DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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.
Claim 16, 17, and 19-23 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over US 5,789,071 to Sproul et al. in view of US 6,458,466 to Jones et al.
Re-claim 16, Sproul et al. teach in figure 18 a substrate with a coating, comprising:
a first material (such as first target 84), the first material may comprise a vapor deposited metal (Sproul et al. teach the already known deposition of a metal, such as singular metals upon a substrate, see column 2 lines 52-53 as being “fairly well refined and effective”; a sputtering deposition is interpreted as a vapor deposited process, Sproul et al. further teach the effectiveness of using metal targets, see column 9 lines 39-42 and column 17 lines 33-35 “it is contemplated that the invention incorporates the use of various materials as the metal..”);
a second material (such as target 88) comprises a vapor deposited binary metal compound (such as any of the oxide listed materials used for the second material, as applied in accordance with the embodiment of figure 18), the first material and second material construct a pattern of repetition consistent with a lattice structure (see column 4 lines 51-67 to column 5 lines 1-10 and the continued rotation of the substrate thus building a repeated series of first and second layers or materials, multiple layers of materials form the lattice structure as is consistent with the instant invention) when (i.e. functional) applied over parallel surfaces;
Sproul et al. further teach the total thickness of the coating is in the micrometer range, specifically up to 10 micrometers (see column 15 lines 12-15), and the lattice structure (i.e. repetitive application of layers) has a period of repetition of less than 100 angstrom (see column 5 lines 2-3 and how each layer is in a range of 1 to 5 nanometers, or 10 to 50 angstroms, and further see column 15 lines 12-23, the layer depth is determined in part by rotation speed of the substrate, column 5 lines 7-10). It is noted that the recitation “period of repetition” does not appear in the originally filed specification, nor is this concept disclosed in detail, thus forcing the Office to interpret the claim language as best possible. The applicant is required to fully disclose the invention in a manner that the public fully understands what is intended for coverage.
It is noted that Sproul et al. fail to teach the coating applied to surfaces of a brake disc.
Jones et al. teach a brake disc having outer surfaces coated with a first material (i.e. metal interlayer, see column 9 lines 19-45) and a second binary metal compound (such as AlB12/Al, AlB2/Al or TiC/Ti, as well as others as desired, see column 3 lines 3-57). The metal first material improves adhesion between the brake disc surface and the metal compound, see column 9 lines 19-45. In addition, the use of the metal compound results in a brake disc with reduced weight and improved life expectancy, see column 1 lines 43-46. Coating the surfaces of the substrate brake disc provides improved life expectancy and reduced weight, as a lighter substrate material can be used. Therefore, and as suggested by Jones et al., it would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the coating of Sproul et al. on a brake disc as taught by Jones et al., to improve life expectancy and improved adhesion. Jones et al. provide further support for the position taken by the Office that a sputtering process is a vapor deposition process, see column 9 lines 38-45).
As stated previously, Sproul et al. teach the use of pure metal as a target, as well as metal compounds. Simply designating which target is the first material and second material is left to the artisan, as only a limited number of choices would exist. The selection of which would have been determined by the desired features of the final product, which may include a brake disc.
Re-claim 17, Sproul et al. teach the second material consisting of metal Nitrides, metal Oxides, metal Borides or metal Carbides (see column 9 lines 29-41).
Re-claim 19, the vapor-deposited binary metal compound has a crystalline structure (see at least zirconium oxide, or yttrium oxide, see also column 16 lines 12-15).
Re-claim 20, both oxides and non-oxides (i.e. nitrides and carbides) are taught as possible ceramic materials, see column 9 lines 35-41.
Re-claim 21, the first layer coating can consist of at least zirconium or aluminum.
Re-claim 22, the surface comprises a ceramic oxide, see column 9 lines 35-41.
Re-claim 23, the braking surface comprises ceramic non-oxides, this can include the nitrides or carbides as desired.
Claims 26 and 27 is/are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sproul et al. in view or Jones et al. and in view of JP 2006-105396-A to Reulein et al.
Re-claim 26, Sproul et al. teach in figure 18 a substrate surface having a coating, comprising:
a substrate material 14; the coating overlies at least a portion of the substrate material, the coating comprising: a first material (such as target 84) comprising a vapor deposited metal (Sproul et al. teach the already known deposition of a metal, such as singular metals upon a substrate, see column 2 lines 52-53 as being “fairly well refined and effective”; a sputtering deposition is interpreted as a vapor deposited process, Sproul et al. further teach the effectiveness of using metal targets, see column 9 lines 39-42 and column 17 lines 33-35 “it is contemplated that the invention incorporates the use of various materials as the metal..”);
a second material (such as target 88) comprising a vapor-deposited binary metal compound (such as any of the oxide listed materials used for the second material, as applied in accordance with the embodiment of figure 18), the second layer constructs a pattern of repetition consistent with a lattice structure (see column 4 lines 51-67 to column 5 lines 1-10 and the continued rotation of the substrate thus building a repeated series of first and second layers or materials, multiple layers of materials form the lattice structure as is consistent with the instant invention) when (i.e. functional) applied over parallel surfaces;
Sproul et al. further teach the total thickness of the coating is in the micrometer range, specifically up to 10 micrometers (see column 15 lines 12-15), and the lattice structure (i.e. repetitive application of layers) has a period of repetition of less than 100 angstrom (see column 5 lines 2-3 and how each layer is in a range of 1 to 5 nanometers, or 10 to 50 angstroms, and further see column 15 lines 12-23, the layer depth is determined in part by rotation speed of the substrate, column 5 lines 7-10).
