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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/29/2025 has been entered.
Response to Amendment
Applicant’s amendment filed 5/29/2025 has entered prosecution.
Applicant’s amendment necessitates withdrawal of the 112(a) rejections to claims 35, 40.
Applicant’s amendment necessitates the new grounds of rejection presented in this action.
Claims 26-50 are pending examination.
Specification
The amendment filed 5/29/2026 is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the specification is now an order of magnitude above the previous disclosure where applicant now requires that the current density be 25,000 A/m2. This should be 2,500 A/m2 in order to be in line with the previous disclosure of a current density of 25 A/dm2 (see specification dated 11/17/2025 section [0090]).
Applicant is required to cancel the new matter in the reply to this Office Action.
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.
Claim 25 is 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. Claim 25 requires the exclusion of zirconium and zirconium oxide particles. While the applicant is correct that Claim 1 is a closed formulation, the specification provided by applicant makes no positive recitation of Zirconium or compounds thereof in any manner (see MPEP 2173.05 i ). Accordingly, the limitations of the absence of Zirconium is not supported by applicant’s disclosure.
Claims 26-50 are rejected as depending from Claim 1.
Claims 35 and 40 is 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. Claim 35 and Claim 40 requires the method requires a galvanostatic mode of operation wherein a stable voltage plateau is obtained at some point. Neither the stable voltage plateau nor the galvanostatic mode of operation are detailed in the specification and so the applicant lacks written description to require these limitations in the claims. While the specification does make illusion to the conditions to arrive at Fig. 2 of the instant spec [0118], there is no mention of precisely controlling the current density in a manner consistent with being in a galvanostatic mode of operation. Attention is required.
Claims 36 and 40 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. Specifically, applicant now requires that the current density be 25,000 A/m2 which is an order of magnitude greater than the value described in the original specification (11/17/2025) before the modifications introduced in Specification (5/29/2026).
The examiner will interpret the claim to require the current density to be 2,500 A/m2 that being consistent with the original specification. Attention is required.
Claim 48 is 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. Specifically, applicant now requires that a hardness value is between 0.01 >1400 HV. This is not detailed in the specification [see para. 111 and 123] do have these values but it a different arrangement. Examiner brings to the attention of the applicant that the examiner has erred in judgement, and inappropriately applied a rejection of Claim 48 under USC 112(b) in the action filed 5/16/2025. Examiner now understands that applicant’s initial description was merely improperly written however clear, in the claim previously required that a load of 0.01 kgf be applied to the coating and that the Vicker’s Hardness value of this test returned a value of over 1400. Applicant’s failure to subscript the load force adjacent to HV was what rendered confusion.
Examiner is now stating that HV0.01 > 1400 is definite and clear from within the specification, though the subscripting of the critical part (the load force) is currently not present. Correction is required.
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.
Claims 26-40, 46-49 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaodong Wang, Xiaohong Wu, Rui Wang, Zhaozhong Qiu. “Effect of Na3AlF6 on the Structure and Mechanical Properties of Plasma Electrolytic Oxidation Coatings on 6061 Al alloy” International Journal of Electrochemical Science. 2013, 8, 4, 4986-4995 further in view of Yoshioka (US 20100025253 A1).
Regarding Claim 26-33, Wang teaches an electrolyte composition and deposition parameters for forming a ceramic coating with improved thickness and compactness by Plasma Electrolytic Oxidation (PEO) [Abstract]. Wang teaches that a ceramic coating on Al substrate electrode can have improved mechanical properties, such as a compactness and micro-hardness [Section 4, Page 4993-4994] by immersion of the Al electrode in an electrolyte bath containing sodium silicate (10 g L-1) and potassium hydroxide (1 g L-1), and further which includes Na3AlF6 (0.5 g L-1) followed electrochemical reaction to form a coating on the Al substrate [Section 2, Page 4987-4988 and Page 4991].
However, Wang does not teach the use of K3PO4 (2.3 – 2.8 g L-1) or sodium tungstate (5 g L-1) or the solution has a pH between 11.8 and 12 and a conductivity between 9.5 to 10.5 mS cm-1.
