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 .
Rejoinder
Claims 4, 7 and 8 are rejoined in view of the amendments to the claims such that the claims now read on the elected species.
Claims 13-15 and 20 remain withdrawn as being directed toward a non-elected species.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-8 and 10-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding independent claim 1, the phrase “an alloy layer comprising (i) molybdenum (ii) nickel, tungsten or tin and (ii) at least one of phosphorous or boron, . . . wherein the alloy layer comprises uniform and non-uniform grain sizes with an average grain size less than 2 microns” Is considered new matter.
With respect to grain sizes being less than 2 microns, the original specification only states “a nickel molybdenum alloy with uniform and non-uniform grain sizes, a nickel molybdenum alloy with an average grain size less than 2 microns” (see ¶ 0109) (emphasis added). Claim 1, however, encompasses a tungsten molybdenum alloy or a tin molybdenum alloy having grain sizes less than 2 microns, which was not disclosed by the original specification. As such, this subject matter is considered new matter.
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 1-8 and 10-20 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.
Regarding independent claim 1, the phrase “wherein the alloy layer comprises uniform and non-uniform grain sizes” is indefinite because it is unclear how the grain sizes can be “uniform” if there are non-uniform grain sizes includes. Once non-uniform grain sizes are included, uniform grain sizes are no longer present. Therefore, it is unclear what is meant by “uniform and non-uniform grain sizes.”
Regarding independent claim 1, the phrase “an alloy layer comprising (i) . . . (ii) . . . (ii)” is indefinite because it is unclear whether elements recited in the second numeral (ii) are an extension of the elements recited after the first numeral (ii), or alternatively that the second numeral (ii) starts a third list. For purposes of examination, this phrase will be interpreted as requiring “(i) molybdenum (ii) nickel, tungsten or tin and (iii) at least one of phosphorous or boron.”
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1, 3-8, 11, 12 and 16-18 are rejected under 35 U.S.C. 103 as being unpatentable over Eom (US 2011/0203889) in view of Jiraschek et al. (US 2019/0230939) and further in view of Liu, J.H., et al. "Investigations on the structure and properties of nanocrystalline Ni-Mo alloy coatings." (Materials Characterization, vol. 167, 22-Jul-2020, Article 110532. ScienceDirect, doi:10.1016/j.matchar.2020.110532) (hereinafter “Liu”).
Regarding independent claim 1, Eom discloses a shock absorber (see Abstract, FIGS. 1-5B) comprising: a shock absorber housing (100a) configured to receive a functional fluid (see ¶ 0025); at least one a piston member (500, 600) configured to move within the shock absorber housing (see ¶ 0044), the at least one piston member configured to contact the functional fluid in the shock housing in response to a force to dissipate kinetic energy causing movement of the at least one piston member (see ¶¶ 0024, 0044), wherein the at least one piston member comprises a coated surface on a surface of the piston member (see ¶ 0043), wherein the coated surface comprises a surface coating (see ¶ 0043).
Eom does not disclose that the surface coating comprises an alloy layer comprising (i) molybdenum (ii) nickel, tungsten or tin and (iii) at least one of phosphorous or boron, wherein at least one of nickel, tungsten, or tin is present in the alloy layer at 65% by weight or more, wherein the alloy layer comprises uniform and non-uniform grain sizes with an average grain size less than 2 microns, and wherein a thickness of the surface coating is up to 2 mm.
Jiraschek teaches as surface coating that comprises an alloy layer comprising (i) molybdenum (see ¶ 0012), (ii) nickel, tungsten or tin (see ¶0012) and (iii) at least one of phosphorous or boron (see ¶ 0012), wherein at least one of nickel, tungsten, or tin is present in the alloy layer at 65% by weight or more (see ¶ 0013), and wherein a thickness of the surface coating is up to 2 mm (see ¶ 0016).
It would have been obvious to replace the coating of Eom with the coating of Jiraschek to provide a more environmentally friendly method of coating the piston member (see e.g. Jiraschek, ¶¶ 0007-0009).
Neither Eom nor Jirsachek disclose that the alloy layer comprises uniform and non-uniform grain sizes with an average grain size less than 2 microns.
