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 Amendment
Applicant’s amendment filed 11/17/2025 has entered prosecution.
Applicant’s amendment necessitates the withdrawal of the Claim objections to claims 26-30, 33, 36, 40, 45.
Applicant’s amendment necessitates withdrawal of the 112(b) rejections to claims 26-28, 30, 32, 35, 36, 37, 39, 42, 44, and 50.
Applicant’s amendment necessitates the new grounds of rejection presented in this action.
Claims 26-50 are pending examination.
Specification
The disclosure is objected to because of the following informalities: The specification has been amended to state that the current density is in “A m3”. For the purpose of examination, the correct unit “A m2” will be used.
Appropriate correction is required.
Claim Objections
Claim 36 is objected to because of the following informalities: The unit of current density is listed as ampere per cubic decimeter, when this should be ampere per square decimeter. Appropriate correction is required.
Claim 40 is objected to because of the following informalities: The unit of current density is listed as ampere per cubic decimeter, when this should be ampere per square decimeter. Appropriate correction is required.
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 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 requires that a voltage be kept constant at a potential between 300 and 400 V. Claim 40 requires that a voltage be kept constant at 350 V and a current density equal to 25000 A m-3. This is not supported by the specification, as applicant demonstrates in [0118] of the specification and in Fig. 2 of the drawings, that the voltage is never held constant at all, but rather that the electrolysis are always performed in a galvanostatic mode, which resulted in an eventual plateau in the voltage-time response at 350 V wherein there was an initial voltage of 0 at time 0. That is, applicant does not describe an electrolysis process in which either a voltage or both a voltage and a current are held constant, as per the instant claims. As applicant never teaches a potentiostatic electrolysis method (a constant voltage mode), Claim 35 is rejected wholly herewith, and claim 40 is understood to merely limit that a current density of 25000 A m-3 with a frequency of 50 Hz for a duration of 30 min 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. Further, it is unclear what applicant is claiming in the instant claim. Attention is required. Applicant is advised to look at the certified foreign priority application paragraph [00123].
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 26-34, 36-40, 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 that an electrolyte solution containing zirconium oxide particles and 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 use of a 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 36, modified Wang teaches to Claim 26 above.
However, modified Wang does not teach that the current density is 25,000 A dm-2.
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].
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 25,000 A dm-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 11/17/2025 have been fully considered but they are not persuasive. Applicant merely states that the previously applied prior art do not teach to the instant Claim 26 as amended. This is not compelling as it has been shown above that the composition of Claim 26 would have been obvious to one of ordinary skill with using both Wang and Yoshioka as prior art. The rejection has reversed the arrangement of this modification to reflect the consisting of language the amended Claim 26 requires.
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.
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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