nitrogen gas may be supplied to the process chamber; column 8 lines 6-7); supplying both a carbon/silicon containing gas and a carbon containing gas to said process chamber (acetylene (carbon containing gas) and hexamethyldisilane (carbon/silicon containing gas) may be introduced into the process chamber 200; column 8 lines 12-18); sputtering titanium from a magnetron target in said process chamber (titanium may be provided by a magnetron, including a target 226a, 226b, which provides the meatal source; sputter atoms from the targets 226; column 7 lines 13-17, column 8 lines 50-51); depositing only a single layer Ti-Si-C-N coating on said metal part at a thickness in the range of 5.0 micrometers to 40 micrometers (Ti-Si-C-N coating for a piston ring: fig. 16 shows a single continuous layer coating over the substrate; coatings may be formed at a thickness in the range of 10 to 40 micrometers; abstract, fig. 16, column 9 lines 8-9), and a metal substrate (coating piston rings (metal substrate); claim 1). Lin et al. does not disclose wherein a surface region of said coating said coating hardness increases from said coating surface region down to said substrate. Huang et al. teach depositing only a single gradient layer of TiSiCN where the carbon gradually increases from the substrate to the surface. More carbon on the surface less hardness to less carbon or no carbon more hardness. (See Abstract - TiSiCN gradient layer with the C content gradually increased is obtained; Machine Translation - Prepare a gradient C-doped layer. Temperature is 420℃, N2 flow is 160-200sccm, C2H2 flow is 12-48sccm, vacuum is 3.5-4.2pa, substrate bias is -60 to -80V, TiSi target current is 140-160A, deposition time is 20-25min, and C content is gradually obtained Increased TiSiCN gradient layer) Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Lin et al. to include wherein a surface region of said coating has a relatively low hardness and said coating hardness increases from said coating surface region down to said substrate, as taught by Huang et al., because Huang et al. teach that it improves surface quality. (See Huang et al. Abstract) DEPENDENT CLAIM 12: Regarding claim 12, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said carbon/silicon containing gas comprises hexamethyldisilane and/or tetramethylsilane (hexamethyldisilane may be introduced into the process chamber 200; column 8 lines 17-18). DEPENDENT CLAIM 13: As for claim 13, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said carbon containing gas comprises acetylene (acetylene may be introduced into the process chamber 200; column 8 lines 14-12). DEPENDENT CLAIM 14: Regarding claim 14, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said surface region of said coating has a hardness in the range of 5.0 GPa to 10.0 GPa (fig. 15a shows surface indentation; nanoindentation was performed to study the nanohardness with an indentation depth of 300 nm; seating has a nanohardness in the range of 10.0 GPa to 30.0 GPa; fig. 15a, column 11 lines 54-60, claim 1) and a hardness value-of greater than 10.0 GPa to 30.0 GPa (coating has a nanohardness in the range of 10.0 GPa of 30.0 GPa; claim 1), Lin et al. does not disclose where a hardness value increases below said surface region and down to said surface of said metal part. Huang et al. discloses only a single gradient layer of TiSiCN where the carbon gradually increases from the substrate to the surface. More carbon on the surface less hardness to less carbon or no carbon more hardness. (See Abstract - TiSiCN gradient layer with the C content gradually increased is obtained; Machine Translation - Prepare a gradient C-doped layer. Temperature is 420℃, N2 flow is 160-200sccm, C2H2 flow is 12-48sccm, vacuum is 3.5-4.2pa, substrate bias is -60 to -80V, TiSi target current is 140-160A, deposition time is 20-25min, and C content is gradually obtained Increased TiSiCN gradient layer) Therefore it would have been obvious to one of ordinary skill in the art, at the time the invention was made to modify the method of Lin et al. to include where a hardness value increases below said surface region and down to said surface of said metal part, as taught by Huang et al., because Huang et al. teach that it improves surface quality. (See Huang et al. Abstract) DEPENDENT CLAIM 15: Regarding claim 15, Lin et al. and Huang et al., in combination discloses the method of claim 11, and Huang et al. teach wherein said coating has a thickness of 40.0 micrometers (a thickness in the range of 10 to 40 micrometers; abstract, fig. 