DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The Applicant's amendment filed on March 10, 2026 was received. Claims 15,26, 28 and 35-36 were amended. Claims 1-14, 16-19, 21, 23-25, 27, 29, 31, 37, 39 and 41 were canceled. Claims 44-45 were added.
The text of those sections of Title 35. U.S.C. code not included in this action can be found in the prior Office Action Issued September 10, 2025.
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, 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.
Claims 15, 20, 22, 26, 28, 32-36, 38, 40 and 42-45 are rejected under 35 U.S.C. 103 as being unpatentable over Ernst (US20140335282) in view of Mori (JPH06101012) in view of Barbezat (US20040076866).
Regarding claim 15, Ernst teaches a method of coating a substrate by means of thermal spraying, wherein the substrate is a curved inner surface of a cylinder bore (abstract, paragraphs 0050) (a method of applying a coating on a concave inner surface of bore wall or a cylinder wall). Ernst teaches the coating material is metallic or ceramic (paragraph 0015 or claim 3). Ernst teaches a powder (paragraphs 0035 and 0054) is injected into a plasma beam of a plasma spraying device (thermal plasma spraying device) to coat the substrate (paragraphs 0052, 0054), wherein the plasma spray device comprising a gun arranged on a gun shaft (paragraph 0052, see figure 2) and said gun being configured to generate a jet of partially molten or completely molten particles from the powder by plasma (by way of an arc) (paragraph 0054), rotating at its own axis (paragraph 0052, figure 2) (rotating at a rotation frequency) (thermal spraying a powder coating material utilizing a thermal spraying device, said thermal spraying device comprising a gun arranged on a gun shaft and said gun being configured to: generate a coating jet from the powder coating material by way of an arc; rotating abut an axis of the gun shaft and at a rotation frequency during thermal spraying). Ernst teaches the plasma gun rotating about its own axis so that the coating jet is directed away from the axis of the gun shaft and towards the curved surface during the thermal spraying (paragraphs 0052 and 0054, see figure 2). Since Ernst teaches powder is being sprayed from the plasma gun (abstract,0035, 0050, 0052 and 0054). Ernst teaches a conveyance rate of the powder coating material. Ernst teaches to deposit the coating on the curved surface (paragraphs 0052 and 0054).
Ernest teaches the gun is rotated about the axis of the gun shaft but does not explicitly teach the rotation frequency of the gun, which controls the rotation frequency of the coating jet of the sprayed material. However, Mori teaches a method of thermal spraying a curved inner surface of a cylinder bore (paragraph 0002), and teaches to directed the sprayed material to a bending member 3 to deposit the coating material to the curved inner surface (paragraphs 0007-0011, see figures 1 and 5-8). Since the bend member function to rotate the coating jet of the material, just like the spray gun nozzle of Ernest, the rotation frequency of Mori is applicable to Ernest’s spray gun. Mori teaches the bending member is rotated around the axis of the bore (which is the same as the thermal spray gun) at 10 to 600rpm (pargraph 0017), touches claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. In addition, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the rotation frequency as suggested by Mori in the method of Ernst because Mori teaches such rotation frequency is capable of forming a uniform coating with reasonable efficiency (paragraphs 0016-0017).
Ernst in view of Mori does not explicitly teaches the conveyance rate of the powder coating. However, Barbezat teaches a method of plasma spraying (abstract) and discloses the powder delivery rate of 80g/min (pargraph 0051), which is inside of the claimed range. In addition, Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the conveyance rate of the coating material as suggested by Barbezat in the method of Ernst because Barbezat teaches such conveyance rate can form a dense coating (paragraphs 0044-0045 and 0048).
It is noted that FMF and FMN are merely an index multiple with arbitrary reference number (200rpm and 25g/min) to obtain the rotation frequency and conveyance rate of the powder, thus the optimization of the actual rotation frequency and conveyance rate would atomically optimize FMF and FMN. As discussed above, Mori teaches that if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency (and FMF) in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. As discussed above, Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate (FMN) in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It is noted that optimizing FMF and FMN would also optimize the ratio factor (FV), thus it would have been within the skill of the ordinary artisan to adjust and optimize the ratio factor (FMN/ FMF) in the process to yield the desired density of the sprayed coating, and a uniform coating without sprayed material being blown off to affect the efficiency of the coating process.
Regarding claim 20, Mori and Barbezat teaches the rotational frequency and the conveyance rate, and also discloses the powder coating material (see rejection above), thus, the rotational frequency and the conveyance rate are based on the powder coating material.