Liu teaches a layer comprising a Nickel Molybdenum alloy (see page 1, first paragraph) comprising uniform and non-uniform grain sizes (see e.g. page 2, figure 2; page 4, Figure 6(e)) with an average grain size less than 2 microns (see page 4, Figure 6(e); page 5, section 3.3.1; page 11, conclusion section).
It would have been obvious to configure the grain size of the alloy layer of the Eom/Jiraschek device to be less than 2 microns to increase the hardness of the alloy layer, thereby improving wear resistance (see e.g. page 5, section 3.3.1; page 11, conclusion section).
Regarding claim 3, Eom discloses that the alloy layer is present on a portion of the piston member that is external the housing (see FIG. 1).
Regarding claim 4, Jirsachek teaches that the alloy layer consists essentially of molybdenum, nickel and phosphorous (see ¶ 0013).
Regarding claim 5, Jiraschek teaches that the molybdenum or tungsten is present in the surface coating at less than 35% by weight based on a weight of the surface coating (see ¶ 0013).
Regarding claim 6, Jiraschek teaches that the molybdenum or tungsten is present in the alloy layer at less than 35% by weight based on a weight of the alloy layer (see ¶ 0013).
Regarding claim 7, Jirsachek teaches that the molybdenum is present in the surface coating at 33% or less by weight based on a weight of the surface coating (see ¶ 0013).
Regarding claim 8, Jiraschek teaches that the molybdenum or tungsten is present in the alloy layer at 65% or less by weight based on a weight of the alloy layer (see ¶ 0013).
Regarding claim 11, Jiraschek teaches that the alloy layer is an electrodeposited alloy layer (see ¶ 0014).
Regarding claim 12, Jiraschek discloses that the electrodeposited layer (i) consists essentially of molybdenum, nickel, and phosphorous (see ¶ 0014)..
Regarding claim 16, Jiraschek discloses that the alloy layer is present as an exposed outer layer of the surface coating (see ¶ 0031; FIG. 1), wherein the exposed outer layer is an electrodeposited alloy layer (see ¶ 0014), and wherein the electrodeposited alloy layer excludes precious metals (see ¶ 0012).
Regarding claim 17, Eom discloses that the housing further comprises one or both of a gas or hydraulic fluid within the housing (see ¶ 0025).
Regarding claim 18, Eom discloses that the shock absorber is a monotube shock absorber, a twin tube shock absorber (see FIG. 1) or a twin tube gas charged shock absorber.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Eom (US 2011/0203889) in view of Jiraschek et al. (US 2019/0230939) and Liu, J.H., et al. "Investigations on the structure and properties of nanocrystalline Ni-Mo alloy coatings," as applied to claims 1 and 9 above, and further in view of Kondo et al. (US 2009/0200126).
Regarding claim 10, Jiraschek discloses that the molybdenum is present in the alloy layer at 20% or less by weight based on a weight of the surface coating, and the surface coating excludes precious metals (see ¶ 0012, 0013).
Neither Eom nor Jiraschek disclose that the coated surface comprises a surface roughness Ra of less than 1 micron.
Kondo teaches a shock absorber (see Abstract, FIG. 1) comprising a piston member (13, 16) having a coated surface comprises a surface roughness Ra of less than 1 micron (see ¶ 0113).
It would have been obvious to configure the coated surface to have a surface roughness of less than 1 micron to ensure proper sealing between the piston member and cylinder in addition to reducing friction.
Claim 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Eom (US 2011/0203889) in view of Jiraschek et al. (US 2019/0230939) and Liu, J.H., et al. "Investigations on the structure and properties of nanocrystalline Ni-Mo alloy coatings," as applied to claims 1 and 9 above, and further in view of Kus et al. (US 2015/0204411).
Regarding claim 19, Eom does not disclose that the shock absorber is a position sensitive damping shock absorber.
Kus teaches a shock absorber that is a position sensitive damping shock absorber (see FIGS. 1-3; ¶¶ 0053-0054).
It would have been obvious to combine the bumper (38) of Kus with the device of Eom to provide a bumper device that softens an impact upon the piston member reaching its stroke limit.
Claims 1 and 2 are rejected under 35 U.S.C. 103 as being unpatentable over Fader (US 3,343,833) in view of Mallory, Jr. (US 5,614,003) and further in view of Liu, J.H., et al. "Investigations on the structure and properties of nanocrystalline Ni-Mo alloy coatings." (Materials Characterization, vol. 167, 22-Jul-2020, Article 110532. ScienceDirect, doi:10.1016/j.matchar.2020.110532).
