DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/11/25 has been entered.
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 10-14 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.
Re: claim 10. The phrase “…wherein in a finished product an outermost layer of the parallel surfaces of the disk brake maintains the predetermined three-dimensional appearance when coated with at least a first layer of a first coating material…”. Examiner first notes that the originally filed specification does not disclose that the outermost layer of the parallel surfaces of the disk brake maintains that same predetermined three-dimensional appearance when coated with at least a first layer of a first coating material. In paragraph [0007] of the instant application it states “[i]n one embodiment at least a portion of the parallel surfaces of the brake disk substrate is surface finished to impart a predetermined surface irregularity, modification, design or defect that exhibit a three-dimensional appearance or surface texture”. Later in the paragraph the disclosure states “[w]hen the parallel surfaces of the disk brake are subsequently coated with a coating, the disk brake can exhibit a three-dimensional appearance and/or texture. The disclosure does not present evidence that the finished product maintains the predetermine three-dimensional shape after coating as before. Therefore, the limitation, as amended, is unclear to 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 pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 10-14 is/are rejected under pre-AIA 35 U.S.C. 103 as being unpatentable over US Patent Application 2005/0087406 to Meckel in view of US Patent 6290032 to Patrick et al.
Re: claim 10. Meckel shows in figures 2 and 3 a coated brake disk comprising: a brake disk substrate 26 having parallel surfaces shown in figure 2, at least a portion of the parallel surfaces applied with a surface finish to impart a predetermined three-dimensional texture shown in figure 3 to the parallel surfaces of the disk brake, wherein the three-dimensional surface texture is selected from the group consisting of a woven structure and a textured structure or particularly a textured surface, the three-dimensional surface texture having as labeled in the annotated version of figure 3 peaks, valleys, and angular surfaces i.e. the illustrated transitions between the peaks and valleys, wherein in a finished product an outermost layer of the parallel surfaces of the disk brake maintains the predetermined three-dimensional appearance
[AltContent: textbox (Angular surface)][AltContent: textbox (Angular surface)][AltContent: arrow][AltContent: textbox (Peaks )]
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when coated with at least a first layer of a first coating material 28 described in paragraph [0023] and at least a second layer of a second coating material 30 described in paragraph [0024] by vapor deposition as described in the abstract as best understood, but is silent with regard to the peaks and valleys specifically being pointed.
Patrick et al. teach in figure 3A the use of peaks and valleys that are pointed.
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It would have been obvious to one ordinary skill in the art before the effective filing date of the invention to have modified the peaks and valleys of Meckel to have been pointed, in view of the teachings of Patrick et al., in order to provide a surface with greater friction as well as better coating adhesion and durability.
Re: claims 11 and 13. See paragraph [0024] of Meckel.
Re: claims 12 and 14. See paragraphs [0023] and [0024] of Meckel.
Response to Arguments
Applicant’s arguments with respect to the claim(s) have been considered but are moot because the new grounds of rejection do not rely on the reference combination used in the prior office action. Upon further review Examiner maintains the 112 rejection because even though Applicant has removed the word “same” Examiner notes that simply referring back to the previously recited three-dimensional appearance is essentially referring back to the same three-dimensional appearance. Examiner suggests using language similar to that which was used in the instant specification, for example in paragraph [0007], to avoid a 112 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MELODY M BURCH whose telephone number is (571)272-7114. The examiner can normally be reached Monday - Friday 6:30AM-3PM, generally.
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mmb
December 26, 2025
/MELODY M BURCH/Primary Examiner, Art Unit 3616