16, column 9 lines 8-9). Lin et al. does not disclose wherein said surface region of said coating has a thickness in the range of up to 5.0 micrometers. Lin et al. teach a coating thickness of 10 to 40 micrometers which covers the surface coating thickness of up to 5 micrometers. DEPENDENT CLAIM 16: As for claim 16, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said coating has a thickness of 20.0 micrometers (coating has a thickness in the range of 10.0 micrometers to 40.0 micrometers; claim 1). Lin et al. does not disclose wherein said surface region of said coating has a thickness in the range of up to 5.0 micrometers. Lin et al. teach a coating thickness of 10 to 40 micrometers which covers the surface coating thickness of up to 5 micrometers. DEPENDENT CLAIM 17: As for claim 17, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said nanocomposite coating provides a wear rate of less than 10x 10-6 mm3/N/m (a wear rate of less than 10x10 mm2/N/m; claim 1). Huang et al. teach depositing only a single gradient layer of TiSiCN where the carbon gradually increases from the substrate to the surface. More carbon on the surface less hardness to less carbon or no carbon more hardness. (See Abstract - TiSiCN gradient layer with the C content gradually increased is obtained; Machine Translation - Prepare a gradient C-doped layer. Temperature is 420℃, N2 flow is 160-200sccm, C2H2 flow is 12-48sccm, vacuum is 3.5-4.2pa, substrate bias is -60 to -80V, TiSi target current is 140-160A, deposition time is 20-25min, and C content is gradually obtained Increased TiSiCN gradient layer) Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Lin et al. to include wherein a surface region of said coating has a relatively low hardness and said coating hardness increases from said coating surface region down to said substrate, as taught by Huang et al., because Huang et al. teach that it improves surface quality. (See Huang et al. Abstract) DEPENDENT CLAIM 18: As for claim 18, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said coating has a coefficient of friction of less than 0.15 (a coefficient of friction of less than 0.15: claim 1). Lin et al. does not disclose a relatively higher hardness portion. Huang et al. teach depositing only a single gradient layer of TiSiCN where the carbon gradually increases from the substrate to the surface. More carbon on the surface less hardness to less carbon or no carbon more hardness. (See Abstract - TiSiCN gradient layer with the C content gradually increased is obtained; Machine Translation - Prepare a gradient C-doped layer. Temperature is 420℃, N2 flow is 160-200sccm, C2H2 flow is 12-48sccm, vacuum is 3.5-4.2pa, substrate bias is -60 to -80V, TiSi target current is 140-160A, deposition time is 20-25min, and C content is gradually obtained Increased TiSiCN gradient layer) Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Lin et al. to include wherein a surface region of said coating has a relatively low hardness and said coating hardness increases from said coating surface region down to said substrate, as taught by Huang et al., because Huang et al. teach that it improves surface quality. (See Huang et al. Abstract) DEPENDENT CLAIM 19: As for claim 19, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said nanocomposite coating comprises 35 -49 atomic percent titanium (titanium present in the range of 35 to 49 atomic percent: claim 6), 1-5 atomic percent of silicon (silicon present in the range of 1 of 5 atomic percent; claim 6), 17-50 atomic percent of carbon (carbon present in the range of 17-41 atomic percent; claim 6), and 19-35 atomic percent of nitrogen (nitrogen present in the range of 19-35 atomic percent; claim 6). DEPENDENT CLAIM 21: As for claim 21, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said coating comprises a Si-N amorphous phase and a carbon amorphous phase and a TiCN crystalline phase (the amorphous matrix includes a composition selected from diamond like carbon, Si-N and Si-C-N; Ti-Si-C-N coating includes nanocrystalline phases in an amorphous matrix, wherein nanocrystalline phases include TiC,Ny; column 5 lines 26-2, claim 6). DEPENDENT CLAIM 22: As for claim 22, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein the metal part is a gear, piston ring (Ti-Si-C-N piston ring coatings; title), or camshaft for an engine. The motivation for utilizing the features of Huang et al. is that it allows for improving surface quality. (See Abstract) Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Lin et al. to include wherein a surface region of said coating has a relatively low hardness and said coating hardness increases from said coating surface region down to said substrate, as taught by Huang et al., because Huang et al. teach that it improves surface quality. Claim(s) 20 is rejected under 35 U.S.C. 103 as being unpatentable over Lin et al. in view of Huang et al. as applied to claims 11-19, 21, 22 above, and further in view of Ahlgren (U.S. PGPUB. 