CTNF 19/108,760 CTNF 73026 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Double Patenting 08-33 AIA The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg , 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman , 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi , 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum , 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel , 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington , 418 F.2d 528, 163 USPQ 644 (CCPA 1969). A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b). The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13. The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA/25, or PTO/AIA/26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer. Claims 1 and 4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of copending Application No. 19/518,062 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other. The method of Claim 4 of the reference application contains all claimed features of Claim 4 except that the composition of the plating bath is not expressly claimed, but, inherently, must be present. The article of Claims 7 and 8 AND Claims 13 and 14 of the reference application contain all claimed features of Claim 1 except ranges of hardness and degree of crystallinity in Claims 7 and 13 are broader. It would have been obvious to claim narrower range in the claimed broad range. See MPEP 2144.05. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented. Claim Objections 07-29-01 AIA Claim s 1 and 4 are objected to because of the following informalities: Regarding Claim 1, “Here” should not be capitalized. Analogous objection applies to Claim 4 . Appropriate correction is required. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-8 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. Regarding Claim 1, it is unclear what is to contain “at least chromium, carbon, and oxygen”. Is it the bath or the film? In either case, why is chromium specified since it must be present by what has otherwise been mentioned? If the bath, oxygen is inherently present in the water forming the bath, and so why is this mentioned? If the bath, what is required by “carbon”. The film is subsequently characterized as having “carbon”, and so carbon must have been in the bath. Thus, it is unclear what is the significance of this limitation. In defining the threshold for peak width as being less than “3” and equal to or more than 3, as the threshold width for crystalline and amorphous, respectively, it is unclear whether this is necessarily two theta degrees, or something else. Analogous rejection applies to Claim 4. Regarding Claim 1, it is unclear under what conditions the degree of crystallinity is to be measured under. It is unclear what is the target material or wavelength that is to be used. Analogous rejection applies to Claim 4. Regarding Claim 6, it is unclear what is required by the method to be performed. Does it mean that there is to be a further step to make this arrangement? Is something else intended? Allowable Subject Matter 07-43-02 AIA Claim s 2, 3, and 5-8 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims. Regarding Claims 1-8, the reviewed prior art does not teach or suggest the subject matter of these claimed articles and methods. Particularly, the reviewed prior art does not teach or suggest claimed plating film in terms of manner of formation, composition, indentation hardness, and degree of crystallinity and does not teach or suggest claimed method of making these films, in the claimed context. For example, Kawamura WO 2022/044451 teaches hard chromium plated coating formed from trivalent bath wherein formed film can further contain O and C (Table 1) and wherein films are crystalline. However, Kawamura does not form film in manner of applicant, which method uses heat treatment. See Specification (paragraphs 33 et seq.). As well, Kawamura does not specify C amount, does not define crystallinity and hardness in the manner as being claimed. Thus, in view of these differences, there is no express teaching or suggestion in Kawamura for claimed features and there is no reasonable basis for establishing inherency since the relationships between the information Kawamura provides and what is claimed cannot be reasonably presumed to lead to what is claimed. See Kawamura USPA 2023/0313403 (translation of WO 2022/044451). For example, Dash USPN 5,413,646 teaches hard chromium plating formed from trivalent bath having Cr, O, and C, but fails to expressly teach or suggest specifically claimed additional features and fails to provide reasonable basis for expecting their inherency. See Dash (entire document). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL E. LA VILLA whose telephone number is (571)272-1539. The examiner can normally be reached Mon. through Fri. from 9:00 a.m. ET to 5:30 p.m. ET. 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, Humera N. Sheikh, can be reached at (571) 272-0604. 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. /MICHAEL E. LA VILLA/Primary Examiner, Art Unit 1784 13 June 2026 Application/Control Number: 19/108,760 Page 2 Art Unit: 1784 Application/Control Number: 19/108,760 Page 3 Art Unit: 1784 Application/Control Number: 19/108,760 Page 4 Art Unit: 1784 Application/Control Number: 19/108,760 Page 5 Art Unit: 1784 Application/Control Number: 19/108,760 Page 6 Art Unit: 1784 Application/Control Number: 19/108,760 Page 7 Art Unit: 1784 Application/Control Number: 19/108,760 Page 8 Art Unit: 1784 Application/Control Number: 19/108,760 Page 9 Art Unit: 1784 Application/Control Number: 19/108,760 Page 10 Art Unit: 1784 Application/Control Number: 19/108,760 Page 11 Art Unit: 1784
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