However, Sproul et al. fail to teach the coating forming a braking surface, or the substrate material comprises a ceramic. It is noted that Sproul et al. teach that the substrate may be any desired material (see column 9 lines 57-58).
Jones et al. teach a brake disc having a first material (i.e. metal interlayer, see column 9 lines 19-45) and a second binary metal compound (such as AlB12/Al, AlB2/Al or TiC/Ti, as well as others as desired, see column 3 lines 3-57). The metal first material improves adhesion between the brake disc surface and the metal compound, see column 9 lines 19-45. In addition, the use of the metal compound results in a brake disc with reduced weight and improved life expectancy, see column 1 lines 43-46. Coating the surfaces of the substrate brake disc provides improved life expectancy and reduced weight, as a lighter substrate material can be used. Therefore, and as suggested by Jones et al., it would have been obvious to one of ordinary skill in the art at the time of the invention to have utilized the coating of Sproul et al. on a brake disc as taught by Jones et al., to improve life expectancy and improved adhesion. It is further noted that Jones et al. provide support for the position that sputtering is a vapor deposition process, see column 9 lines 38-45).
Reulein et al. teach a brake disc having a ceramic substrate. It is stated that the use of ceramic materials in place of a metal substrate brake disc are known in the art. The ceramic material would provide a disc of reduced weight, as compared to a metal, and maintain high temperature operational ranges. Therefore, in view of Reulein et al. pertaining the to the use of ceramic brake disc substrates, it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided as the substrate in Sproul et al. a ceramic element as taught by Reulein et al., as the use of ceramics as brake disc substrates is known in the art and would have further reduced the overall weight while maintaining high temperature operations.
As stated previously, Sproul et al. teach the use of pure metal as a target, as well as metal compounds. Simply designating which target is the first material and second material is left to the artisan, as only a limited number of choices would exist. The selection of which would have been determined by the desired features of the final product, which may include a brake disc.
Re-claim 27, Sproul et al. teach the second material consisting of metal Nitrides, metal Oxides, metal Borides or metal Carbides (see column 9 lines 29-41).
Claim 24 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Sproul et al. in view Jones et al. as applied to claim 16 above, and further in view of 5,629,101 to Watremez.
Re-claim 24, Sproul et al. teach the coating comprising a ceramic composite material, such as ceramic oxides and non-oxides (i.e. nitrides and carbides) any of which are light weight ceramic materials (such as zirconium, as in the instant invention). However, Sproul et al. fail to teach the composite materials consisting of particulate reinforced combinations.
Watremez teaches the use of reinforcing fibers (carbide and oxide) used to improve stability and resistance to thermal shock (see column 6 lines 7-9). As such it would have been obvious to one of ordinary skill in the art at the time of the invention to have provided the coatings of Sproul et al. with reinforcing particulate matter as taught by Watremez, thus improving the stability and thermal shock of the coatings.
Response to Arguments
Applicant's arguments filed December 11, 2025 have been fully considered but they are not persuasive. As noted above, the claim language “period of repetition” is not found in the originally filed specification. The specification does mention: “ Multilayers become superlatices when the period of the different layers is less than 100 Å”. The phrase “period” generally describes a time frame, whereas Å is a length. As best understood by the Office the applicant intends to claim a depth of each layer, thus forming a superlattice from the combination of layers. Furthermore, it is believed that each layer is less than 100 Å in depth.
With regards to point a and the use of metal as the target material. It would be inappropriate for the Office to dismiss, or ignore what is disclosed in Sproul. It is the position of the Office that a person of ordinary skill in the art would have sufficient knowledge and experience with sputtering techniques such that they could apply the pure metal or metal alloy to a substrate in the manner suggested by Sproul. The selection of material used as the coating layer on the disc substrate is left to the artisan, as the intended use of the final product would likely dictate what types of coating materials are best suited. This applied as well to the substrate, as the use of metal or ceramic brake disc substrates are known in the art, and the selection of which is best determined by the intended use.
With regards to the combination of Sproul and Jones and point b. The teaching reference is merely relied upon as suggesting the application of coatings upon a brake disc. The specifics of Jones with regards to the coating or its constituents is not part of the rejection as set forth above. Sproul et al. teach a coating process that can be applied to a variety of substrate element including a brake disc. As such the rejection is maintained.
Conclusion
THIS ACTION IS MADE FINAL. 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 inquiries concerning this communication or earlier communications from the examiner should be directed to Thomas Williams whose telephone number is 571-272-7128. The examiner can normally be reached on Tuesday-Friday from 6:00 AM to 4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi, can be reached at 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is 571-272-6584.
TJW
January 15, 2026
/THOMAS J WILLIAMS/Primary Examiner, Art Unit 3616