Yoshioka teaches the use of a metal substrate as a working electrode is placed in an electrolyte to electrolytically form a ceramic coating on the substrate [0030]. Yoshioka also teaches the use of a stainless-steel counter electrode [106]. Yoshioka teaches an electrolyte solution containing a compound containing at least one of elements Si and W on an Al substrate [0034 and 0054]. The Si may be sodium silicate in concentrations between 0.05 to 100 g L-1 which allows for improved slidablility [0081-0083]. The W may be sodium tungstate in concentrations between 0.01 to 500 g L-1 [0095-0096]. Yoshioka teaches that the incorporation of tungsten compounds in the ceramic coating will reduce the thermal expansion coefficient of the resulting ceramic coating [0094]. Yoshioka also teaches the electrolyte contains a water-soluble phosphorous compound, such as potassium phosphate (understood to be K3PO4) [0108], at a content of 0.005 to 150 g L-1 [0036]. Yoshioka teaches that addition of a water-soluble phosphorous compact contributes to a reduction in the surface roughness of the coating and improves the stability of the electrolyte [0063]. The pH of the electrolyte is between 7 and 13.3, and can be adjusted. The electrolyte pH may be adjusted by the incorporation of sodium hydroxide [0108] at a concentration of 0.04 to 200 g L-1 which improves the electrolyte stability and economy [0110]. Further, Yoshioka teaches that potassium hydroxide and sodium hydroxides are equivalents [0108]. The electrolyte conductivity is between 5 to 20,000 mS m-1 which enables the coating to be result in reduced surface roughness [0113]. In the instant claims there is required 10 g L-1 Sodium silicate, 2.5 g L-1 potassium phosphate, 5 g L-1 sodium tungstate, 1 g L-1 NaOH, a pH of 11.9 and a conductivity of 10 mS cm-1. Accordingly, a prima facie case of obviousness exists for the aforementioned limitations, as the ranges taught by Yoshioka discloses the required concentrations of species present in solution and the subsequent solution properties (see MPEP 2144.05 I).
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill to incorporate the teachings of Yoshioka into the method of ceramic film plating by PEO taught by Wang such that Wang’s electrolyte solution would include K3PO4 (2.3 – 2.8 g L-1). sodium tungstate (5 g L-1), a pH between 11.8 and 12 and a conductivity between 9.5 to 10.5 mS cm-1 in order to arrive at an improved and stable electrolyte for PEO that produces a ceramic coating with increased compactness and physical properties.
Regarding Claim 34, Wang teaches that the electrolysis solution is controlled below 35 °C [Section 2., Page 4987].
Regarding Claim 35, modified Wang teaches to Claim 26 above.
However, modified Wang does not teach that during electrolysis the electric potential reaches a stable voltage
Yoshioka teaches that during electrolysis the current density is up to 25 A dm-2 (understood to be 2,500 A/m2) [0125]. Yoshioka teaches the maximum current voltage of the voltage waveform is between 300 to 400 V [0125]. Yoshioka teaches that when the maximum voltage is within such range, the glow discharge and/or the arc discharge can be easily generated [0125].
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill to incorporate the teachings of Yoshioka into the method of ceramic film plating by PEO taught by Wang such that one would arrive at a method of forming a plasma electrolytic oxidation coating whereby the plasma is generated in order to deposit the coating by glow/arc discharge.
Regarding Claim 36, modified Wang teaches to Claim 26 above.
However, modified Wang does not teach that the current density is 2,500 A/m2.
Yoshioka teaches that during electrolysis the current density is up to 25 A dm-2 (understood to be 2,500 A/m2) [0125]. Yoshioka teaches the electrolysis is conducted for 1 to 45 minutes [0132]. Yoshioka teaches that this allows for the surface roughness to be reduced [0125].
Prior to the filing of the present invention it would have been obvious to one ordinary skill the method for forming a ceramic coating on an Al substrate, as per Wang, was ready for improvement by the incorporation of the electrolysis current density at 25 A dm-2, as per Yoshioka, in order that one would arrive at a PEO ceramic coating with reduced surface roughness.
