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 Species A1 in the reply filed on 22 June 2026 is acknowledged.
Claims 4 and 6, claim 13, and claim 14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being respectively drawn to nonelected Species A2, A3, and A4, there being no allowable generic or linking claim.
Claim Interpretation
The transitional phrase “having” is considered to be open (and interpreted as “comprising”).
It is noted that the transitional phrase “is” is not a standard transitional phrase. With respect to the substrate, the transitional phrase “is” is interpreted to mean “consisting essentially of”.
With respect to the intermediate layer, it appears that Applicant’s intent of this transitional phrase is concerned with overall identity and not just a list of possible constituents. As such, the least restrictive interpretation for “to be”/ “is” would be “consisting essentially of”. Evidence supporting this interpretation includes the fact that a laminate having an intermediate layer that is polydopamine (PDA) exhibits a set of properties different from another laminate having an intermediate layer that is a composite of PDA and SiO2 nanoparticles. (See Spec. Figs. 2-7).
However, it is noted that for the intermediate layer, 1) the specification never contemplates what additional component could be respectively added to an intermediate layer that is PDA or PDA+SiO2 and still not affect basic and novel characteristics of a resulting laminate, and 2) all possible intermediate layers discussed in the specification are disclosed to be either mono-component or in the alternative bi-component (viz. made of condensate of TMS only, made of PDA only, and made of only a combination of PDA and SiO2 nanoparticles). Furthermore, the specification contains probative evidence showing that the material composition of the intermediate layer directly affects property associated therewith, with an intermediate layer of PDA per se resulting in a laminate having surface roughness different from that of a laminate having an intermediate layer of PDA and SiO2 nanoparticles. As such, given that the novel and basic characteristics of the laminates in the specification flows directly from choice of material constituting the intermediate layer, and given that each of the possible respective material compositions are actually close-ended, in the instant case, the transitional phrase “is” with respect to the intermediate layer is deemed to be closed.
Furthermore, it is noted that because each of the possible composition of the intermediate layer discussed in the specification is either mono-component or in the alternative bi-component, interpreting “is” to be broader than a closed transitional phrase or alternatively using an open transitional phrase in effect expands scope of the claim beyond what Applicant has disclosed and would otherwise be deemed as being not in compliance with the written description requirement of 35 USC 112(a) for at least certain claims (e.g. claims 7 and 8).
The foregoing is effectively what was set forth in the Non-Final Office Action dated 29 February 2024 during the prosecution of the parent application 17/666,517. Applicant was asked to provide rebuttals should Applicant disagree, and when Applicant filed a subsequent response, Applicant did not provide any contentions against the interpretation set forth in the Non-Final Office Action dated 29 February 2024 (and effectively reiterated above). The interpretation above is therefore still deemed to be relevant during the examination of the Instant Application.
Priority
Although priority claims to Provisional Application 63/146,294 is acknowledged, it is noted that neither claim 9 nor claim 10 has support in the Provisional Application. These two claims are considered to be effective filed on 7 February 2022.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 7 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The support for claim 7 is from Fig. 1B and ¶ 28 of the specification. This determination is not in dispute, as Applicant has stated the same on the record. (See pg. 4 ¶¶ 5 and 6 of the response filed 26 June 2024 in parent application 17/666,517). The same is true for support for claim 8. It is noted, however, that Fig. 1B and ¶ 28 of the specification are concerned with a structure consisting of a stainless steel substrate and an underlayer of either PDA per se or PDA and SiO2 nanoparticles. (See ¶ 0028 of Spec.). However, it is noted that the entity as described in Fig. 1B and ¶ 0028 is different from the claimed subject matter of each of claims 7 and 8, namely that the latter additionally has a DLC layer. While it is conceded that the structure of Fig. 1B is transformed into that of Fig. 1C (which supports claims 7 and 8), when a DLC layer is deposited upon the underlayer 12 of Fig. 1B, the structure of Fig. 1B is nonetheless different from that of Fig. 1C.
As such, without further clarification re: whether surface roughness of underlayer 12 stays unchanged when a layer of DLC (viz. layer 13) is deposited on the former, attributes associated with the structure of Fig. 1B cannot be used to provide support for the structure of Fig. 1C.
While it is not contested that each element recited in the claim is indeed in the specification, that alone is not sufficient for original written description support, for the elements are drawn to separate and disparate objects in the specification. As such, following the rationale from Hyatt v. Dudas (492 F.3d 1365,1370), even though support for individual elements may be found in the specification, there is no support for the combination of elements, and it is this lack of support for the combination of elements that renders the limitation in question non-compliant with the written description requirement.
