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 .
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: “carrier means” and “coating means” in claim 1, “physical vapor deposition means” in claim 2, and “PVD means” and “magnetron sputter means” in claim 3.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
Claim Objections
Applicant’s amendments to the claims have overcome the previously presented objections and thus the objections are withdrawn.
Claim 12 is objected to because of the following informalities:
In claim 12, the limitation “equal or lower to a penetration depth” should be amended to read “equal or lower than a penetration depth” to correct grammar.
Appropriate correction is required.
Claim Rejections - 35 USC § 112
Applicant’s amendments to the claims have overcome the previously presented rejections under 35 U.S.C. 112(b) and thus the rejections have been withdrawn.
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.
Claims 7 and 16 are 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 line 2 of claim 7, the limitation “the substrates” lacks antecedent basis and thus is indefinite because it is unclear whether claim 1 is intended to require “coating on a substrate” or coating multiple substrates.
In claim 16, the limitation “plasma ARC source” is indefinite because it is unclear whether the capitalized term “ARC” is intended to be an acronym or if the claim is only intended to refer to a plasma arc source.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-3, 8-9, 13-15, and 17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Leroy (US 20240352571 A1).
Regarding claim 1, Leroy (US 20240352571 A1) teaches a method of forming a carbon coating on a substrate S including mounting the substrate on a substrate carrier 50 (carrier means) within a vacuum chamber 10, providing a magnetron sputtering source 30 (coating means comprising at least a first device in the form of a deposition device) positioned adjacent to the carrier 50 and adapted for depositing a carbon based material (selected material), providing a plasma source 40 (second device) for generating argon ions (positive non-reactive ions) to densify the material on the substrate, where the substrate carrier may be rotated past the sputtering source to deposit carbon material and the plasma assist source to densify the deposited material alternatingly and repeatedly (during the operation of the coating means, the selected material is periodically exposed to ion bombardment by positive reactive ions from the second device) such that a coating is formed on the substrate while rotating/revolving the carrier (periodically moving at least one of the carrier means and the coating means relative to each other along a path), wherein a negative bias voltage is applied to the substrate via the substrate carrier to accelerate the positive ions from the plasma source toward the substrate to densify the deposited carbon (effecting an ion bombardment on the selected material deposited on the substrate thereby increasing density of the material deposited) (para 0022, 0069-0074, 0109-0119, 0125, 0154, 0229; Fig. 1-2).
Regarding claim 2, Leroy teaches the coating means is a magnetron sputtering source (PVD means) for performing sputtering (physical vapor deposition) to deposit the coating (para 0109-0110, 0117).
Regarding claim 3, Leroy teaches the PVD means is a magnetron sputtering source (magnetron sputter means) for performing magnetron sputtering to deposit the coating (para 0109-0110, 0117).
Regarding claim 8, Leroy teaches the positive non-reactive ions provided by the plasma source (second device) are argon (ions having larger mass than carbon) (para 0067-0068, 0117).
Regarding claim 9, Leroy teaches the positive non-reactive ions provided by the plasma source (second device) are argon ions (para 0067-0068, 0117).
Regarding claim 13, Leroy teaches the positive non-reactive ions provided by the plasma source (second device) are argon ions (ions of at least one noble gas element including Ar) (para 0067-0068, 0117).
Regarding claim 14, Leroy teaches the positive non-reactive ions provided by the plasma source (second device) are argon ions (Ar+) (para 0067-0068, 0117).
Regarding claim 15, Leroy teaches the sputtering/PVD coating means includes a carbon target made of graphite (para 0050, 0117, 0236).
Regarding claim 17, Leroy teaches the selected material deposited is amorphous diamond like carbon (a-C) that does not contain hydrogen (hydrogen free) (Abstract, para 0025-0027, claim 1).
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.
Claim(s) 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1), as applied to claim 3 above, and further in view of Papa (US 20130276984 A1).
Regarding claim 4, Leroy teaches the magnetron sputtering may be pulsed (para 0033-0035), thus creating a plurality of pulses. Leroy fails to explicitly teach a maximum power density in each pulse of the plurality of pulses is at least 0.08kW/cm2. However, Papa (US 20130276984 A1), in the analogous art of pulsed sputtering, teaches magnetron sputtering may be performed in a pulsed manner with a (maximum) power density of 212 W/cm2, or 0.212 kW/cm2 (at least 0.08 kW/cm2), where the cathode for sputtering may be graphite (para 0035, 0054, 0059). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the power density of Leroy with the power density of Papa because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Alternatively, or in addition, if the power density recited by Papa is not a “maximum” power density, the maximum power density is necessarily greater than or equal to 0.212 kW/cm2 (at least 0.08 kW/cm2).
Regarding claim 5, the combination of Leroy and Papa teaches the (maximum) power density is 212 W/cm2, or 0.212 kW/cm2 (at most 0.5 kW/cm2) (Papa para 0035, 0059).
Claim(s) 5-6 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1) in view of Papa (US 20130276984 A1), as applied to claim 4 above, and further in view of Lin (NPL – “Recent Advances in Modulated Pulsed Power Magnetron Sputtering for Surface Engineering”).