Regarding Claim 37, Wang teaches that the electrolysis method performed to make the PEO coating is performed by a homemade bipolar electrical source with a power of 5 kW and an electronic power frequency of 50 Hz [Section 2., Page 4987].
Regarding Claim 38, Wang teaches that the electrical occurs in pulse mode [Section 2., Page 4987].
Regarding Claim 39, Wang teaches that the electrolysis occurs for less than 50 min [Section 2., Page 4987]. Fig. 1 of Wang shown below demonstrates that the voltage-time response can be generated for the electrolysis solution at time intervals between 0 and 50 min [Section 3.1, Page 4988]. Barring a demonstration of criticality, it is understood that the method of Wang teaches to the required range in the instant claim.
Regarding Claim 40, shown above in claim 26, modified Wang teaches a method for forming a ceramic film on a metal by arc discharge [abstract]. Wang teaches the electrolysis is performed by bipolar electrolysis with a frequency at 50 Hz for a period less than 50 min [Section 2, Page 4987].
However, Wang does not teach that the current density is 2,500 A m-2.
Yoshioka teaches the operating voltage is between 300 and 800 V [0125]. Yoshioka teaches that during electrolysis the current density is up to 25 A dm-2 [0125]. Yoshioka teaches the electrolysis is conducted for 1 to 45 minutes [0132]. Yoshioka teaches that this allows for the surface roughness to be reduced [0125]. The instant claim requires that the electric potential be 350 V with a current density of 25 A dm-2 and a treatment time of 30 minutes. Accordingly, a prima facie case of obviousness exists for the aforementioned limitations, as the ranges taught by Yoshioka discloses the required electrical conditions and durations of the instant claim (see MPEP 2144.05 I).
Prior to the filing of the present invention it would have been obvious to one ordinary skill the method for forming a ceramic coating on a Al substrate, as per Wang, was ready for improvement by the incorporation of the electrolysis schedule and current density, as per Yoshioka, in order that one would arrive at a PEO ceramic coating with reduced surface roughness.
Regarding Claim 46 and 47, Wang teaches that the incorporation of Na3AlF6 decreases the pore quantity, resulting in a compact ceramic film [Page 4991, 1st paragraph].
Regarding Claim 48, modified Wang teaches to Claim 26 as shown above.
However, modified Wang does not teach a surface roughness is less than 2 microns.
Yoshioka teaches that the ceramic coating has an average roughness of 0.001 to 10 µm [0194].
Prior to the filing of the present invention it would have been obvious to one of ordinary skill that the method of modified Wang, having been provided with the electrolysis and electrolyte composition guidance set for in the rejection of Claim 26, would have reasonable success to achieve a coating surface roughness less than 2 microns. Additionally, as the method of 26 is taught by Yoshioka in view of Wang, inherently the resulting ceramic coating will have the same properties as claimed here (see MPEP 2112.01 I and II). This is further support by Applicant specification, see [0111].
Regarding Claim 49, Wang in view of Yoshioka teaches a method for forming a ceramic film on a metal by arc discharge as required in Claim 26. Wang teaches the use of a 6061 Al alloy (mass fraction: 0.4~0.8% Si, 0.7% Fe, 0.15~0.4% Cu, 0.15% Mn, 0.8~1.2% Mg, 0.04~0.35% Cr, 0.25% Zn, 0.15% Ti, balance Al) substrate which is understood to be a silicon-aluminum alloy substrate [Sec. 2, Pg. 4987]. One of ordinary skill in the art would expect the predictable formation of a coating containing a mixture of silicon oxides, aluminum oxides, and aluminum-silicon oxides as the method of 26 is taught by Yoshioka in view of Wang, inherently, the resulting ceramic coating will have the same properties as claimed here (see MPEP 2112.01 I and II).
