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 .
Response to Arguments
In view of the Appeal Brief filed on 9/18/2025, PROSECUTION IS HEREBY REOPENED. New grounds of rejection are set forth below.
To avoid abandonment of the application, appellant must exercise one of the following two options:
(1) file a reply under 37 CFR 1.111 (if this Office action is non-final) or a reply under 37 CFR 1.113 (if this Office action is final); or,
(2) initiate a new appeal by filing a notice of appeal under 37 CFR 41.31 followed by an appeal brief under 37 CFR 41.37. The previously paid notice of appeal fee and appeal brief fee can be applied to the new appeal. If, however, the appeal fees set forth in 37 CFR 41.20 have been increased since they were previously paid, then appellant must pay the difference between the increased fees and the amount previously paid.
A Supervisory Patent Examiner (SPE) has approved of reopening prosecution by signing below:
/HUMERA N. SHEIKH/ Supervisory Patent Examiner, Art Unit 1784
The Double Patenting rejections are maintained as Applicant did not substantively traverse them. The claim objection is withdrawn in view of Applicant’s amendments.
The U.S.C. 112(a) rejection is withdrawn in view of Applicant’s arguments.
The 35 U.S.C. 112(d) rejection is maintained. If, e.g., claim 4 required that the alloy layer comprises only one of phosphorus, nitrogen, carbon, or boron, Applicant’s arguments would be persuasive. However, the claim only requires that the alloy layer comprises one of phosphorus, nitrogen, carbon, or boron. Comprising two of phosphorus, nitrogen, carbon, or boron would still meet the claimed invention. For this reason, the scope of claim 4 is no different from the scope of claim 1.
The 35 U.S.C. 103 rejection of the claims over Haghdoost (US 2019/0186035) is maintained. Applicant argues Haghdoost does not teach the claimed weight percentages. This argument is not persuasive. Haghdoost discloses the coating of the article may comprise a metal alloy layer of nickel and molybdenum (¶ 13), and the molybdenum content in the coating may be 5%-40% by weight (¶ 13). This overlaps the claimed requirement of “at least one of molybdenum…present at 33% by weight or less”. Haghdoost does not teach or suggest additional metal components to the metal alloy of Mo and Ni. Therefore, one of ordinary skill in the art would expect the balance of the alloy to essentially be Ni. This implies a Ni content of 60%-95%, which overlaps the claimed requirement of “at least one of molybdenum, nickel… present in the alloy layer at 65% by weight or more”.
Double Patenting
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, 4-9, 12-17 and 19-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 and 41-42 of copending Application No. 17/844,400 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 4 and 19-20, claims 1-4, 19-20 and 41-42 of copending ‘400 recite substantially similar subject matter.
Regarding instant claims 5-6, claims 3-4 of copending ‘400 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 9-10 of copending ‘400 recite substantially similar subject matter.
Regarding instant claim 9, claim 7 of copending ’400 recites substantially similar subject matter.
Regarding instant claim 12, claim 10 of copending ‘400 recites substantially similar subject matter.
Regarding instant claims 13-15, claims 11-13 of copending ‘400 recite substantially similar subject matter.
Regarding instant claim 16, claim 14 of copending ‘400 recites substantially similar subject matter.
Regarding instant claim 17, claim 18 of copending ‘400 recites substantially similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 4-10, 12-17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-20 and 81-83 of copending Application No. 17/844,436 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 4 and 19, claims 1, 4 and 81-83 of copending ‘436 recite substantially similar subject matter.
Regarding instant claims 5-6, claims 5-6 of copending ‘436 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 7-8 of copending ‘436 recite substantially similar subject matter.
Regarding instant claim 9, claim 9 of copending ‘436 recites substantially similar subject matter.
Regarding instant claim 10, claim 10 of copending ‘436 recites substantially similar subject matter.
Regarding instant claims 12-17, claims 12-13 and 15-17 of copending ‘436 recite substantially similar subject matter.
Regarding instant claim 19, the device of copending ‘436 includes a piston member (see claim 19) which rotates circumferentially during use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-17 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 9-16, 18-20 of copending Application No. 17/844,486 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 11, claim 1 of copending ‘486 recites a roller having substantially similar limitations as those claimed.
Regarding instant claim 3, claims 2-3 of copending ‘486 recite substantially similar subject matter.
Regarding instant claim 4, claim 4 of copending ‘486 recites substantially similar subject matter.
Regarding instant claims 5-6, claims 5-6 of copending ‘486 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 11-12 of copending ‘486 recite substantially similar subject matter.
Regarding instant claim 9, claim 9 of copending ‘486 recites substantially similar subject matter.
Regarding instant claim 10, claim 10 of copending ‘486 recites substantially similar subject matter.
Regarding instant claims 12-13, claims 12-13 of copending ‘486 recite substantially similar subject matter.