Claims 7 and 8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for respective intermediate layers consisting of PDA and a combination of PDA and a certain type of SiO2 nanoparticles, does not reasonably provide enablement for the entire scope possibly sought by Applicant. For both claims, the scope includes situation when intermediate layer contains other particles, as contemplated in claims 11 and 12. Furthermore, for claim 8, the unsupported scope includes any silica other than string-of-pearls particles having a diameter of 18–25 nm with a length of 80–100 nm. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (reversing the PTO's determination that claims directed to methods for detection of hepatitis B surface antigens did not satisfy the enablement requirement). In Wands, the court noted that there was no disagreement as to the facts, but merely a disagreement as to the interpretation of the data and the conclusion to be made from the facts. In re Wands, 858 F.2d at 736-40, 8 USPQ2d at 1403-07. The Court held that the specification was enabling with respect to the claims at issue and found that "there was considerable direction and guidance" in the specification; there was "a high level of skill in the art at the time the application was filed;" and "all of the methods needed to practice the invention were well known." 858 F.2d at 740, 8 USPQ2d at 1406. After considering all the factors related to the enablement issue, the court concluded that "it would not require undue experimentation to obtain antibodies needed to practice the claimed invention." Id., 8 USPQ2d at 1407.
The factors described above have been considered as follows:
(A) The breadth of the claims.
Though not phrased as such, by Applicant’s intent of possibly incorporating additional particles into the intermediate layer and deeming such a possibility as dependent from claim 1, Applicant in effect deems to have scope of claim 1 exceed what is recited.
(C) The state of the prior art.
As discussed in U.S. 2021/0284887 A1 (“Williams”), material composition of an intermediate layer has a material effect of adhesion and tribological properties exhibited by a tribological laminate material. A co-inventor of the Instant Application effectively made statements having similar in a prior application by the Applicant. (See Zou ‘287 ¶ 0003).
(F) The amount of direction provided by the inventor, (G) The existence of working examples.
The properties claimed flows directly from two specific examples, one for an intermediate layer of solely PDA and another for intermediate layer consisting of PDA and SiO2. Here, even the addition of SiO2 (relative to PDA per se) has a material effect on roughness. (Spec. Fig. 2). By the very fact that introduction of SiO2 changes the roughness from 50±5 nm to 60±7 nm, and that Applicant has not even attempted to mitigate the increase in roughness due to the introduction of SiO2, it can be properly and inductively generalized that addition of another type of particle has an effect on roughness.
In addition, though not instantly disclosed, it is noted that the basis of the present application is in effect that published in Surface and Coating Technologies as “Polydopamine + SiO2 nanoparticle underlayer for improving DLC coating adhesion and durability” (doi.org/10.1016/j.surfcoat.2021.127964, henceforth “Zou NPL”). In this article, the specifics of the SiO2 added to PDA to result in roughness of 60±7 nm is revealed as “string-of-pearls particles having a diameter of 18–25 nm with a length of 80–100 nm”. (Zou NPL § 2.1). Phrased differently, the roughness of 60±7 nm is not a value for any SiO2 nanoparticles added, but rather for a specific type of SiO2 nanoparticles added.
Both of the foregoing show that the roughness values are a) highly specific to material composition and b) not generalizable when parameters change. Furthermore, there is absence of disclosure on how to generalize the findings from the examples to broader situation.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In weighing the above stated factors, it is the Examiner’s position that undue experimentation is required to determine how to make the claimed article for the entire scope nominally sought by Applicant.
Accordingly, even though the statute does not use the term “undue experimentation,” it has been interpreted to require that the claimed invention be enabled so that any person skilled in the art can make and use the invention without undue experimentation. In re Wands, 858 F.2d at 737, 8 USPQ2d at 1404 (Fed. Cir. 1988). See also United States v. Telectronics, Inc., 857 F.2d 778, 785, 8 USPQ2d 1217, 1223 (Fed. Cir. 1988) (“The test of enablement is whether one reasonably skilled in the art could make or use the invention from the disclosures in the patent coupled with information known in the art without undue experimentation.”). It is therefore concluded that the scope of the claims is not enabled by Applicant’s disclosure.
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 2, 8, 11, and 12 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.
As Applicant was made well-aware during the examination of 17/666,517, the transitional phrase “is” in the context of the intermediate layer is closed. It is therefore improper to seek to add compositional elements to a closed list, as doing so conflicts with the closed nature of “said intermediate layer is PDA”.
Similarly, when claim 11 seeks to add elements to the intermediate layer (“further including nanoparticles within said intermediate layer”), this is also in effect adding compositional elements to a closed list.
As claim 12 depend on claim 11, and as the respective limitations of the dependent claim does not resolve the aforementioned issue in claim 11, claim 12 is also held to be rejected.
Claims 7 and 8 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.
As discussed in ¶¶ 9-12 above, while factual evidence shows Ra of ~20 nm for the claimed laminate, the claims recite Ra of ~50 nm. It is thus unclear which value Applicant seeks to claim. Furthermore, as the claimed laminate has many surfaces, it is not clear with respect to which surface the Ra value is associated. For prior art rejection below, the claim is considered to require Ra of ~20 nm for the substrate-distal surface of the DLC layer (in accordance with what is shown in Fig. 2 of the Specification).
