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 .
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.
Claim(s) 1-3, 5, 8 and 10-12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lancsek et al. (US 2006/0251910).
Regarding claims 1-2, 8 and 11-12, Lancsek discloses components such as high wear, abrasive impact, cutting, grinding, sliding applications, i.e. turbomachine, (paragraph 0039) comprising a substrate coated with a coating material (paragraph 0039), deposited via electroless nickel plating, (paragraph 0042) comprising a nickel (paragraph 0023), particulate matter such as ceramic material, graphite and/or PTFE with particles size from nanometers, i.e. less than 1 microns, (paragraphs 0026-0027), boron and phosphorus (paragraphs 0027, 0041-0042) wherein the coating has a thickness of 35 microns (paragraph 0049) or 14-15 microns (paragraph 0058) or 40-45 microns (paragraph 0063).
Lancsek discloses particulate matter such as ceramic material, graphite and/or PTFE with particles size from nanometers but there is no specific disclosure of using mixtures of two particulate matter such as ceramic material, graphite and PTFE. However, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Therefore, it would have been obvious to one of ordinary skill in the art to use two particulate matter such as ceramic material, graphite and PTFE in Lancsek and thereby arrive at the present invention.
Lancsek discloses that particulate matter such as ceramic, graphite and ptfe impart specific properties of the coating such as wear resistance, lubrication and stabilizer (paragraphs 0027-0031). Further, Lanscek discloses that ptfe is used in an amount of 24-27 % by volume in the coating (paragraph 0049). Since the instant specification is silent to unexpected results, the specific amount of ceramic, graphite and ptfe particles is not considered to confer patentability to the claims. As the wear resistance, lubrication and stabilizer is a variable that can be modified, among others, by adjusting the amount of ceramic, graphite and ptfe particles, the precise amount would have been considered a result effective variable by one having ordinary skill in the art at the time the invention was made. As such, without showing unexpected results, the claimed amount cannot be considered critical. Accordingly, one of ordinary skill in the art at the time the invention was made would have optimized, by routine experimentation, the amount of ceramic, graphite and ptfe particles in coating to obtain the desired wear resistance, lubrication and stabilization (In re Boesch, 617 F.2d. 272, 205 USPQ 215 (CCPA 1980)), since it has been held that where the general conditions of the claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art. (In re Aller, 105 USPQ 223).
Regarding claims 3 and 10, Lanscek discloses the component of claim 1, wherein the ceramic material is silicon carbide (paragraph 0029), the graphite material is graphite oxide (paragraph 0027) and fluoropolymer is PTFE (paragraph 0030).
Regarding claim 5, Lanscek discloses the component of claim 1, wherein Lancsek discloses that the particles size may be from nanometers to up to 100 microns which would encompass values including that being claimed. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Claim(s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lancsek et al. (US 2006/0251910) in view of Li et al. (CN 106086827).
Regarding claim 6, Lanscek discloses the component of claim 1, but fails to disclose one coating layer between the substrate and the coating layer.
Li discloses Ni-P-PTFE coating on stainless steel substrate wherein a pre-plating nickel layer, deposited via chemical nickel plating, is used between the substrate and Ni-P-PTFE coating to obtain tight adhesive and uniform grain size (pages 7-8).
It would have been obvious to one of ordinary skill in the art to use the pre-plating nickel layer of Li between the substrate and the coating layer of Lancsek to obtain tight adhesive and uniform grain size.
Claim(s) 8 and 13-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lancsek et al. (US 2006/0251910) in view of Appleby et al. (US 2011/0189440).
Regarding claims 8 and 13-18, Lanscek discloses the component of claim 1, Lancsek discloses components such as high wear, abrasive impact, cutting, grinding, sliding applications but does not disclose turbomachine, gas turbine, compressor, pump, subsea equipment and well intervention.
Appleby discloses castings for turbomachine (0780), compressor (0625), turbine, i.e. gas turbine, (0779), pump, i.e. completion equipment, (0741), flow passage or fluid coextrusion, i.e. subsea equipment, (0656, 0657) and well interventional equipment (0741, 0789).
It would have been obvious to one of ordinary skill in the art to use article of Lancsek in the turbomachine, compressor, gas turbine, pump, subsea equipment, and well interventional equipment as taught in Appleby to obtain heavy metals free coating and to meet end users requirements.
Response to Arguments
Applicant's arguments filed 5/26/2026 have been fully considered but they are not persuasive.
Applicant argues that Lancsek does not disclose any co deposition of multiple particle classes, nor does it describe any system in which multiple distinct particle classes are used in combination to achieve coordinated performance properties and Lancsek instead focuses on single particle system. However, Lancsek discloses particulate matter such as ceramic material, graphite and/or PTFE with particles size from nanometers but there is no specific disclosure of using mixtures of two particulate matter such as ceramic material, graphite and PTFE. However, it is prima facie obvious to combine two compositions each of which is taught by the prior art to be useful for the same purpose, in order to form a third composition to be used for the very same purpose.... [T]he idea of combining them flows logically from their having been individually taught in the prior art." In re Kerkhoven, 626 F.2d 846, 850, 205 USPQ 1069, 1072 (CCPA 1980) (citations omitted). See also In re Crockett, 279 F.2d 274, 126 USPQ 186 (CCPA 1960) and Ex parte Quadranti, 25 USPQ2d 1071 (Bd. Pat. App. & Inter. 1992). Therefore, it would have been obvious to one of ordinary skill in the art to use two particulate matter such as ceramic material, graphite and PTFE in Lancsek and thereby arrive at the present invention.
Applicant argues that the Office’s conclusion regarding a result effective variable subject to routine optimization is legally improper because the combinations do not recognize or suggest that the claim range. However, it is noted that “the arguments of counsel cannot take the place of evidence in the record”, In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965). It is the examiner’s position that the arguments provided by the applicant regarding a result effective variable subject to routine optimization must be supported by a declaration or affidavit. As set forth in MPEP 716.02(g), “the reason for requiring evidence in a declaration or affidavit form is to obtain the assurances that any statements or representations made are correct, as provided by 35 U.S.C. 24 and 18 U.S.C. 1001”.
Applicant argues that the rejection cannot rely on hindsight reconstruction. In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971). The rejection is not based on hindsight but rather on motivation to combine found in the references themselves. Further, it is the examiner's position that the combination is not based on hindsight but rather on motivation to combine found in Lancsek itself, namely, the wear resistance, lubrication and stabilizer is a variable that can be modified, among others, by adjusting the amount of ceramic, graphite and ptfe particles.
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 SAMIR SHAH whose telephone number is (571)270-1143. The examiner can normally be reached 8:00am - 5:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Callie Shosho can be reached at 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMIR SHAH/Primary Examiner, Art Unit 1787
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