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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/14/2026 has been entered.
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”, “coating means”, “physical vapor deposition means”, “PVD means”, and “magnetron sputter means” in claim 1.
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.
Claims 1, 7, and 16 are objected to because of the following informalities:
In claim 1, the limitations “0.08kW.cm2” and “0.5kW.cm2” should be amended to read “0.08kW.cm-2” and “0.5kW.cm-2” respectively because these are the correct units for maximum power density included in the specification and previously presented claims.
In claim 7, the limitation “the substrates substrate” should be amended to recite “the substrate”.
In claim 16, the limitation “plasma ARC arc source” should be amended to recite “plasma arc source”.
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.
Claims 1 and 6-17 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 claim 1, the limitations “0.08kW.cm2” and “0.5kW.cm2” are indefinite because the units presented are not units of a maximum power density and therefore it is unclear whether the claims are intended to require the claimed values in kW.cm-2 as presented in previously filed claims and the specification or intended to require the claimed values of power multiplied by area instead of power density. For the purposes of examination, the limitation will be considered to mean at least either of the aforementioned interpretations.
In line 2 of claim 7, the limitation “the substrates substrate” 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 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.
Claims 6-17 are indefinite by virtue of depending on an indefinite claim.
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) 1, 6, 8-11, 13-15, and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1) in view of Abraham (US 20210115553 A1) and Tilsch (US 20060070877 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), wherein the coating means is a magnetron sputtering source (PVD means comprising magnetron sputter means) for performing sputtering (operating is performing PVD and magnetron sputtering) (para 0022, 0069-0074, 0109-0119, 0125, 0154, 0229; Fig. 1-2).
Leroy teaches the sputtering may be pulsed and thus creates a plurality of pulses which inherently contain a maximum power density (para 0033-0035) but fails to explicitly teach a maximum power density in each pulse is at least 0.08 kW/cm2 and at most 0.5 kW/cm2. However, Abraham (US 20210115553 A1), in the analogous art of sputtering, teaches a high power pulsed magnetron sputtering process can be used for depositing diamond-like carbon layers, where the peak (maximum) power density of the pulses can be in the range of 0.1 to 20 kW/cm2 (para 0034, 0151-0152, 0183). Leroy teaches depositing a layer of carbon based material that may be DLC by sputtering from a carbon target, where the sputtering may be pulsed magnetron sputtering (para 0025-0026, 0034-0035, 0224). 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 pulsed magnetron sputtering method of Leroy with the pulsed magnetron sputtering method of Abraham having a peak power density of 0.1 to 20 kW/cm2 because this is a substitution of known elements yielding predictable results of depositing a diamond-like carbon layer. See MPEP 2143(I)(B).
The combination of Leroy and Abraham fails to explicitly teach the maximum/peak power density is at least 0.08 and at most 0.5 kW/cm2. However, one would have expected the use of any value within the Abraham 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 0.1 to 20 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.
Alternatively, or in addition, Tilsch (US 20060070877 A1), in the analogous art of magnetron sputtering, teaches that lower power density may suppress arcing and thus reduce defects on the deposited film (Abstract, para 0017, 0048). Leroy teaches that care is taken to not degrade the quality of the deposited film and prevent formation of defects (para 0117-0118, 0263-0266). Additionally, Abraham teaches an arc suppression circuit to suppress arcing during sputtering (para 0158). Tilsch recognizes the power density as a result-effective variable influencing film quality due to arcing; 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 maximum/peak power density by routine optimization, which can include a maximum power density from 0.08 to 0.5 kW/cm2. See MPEP 2144.05(II).
Regarding claim 6, the combination of Leroy, Abraham, and Tilsch teaches that the AC voltage pulses applied to the target can have a duration of 0.1 to 100 ms and a frequency of 1 to 10000 Hz, which results in a period of 0.1 to 1000 ms and therefore the pulse duty cycle ranges from 0.01% to 100% (Abraham para 0035) but fails to explicitly teach a duty cycle of at least one pulse is above 10%. However, one would have expected the use of any value within the Abraham 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 0.01 to 100% range, 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 8, the combination of Leroy, Abraham, and Tilsch teaches the positive non-reactive ions provided by the plasma source (second device) are argon (ions having larger mass than carbon) (Leroy para 0067-0068, 0117).
Regarding claim 9, the combination of Leroy, Abraham, and Tilsch teaches the positive non-reactive ions provided by the plasma source (second device) are argon ions (Leroy para 0067-0068, 0117).
