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 .
Response to Amendment
Applicant’s amendments, filed 8/12/2026, have been fully considered and reviewed by the examiner. The examiner notes the amendment to claim 1. Claims 1-17 are pending with claim claims 4, 9, 11-15 are withdrawn from further consideration pursuant to election of species requirement.
Response to Arguments
Applicant's arguments filed 8/12/2026 have been fully considered but they are not persuasive as they are directed to newly amended claims that are addressed hereinafter.
Applicant’s arguments with respect to prior art are noted, but not persuasive in view of the broadly drafted claim requirement. Here, the claims require “an intermediate layer” that comprises AlCrSiN, wherein scope of the intermediate layer is not specifically defined to be any more than a layer that comprises, and thus is not limited to a single layer of AlCrSiN. A fair reading of the specification illustrates that such is embodied by the term “intermediate layer”, see ”the intermediate layer can comprise either a single layer or multiple layers, such as two, three or more layers” and further exemplifies the intermediate layer comprising sublayers or multilayers such that the inner layer has high bond strength to substrate and outer layer has high bond strength to diamond. During patent examination, the pending claims must be "given their broadest reasonable interpretation consistent with the specification."
Here, the prior art, both EP 610 and Cheng individually disclose and/or makes obvious what can reasonably be considered an intermediate layer that comprises AlCrSiN as broadly claimed. The mere fact that the prior art discloses intermediate layer that comprises multiple sublayers is not dispositive of the claim scope that leaves open presence of such layers, i.e. an intermediate layer that comprises AlCrSiN and other materials. The transitional term "comprising", which is synonymous with "including," "containing," or "characterized by," is inclusive or open-ended and does not exclude additional, unrecited elements or method steps. See, e.g., Mars Inc. v. H.J. Heinz Co., 377 F.3d 1369, 1376, 71 USPQ2d 1837, 1843 (Fed. Cir. 2004)
Applicant’s arguments that the presence of carbon in EP 610 is noted and argues that due to the binding of C, the material is fundamentally different. The examiner notes the presence of carbon in an intermediate layer; however, the layer itself comprises AlCrSiN as instantly claimed and therefore the presence or absence of C is not dispositive in view of the broadly drafted “comprising” language.
Additionally, and in the alternative, EP 610 discloses a first layer deposited directly onto the substrate as instantly claimed and thus meets the broadly drafted claim requirement. Here, the claims as drafted to not define the scope of the intermediate layer to be any more than a layer that comprises AlCrSiN. As noted by EP 610, the selection of CrAlSiN would have been obvious in view of the disclosure at 0038. EP 610 discloses the layer includes Cr may be an essential component, Al and Si may be as elective components and is a nitride (0038) and therefore the reference makes obvious using CrAlSiN as claimed as the selection of Cr as the essential component, Si and Al as the elective component and as a nitride is well within the scope of the disclosure of EP 610 “The first layer 4 preferably has one or more of Ti and Cr as essential components and one or more elements selected from Y, Al and Si as elective components and in some embodiments is a nitride.” Therefore, taking the references collectively, it would have been obvious to one of ordinary skill in the art to have modified JP 479 to include the intermediate layer of CrAlSiN as suggested by EP 610, as JP 479 discloses intermediate layers inclusive of Cr, Si and N and EP 610 discloses that known intermediate layers for diamond deposition include those that meet the claimed AlCrSiN. While such is not explicit, such is made obvious by the disclosure of EP 610 as evidenced by the disclosure of 0038.
EP 610 deposition of the layer 5 as part of the claimed intermediate layer onto the first layer that comprises AlCrSiN is noted, but again, in view of the broadly drafted claim that merely requires deposition of an “intermediate layer” that comprises AlCrSiN and such is met by EP 610 disclosure of intermediate layer that comprises sublayer 4 and 5 deposited directly substrate prior to diamond layer formation.
Applicant’s arguments of Cheng are similarly unpersuasive as the broadly drafted claim requirements fail to appreciate the metes and bounds the instant claims, where the intermediate layer is not limited as appears to be argued by the applicant (see discussion related to broadly drafted claims and specification). Here, the presence of a bond layer in Cheng appears to be within the scope of the instant claims when read considering the specification, wherein the intermediate layer comprises a first layer and second layer and comprises AlCrSiN.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 8/27/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim(s) 1-3, 8, 10 and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over JPH11193479A, hereinafter JP 479 taken with EP 2558610, hereinafter EP 610 or Cheng et al. (Characteristics of CrAlSiN + DLC Double Layered Coating Deposited by Cathodic Arc Evaporation Process)
Examiner incorporates herein by reference Response to Arguments section above in its entirety with respect to the added claim requirement “directly” which is met by the prior art in view of the broadly drafted claim requirement.
Claim 1 and 16: JP 479 discloses a method for preparing a substrate coated with an intermediate layer and a diamond layer (0001, 0012), comprising the following steps:
(a) roughening a surface of the substrate with an etchant (0016),
(b) coating the roughened surface of the substrate with an intermediate layer (0025-0027),
(c) nucleating a surface of the intermediate layer (0029), and
(d) coating the nucleated surface of the intermediate layer with a diamond layer by means of a chemical vapor deposition (CVD) process (0030)
JP 479 discloses various intermediate layers, including nitrides including Cr, Si, etc. (0024); however, fails to disclose the intermediate layer comprises AlCrXN, with Al being aluminum, Cr being chromium, X being a metalloid, and N being nitrogen. However, EP 610, also in the art of depositing a diamond coating on a cemented carbide for cutting tools (0002-0003) discloses depositing a PVD layer comprising CrAlSiN, CrAlN (00038). EP 610 discloses the layer includes Cr may be an essential component, Al and Si may be as elective components and is a nitride (0038) and therefore the reference makes obvious using CrAlSiN as claimed as the selection of Cr as the essential component, Si and Al as the elective component and as a nitride is well within the scope of the disclosure of EP 610 “The first layer 4 preferably has one or more of Ti and Cr as essential components and one or more elements selected from Y, Al and Si as elective components and in some embodiments is a nitride.” Therefore, taking the references collectively, it would have been obvious to one of ordinary skill in the art to have modified JP 479 to include the intermediate layer of CrAlSiN as suggested by EP 610, as JP 479 discloses intermediate layers inclusive of Cr, Si and N and EP 610 discloses that known intermediate layers for diamond deposition include those that meet the claimed AlCrSiN.