Regarding claim 22, as discussed in the claim 37 (see rejections below), the FMF and FMN are result effective variable. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 26, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 28, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 32, Ernst teaches the metallic coating material is low alloy steel (paragraph 0063).
Regarding claim 33, Ernst teaches the coating is applied in multiple times to depositing multiple layers of the same material (paragraphs 0052-0053 and 0057).
Regarding claim 34, Ernst teaches the coating comprise a bond layer and a low alloy steel layer (paragraph 0063) (the coating is a multilayer coating consisting of layers having different characteristics).
Regarding claim 35, Ernst teaches a method of coating a substrate by means of thermal spraying, wherein the substrate is a curved inner surface of an engine cylinder bore (abstract, paragraphs 0008, 0050) (a method of applying a coating on an engine cylinder bore). Ernst teaches the coating material is metallic or ceramic (paragraph 0015 or claim 3). Ernst teaches a powder (paragraphs 0035 and 0054) is injected into a plasma beam of a plasma spraying device (thermal plasma spraying device) to coat the substrate (paragraphs 0052, 0054), wherein the plasma spray device comprising a gun arranged on a gun shaft (paragraph 0052, see figure 2) and said gun being configured to generate a jet of partially molten or completely molten particles from the powder by plasma (by way of an arc) (paragraph 0054), rotating at its own axis (paragraph 0052, figure 2) (rotating at a rotation frequency) (thermal spraying a powder coating material utilizing a thermal spraying device, said thermal spraying device comprising a gun arranged on a gun shaft and said gun being configured to: generate a coating jet from the powder coating material by way of an arc; rotating abut an axis of the gun shaft and at a rotation frequency during thermal spraying). Ernst teaches the plasma gun rotating about its own axis so that the coating jet is directed away from the axis of the gun shaft and towards the curved surface during the thermal spraying (paragraphs 0052 and 0054, see figure 2). Since Ernst teaches powder is being sprayed from the plasma gun (abstract,0035, 0050, 0052 and 0054). Ernst teaches a conveyance rate of the powder coating material. Ernst teaches to deposit the coating on the curved surface (paragraphs 0052 and 0054).
Ernest teaches the gun is rotated about the axis of the gun shaft but does not explicitly teach the rotation frequency of the gun, which controls the rotation frequency of the coating jet of the sprayed material. However, Mori teaches a method of thermal spraying a curved inner surface of a cylinder bore (paragraph 0002), and teaches to directed the sprayed material to a bending member 3 to deposit the coating material to the curved inner surface (paragraphs 0007-0011, see figures 1 and 5-8). Since the bend member function to rotate the coating jet of the material, just like the spray gun nozzle of Ernest, the rotation frequency of Mori is applicable to Ernest’s spray gun. Mori teaches the bending member is rotated around the axis of the bore (which is the same as the thermal spray gun) at 10 to 600rpm (pargraph 0017), which touches the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. In addition, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the rotation frequency as suggested by Mori in the method of Ernst because Mori teaches such rotation frequency is capable of forming a uniform coating with reasonable efficiency (paragraphs 0016-0017).
Ernst in view of Mori does not explicitly teaches the conveyance rate of the powder coating. However, Barbezat teaches a method of plasma spraying (abstract) and discloses the powder delivery rate of 80g/min (pargraph 0051), which is inside of the claimed range. In addition, Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the conveyance rate of the coating material as suggested by Barbezat in the method of Ernst because Barbezat teaches such conveyance rate can form a dense coating (paragraphs 0044-0045 and 0048).
It is noted that FMF and FMN are merely an index multiple with arbitrary reference number (200rpm and 25g/min) to obtain the rotation frequency and conveyance rate of the powder, thus the optimization of the actual rotation frequency and conveyance rate would atomically optimize FMF and FMN. Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency (and FMF) in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate (FMN) in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It is noted that optimizing FMF and FMN would also optimize ratio factor (FV), thus it would have been within the skill of the ordinary artisan to adjust and optimize the ratio factor (FMN/ FMF) in the process to yield the desired density of the sprayed coating, and a uniform coating without sprayed material being blown off to affect the efficiency of the coating process.