Regarding claim 10, the combination of Leroy, Abraham, and Tilsch teaches that the AC voltage pulses applied to the target can have a duration of 0.1 to 100 ms and a frequency of 1 to 10000 Hz, which results in a period of 0.1 to 1000 ms and therefore the pulse duty cycle ranges from 0.01% to 100% (Abraham para 0035) but fails to explicitly teach an average duty cycle of the plurality of pulses is above 10%. However, one would have expected the use of any value within the Abraham 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 0.01 to 100% range, 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, Abraham, and Tilsch teaches that the AC voltage pulses applied to the target can have a duration of 0.1 to 100 ms and a frequency of 1 to 10000 Hz, which results in a period of 0.1 to 1000 ms and therefore the pulse duty cycle ranges from 0.01% to 100% (Abraham para 0035) but fails to explicitly teach the duty cycle of all pulses of the plurality of pulses is above 10%. However, one would have expected the use of any value within the Abraham 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 0.01 to 100% range, 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 13, the combination of Leroy, Abraham, and Tilsch 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) (Leroy para 0067-0068, 0117).
Regarding claim 14, the combination of Leroy, Abraham, and Tilsch teaches the positive non-reactive ions provided by the plasma source (second device) are argon ions (Ar+) (Leroy para 0067-0068, 0117).
Regarding claim 15, the combination of Leroy, Abraham, and Tilsch teaches the sputtering/PVD coating means includes a carbon target made of graphite (Leroy para 0050, 0117, 0236).
Regarding claim 17, the combination of Leroy, Abraham, and Tilsch teaches the selected material deposited is amorphous diamond like carbon (a-C) that does not contain hydrogen (hydrogen free) (Leroy Abstract, para 0025-0027, claim 1).
Claim(s) 7 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Leroy (US 20240352571 A1) in view of Abraham (US 20210115553 A1) and Tilsch (US 20060070877 A1), as applied to claim 1 above, and further in view of Gorokhovsky (US 20140076715 A1).
Regarding claim 7, the combination of Leroy, Abraham, and Tilsch 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) (Leroy 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, the combination of Leroy, Abraham, and Tilsch teaches the second device is a plasma source that may be of any suitable type (Leroy 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) in view of Abraham (US 20210115553 A1) and Tilsch (US 20060070877 A1), as applied to claim 1 above, and further in view of Nastasi (US 5817326 A) and Liu (US 20200111659 A1).
Regarding claim 12, the combination of Leroy, Abraham, and Tilsch 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) (Leroy para 0069-0073, 0125-0127; Fig. 1-2). The aforementioned combination 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 to densify the entire film (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 8/14/2026, 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 Abraham (US 20210115553 A1) and Tilsch (US 20060070877 A1).
Applicant argues that the claimed range of peak power density is critical because the use of higher power densities degrade the surface quality of the coating and the claimed range provides the unexpected and critical benefit of optimum surface quality that a person of ordinary skill in the art would not expect. This argument is not persuasive because the increase in arcing and consequential increase in defects resulting from higher power densities is known (see Tilsch (US 20060070877 A1) and thus is not an “unexpected” result. Additionally, the specification does not provide sufficient evidence that the claimed range is critical and commensurate in scope because it is unclear whether the results presented in the specification would necessarily result from the prior art combination or only that the arrangement/method of the instant application, including all claimed and unclaimed elements, would produce the described result, especially considering that the magnetron sputtering method described in Abraham includes an arc suppression circuit to eliminate arcing and thus prevent film degradation due to a higher power density. Furthermore, the presented data appears to merely show that the surface quality decreases as power density increases and hardness increases and power density increases, thus establishing that there is a tradeoff between hardness and surface quality/defects that can be optimized and not that the values outside of the claimed range produce an inferior or inoperable result.
Applicant argues that the combination with Nastasi and Liu in the rejection of claim 12 is improper because the references are not analogous art and their combination relies upon improper hindsight reconstruction. This argument is not persuasive because both Nastasi and Liu are analogous art in the field of ion bombardment/densification and thus are related to the instant application and Leroy, which both include ion bombardment for densification of a material. Additionally, 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). Regarding the combination with Nastasi and Liu, the references teach that ion bombardment penetration depth may be controlled and that it is desirable to increase the penetration depth when the film thickness is larger in order to densify the entire film instead of just an upper portion of the film, which provide sufficient motivation for one skilled in the art to control the process such that the ion bombardment reaches through the entire film.
Conclusion
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.
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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.
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/PATRICK S OTT/Examiner, Art Unit 1794
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