Regarding instant claims 14-17, claims 3 and 14-16 of copending ‘486 recite substantially similar subject matter.
Regarding instant claim 19, claim 17 of copending ‘486 recite substantially similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-9, 12-17 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/844,542 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1 and 20, claim 1 of copending ‘542 recites a rod having substantially similar limitations as those claimed.
Regarding instant claim 3, claims 2-3 of copending ‘542 recite substantially similar subject matter.
Regarding instant claim 4, claim 4 of copending ‘542 recites substantially similar subject matter.
Regarding instant claims 5-6, claims 5-6 of copending ‘542 recite substantially similar subject matter.
Regarding instant claims 7-8, claims 11 and 7-8 of copending ‘542 recite substantially similar subject matter.
Regarding instant claim 9, claim 9 of copending ‘542 recites substantially similar subject matter.
Regarding instant claims 12-13, claims 12-13 of copending ‘542 recite substantially similar subject matter.
Regarding instant claims 14-17, claims 7 and 14-17 of copending ‘542 recite substantially similar subject matter.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, 3-17 and 19 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 17/844,616 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding instant claims 1, 10 and 19, claim 1 of copending ‘616 recites a device including a piston member having substantially similar limitations as those claimed.
Regarding instant claim 3, claims 2-3 of copending ‘616 recite substantially similar subject matter.
Regarding instant claim 4, claim 4 of copending ‘616 recites substantially similar subject matter.
Regarding instant claims 5-6, claims 5-6 of copending ‘616 recite substantially similar subject matter.
Regarding instant claims 7-8, claim 4 of copending ‘616 recites substantially similar subject matter.
Regarding instant claim 9, claim 9 of copending ‘616 recites substantially similar subject matter.
Regarding instant claim 11, claim 11 of copending ‘616 recites substantially similar subject matter.
Regarding instant claims 12-13, claims 12-13 of copending ‘616 recite substantially similar subject matter.
Regarding instant claims 14-16, claims 14-16 of copending ‘616 recite substantially similar subject matter.
Regarding instant claim 17, claim 8 of copending ‘616 recites substantially similar subject matter.
Regarding claim 19, the device of copending ‘616 includes a piston member (see claim 1) which rotates circumferentially during use.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1, 3-17, 19-20 and 161-162 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.
Claim 1 recites “wherein at least one of the molybdenum, nickel, tungsten, cobalt, and tin in the alloy layer is present at 33% by weight or less, and at least one of the molybdenum, nickel, tungsten, cobalt, and tin is present in the alloy layer at 65% by weight or more”. This limitation is indefinite as it simultaneously requires “at least one of the molybdenum, nickel, tungsten, cobalt, and tin” to be 33% weight or less and 65% weight or more, which are diverging and incompatible ranges. For purposes of examination, it is presumed that some combination of at least one of the recited five elements is 33% weight or less, and that some other combination of at least one of the recited five metal elements is 65% weight or more.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 4 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Any alloy composition which meets the requirements of claim 1 necessarily also meets the requirements of claim 4. Therefore, claim 4 fails to further limit the claim from which it depends. Applicant may cancel the claim, amend the claim to place the claim in proper dependent form, rewrite the claim in independent form, or present a sufficient showing that the dependent claim complies with the statutory requirements.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1, 3-17, 19-20 and 161-162 are rejected under 35 U.S.C. 103 as being unpatentable over Haghdoost et al. (US 2019/0186035).
Regarding claims 1, 4-6, 7-9 and 19-20, Haghdoost discloses a coated article (¶ 2). The coated article includes blades of a turbine (¶ 278), rods (¶ 282), piston rods (¶ 282), connecting rods (¶ 282), gears (¶ 282), and rotors (¶ 284), which are all rotating devices that rotate circumferentially during use. Haghdoost discloses the coating of the article may comprise a metal alloy layer of nickel and molybdenum (¶ 13), and may be electrodeposited (¶ 69). A further surface silane layer on the electrodeposited layer is optional (¶ 116). Haghdoost discloses the molybdenum content in the coating may be 5%-40% by weight (¶ 13), thus overlapping the claimed requirement of “at least one of molybdenum…present at 33% by weight or less”. Given that the metal alloy layer is an alloy of Mo and Ni without specifying additional components, one of ordinary skill in the art would expect the balance of the alloy to essentially be Ni. This overlaps the claimed requirement of “at least one of molybdenum, nickel… present in the alloy layer at 65% by weight or more”. Additionally, Haghdoost discloses the coating may further comprise carbon (in the form of diamond or carbon nanotubes), silicon carbide, or boron nitride (¶ 216). This overlaps the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, Haghdoost discloses the article may be a rod, or engine cylinders, or shafts, all of which are cylindrical in shape (¶ 282).