Regarding claim 36, Ernst teaches a method of coating a substrate by means of thermal spraying, wherein the substrate is a curved inner surface of an engine cylinder bore (abstract, paragraphs 0008, 0050) (a method of applying a coating on an engine cylinder bore). Ernst teaches the coating material is metallic or ceramic (paragraph 0015 or claim 3). Ernst teaches a powder (paragraphs 0035 and 0054) is injected into a plasma beam of a plasma spraying device (thermal plasma spraying device) to coat the substrate (paragraphs 0052, 0054), wherein the plasma spray device comprising a gun arranged on a gun shaft (paragraph 0052, see figure 2) and said gun being configured to generate a jet of partially molten or completely molten particles from the powder by plasma (by way of an arc) (paragraph 0054), rotating at its own axis (paragraph 0052, figure 2) (rotating at a rotation frequency) (thermal spraying a powder coating material utilizing a thermal spraying device, said thermal spraying device comprising a gun arranged on a gun shaft and said gun being configured to: generate a coating jet from the powder coating material by way of an arc; rotating abut an axis of the gun shaft and at a rotation frequency during thermal spraying). Ernst teaches the plasma gun rotating about its own axis so that the coating jet is directed away from the axis of the gun shaft and towards the curved surface during the thermal spraying (paragraphs 0052 and 0054, see figure 2). Since Ernst teaches powder is being sprayed from the plasma gun (abstract,0035, 0050, 0052 and 0054). Ernst teaches a conveyance rate of the powder coating material. Ernst teaches to deposit the coating on the curved surface (paragraphs 0052 and 0054).
Ernest teaches the gun is rotated about the axis of the gun shaft but does not explicitly teach the rotation frequency of the gun, which controls the rotation frequency of the coating jet of the sprayed material. However, Mori teaches a method of thermal spraying a curved inner surface of a cylinder bore (paragraph 0002), and teaches to directed the sprayed material to a bending member 3 to deposit the coating material to the curved inner surface (paragraphs 0007-0011, see figures 1 and 5-8). Since the bend member function to rotate the coating jet of the material, just like the spray gun nozzle of Ernest, the rotation frequency of Mori is applicable to Ernest’s spray gun. Mori teaches the bending member is rotated around the axis of the bore (which is the same as the thermal spray gun) at 10 to 600rpm (pargraph 0017), which touches the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. In addition, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the rotation frequency as suggested by Mori in the method of Ernst because Mori teaches such rotation frequency is capable of forming a uniform coating with reasonable efficiency (paragraphs 0016-0017).
Ernst in view of Mori does not explicitly teaches the conveyance rate of the powder coating. However, Barbezat teaches a method of plasma spraying (abstract) and discloses the powder delivery rate of 80g/min (pargraph 0051), which is inside of the claimed range. In addition, Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the conveyance rate of the coating material as suggested by Barbezat in the method of Ernst because Barbezat teaches such conveyance rate can form a dense coating (paragraphs 0044-0045 and 0048).
It is noted that FMF and FMN are merely an index multiple with arbitrary reference number (200rpm and 25g/min) to obtain the rotation frequency and conveyance rate of the powder, thus the optimization of the actual rotation frequency and conveyance rate would atomically optimize FMF and FMN. Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency (and FMF) in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate (FMN) in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It is noted that optimizing FMF and FMN would also optimize the ratio factor (FV), thus it would have been within the skill of the ordinary artisan to adjust and optimize the ratio factor (FMN/ FMF) in the process to yield the desired density of the sprayed coating, and a uniform coating without sprayed material being blown off to affect the efficiency of the coating process.
Regarding claim 38, it is the position of the examiner that property of deposited coating comprises pores and no cracks is inherent, given that the method and material (thermal spraying with the claimed rotation frequency and conveyance rate of the powder, and coating material being ceramic and metallic) disclosed by Ernst, Mori and Barbezat and the present application are the same. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999). In addition, the porosity of the coating, as well as the presence or absence of cracking, is depend upon the form, type and composition of the coating (evidenced by Gell US20040229031, pargraph 0059), in this case, the claimed invention and Ernst, Mori and Barbezat have the same thermal sprayed coating formed by the same method and same composition.
Regarding claim 40, Ernst teaches the coating is ceramic (paragraph 0007 and 0078). It is the position of the examiner that property of deposited coating comprises pores and no cracks is inherent, given that the method and material (thermal spraying with the claimed rotation frequency and conveyance rate of the powder, and coating material being ceramic and metallic) disclosed by Ernst, Mori and Barbezat and the present application are the same. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999). In addition, the porosity of the coating, as well as the presence or absence of cracking, is depend upon the form, type and composition of the coating (evidenced by Gell US20040229031, pargraph 0059), in this case, the claimed invention and Ernst, Mori and Barbezat have the same thermal sprayed coating formed by the same method and same composition.
