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
Claims 15-17 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on January 8, 2026.
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 1-14 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.
Claim 1, line 8, is indefinite because “the total quantity of transition metals” implies that there are other transition metals present but is unclear if there are actually other transition metals.
Claim 3, line 1, is indefinite because “(16)” lacks antecedent basis.
Claim 4, line 2, is indefinite because “HiPIMS” should be “High power impulse magnetron sputtering (HiPIMS)”.
Claim 5, line 2, is indefinite because “(16)” lacks antecedent basis.
Claim 6, line 1, is indefinite because “for the supply of the carbon” lacks antecedent basis.
Claim 10, line 2, “the transition metals” should be “transition metals”.
Claim 13, line 2, is indefinite because “the first transition metal” lacks antecedent basis. This should be “the at least first transition metal”.
Claim 13, line 3, is indefinite because “the second transition metal” lacks antecedent basis.
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, 7, 12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cavaleiro et al. “The Structure of Thin Films Deposited From a Sintered Tungsten Carbide with a High Cobalt Content (15 wt%)”, Thin Solid Films, 185 (1990) 199-217.
INDEPENDENT CLAIM 1:
Regarding claim 1, Cavaleiro et al. teach a method for producing a coated object (Page 199 – Stainless steel substrate), wherein the method comprises the steps of providing a substrate in a reaction chamber (Page 201 – d.c. diode sputtering system) and depositing an anti-wear layer on the surface of the substrate by means of physical vapor deposition (Page 201 – sputtering), wherein a target (Page 201 – WC- 15 wt% Co and WC- 6 wt% Co) is provided in the reaction chamber, which target contains at least a first transition metal Ma (Page 201 – W (i.e. tungsten)), which is a transition metal from the fifth or sixth group of the periodic table (Page 201 – W (i.e. tungsten)), to produce a Ma2C phase (Page 208 – Table III – α-W2C) 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 (Page 208 – Table III – Sample 33 - 64.7 atomic percent), relative to the quantity of transition metals in the anti-wear layer. (Page 208 – Table III – sample 33 – 64.7 atomic percent)
DEPENDENT CLAIM 2:
Regarding claim 2, Cavaleiro et al. teach wherein the Ma is selected form the group consisting of vanadium, niobium, tungsten, molybdenum, and combinations thereof.
DEPENDENT CLAIM 7:
Regarding claim 7, Cavaleiro et al. teach the temperature can be 0-370 degrees C. (Page 201)
DEPENDENT CLAIM 12:
Regarding claim 12, Cavaleiro et al. teach the anti-wear layer is the only coating applied to the substrate. (See abstract)
Claim(s) 1-3, 5, 7, 12, 14 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by 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.
INDEPENDENT CLAIM 1:
Regarding claim 1, Mrabet et al. teach a method for producing a coated object (S445 – Experimental Part – Si substrate), wherein the method comprises the steps of: providing a substrate in a reaction chamber(S445 – Experimental Part – Si substrate), and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition (S445 – Experimental Part), wherein a target is provided in the reaction chamber (S445 – Experimental Part – WC), which target contains at least a first transition metal Ma (S445 – Experimental Part – WC (i.e. tungsten)), which is a transition metal from the fifth or sixth group of the periodic table (S445 – Experimental Part – WC (i.e. tungsten), to produce a Ma₂C phase in the anti-wear layer (See Table 1 – example R0) , 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 (See Table 1 – Tungsten constitutes 100 atomic % relative to the total quantity of transition metals in the anti-wear layer)
DEPENDENT CLAIM 2:
Regarding claim 2, Mrabet et al. teach wherein the Ma is selected form the group consisting of vanadium, niobium, tungsten, molybdenum, and combinations thereof. (S445 – Experimental Part – Table 1)
DEPENDENT CLAIM 3:
Regarding claim 3, Mrabet et al. teach wherein the anti-wear layer is applied by means of magnetron sputtering. (S445 – Introduction – “magnetron sputtering technique”)
DEPENDENT CLAIM 5:
Regarding claim 5, Mrabet et al. teach wherein in addition a graphite cathode is provided for supplying carbon in the reaction chamber when depositing the anti-wear layer. (S445 – Experimental Part)
DEPENDENT CLAIM 7:
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)
DEPENDENT CLAIM 12:
Regarding claim 12, Mrabet et al. teach wherein the anti-wear layer is the only coating applied to the substrate. (S445 – Experimental Part)
DEPENDENT CLAIM 14:
Regarding claim 14, Mrabet et al. teach wherein the thickness can be 1.0 micrometers, 1.3 micrometers, 2.3 micrometers. (See Table 1)
Claim(s) 1, 2, 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Rack et al. “Thin film growth of reactive sputter deposited tungsten-carbon thin films”, J. Vac. Sci. Technol. A 19, 62-65 (2001).