Claims 41 and 42 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaodong Wang, Xiaohong Wu, Rui Wang, Zhaozhong Qiu. “Effect of Na3AlF6 on the Structure and Mechanical Properties of Plasma Electrolytic Oxidation Coatings on 6061 Al alloy” International Journal of Electrochemical Science. 2013, 8, 4, 4986-4995 further in view of Yoshioka (US 20100025253 A1), as applied to claim 26 above, further in view of Lee et al. (US 20210164111 A1).
Regarding Claim 41 and 42, modified Wang teaches to Claim 26 as shown above. Wang teaches that prior to electrolysis, the Al substrate is subjected to a degreasing step [Section 2, Pg. 4987].
However, modified Wang does not teach a pre-treatment comprising the use of a caustic attack on the substrate with subsequent washing with distilled water.
Lee teaches a process for preparing an aluminum substrate for an anodization process [abstract]. Lee teaches that an aluminum substrate can be patterned in order to define an active area for anodization.
Lee teaches that prior to the anodization, multiple pre-treatment steps take place. In the case of the formation of a patterned region, Lee teaches that a surface can be degreased by a caustic soda (understood to refer to NaOH) by immersion at 60 °C for less than 600 seconds [0058]. Subsequently, an ultrasonic cleaning step takes place, wherein the surface of the product (aluminum substrate) is subjected to distilled water for 60 seconds or longer [0059].
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that the process of cleaning an aluminum substrate prior to anodization, as per Lee, could be incorporated into the degreasing and etching step of modified Yoshioka with a reasonable expectation of success (see 2144.05).
Claims 43-44 are rejected under 35 U.S.C. 103 as being unpatentable over Xiaodong Wang, Xiaohong Wu, Rui Wang, Zhaozhong Qiu. “Effect of Na3AlF6 on the Structure and Mechanical Properties of Plasma Electrolytic Oxidation Coatings on 6061 Al alloy” International Journal of Electrochemical Science. 2013, 8, 4, 4986-4995 further in view of Yoshioka (US 20100025253 A1) further in view of Lee et al. (US 20210164111 A1), as applied to claim 41 above, further in view of Kurze et al. (US5385662A).
Regarding Claim 43-44, modified Wang teaches to claim 41 as shown above. Wang teaches that prior to electrolysis, the Al substrate is subjected to a degreasing step [Section 2, Pg. 4987].
However, modified Wang does not teach the use of caustic attack on the substrate with subsequent washing with distilled water, followed by immersion in a nitric acid solution between 5 and 15.
Lee teaches a process for preparing an aluminum substrate for an anodization process [abstract]. Lee teaches that an aluminum substrate can be patterned in order to define an active area for anodization.
Lee teaches that prior to the anodization, multiple pre-treatment steps take place. In the case of the formation of a patterned region, Lee teaches that a surface can be degreased by a caustic soda (understood to refer to NaOH) by immersion at 60 °C for less than 600 seconds [0058]. Subsequently, an ultrasonic cleaning step takes place, wherein the surface of the product (aluminum substrate) is subjected to distilled water for 60 seconds or longer [0059]. Lee also teaches that a desmutting process is employed, prior to anodization, by the immersion of the aluminum substrate into a nitric acid solution for less than 60 seconds [0087].
However, Lee does not teach that after the desmutting process, the substrate is washed with distilled water.
Kurze teaches a method to produce oxide ceramics on transition metal substrates, including Al [Abstract].
Kurze teaches that an Al-Si alloy is immersed in nitric acid containing solution and then washed with water prior to the PEO process (Kurze, col 4 lines 6-16).
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that the method of degreasing, rinsing, and desmutting steps, as per Lee, could be modified to incorporate the rinsing step after desmutting, as per Kurze, and further be incorporated into the teachings of modified Wang to arrive at a method of PEO ceramic coating formation which removes residual solution using a water rinse from one pre-treatment solution to the next.
Claim 45 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaodong Wang, Xiaohong Wu, Rui Wang, Zhaozhong Qiu. “Effect of Na3AlF6 on the Structure and Mechanical Properties of Plasma Electrolytic Oxidation Coatings on 6061 Al alloy” International Journal of Electrochemical Science. 2013, 8, 4, 4986-4995 further in view of Yoshioka (US 20100025253 A1), as applied to claim 26 above, further in view of Luca Pezzato, Michele Rigon, Alessandro Martucci, Katya Brunelli, Manuele Dabalà, “Plasma Electrolytic Oxidation (PEO) as pre-treatment for sol-gel coating on aluminum and magnesium alloys.” Surface and Coatings Technology. 2019, 366, 114-123.