Furthermore, claim 8 depends on claim 7, and it is abundantly clear that the roughness values of the two claims are not in concordance.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 2, 8, 11, and 12 are rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Claim 2 in effect broadens the scope of closed claim 1. Claim 8 not only broadens the scope of closed claim 7 but also further changes the roughness value. Claims 11 and 12 in effect broadens the scope of closed claim 1
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
An attempt to apply prior art rejection to claim 2 is made solely in view of compact prosecution and fewer issues contained therein. Due to numerous issues contained in claims 8, 11, and 12, no attempt is made to apply prior art to these claims.
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 of this title, 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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, 3, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. 2016/0333287 A1 (“Zou ‘287”) in view of U.S. 2019/0314803 A1 (“Erdemir”).
Considering claims 1, 3, and 5, Zou ‘287 discloses a laminate structure having, in the following sequence, a stainless steel substrate 11, a PDA coating 12, and a graphite coating 13. (Zou ‘287 ¶ 0017). Zou ‘287 is analogous art, for it is directed to the same field of endeavor as that of the instant application (low friction coatings). Zou ‘287 differs from the claimed invention, as it does not disclose an outermost coating of DLC. However, in the form of low friction coatings, it is known that DLC and graphite are both used to minimize friction. (Erdemir ¶ 0026 and 0027). Given that graphite is a specific allotrope of carbon, and given that DLC is a material having a mixture of diamond and graphite allotropes, person of ordinary skill in the art has reasonable expectation of success that DLC (which exhibits partial graphite characteristics) may be used in place of graphite. It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used DLC in place of graphite, as Erdemir is considered to have demonstrated that DLC is a material known in the art for forming low friction coatings. This rationale for supporting a finding of obviousness, where one reference demonstrates that a particular material is suitable for a particular intended use, is considered appropriate under the guidelines set forth in MPEP 2144.07. As an alternative, the replacement of graphite with DLC is obvious, because substituting known equivalents is considered appropriate under the guidelines set forth in MPEP 2144.06. Zou ‘287 and Erdemir renders obvious claims 1, 3, and 5.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable Zou ‘287 and Erdemir, as applied to claim 1 above, and further in view of Williams.
Considering claim 2, in the art of laminate tribological materials, it is known to use an adhesive layer containing solely silica nanoparticles and PDA to increase adhesion between a metal substrate and a tribological material having characteristics different from the metal substrate. (Williams ¶¶ 0086, 0109, 0331, and 0332; and Fig. 12). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have used the adhesive layer containing solely silica and PDA as taught in William, due to its capability of bonding diverse layers of materials. (Id. ¶ 0002).
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable Zou ‘287 and Erdemir, as applied to claim 5 above, and further in view of U.S. 2016/0069383 A1 (“Miyake”).
Considering claim 7, Zou ‘287 and Erdemir as discussed above are silent re: roughness of the coated stainless steel. However, Miyake teaches that it is known to adjust deposition parameters as to adjust roughness of a resulting DLC film within the range of RMS roughness 6.5 to 35 nm. (Miyake ¶ 0082). It is noted that this RMS roughness range overlaps the range of ~20 nm Ra for a DLC film. Miyake is analogous art, for it is directed to the same field of endeavor as that of the instant application (substrate coated with DLC). It would have been obvious to one of ordinary skill in the art to have selected the overlapping portion of the ranges disclosed by the reference because overlapping ranges have been held to be a prima facie case of obviousness, In re Wertheim, 191 USPQ 90, In re Woodruff, 16 USPQ2d 1934, and In re Peterson, 65 USPQ2d 1379.
Claims 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable Zou ‘287 and Erdemir, as applied to claim 1, and further in view of WO 2022/016251 A1 (“Trava”).
Considering claims 9 and 10, Zou ‘287 and Erdemir as discussed above are silent re: inclusion of nanoparticles between an intermediate layer and the DLC layer. Trava teaches a coated metallic substrate having deposited thereupon steel substrate having deposited thereupon a multilayered DLC film, the multilayered DLC film having repeats of a DLC layer 3 and an interlayer 4, wherein the outermost surface of the multilayered DLC film is formed of DLC. (Trava ¶¶ 036 and Fig. 2). Trava teaches that nanoparticles may be incorporated into one or more of the DLC layers 3 located above an interlayer 4, where upon such a DLC layer incorporating nanoparticles, additional interlayer 4 and additional DLC layer incorporating nanoparticles may be deposited, wherein specific types of nanoparticles named include silver, copper, gold, and diamond. (Id. ¶¶ 029, 034, and 047). Trava is analogous art, for it is directed to the same field of endeavor as that of the instant application (substrate coated with DLC). It would have been obvious, to a person of ordinary skill at the time of the claimed invention, to have applied the teachings of Trava to Zou ‘287 and Erdemir, as Trava teaches that the inclusion of nanoparticles lowers residual stress. (Trava ¶ 0026).
Concluding Remarks
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zheren Jim Yang whose telephone number is (571)272-6604. The examiner can normally be reached M-F 10:30 - 7:30 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Frank Vineis can be reached at (571)270-1547. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z. Jim Yang/Primary Examiner, Art Unit 1781
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