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 § 102
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 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.
Claim(s) 1, 2, 5, 12, 18, 20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016.
INDEPENDENT CLAIM 1:
Regarding claim 1, Park et al. teach a method for producing a coated object (Page 4989 – silicon substrate), wherein the method comprises the steps of: providing a substrate in a reaction chamber (Page 4989 – magnetron sputtering system), and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition by magnetron sputtering (Page - 4989), wherein a transition metal target (Page 4989 – tungsten target) and independent carbon source (Page 4989 – graphite target) are provided in the reaction chamber, which transition metal target contains at least a first transition metal Ma (Page 4989 – tungsten), which is a transition metal from the fifth or sixth group of the periodic table, to produce a Ma₂C phase (Page 4991 – films having WC, W2C, WC1-x) in the anti-wear layer, and wherein the proportion of Ma of the Ma₂C phase in the anti-wear layer is at least 60 atomic percent, relative to the total quantity of transition metals in the anti-wear layer (Page 4991 – since all the metal is tungsten there is 100. This phrase may be ambiguous), wherein the anti-wear layer has a plastic hardness of at least 30 GPa (Fig. 4 – DC bias of -100 to -300)
DEPENDENT CLAIM 2:
Regarding claim 2, Park et al. teach wherein Ma is selected from the group consisting of vanadium, niobium, tungsten, molybdenum, and combinations thereof. (Page 4989 – Tungsten)
DEPENDENT CLAIM 5:
Regarding claim 5, Park et al. teach wherein the independent carbon source is a graphite cathode. (Page 4989)
DEPENDENT CLAIM 12:
Regarding claim 12, Park et al. teach wherein the anti-wear layer is the only coating applied to the substrate.(Page 4989)
DEPENDENT CLAIM 18:
Regarding claim 18, Park et al. teach wherein the first transition metal Ma is in metallic form in the target. (Page 4989)
DEPENDENT CLAIM 20:
Regarding claim 20, Park et al. teach wherein the phase Ma2C phase is W2C. (Page 4989)
Claim(s) 21 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gilchrist et al. (WO 00/44959 A1).
INDEPENDENT CLAIM 21:
Regarding claim 21, Gilchrist et al. teach a method for producing a coated object (See Abstract), wherein the method comprises the steps of: providing a substrate in a reaction chamber (Fig. 2; Pages 9, 10 – Example), and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition by magnetron sputtering (Page 6), wherein a transition metal target and independent carbon source are provided in the reaction chamber (Pages 9, 10 – Example, Page 7), which transition metal target contains at least a first transition metal Ma selected from the fifth or sixth group of the periodic table, to produce a singular carbide phase comprising the first transition metal Ma (Page 5 – the coating may comprise a single phase of carbide material), wherein the singular carbide phase is a Ma₂C phase (Page 4, Page 3) and the proportion of Ma of the Ma₂C phase is at least 60 atomic percent, relative to the total quantity of transition metals in the anti-wear layer (Page 4, Page 3 – if there is a single carbide phase and only the metal is present then the metal is present at 66.7%)
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.
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.
Claim(s) 1, 2, 6, 8, 12, 14, 18 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. “Microstructure and mechanical properties of vanadium carbide coatings synthesized by reactive sputtering”, Int. Journal of Refractory Metals & Hard Materials. 27, (2009) 611-614 in view of Gilchrist et al. (WO 00/44959 A1).
INDEPENDENT CLAIM 1:
Regarding claim 1, Wu et al. teach a method for producing a coated object (Page 611 – stainless steel), wherein the method comprises the steps of: providing a substrate in a reaction chamber (Page 611 – Experimental details), and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition by sputtering (Page 611 – Experimental Detials), wherein a transition metal target (Page 611 – vanadium target) and independent carbon source (Page 611 – C2H2) are provided in the reaction chamber, which transition metal target contains at least a first transition metal Ma (Page 611- vanadium), which is a transition metal from the fifth or sixth group of the periodic table, to produce a Ma₂C phase (Fig. 1 – Sample 1 V2C) in the anti-wear layer, and wherein the proportion of Ma of the Ma₂C phase in the anti-wear layer is at least 60 atomic percent, relative to the total quantity of transition metals in the anti-wear layer (page 612 - Table 1 – Sample 1 – 72.93 atomic percent vanadium), wherein the anti-wear layer has a plastic hardness of at least 30 GPa. (Page 613 – Hardness of 31.4 GPa)
The difference between Wu et al. and claim 1 is that utilizing magnetron sputtering is not discussed.
Regarding claim 1, Gilchrist et al. teach a thin layer coating formed of V2C. (page 3) Gilchrist et al. teach that using magnetron sputtering or a magnetron for sputtering will improve adherence. (Page 6)
DEPENDENT CLAIM 2:
Regarding claim 2, Wu et al. teach wherein Ma is selected from the group consisting of vanadium, niobium, tungsten, molybdenum, and combinations thereof. (Page 611 – Experimental Details)
DEPENDENT CLAIM 6:
Regarding claim 2, Wu et al. teach wherein the independent carbon source is a reactive gas containing carbon.