INDEPENDENT CLAIM 1:
a method for producing a coated object, wherein the method comprises the steps of: providing a substrate in a reaction chamber, and depositing an anti-wear layer on a surface of the substrate by means of physical vapor deposition, wherein a target is provided in the reaction chamber, which target contains at least a first transition metal Ma, which is a transition metal from the fifth or sixth group of the periodic table, to produce a Ma₂C phase 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.
DEPENDENT CLAIM 2:
Regarding claim 2, Rack et al. teach wherein the Ma is selected form the group consisting of vanadium, niobium, tungsten, molybdenum, and combinations thereof. (Page 62 – Experimental Procedure – tungsten)
DEPENDENT CLAIM 6:
Regarding claim 6, Rack et al. teach wherein, for the supply of carbon, the reaction chamber is flushed with a reactive gas containing carbon during the deposition of the anti-wear layer. (Page 62 – Experimental Procedure – CH4)
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) 4 is are rejected under 35 U.S.C. 103 as being unpatentable over 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 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 Mrabet et al. by utilizing the features of May et al. because it allows for improving the mechanical and chemical properties of the underlaying tool.
Claim(s) 8 is rejected under 35 U.S.C. 103 as being unpatentable over 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 8:
The difference not yet discussed is wherein a pressure of 0.1 to 0.5 Pa is set in the reaction chamber.
Regarding claim 8, Mrabet et al. teach utilizing 0.6 Pa during depositing. (S445 – Experimental Part) 0.6 Pa is close to 0.5 Pa that is claimed. A prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close. Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985) (Court held as proper a rejection of a claim directed to an alloy of "having 0.8% nickel, 0.3% molybdenum, up to 0.1% iron, balance titanium" as obvious over a reference disclosing alloys of 0.75% nickel, 0.25% molybdenum, balance titanium and 0.94% nickel, 0.31% molybdenum, balance titanium. "The proportions are so close that prima facie one skilled in the art would have expected them to have the same properties."). See also Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17, 41 USPQ2d 1865 (1997) (under the doctrine of equivalents, a purification process using a pH of 5.0 could infringe a patented purification process requiring a pH of 6.0-9.0); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%) (See MPEP 2144.05)
The motivation for utilizing the features of Mrabet et al. is that it allows for producing films with better wear resistance. (S444)
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 producing films with better wear resistance.
Claim(s) 9-11 are rejected under 35 U.S.C. 103 as being unpatentable over 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 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:
Mrabet et al. teach utilizing a WC target for achieving a W2C phase and nanocrystalline structure. Here the primary phase is W2C. (See Mrabet et al. discussed above)
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 Mrabet et al. by incorporating Ti (a Group IV transition metal) in the target of Mrabet 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 Mrabet et al. teach the same processing conditions as required by Applicant therefore the same phases would be present when combining the teachings of Mrabet 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 Mrabet 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 are rejected under 35 U.S.C. 103 as being unpatentable over Cavaleiro et al. “The Structure of Thin Films Deposited From a Sintered Tungsten Carbide with a High Cobalt Content (15 wt%)”, Thin Solid Films, 185 (1990) 199-217 OR 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 OR Rack et al. “Thin film growth of reactive sputter deposited tungsten-carbon thin films”, J. Vac. Sci. Technol. A 19, 62-65 (2001) 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 Cavaleiro et al. OR Mrabet et al. OR Rack et al. by utilizing the features of Takagi et al. because it allows for producing films that reflect x-rays.
Conclusion
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/RODNEY G MCDONALD/Primary Examiner, Art Unit 1794
RM
January 27, 2026