2011/0188950 A1) and Takazaki (WO 2014/156897 A1). DEPENDENT CLAIM 20: As for claim 20, Lin et al. and Huang et al., in combination, disclose the method of claim 11, and Lin et al. further discloses wherein said carbon/silicon containing gas is introduced as the single layer nanocomposite coating is deposited (during deposition, hexamethyldisilane may be introduced into the process chamber 200; column 8 fines 3, 17-18) and the carbon containing gas is introduced at a flow rate of 5 sccm to 50 sccm as the only single layer nanocomposite coating is deposited (during deposition, acetylene may be introduced in a flow rate in the range of 10 to 30 sccm; column 8 lines 3, 11-15), Lin et al. does not disclose changing the flow rates of the carbon/silicon containing gas and the carbon containing gas. Ahlgren discloses a carbon/silicon containing gas being introduced at a flow rate set at an initial value and increase to 6 sccm (changing the flow of the trimethylsilane gas (carbon/silicon containing gas) during the deposition; an N2 flow in the range of 500 to 1000 sccm; having a trimethylsilane flow of zero; increasing the trimethylsilane flow at least 1%, preferably 1.5% of the N2 flow; this is equivalent to increasing the trimethylsilane flow from to a range from 5 to 7 sccm; paragraphs [0010], [0034]-[0035], [0037]. Therefore it would have been obvious to one of ordinary skill in the art at the time the invention was made to modify the method of Lin et al. to include a carbon/silicon containing gas being introduced at a flow rate set at an initial value and increase to 6 sccm, as taught by Ahlgren, because Ahlgren discloses a process that is able to continuously control the material composition of the deposited coatings, and creating a compositional gradient by continuously changing the flow of the trimethylsilane gas during the deposition (AHLGREN; paragraph [0029]). Takazaki discloses the carbon containing gas being introduced at a flow rate set at an initial value and increased to 50 sccm (a film having a methane gas increased in a gradient was formed; the amount of methane gas introduced was increased to 50 sccm; paragraphs [0166]-(0167)). It would have been obvious to one of ordinary skill in the art, before the relevant date, to modify the method of Lin et al. to include the carbon containing gas in introduced at a flow rate set at an initial value and increase to 50 sccm, as taught by Takazaki, because this will produce the maximum hardness (Takazaki; paragraph [0187]). Response to Arguments Applicant's arguments filed August 15, 2025 have been fully considered. Applicant has argued that the prior art does not teach “only a single continuous layer” of TiSiCN. It is argued that the newly cited prior art to Huang et al. addresses the limitation of “only a single layer”. Huang et al. teaches utilizing “only a gradient layer of TiSiCN”. It is further noted that “only a single layer” covers depositing that layer and exactly one layer of TiSiCN but does not preclude other layers above or below that layer (i.e. primer layer etc.). Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RODNEY GLENN MCDONALD whose telephone number is (571)272-1340. The examiner can normally be reached Hoteling: M-Th every Fri off.. 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. /RODNEY G MCDONALD/Primary Examiner, Art Unit 1794 RM November 19, 2025
Read full office action

Prosecution Timeline

Sep 19, 2023
Application Filed
Oct 30, 2024
Non-Final Rejection — §103
Feb 04, 2025
Response Filed
May 12, 2025
Non-Final Rejection — §103
Aug 15, 2025
Response Filed
Nov 19, 2025
Final Rejection — §103
Apr 10, 2026
Request for Continued Examination
Apr 10, 2026
Response after Non-Final Action
Apr 13, 2026
Response after Non-Final Action

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Prosecution Projections

4-5
Expected OA Rounds
63%
Grant Probability
92%
With Interview (+29.4%)
3y 4m
Median Time to Grant
High
PTA Risk
Based on 1241 resolved cases by this examiner. Grant probability derived from career allow rate.

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