Regarding independent claim 1, Fader discloses a shock absorber (see Abstract, FIG.) comprising: a shock absorber housing (3) configured to receive a functional fluid (see col. 1, line 72 to col. 2, line 3); at least one a piston member (13, 15) configured to move within the shock absorber housing (see col. 2, lines 4-8), the at least one piston member configured to contact the functional fluid in the shock housing in response to a force to dissipate kinetic energy causing movement of the at least one piston member (see col. 2, lines 4-8).
Fader does not disclose that the at least one piston member comprises a coated surface on a surface of the piston member, wherein the coated surface comprises a surface coating, and wherein the surface coating comprises an alloy layer comprising (i) molybdenum or tungsten and (ii) at least one element selected from the group consisting of nickel, cobalt, chromium, tin, phosphorous, iron, magnesium and boron or at least one compound comprising one or more of nickel, cobalt, chromium, tin, phosphorous, iron, magnesium or boron.
Mallory teaches a coated surface on a substrate (see Abstract), wherein the coated surface comprises a surface coating (see col. 8, lines 26-60; example VI), and wherein the surface coating comprises an alloy layer comprising (i) molybdenum (see col. 8, lines 26-60; example VI), (ii) nickel, tungsten or tin (see col. 8, lines 26-60, example VI) and (Iii) at least one of phosphorous or boron (see col. 8, lines 26-60; example VI), wherein the at least one of nickel, tungsten, or tin is present in the alloy layer at 65% by weight or more (see col. 8, lines 26-60; example VI), wherein a thickness of the surface coating is up to 2 mm (see col. 8, lines 26-60).
It would have been obvious to coat the surface of the piston member of Fader to provide a hardened surface thereby increasing durability of the piston member (see e.g. Mallory, col. 4, lines 15-29).
Neither Fader nor Mallory disclose that the alloy layer comprises uniform and non-uniform grain sizes with an average grain size less than 2 microns.
Liu teaches a layer comprising a Nickel Molybdenum alloy (see page 1, first paragraph) comprising uniform and non-uniform grain sizes (see e.g. page 2, figure 2; page 4, Figure 6(e)) with an average grain size less than 2 microns (see page 4, Figure 6(e); page 5, section 3.3.1; page 11, conclusion section).
It would have been obvious to configure the grain size of the alloy layer of the Fader/Mallory device to be less than 2 microns to increase the hardness of the alloy layer, thereby improving wear resistance (see e.g. page 5, section 3.3.1; page 11, conclusion section).
Regarding claim 2, the combination of the teachings of Mallory with Fader would result in the alloy layer being present on all exterior surfaces of the piston member because Mallory discloses applying the coating but submersing the substrate in a bath (see Abstract).
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of the new grounds of rejection above.
Regarding the rejection of independent claim 1 as being obvious over Eom, Applicant argues that “Eom does not appear to describe any alloy layer at all on any component” and that “it is questionable why the skilled person would even look to any other art and include an alloy layer in Eom” (see Amendment, page 6). Eom teaches a chrome layer (see ¶ 0043). Jiraschek teaches replacing a chrome layer with a nickel-molybdenum-phosphorous alloy coating (see e.g. Jiraschek, ¶¶ 0007-0009). Thus, it is perfectly logical for one of ordinary skill in the art to consider Jiraschek.
Regarding the rejection of independent claim 1 as being obvious over Eom in view of Jiraschek, Applicant argues that “there is no mention in the combined art of the specified grain size and grain types or that such grain sizes and grain types would be present in a surface coating up to 2 mm thick” (see amendment, page 7). The newly cited refence to Liu teaches such features.
Regarding the rejection of independent claim 1 as being obvious over Fader, Applicant argues that “Fader is missing a coated surface entirely” and that “it is questionable why the skilled person would use any coating from Mallory (or any other art) in Fader given the lack of suggestion in Fader to coat any component” (see Amendment, page 8). Mallory explicitly teaches that the addition of the nickel-molybdenum-phosphorous coating provides the advantage of providing a hardened surface (see col. 4, lines 15-20), which one of ordinary skill in the art would recognized would increase the durability of the substrate.
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 NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
October 2, 2025