Regarding claim 42, It is noted that FMF and FMN are merely an index multiple with arbitrary reference number (200rpm and 25g/min) to obtain the rotation frequency and conveyance rate of the powder, thus the optimization of the actual rotation frequency and conveyance rate would atomically optimize FMF and FMN.
Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency (and FMF) in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Barbezat teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate (FMN) in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It is noted that optimizing FMF and FMN would also optimize the ratio factor (FV), thus it would have been within the skill of the ordinary artisan to adjust and optimize the ratio factor (FMN/ FMF) in the process to yield the desired density of the sprayed coating, and a uniform coating without sprayed material being blown off to affect the efficiency of the coating process.
Regarding claim 43, Ernst teaches the coating is ceramic (0007 and 0078). It is the position of the examiner that property of deposited coating comprises pores and no cracks is inherent, given that the method and material (thermal spraying with the claimed rotation frequency and conveyance rate of the powder, and coating material being ceramic and metallic) disclosed by Ernst, Mori and Barbezat and the present application are the same. A reference which is silent about a claimed invention's features is inherently anticipatory if the missing feature is necessarily present in than in that which is described in the reference. Inherency is not established by probabilities or possibilities. In re Robertson, 49 USPQ2d 1949(1999). In addition, the porosity of the coating, as well as the presence or absence of cracking, is depend upon the form, type and composition of the coating (evidenced by Gell US20040229031, pargraph 0059), in this case, the claimed invention and Ernst, Mori and Barbezat have the same thermal sprayed coating formed by the same method and same composition.
Regarding claim 44, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 45, Mori teaches the if the rotation speed is too slow, it is difficult to form a uniform sprayed coating, and if it’s too fast, the sprayed material is blown off and the spraying efficiency is reduced (paragraphs 0016-0017). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Claim 30 is rejected under 35 U.S.C. 103 as being unpatentable over Ernst (US20140335282) in view of Mori (JPH06101012) in view of Barbezat (US20040076866) as applied to claims 15, 20, 22, 26, 28, 32-36, 38, 40 and 42-45 above, and further in view of Barbezat2 (US6548195)
Regarding claim 30, Ernst in view of Mori and Barbezat teaches all limitations of this claim, except the ceramic coating material is one of TiO2 or CrO3. However, Barbezat2 teaches a method of coating a working surface of the cylinders of combustion engines by plasma spraying (abstract) and discloses the TiO2 and Al2O3ZrO2 (Ernst’s coating material, paragraph 0078) are functionally equivalent plasma spray coating material for working surface of the cylinders of combustion engines. Therefore, it would have been obvious to one of ordinary skill in the art to substitute TiO2 for Al2O3ZrO2 as plasma spray coating materials for working surface of the cylinders of combustion engines in the method of applying a coating on a curved surface as disclosed by Ernst in view of Mori and Barbezat.
Response to Arguments
Applicant's arguments filed on March 10, 2026 have been fully considered but they are not persuasive.
Applicant’s principal arguments are:
Mori teaches the rotational frequency of the bending member is based upon its slop configuration, and a person ordinary skilled in the art would have found no guidance in Mori to suggest modifying a rotational frequency of Ernst’s gun. Mori’s range for the bending member’s rotational speed, 10-600rpm as being a range been too slow and too fast, thus, the claimed range of greater than 600rpm is too fast.
Barbezat1 teaches a powder conveyance rate on the outside of a cylinder, a person ordinary skilled in the art would have found no suggestion for modifying Ernst, which coats the inside of the cylinder bore, to utilize Barbeza1t’s conveyance feed rate.
The conventional parameters are not arbitrary reference. Examiner has not identified any express or implied teaching in the applied art suggesting an artisan seek a ratio of gun rotation frequency to powder conveyance rate and certainly no suggestion for optimizing such ratio.
It is not proper to combine with Barbezat2. Barbezat2 does not teach the claimed rotational frequency of the gun, a powder conveyance rate and a ratio factor as claimed.
Neither Ernst nor Barbezat 2 discloses the use of fully ceramic coating for cylinder bores.