Regarding Claim 45, modified Wang teaches to claim 26 as shown above.
However, modified Wang does not teach that after the formation of the ceramic coating, the material is washed with water, alcohol, and dried at room-temperature.
Pezzato teaches the formation of a ceramic coating on an aluminum substrate [Abstract, Page 114].
Pezzato teaches that after the treatment of the Al substrate with the PEO process, the samples were washed with deionized water, ethanol and dried with compressed air [Page 115, Section 2., Paragraph 3].
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that the known process of cleaning an aluminum substrate with water, alcohol and air following anodization, as per Pezzato, could be incorporated into the process of forming a ceramic coating as per modified Wang with a reasonable expectation of success to clean the surface of the substrate after product formation (MPEP 2143.02 I).
Claim 50 is rejected under 35 U.S.C. 103 as being unpatentable over Xiaodong Wang, Xiaohong Wu, Rui Wang, Zhaozhong Qiu. “Effect of Na3AlF6 on the Structure and Mechanical Properties of Plasma Electrolytic Oxidation Coatings on 6061 Al alloy” International Journal of Electrochemical Science. 2013, 8, 4, 4986-4995 further in view of Yoshioka (US 20100025253 A1), as applied to claim 26 above, further in view of Alnaqi, A, Shresha, S, Brooks, PC, D. Barton. “Thermal performance of peo coated lightweight brake rotors compared with grey cast iron” EuroBrake 2014 Conference Proceedings. EuroBrake 2014, 13-15.
Regarding Claim 50, modified Wang teaches to claim 26 as shown above.
However, modified Wang does not teach that the PEO ceramic coating could be applied to a component of a braking system.
Alnaqi teaches the coating of an aluminum alloy with a ceramic layer by PEO in order to create brake rotors [Page 1-2]. Alnaqi teaches that compared to other methods of coating formation, PEO is advantaged in enhancing the wear and corrosion resistance of aluminum alloys [Page 2].
Prior to the effective filing date of the present invention it would have been obvious to one of ordinary skill in the art that the known PEO ceramic coating method taught by modified Wang could be applied to the creation of brake rotors, as per the teaching of Alnaqi, with a reasonable expectation of success to produce a ceramic coating on a brake rotor by PEO with improved wear and corrosion resistance (see MPEP 2143.02 I).
Response to Arguments
Applicant's arguments filed 5/29/2025 have been fully considered but they are not persuasive. Applicant argues that the examiner has applied selective amputation of disparate references to return the current claim limitations via hindsight and piecemeal analysis. This is not persuasive because the applicant seems to be confused in their presumption that information from the secondary reference (Yoshioka) must necessarily be incorporated into the modification of the primary reference (Wang) in order to reject claim26. This is a misunderstanding of the 103-rejection provided. The disclosures from within Yoshioka that have been incorporated into Wang, while indeed bearing to a ceramic coating composition comprising Zr compounds, are all independently recited with an express reason/purpose to be added into a ceramic coating. That is, the support for the inclusion of limitations not disclosed by Wang (phosphate; tungstate; conductivity) is stated in a general manner whereby one of ordinary skill would understand the disclosure of Yoshioka could be used to glean aspects to optimize the ceramic coatings formed by PEO which would be obvious to incorporate into the disclosure of Wang. Accordingly, the disclosure of Wang is by no means injured or taken from its purpose by the incorporation of elements from Yoshioka.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHANAEL J DOWNES whose telephone number is (571)272-1141. The examiner can normally be reached 8am to 5pm.
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NATHANAEL JASON. DOWNES
Examiner
Art Unit 1794
/NATHANAEL JASON DOWNES/Examiner, Art Unit 1794
/BRIAN W COHEN/Primary Examiner, Art Unit 1759
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