DEPENDENT CLAIM 8:
Regarding claim 8, Wu et al. teach wherein a pressure of 0.1 to 0.5 Pa is set in the reaction chamber. (Page 611 – 0.32 Pa)
DEPENDENT CLAIM 12:
Regarding claim 12, Wu et al. teach wherein the anti-wear layer is the only coating applied to the substrate. (Page 611)
DEPENDENT CLAIM 14:
The difference not yet discussed is wherein the anti-wear layer is applied to a thickness in the range from 3 to 6 µm.
Regarding claim 14, wherein the anti-wear layer is applied to a thickness in the range from 3 to 6 µm. (Page 7)
DEPENDENT CLAIM 18:
Regarding claim 18, Wu et al. teach wherein the first transition metal Ma is in metallic form in the target. (Page 611 – Experimental Details)
DEPENDENT CLAIM 19:
Regarding claim 19, Wu et al. teach wherein the Ma₂C phase is V2C, Nb2C or Mo₂C. (Fig. 1 – Sample 1)
The motivation for utilizing the features of Gilchrist et al. is that it allows improving adhesion. (Page 6)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Wu et al. by utilizing the features of Gilchrist et al. because it allows for improving adhesion.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Wu et al. in view of Gilchrist et al. as applied to claim 1 above, and further in view of May et al. (U.S. PGPUB. 2023/0340658 A1).
DEPENDENT CLAIM 4:
The difference not yet discussed is wherein the anti-wear layer is applied by means of HIPIMS, wherein the target is supplied with power pulses and the substrate is supplied with voltage pulses, and wherein the power pulses and the voltage pulses are supplied with a time delay.
Regarding claim 4, May et al. teach providing wear layers (Paragraph 0002) by mean of HiPIMS, wherein the target is supplied with power pulses and the substrate is supplied with voltage pulses, and wherein the power pulses and the voltage pulses are supplied with a time delay. (Paragraphs 005, 0027, 0030, 0011,0015-0017; Abstract)
The motivation for utilizing the features of May et al. is that it allows for providing components with improved mechanical and chemical properties. (Paragraph 0002)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified utilized the features of May et al. because it allows for improving the mechanical and chemical properties of the underlaying tool.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016 in view of May et al. (U.S. PGPUB. 2023/0340658 A1).
DEPENDENT CLAIM 4:
The difference not yet discussed is wherein the anti-wear layer is applied by means of HIPIMS, wherein the target is supplied with power pulses and the substrate is supplied with voltage pulses, and wherein the power pulses and the voltage pulses are supplied with a time delay.
Regarding claim 4, May et al. teach providing wear layers (Paragraph 0002) by mean of HiPIMS, wherein the target is supplied with power pulses and the substrate is supplied with voltage pulses, and wherein the power pulses and the voltage pulses are supplied with a time delay. (Paragraphs 005, 0027, 0030, 0011,0015-0017; Abstract)
The motivation for utilizing the features of May et al. is that it allows for providing components with improved mechanical and chemical properties. (Paragraph 0002)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified utilized the features of May et al. because it allows for improving the mechanical and chemical properties of the underlaying tool.
Claim(s) 7 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016 in view of
Mrabet et al. "Thermal Evolution of WC/C Nanostructured Coatings by Raman and In Situ XRD Analysis", Plasma Processes and Polymers, 2009, 6, S444-S449.
DEPENDENT CLAIM 7:
The difference not yet discussed is wherein the reaction chamber is heated to a temperature in the range of 100 to 600°C.
Regarding claim 7, Mrabet et al. teach wherein the reaction chamber is heated from 150- 200 degrees caused by the effect of the plasma. (S445 - Experimental Part)
The motivation for utilizing the features of Mrabet et al. is that it allows for controlling phases deposited. (See Conclusions)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have utilized the features of Mrabet et al. because it allows for controlling phases deposited.
Claim(s) 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016 in view of Selindor et al. (EP 1 932 947 A2).
DEPENDENT CLAIM 9:
The difference not yet discussed is wherein the target further comprises a nitride-forming second transition metal Mb to produce a nanocrystalline structure comprising a primary phase and a secondary phase upon deposition of the anti-wear layer, wherein the primary phase is the Ma₂C phase and the secondary phase is a cubic nitride or carbonitride phase comprising the second transition metal Mb.
Regarding claim 9:
Selindor et al. teach utilizing a PVD method such as arc deposition or magnetron sputtering for depositing layers containing Group VI transition metals (i.e. tungsten) and Group IV transition metals (i.e. titanium). Selindor et al. also teach utilizing alloy targets for forming the layers. Reactive gas can be utilized to achieve C and N in the film. (Paragraph 0013, 0034, 0035, Claim 1)
It would be obvious to modify Park et al. by incorporating Ti (a Group IV transition metal) in the target of Park et al. as taught by Selindor et al. to achieve a film having W and Ti including carbon and nitrogen.