In response to Applicant’s arguments, please consider the following comments:
As discussed above, Mori teaches to directed the sprayed material to a bending member 3 to deposit the coating material to the curved inner surface (paragraphs 0007-0011, see figures 1 and 5-8). Since the bend member function to rotate the coating jet of the material, just like the spray gun nozzle of Ernest, the rotation frequency and the reason to optimize the rotation frequency of Mori is applicable to Ernest’s spray gun. Mori also discloses generally, the rotation speed determines the uniformity of the coating and the efficiency of the coating process (difficult to form a uniform coating if the rotation speed is too slow, and that the efficiency will be reduced if the rotation speed is too fast) (paragraphs 0017). It would have been within the skill of the ordinary artisan to adjust and optimize the rotation frequency in the process to yield a uniform coating without sprayed material being blown off to affect the efficiency of the coating process. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. One of ordinary skill in the art would have recognized such motivations for optimization is applicable to both the rotating bending members and rotating plasma gun, which are both intended to direct the coating material to the surface of the curved inner surface. In addition, Mori teaches the bending member is rotated around the axis of the bore (which is the same as the thermal spray gun) at 10 to 600rpm (pargraph 0017), which touches the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. And Mori teaches the preferred rotating range of 10-600rpm for Mori’s own set up (specific plasma gun, parameters, material, size of the bending members etc), thus, it would be clear that different set up with different material etc might have slightly different rotational range and would optimize the rotational speed using Mori’s logic for desired uniformity of the coating by minimizing sprayed material being blown off and desired efficiency of the coating process. Thus, Mori’s suggestion of 10-600rpm for its own set up does not render the rotation frequency of above 600rpm as too fast (or not operable) for all other plasma spraying including Ernst’s method. It would have been obvious to one having ordinary skill in the art to have determined the optimum values of the relevant process parameters through routine experimentation in the absence of showing of criticality. In re Aller, USPQ 233 (CCPA 1955). Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, or by showing that the art teaches away from the claimed invention (MPEP 2144.05 III). It is noted that Applicant has not established criticality of claimed range. It is well settled that the evidence relied upon should establish "that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance (MEPE 716.02(b)). The graphics representing the sprayed coating of TiO2 do not actually show the differences have statistical and practical significance (number of cracks and pores for comparison with actual images of the coatings). In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., rotational speed of over 600rpm to achieve reducing stress in the coatings) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As discussed above, in addition to teaching the powder feeding rate of 80g/min, Barbezat1 teaches powder conveyance rate along with the pressure governs the density of the coating layer (paragraphs 0044, 0045 and 0048). Therefore, it would have been within the skill of the ordinary artisan to adjust and optimize the powder delivery rate in the process to yield the desired density of the sprayed coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to apply the conveyance rate of the coating material as suggested by Barbezat1 in the method of Ernst because Barbezat1 teaches such conveyance rate can form a dense coating (paragraphs 0044-0045 and 0048). Barbezat1’s reason for optimizing the powder delivery rate (for desired the density of the coating) is not affected by the shape of the surface. Thus, it would still be obvious to optimize the feed rate of the powder in the method of Ernst to form the desired density of the coating, in light of the teaching of Barbezat1. It is noted that Applicant has not established criticality of claimed range.
The conventional rotational frequency and conveying rate in the claims are reference number for calculations, thus are considered as arbitrary for the purpose of calculating the rotation factor and conveying factor in the claim. In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., achieving the desired reduced residual stress in the coating so as to significantly reduce or avoid cracks) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regarding applicant’s argument about Mori fails to suggest a powder conveyance rate and Barbezat1 does not suggest a rotating plasm gun (in response to applicant's arguments against the references individually), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Regarding the ratio factor not being recognized, it is noted that optimizing FMF and FMN would also optimize the ratio factor (FV), thus it would have been within the skill of the ordinary artisan to adjust and optimize the ratio factor (FMN/ FMF) in the process to yield the desired density of the sprayed coating, and a uniform coating without sprayed material being blown off to affect the efficiency of the coating process based on the reason for optimizing the rotation frequency and conveying rate disclosed by Mori and Barbezat. Applicants can rebut a prima facie case of obviousness by showing the criticality of the range, or by showing that the art teaches away from the claimed invention (MPEP 2144.05 III). It is noted that Applicant has not established criticality of claimed range.
As discussed above, Barbezat2 teaches a method of coating a working surface of the cylinders of combustion engines by plasma spraying (abstract) and discloses the TiO2 and Al2O3ZrO2 (Ernst’s coating material, paragraph 0078) are functionally equivalent plasma spray coating material for working surface of the cylinders of combustion engines. Therefore, it would have been obvious to one of ordinary skill in the art to substitute TiO2 for Al2O3ZrO2 as plasma spray coating materials for working surface of the cylinders of combustion engines in the method of applying a coating on a curved surface as disclosed by Ernst in view of Mori and Barbezat. Such combinations appears to be proper. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., use of fully ceramic coatings for cylinder bores) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
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.
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/N.V.L/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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