Regarding claim 5, the combination of Leroy and Papa teaches the power density is 212 W/cm2, or 0.212 kW/cm2 (at most 0.5 kW/cm2) (Papa para 0035, 0059) but fails to explicitly teach the “maximum” power density is at least 0.08 and at most 0.5 kW/cm2. However, Lin (NPL), in the analogous art of pulsed magnetron sputtering, teaches that modulated pulsed power (MPP) magnetron sputtering can be used as an alternative to HIPIMS to counteract the low deposition rate of HIPIMS, while still increasing the density of the deposited film, wherein the MPP magnetron sputtering uses a peak (maximum) power density of 0.5 to 1.5 kW/cm2 (pg. 49-51, 57; Fig. 1). Papa teaches using HIPIMS for depositing films (para 0028, 0030) and Leroy teaches HIPIMS may be used for deposition (para 0042-0047). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the HIPIMS method of Leroy and Papa with the MPP magnetron sputtering method of Lin, including a maximum power density of 0.5 to 1.5 kW/cm2 in order to improve the deposition rate and thus production throughput because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
The combination of Leroy, Papa, and Lin teaches a peak/maximum power density of 0.5 to 1.5 kW/cm2 but fails to explicitly teach the peak power density is at most 0.5 kW/cm2. However, one would have expected the use of any value within the Lin range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 0.5 to 1.5 kW/cm2, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Regarding claim 6, the combination of Leroy, Papa, and Lin teaches the duty cycle of MPP (at least one pulse) is 10-28% (above 10%) (Lin pg. 49; Fig. 1).
Alternatively, the aforementioned combination fails to explicitly teach the duty cycle is above 10%. However, one would have expected the use of any value within the Lin range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 10% to 28%, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Regarding claim 10, the combination of Leroy, Papa, and Lin teaches the duty cycle of each pulse ranges from 10% to 28% (Lin pg. 49; Fig. 1) and therefore the average duty cycle is necessarily above 10%.
Alternatively, the aforementioned combination fails to explicitly teach the average duty cycle is above 10%. However, one would have expected the use of any value within the Lin range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 10% to 28%, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Regarding claim 11, the combination of Leroy, Papa, and Lin teaches the duty cycle of each pulse ranges from 10% to 28% (Lin pg. 49; Fig. 1) and therefore the duty cycle of each pulse is at or above 10%.
Alternatively, the aforementioned combination fails to explicitly teach the duty cycle of each pulse is above 10%. However, one would have expected the use of any value within the Lin range to have yielded similar results. Absent any showing of criticality, it would be obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to have used any values within 10% to 28%, including values within the claimed range, with a reasonable expectation of success and with predictable results. Please see MPEP 2144.05 (I) for further details.
Claim(s) 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1), as applied to claim 1 above, and further in view of Gorokhovsky (US 20140076715 A1).
Regarding claim 7, Leroy teaches the second device is a plasma source 40 and that the substrate may be cleaned prior to deposition (a step of pre-cleaning the substrates prior to coating deposition) (para 0110-0112, 0149; Fig. 1-2) but fails to explicitly teach the step of pre-cleaning the substrate is performed using the second device. However, Gorokhovsky (US 20140076715 A1), in the analogous art of deposition, teaches that a RAAD plasma may be used for ion cleaning a substrate as well as densifying a coated film (para 0110-0113, 0118). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to use the plasma source of Leroy to clean the substrate before deposition in addition to densifying the coated film, as described by Gorokhovsky, in order to reduce contamination of the substrate/coating.
Regarding claim 16, Leroy teaches the second device is a plasma source that may be of any suitable type (para 0112) but fails to explicitly teach the second device is a plasma ARC source. However, Gorokhovsky (US 20140076715 A1), in the analogous art of deposition, teaches that a coating can be densified by ion bombardment from ions generated from an RAAD (remote anode arc discharge) plasma (para 0085, 0110-0113). Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to substitute the plasma source of Leroy with a remote anode arc plasma source, as described by Gorokhovsky, because this is a substitution of known elements yielding predictable results. See MPEP 2143(I)(B).
Claim(s) 12 is rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1), as applied to claim 1 above, and further in view of Nastasi (US 5817326 A) and Liu (US 20200111659 A1).
Regarding claim 12, Leroy teaches a movement of the substrate carrier relative to the coating means is by rotation of the carrier, where the rotation comprises passes in front of the sputtering source (coating means) (para 0069-0073, 0125-0127; Fig. 1-2). Leroy fails to explicitly teach a thickness of the selected material during one passage in front of the coating means is equal or lower than a penetration depth of the positive non-reactive ions provided by the second device. However, Nastasi (US 5817326 A), in the analogous art of densification by ions, teaches that the thickness of the layer to be densified is selected such that the ions can penetrate the entire layer and travel into the support (thickness is equal or lower than a penetration depth) (col 3 line 1-12). Additionally, Liu (US 20200111659 A1), in the analogous art of ion bombardment, teaches that the bias power of the substrate may be controlled to allow treatment of thicker films by increasing the penetration depth of the ions (para 0023, 0039, 0045, ). It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to control the thickness of a single pass and bias power of the Leroy process such that the thickness is less than a penetration depth of the ions in order to ensure the entire thickness is densified.
Alternatively, Leroy teaches that the thickness of the deposited carbon layer may be adjusted to optimize the physical properties of the deposited layer (para 0163-0164), thus recognizing the thickness of the deposited carbon layer as a result-effective variable. Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to determine the optimum or workable ranges of thickness for each deposition/pass by routine optimization, which can include a thickness equal or lower than a penetration depth of the positive non-reactive ions. See MPEP 2144.05(II).
Response to Arguments
Applicant’s arguments, see pg. 5-6, filed 1/22/2026, with respect to the rejection(s) of claim(s) 1 under 35 U.S.C. 102 and 35 U.S.C. 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Leroy (US 20240352571 A1).
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 PATRICK S OTT whose telephone number is (571)272-2415. The examiner can normally be reached M-F 9am-5pm.
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.
/PATRICK S OTT/Examiner, Art Unit 1794
Prosecution Insights