With regard to the phases being present Park et al. teach the same processing conditions as required by Applicant therefore the same phases would be present when combining the teachings of Park et al. with Selindor et al.
DEPENDENT CLAIM 10:
The difference not yet discussed is wherein the second transition metal Mb is selected from the group consisting of the transition metals of the fourth group of the periodic table, vanadium, chromium, iron and combinations thereof.
Regarding claim 10, Selindor et al. teach utilizing the Ti which is a metal selected from the fourth group of the periodic table. (Paragraph 0013)
DEPENDENT CLAIM 11:
The difference not yet discussed is wherein during the deposition of the anti-wear layer, the reaction chamber is flushed with a nitrogen-containing reactive gas to supply nitrogen.
Regarding claim 11, Selindor et al. teach utilizing a reactive gas such as nitrogen. (Paragraph 0035, Claim 1)
The motivation for utilizing the features of Selindor et al. is that it allows for producing coatings with high wear resistance and toughness. (See Abstract)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Park et al. by utilizing the features of Selindor et al. because it allows for producing coatings with high wear resistance and toughness.
Claim(s) 13 is rejected under 35 U.S.C. 103 as being unpatentable over Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016
in view of Takagi et al. "Thermal Stability of W/C multilayer Films", Mat. Res. Symp. Proc. Vol. 56, Pg. 441-446, 1986.
DEPENDENT CLAIM 13:
The difference not yet discussed is wherein a top layer MaC, Mb, N and/or MbCN is applied to the anti-wear layer, wherein Ma and Mb denote the first transition metal and the second transition metal of the target, respectively.
Regarding claim 13, Takagi et al. teach wherein a top layer is WC of a periodicity of WC layers formed via magnetron sputtering. (See Experimental page 441)
The motivation for utilizing the features of Takagi et al. is that it allows for produced films that reflect x-rays. (See Introduction)
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Park et al. by utilizing the features of Takagi et al. because it allows for producing films that reflect x-rays.
Claim(s) 21 and 22 are rejected under 35 U.S.C. 103 as being unpatentable over Park et al. “Characteristics of W Doped Nanocrystalline Carbon Films Prepared by Unbalanced Magnetron Sputtering”, Journal of Nanoscience and Nanotechnology, Vol. 16, 4989-4992, 2016 in view of Gilchrist et al. (WO 00/44959 A1).
INDEPENDENT CLAIM 21:
Regarding claim 21, Park et al. teach a method for producing a coated object (Page 4989 – silicon substrate), wherein the method comprises the steps of: providing a substrate in a reaction chamber (Page 4989 – magnetron sputtering system), and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition by magnetron sputtering (Page - 4989), wherein a transition metal target (Page 4989 – tungsten target) and independent carbon source (Page 4989 – graphite target) are provided in the reaction chamber, which transition metal target contains at least a first transition metal Ma (Page 4989 – tungsten), which is a transition metal from the fifth or sixth group of the periodic table, to produce a Ma₂C phase (Page 4991 – films having WC, W2C, WC1-x) in the anti-wear layer, and wherein the proportion of Ma of the Ma₂C phase in the anti-wear layer is at least 60 atomic percent, relative to the total quantity of transition metals in the anti-wear layer (Page 4991 – since all the metal is tungsten there is 100. This phrase may be ambiguous).
The difference between Park et al. and claim 21 is that a singular carbide phase is not discussed.
Gilchrist et al. teach utilizing a singular carbide phase. (Page 5)
Gilchrist et al. also teach selecting hexagonal carbide phase of a transition metal. (Page 4)
Therefore, it would be obvious to one of ordinary skill in the art to modify Park et al. by selecting a singular carbide phase of a hexagonal transition metal as taught by Gilchrist et al. to produce the coating. As to the selecting of Tungsten over Tantalum it would be obvious to substitute one metal for the other metal because they are equivalent transition metals.
DEPENDENT CLAIM 22:
The difference not yet discussed is wherein the Ma2C phase is W2C.
Regarding claim 22, Park et al. teach utilizing W2C.
The motivation for utilizing the features of Gilchrist et al. because it allows for forming an adherent film. (page 6)
Therefore, would have been obvious to one of ordinary skill in the art at the time the invention was made to have modified Parke et al. by utilizing the features of Gilchrist et al. because it allows for forming an adherent film.
Response to Arguments
Applicant's arguments filed May 18, 2026 have been fully considered but they are not persuasive.
In response to the argument that the prior art does not teach the required hardness, it is argued that Park et al. and Wu et al. teach the required hardness.
In response to the argument that the prior art does not teach magnetron sputtering, it is argued that Gilchrist et al. teach utilizing a magnetron for sputtering in order to increase adhesion.
In response to the argument that the prior art does not teach a single phase carbide, it is argued Gilchrist et al. teach produce a single phase carbide for protection.
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 RODNEY GLENN MCDONALD whose telephone number is (571)272-1340. The examiner can normally be reached Hoteling: M-Th every Fri off..
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.
/RODNEY G MCDONALD/Primary Examiner, Art Unit 1794
RM
July 27, 2026
Prosecution Insights