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 .
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, 6-7, 10 and 20 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.
Claims 1, 6-7, 10 and 20, recite wherein a ratio of a plane other than (002) plane to (002) plane at an interface with a base material to be coated is higher than a ratio of plane other than (002) plane to (002) plane on a surface of the solid lubricant . . . . and the peak intensity ratio. However, it is not clear if the claims mean that each plane (002) are individually present in higher proportions than the others or if they are collectively present in higher proportions. Likewise, are the planes of (002) (individually or collectively) present in greater proportions than the other planes individually or collectively? For example, Figure 1 of the instant specification clearly shows the (002) plane to have greater peaks than all of the other ZnO planes for every oxygen gas ratio, however, there are ratios where the (002) plane does not appear to be greater than all of the other planes. Given the broadest reasonable interpretation of the claim, it is considered that the claims are referring to all planes (002) at least collectively and requiring that they are present in greater proportions than the remaining planes at least individually.
Claim Rejections - 35 USC § 102/103
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.
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.
Claims 1-20 are rejected under 35 U.S.C 102(a)(1) as anticipated by or, in the alternative, under 35 U.S.C. 103 as obvious over Goto et al., US Patent Application Publication No. 2013/0206038 (hereinafter referred to as Goto).
Regarding claims 1-20, Goto discloses a ZnO coating having low friction not only in a vacuum but in a liquid such as oil. The low-friction ZnO coating, comprising (002) and (103) planes, and further comprising (100), (101), (102), and (104) planes in lower proportions than those of the (002) and (103) planes, has been prepared by sputtering using a zinc target in a sputter gas environment, wherein the sputter gas comprises an inert gas and oxygen gas, and the oxygen gas ratio is controlled. This coating has a specifically good low friction coefficient due to the piezoelectric effect, and this friction reduction mechanism is maintained even in oil such as n-hexadecane and can be used on sliding members (as recited in claims 1-20) (see Abstract and see Figures 4 and 6 – Figure 4 shows the orientation of the interfaces that are facing opposite to each other).
It is noted that a prima facie case of either anticipation or obviousness has been established when the reference discloses all the limitations of a claim (in this case, a solid lubricant having a hexagonal crystal structure) except for a property (in the present case, wherein a ratio of a plane other than (002) plane to (002) plane at an interface with a base material to be coated is higher than a ratio of plane other than (002) plane to (002) plane on a surface of the solid lubricant) and the examiner cannot determine whether or not the reference inherently possesses properties that anticipate or render obvious the claimed invention but has a basis for shifting the burden of proof to applicant, as per In re Fitzgerald, 619 F.2d 67, 205 USPQ 594 (CCPA 1980). See also In re Best, 195 USPQ 430,433 (CCPA 1977) as to the providing of this rejection under 35 USC 103 in addition to the rejection made above under 35 USC 102.
Conclusion
8. There was an unused X reference from the ISR report. The examiner is of the position that the prior art cited adequately reads on the claims as instantly recited.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to VISHAL V VASISTH whose telephone number is (571)270-3716. The examiner can normally be reached M-F 9:00-4:30 and 7:00-10:00p.
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, Prem Singh can be reached at 5712726381. 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.
/VISHAL V VASISTH/Primary Examiner, Art Unit 1771