Regarding claim 10, Haghdoost discloses the metal alloy layer does not require precious metals, and molybdenum content is 5%-40%, which overlaps the claimed range, creating a prima facie case of obviousness. See MPEP 2144.05 I. Haghdoost discloses the coating layer is smooth (¶ 227) which suggests a very low surface roughness Ra. It would have been obvious at the effective time of filing for one of ordinary skill in the art to reduce Ra to as close as 0 as possible given the suggestion to obtain a smooth surface. Haghdoost also teaches the grains have variance in size (¶ 203). It is therefore necessarily the case that some grains are the same size and some are not the same size, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 11, Haghdoost does not require the presence of chromium, cadmium, cyanide, lead or fluoro compounds.
Regarding claim 12, Haghdoost the alloy layer deposition may include electroless deposition (¶ 100), including electroless nickel plating (¶ 104). Since electroless nickel plating inherently includes some phosphorus, any molybdenum-nickel alloy coating formed using electroless plating would also necessarily include phosphorus, absent objective evidence to the contrary. See MPEP 2112.
Regarding claim 13, Haghdoost teaches the presence of a nickel layer between the substrate and the nickel-molybdenum alloy layer (¶¶ 11, 13).
Regarding claim 14, Haghdoost teaches the coating comprises a refractory metal such as molybdenum (¶ 6) which may form a first layer, on top of which is a second layer (¶ 11). The second layer may be a nickel layer (¶ 104).
Regarding claim 15, Haghdoost teaches including particles such as polymeric particles, silica, diamond, silicon carbide, and other nanoparticles in the coating (¶ 15).
Regarding claim 16, Haghdoost teaches the surface of the coating may be further coated with an organic or inorganic-organic material (¶ 12). Thus, this is not a required surface coating, and the metal alloy layer of nickel and molybdenum may be the surfacemost coating. Haghdoost teaches the coating is applied via electrodeposition (¶ 69) and does not require inclusion of precious metals in the coating.
Regarding claim 17, Haghdoost teaches the metal alloy layer has a hardness of more than 600 HV (¶ 99).
Regarding claims 161-162, Haghdoost discloses a coated article (¶ 2). The coated article includes blades of a turbine (¶ 278) or rotors (¶ 284). A shaft and couplers are considered inherent to a rotor. Haghdoost discloses the coating is electrodeposited (¶ 69). A further surface silane layer on the electrodeposited layer is optional (¶ 116). The coating is an alloy of Ni and Mo (¶ 13) and may further comprise carbon (in the form of diamond or carbon nanotubes), silicon carbide, or boron nitride (¶ 216).
Claims 1, 3-9, 16, 19-20 and 161-162 are rejected under 35 U.S.C. 103 as being unpatentable over Rangaswamy et al. (US 4,692,305).
Regarding claims 1, 3-8, and 19-20, Rangaswamy discloses a coated article (col. 3, lines 9-20). The article may be blades of a turbine, piston rods, shafts, bearing sleeves and journals, screws, and rotors (col. 5, lines 1-18), which are all rotating devices that rotate circumferentially during use. Rods and shafts are cylindrical. The coating is applied to the wear or bearing surfaces of the article (col. 4, lines 61-65). Rangaswamy discloses the coating is an alloy comprising 5%-30% Mo, 3%-15% W, at least 30% Ni, and carbon and boron (col. 3, lines 44-64). These ranges overlap or lie within the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I. Rangaswamy teaches the coating is an outermost surface (see col. 5, lines 20-50). Although the coating is not electrodeposited, this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I. In this case there does not appear to be any structural features in the claimed invention which would distinguish over the prior art disclosure. Accordingly, Rangaswamy is considered to meet this limitation.
Regarding claim 9, the transitional phrase “consists essentially of” is interpreted as “comprises” because the specification has not identified chromium, copper, or cobalt as elements which would materially affect the basic and novel characteristics of the claimed invention. See MPEP 2111.03 III.
Regarding claim 16, Rangaswamy teaches the coating is an outermost surface (see col. 5, lines 20-50). Although the coating is not electrodeposited, this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I. Rangaswamy does not disclose the presence of precious metals in the alloy coating. It is thus assumed there are none, absent objective evidence to the contrary. See MPEP 2112.
Regarding claims 161-162, Rangaswamy teaches the coated article includes blades of a turbine (¶ 278) or rotors (¶ 284). A shaft and couplers are considered inherent to a rotor. Rangaswamy teaches the coating is an outermost surface (see col. 5, lines 20-50). Although the coating is not electrodeposited, this is considered a product-by-process limitation. Even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. See MPEP 2113 I. In this case there does not appear to be any structural features in the claimed invention which would distinguish over the prior art disclosure. Accordingly, Rangaswamy is considered to meet this limitation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached on 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
/HUMERA N. SHEIKH/Supervisory Patent Examiner, Art Unit 1784