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
Applicant’s election without traverse of Group I, claims 1-9, and species (i), drawn to a hard film formed body that fulfills feature (A), in the reply filed on 06/19/2026 is acknowledged.
Claims 8-12 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected inventions and species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 06/19/2026.
Claim Objections
Claims 1, 5 and 7 are objected to because of the following informalities:
In reference to claim 1-, it is suggested to (1) in line 5, amend “the Vickers hardness of the hard film to the Vickers” to “a Vickers hardness of the hard film to a Vickers” and (2) in line 7, amend “the thickness” to “a thickness”, in order to ensure proper antecedent basis and consistency in the claim language. Appropriate correction is required.
In reference to claim 5, it is suggested to (1) in line 2, amend “the electrochemical” to “an electrochemical”, (2) in line 3, amend “the thickness” to “a thickness”, (3) in line 7, amend “the extension time of the” to “an extension time of a”, (4) in line 8, amend “the Breakthrough” to “a Breakthrough” and (5) in line 8, amend “the thickness” to “a thickness”, in order to ensure proper antecedent basis and consistency in the claim language. Appropriate correction is required.
In reference to claim 7, in line 3, after “Vickers hardness” and before “is”, insert “of the hard film to the Vickers hardness of the base material”, in order to ensure consistency in the claim language. Appropriate correction is required.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Kinno et al. (US 2005/0141797) (Kinno) in view of Sasayama (JP 2020-152982) (Sasayama).
The Applicant has provided a machine translation of JP 2020-152982 with the IDS filed 06/02/2026. The citation of prior art in the rejection refers to the provided machine translation.
In reference to claims 1-4 and 6-7, Kinno teaches a rolling sliding member comprising a base material made of steel and a diamond like carbon layer formed on a surface of the base material ([0067]); [0096]-[0101]; FIG. 13) (corresponding to a hard film formed body comprising: a base material). The diamond like carbon layer includes an intermediate layer having a metal component, a composite layer having a carbon component and a carbon layer ([0076]) (corresponding to a hard film; an intermediate layer and a diamond-like carbon layer are formed on the surface of the hard film). The intermediate layer is on an outer peripheral surface of the base material (FIG. 13) (corresponding to the hard film being formed on a surface of the base material)
Kinno does not explicitly teach a ratio of a Vickers hardness of the intermediate layer to a Vickers hardness of the base material is 0.90 to 1.20, as presently claimed. However, Kinno teaches the surface of the base material has a hardness of 600 to 740Hv and the intermediate layer is a metallic layer made of including Ni ([0083]; [0120]; [0128]; [0138]).
Sasayama teaches a sliding member including a Ni-P-B plating film ([0001]). The film contains, in addition to Ni as a main component, 0.01 at% or more and 15at% or less of P, 0.01 at% or more and less than 2 at% of B and an element X that is an element selected from the group consisting of C of 0.005 at% or more and less than 5 at%, N of 0.01 at% or more and less than 1 at%, O of 0.002 at% or more and less than 1 at%, S of 0.01 at% or more and less than 1 at%, and H of 0.001 at% or more and less than 1 at% ([0016]). It is clear the Ni-P-B plating film comprises at least 89 wt% Ni (i.e., wt% Ni = 100* ((at%Ni*MWNi) / ((at%Ni*MWNi) + (at%P*MWP) + (at%B*MWB) + (at%C*MWC))) = 100* ((78*58.70) / (78*58.70 + 15*30.97 + 2*10.81 + 5*12.01)) = 89). Additionally, Table 3 shows the Ni-P-B plating film comprises 99.4 at% Ni (i.e., 99.8 wt% Ni) (corresponding to the hard film is a Ni coating film; the Ni coating film includes a Ni-P-B coating film that contains Ni by 90 mass% or more). The coating has a high hardness (for example, Vickers hardness of 700Hv or more with working example showing a hardness of 760 Hv) ([0030]; [0061]).
Sasayama further teaches the hardness, corrosion resistance and production efficiency of the plating film can be achieved at a sufficiently high level ([0012]).
In light of the motivation of Sasayama, it would have been obvious to one of ordinary skill in the art before the effective filing date of the presently claimed invention to have the metallic intermediate layer of Kinno be the Ni-P-B film, in order to provide high hardness and corrosion resistance and high production efficiency, and thereby arriving at the presently claimed invention.
Kinno in view of Sasayama teaches the surface of the base material has a hardness of 600 to 740Hv and the hardness of the Ni-P-B intermediate layer is greater than 700 Hv (e.g., 760 Hv) (Kinno, [0120]; Sasayama, [0030], [0061]) (corresponding to the Vickers hardness of each of the base material and the hard film is 500-1,000 Hv; the Vickers hardness of each of the base material and the hard film is 700-800 Hv). Therefore, a ratio of the Vickers hardness of the Ni-P-B intermediate layer to the Vickers hardness of the base material is greater than 0.95 (i.e., 700/740 = 0.946) (corresponding to a ratio of the Vickers hardness of the hard film to the Vickers hardness of the base material is 0.90-1.20; the ratio of the Vickers hardness is 0.95-1.05).
As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Given that the Ni-P-B intermediate layer of Kinno in view of Sasayama is substantially identical to the present claimed hard film in composition and structure, it is clear that the Ni-P-B intermediate layer of Kinno in view of Sasayama would intrinsically suppress a hydrogen atom from entering and diffusing.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
In reference to claim 5, Kinno in view of Sasayama teaches the limitations of claim 1, as discussed above. Given that the Ni-P-B intermediate layer of Kinno in view of Sasayama is substantially identical to the presently claimed hard film, it is clear in an electrochemical hydrogen permeation method using a specimen formed of the sliding member of Kinno in view of Sasayama intrinsically has an extension time of a breakthrough time of the specimen is 0.4 times or more as long as a breakthrough time of a target formed of the base material.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mary I Omori whose telephone number is (571)270-1203. The examiner can normally be reached M-F 8am-4pm.
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/MARY I OMORI/Primary Examiner, Art Unit 1784
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