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 .
Election/Restrictions
Applicant’s election without traverse of claims 1-13 in the reply filed on 10/20/2025 is acknowledged.
Claims 14-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 10/20/2025.
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 2, 8, and 13 is 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 2 recites “the disc-shaped shield.” This term lacks antecedent basis. Claim 1 refers only to “a shield.”
Claim 8 recites “a range between 5% of the radial length of the central annular portion.” While this recitation names one of the endpoints of the range (5%), it fails to give any information about the other endpoint of the range. Consequently, the metes and bounds of the claim are impossible to determine.
Claim 13 recites “the radially outer surface of the radially outer element” in lines 2-3 and “the radially outer surface and the radially inner surface of the collar” in lines 7-8 of the claim. These phrases lack antecedent basis. The Primary Examiner notes that, perhaps, claim 13 should depend from claim 10 instead of claim 2.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1 and 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0353206 A1, cited by Applicant in the IDS (06/29/2023), in view of GB 2 240 290 B.
Claim 1
The Primary Examiner refers to Fig. 5.
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US 206 teaches a method for applying a protective coating (rust-proof paint) [0003] to a wheel hub unit (not numbered), comprising:
mounting a wheel hub unit (not numbered) on a platform (44);
applying a layer of the protective coating (rust-proof paint) to a front surface of the mounting flange (27) of the wheel hub unit (not numbered),
wherein a mask (shield) (43b) covers a portion of the annular surface (55) of the mounting flange (27), specifically bolt hole (61), which is located generally in the center of the annular portion of the flange surface (55) to protect the masked area from application of the protective rust-proof paint.
US 206 does not specify whether the shield protects an annular potion of the front flange surface (55), or if it is localized to just the bolt hole (61) opening.
GB290 is one of numerous examples in the art of painting hubs of vehicles wherein an annular shield (10) is used to protect the hub from the application of unwanted paint.
Because flanges often contain numerous bolt holes to which the rotor is attached, it is the Primary Examiner’s position that it would be more labor-intensive to individually seal each hole (61) in the method of US 206 than to provide an annular shield that can be placed over the flange and the bolt holes. Consequently, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the process of US 206 so as to utilize, as the masking member (43b), to protect the bolt holes (61) around the annular portion (57) of mounting flange (27), an annular shield. One of ordinary skill in the art would have been motivated to do so as that shape is well-known in the art for shielding wheel hubs from unwanted paint and, as noted, would have been less labor-intensive to use than an individual sealing means for each bolt hole (61).
Claim 10
In US 206, paint is applied to radial surface (55) of flange (27) as well as axially-extending exterior collar surface (28) and inner collar surface (11).
Claim(s) 2-9 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0353206 A1, cited by Applicant in the IDS (06/29/2023), in view of GB 2 240 290 B, as applied to claim 1 above, further in view of CN 103962268 A.
Claims 2 & 3
The teaching of US 206 in view of GB 290 is detailed above.
Neither of these references teach that a mounting arm holds the disc-shaped shield an axial distance from the front surface when applying the protective coating.
CN 268 teaches coating a wheel hub with a paint, in which a shielding plate (31) is attached to telescopic sleeve (70), which moves axially to place the shield over the portion of the hub (41) to be coated. The sleeve reads on applicant’s claimed “arm” as no structure for the arm is required by the claim. Moreover, the sleeve is integrally formed with the shield plate. See Figs. 1 and 2. In Fig. 1, the shield is in place, in figure 2 it is retracted:
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It would have been obvious to one of ordinary skill in the art to have modified the process of US 206 in view of GB 290 so as to affix the annular shield to a mounting arm (or have used a shield already attached to a mounting arm). One of ordinary skill in the art would have been motivated to do so by the desire and expectation of successfully automating the shield placement process, allowing for greater consistency of coating and greater coating machine throughput.
Claim 4
US 206 teaches that, before painting, the wheel hub unit is assembled. This reads on the claimed “performing at least one mechanical operation on the front surface. In the alternative, it is well-known in the coating art to roughen and/or clean a surface, particularly a fabricated metal surface, prior to coating, in order to improve adhesion and/or remove contaminants (oils, etc.). These also read on mechanical operations.
Claims 5-8
US 206 in view of GB 290 and CN 268 do not teach the limitations of these claims.
Nevertheless, the prior art does not place any particular limitation on the material, thickness, or annular radius of the shield.
Consequently, it would have been obvious to one of ordinary skill in the art to have selected a suitable material, shape, and thickness by routine experimentation. MPEP § 2144.05.
Claim 9
US 206 in view of GB 290 and 268 do not teach washing the shield in a washing tank.
Nevertheless, it would have been obvious to one of ordinary skill in the art to have utilized a re-useable shield. In such a scenario, it would have been further obvious to wash the shield in, e.g., a tank, so as to remove old coating material so as to prevent build-up of coating material on the shield that could cause deformation of the shield.
Claim 11
US 206 in view of GB 290 and CN 268 do not teach that the central annular portion of the flange comprises one or more markings.
Nevertheless, it is common and conventional to mark manufactured parts with indicia to convey information to the artisan and so it would have been obvious to one of ordinary skill in the art to do so/use such a part in the method of US 206 in view of GB 290 and CN 268.
Claim(s) 12 and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2019/0353206 A1, cited by Applicant in the IDS (06/29/2023), in view of GB 2 240 290 B, as applied to claim 1 above for claim 12, and US 206 in view of GB 290, and CN 268, as applied to claim 2 above for claim 13, further in view of US 2015/0115696 A1.
US 206 illustrates spray nozzles (42) generally, but does not specify that a point of contact between the front surface and the protective coating is tangent to the front surface of the mounting flange.
US 696 illustrates a process wherein a protective coating layer (13) is applied to the radial flange portion of a hub by spraying at an angle, alpha, that is tangential to the surface at an angle of 20°-80° [0028]:
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It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to have modified the process of US 206 in view of GB 290 so as to apply the paint in the fashion claimed. One of ordinary skill in the art would have been motivated to do so because the spray cone illustrated by US 696 clearly illustrates contact of the coating material will the external surface of the flange (11), the external surface of the collar (12), as well as the internal surface of the collar (not numbered).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM P FLETCHER III whose telephone number is (571)272-1419. The examiner can normally be reached Monday-Friday, 9 AM - 5 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Duane Smith can be reached at (571) 272-1166. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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WILLIAM PHILLIP FLETCHER III
Primary Examiner
Art Unit 1759
/WILLIAM P FLETCHER III/Primary Examiner, Art Unit 1759
6 February 2026