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 .
Response to Arguments
Applicant's arguments filed 1/26/2026 have been fully considered but they are not persuasive. The restriction requirement of 7/11/2025 will not be reconsidered for the reasons given in the previous office action. Any determination of rejoinder will be evaluated at allowability.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
The test for obviousness is not whether the claimed invention is expressly suggested in any one or all of the references, but rather whether the claimed subject matter would have been obvious to those of ordinary skill in the art in light of the combined teachings of those references. In re Keller, 642 F.2d 413, 425 (CCPA 1981). One of ordinary skill can use his or her ordinary skill, creativity, and common sense to make the necessary adjustments and further modifications to result in a properly functioning device. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (“a court can take into account the inferences and creative steps that a person of ordinary skill in the art would employ”). Furthermore, “if a technique has been used to improve one device, and a person of ordinary skill in the art would recognize that it would improve similar devices in the same way, using the techniques is obvious unless its actual application is beyond his or her skill.” See id. At 417.
The applicant argues that Kopf and Tian cannot be combined because Tian is drawn to a PVD process. Though Tian et al. implants sulfur with ion implantation, Pasueth et al. uses hydrogen sulfide gas in Table 2, for example. Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kopf to include implanting sulfur into its TiN containing film with sulfur containing gas as taught by Tian et al. in order to have better low friction coefficients and wear rates and as Paseuth et al. teaches the art recognized suitability and utility of using sulfur containing gas. One cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore, for at least these reasons, the prior art rejections are maintained.
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.
Claim(s) 1-10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kopf et al. (Mat. Sci. Forum Vols. 825-826 pp 597-604; cited by applicant) in view of Tian et al. (App. Surf. Sci. July 2015, pp 1156-1163; cited by applicant) and Paseuth et al. (US 2019/0071792 A1)
As to claim 1, Kopf et al. teaches the CVD of a Al(1-x)Ti(x)N coating layer on p 598. Kopf et al. does not teach that the CVD is in the presence of a sulfur containing gas.
Tian et al. teaches placing sulfur into TiN containing wear resistant films in order to have low friction coefficients and wear rates (col. 1 p 1156). Though Tian et al. implants sulfur with ion implantation, Pasueth et al. uses hydrogen sulfide gas in Table 2, for example.
Therefore, it would have been obvious to one of ordinary skill in the art at the time of filing to modify Kopf to include implanting sulfur into its TiN containing film with sulfur containing gas as taught by Tian et al. in order to have better low friction coefficients and wear rates and as Paseuth et al. teaches the art recognized suitability and utility of using sulfur containing gas.
As to claim 2, Paseuth et al. teaches hydrogen sulfide in Table 2.
As to claim 3, the structure of the film is directly related to the amount of each element in Kopf on p 600. Therefore, it would be obvious that the resulting structure is dependent upon reaction conditions modifiable by routine experimentation. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claim 4, Tian et al. modifies the amount of sulfur to gain the result of better friction and wear time as discussed above. It has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. In re Aller, 220 F.2d 454, 105 USPQ 223 (CCPA 1955).
As to claims 5-6, the claimed layer is a top layer when the other references are taken in combination with Paseuth et al., 11 in Fig. 3A with coating layers underneath.
As to claim 7, Kopf teaches the temperature on p 598.
As to claim 8, Paseuth et al. teaches the sequence including the metal halide reactants in a first mixture and ammonia in a second mixture in para 0132 with nitrogen known to be included in both groups in para 0004. Sulfides are embedded with the metal as in Tian et al.
As to claim 9, Kopf teaches lamellae on p 599-600 within the claimed size range.
As to claim 10, the coated object is a cemented carbide in Paseuth et al. para 0038.
Conclusion
THIS ACTION IS MADE FINAL. 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 KELLY M GAMBETTA whose telephone number is (571)272-2668. The examiner can normally be reached M-F 9-5:30.
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, Gordon Baldwin can be reached at 571-272-5166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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KELLY M. GAMBETTA
Primary Examiner
Art Unit 1718
/KELLY M GAMBETTA/Primary Examiner, Art Unit 1718