Alternatively, Cheng discloses diamond coating onto cutting tools and discloses the benefits of a dual layer of CrAlSiN intermediate layer and Diamond coating thereon for cutting application (DLC can reasonably be considered within the scope of the diamond as claimed). Cheng discloses the benefits of such a dual coating (see entire reference) included improved wear resistance and oxidation resistance with low friction coefficient. As such, taking the references collectively, it would have been obvious to one of ordinary skill in the art to have modified JP 479 to include the intermediate layer of CrAlSiN as suggested by Cheng, as JP 479 discloses intermediate layers inclusive of Cr, Si and N and Cheng discloses that known intermediate layers for diamond deposition include those that meet the claimed AlCrSiN.
Claim 2: JP 479 discloses the substrate is a cemented carbide (0015).
Claim 3: The disclosure of EP 610 makes obvious the intermediate layer consisting of AlCrSiN (see 00038 and discussion above). The disclosure of Cheng makes obvious the intermediate layer consisting of AlCrSiN (see title).
Claim 8: JP 479 discloses PVD methods (0027) and EP 610 discloses arc PVD deposition for intermediate layer (0040) or Cheng discloses arc PVD (title) and thus using arc PVD would have been obvious method for deposition.
Claim 10: JP 479 discloses diamond deposition via thermal heating and what can reasonably be considered impacting via hydrogen (0037-0038), see also 0030 related to hot filament CVD or plasma CVD. The activation would occur as a result of the diamond deposition using CO in H2 gas at temperature such that the hydrogen gas is heated (i.e. thermal activation) and impacts with the CO gas or hot filament (i.e. impact activation).
Claim(s) 5-7 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 479 taken with EP 610 or Cheng and further with EP 0519587 A1, hereinafter EP 587.
Claims 5: JP 479 with EP 610 or Cheng disclose all that is taught above and JP 479 discloses the etching the surface to prepare for deposition of diamond; however, fails to disclose the substrate is etched with a Murakami reagent. However, EP 587 discloses preparing a substrate including a carbide tool by treating the carbide with a two-step etching process by etching with a Murakami reagent and an acid, such as nitric acid (see e.g. BRIEF DESCRIPTION OF THE INVENTION). Therefore, taking the references collectively and all that is known to one of ordinary skill in the art, it would have been obvious to have modified JP 479 with EP 610 with the substrate etching treatment of EP 587 as JP 478 discloses pretreating the carbide tool substrate prior to deposition including etching and EP 587 discloses pretreating the carbide tool substrate prior to deposition including etching can include Murakami and nitric acid etching. A predictable use of prior art elements according to their established functions to achieve a predictable result is prima facie obvious. See KSR Int’l Inc. v. Teleflex Inc., 127 S Ct. 1727, 1741, 82 USPQ2d 1385, 1396 (2007).
Claim 6 and 17: As noted above, EP 587 discloses nitric acid (“the first step of the process is carried out by selectively etching tungsten carbide at the surface of the substrate with Murakami's reagent and the second step of the process is carried out by an etch in a solution of nitric acid in water”, see detailed description of invention).
Claim 7: EP 587 discloses times that overlap the range as claimed (Detailed description, see “etched for 30 seconds in 5 volume percent nitric acid”, “for a period greater than two minutes, preferably from about 3-80 minutes”) and thus makes obvious the claimed ranged. Additionally, the amount of time is a result effective variable, too little will not have the benefits of etching and too long will be deleterious to the substrate or process efficiency and thus determination of the optimum time would have been obvious to one of ordinary skill in the art at the time of the invention through routine experimentation. As for the temperature, EP 587 does not disclose the temperature of the etching process; however, a temperature of such does exists and determination of the optimum temperature would have been obvious through routine experimentation, including room temperature, as such would have been well within the skill of the ordinary artisan as etching temperature would be readily recognized as a result effective variable, directly effecting the etching process. Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 479 taken with EP 610 or Cheng and further with WO 2018064694 A1.
JP 479 with EP 610 or Cheng disclose all that is taught above and while the examiner maintains the position as set forth above, the examiner cites here WO 694 which discloses diamond deposition onto a carbide tool (“a diamond layer is deposited on a substrate, such as a cemented carbide tool”) and discloses thermal activation and shock activation (“gas activation element by means of shock excitation and thermal excitation”). WO 694 discloses the thermal and shock activation allows for improved activation (“ excitation rates of atomic hydrogen of over 80% can be achieved. This allows acceleration of the growth of high purity diamond films and more energy efficient high rate growth deposition.”). Therefore, it would have been obvious to one of ordinary skill in the art to have utilized the thermal and impact activation of hydrogen as suggested by WO 694 to achieve the improved diamond deposition.
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 DAVID P TUROCY whose telephone number is (571)272-2940. The examiner can normally be reached Mon, Tues, Thurs, and Friday, 7:00 a.m. to 5:30 p.m.
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/DAVID P TUROCY/Primary Examiner, Art Unit 1718
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