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 .
Status of Claims
Responsive to the amendment filed 10 December 2025, claims 57-58 are amended. Claims 30-58 are pending. Claims 30-52 are currently under examination.
Election/Restrictions
Claims 53-58 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 of Group I was made without traverse in the reply filed on 10 December 2025.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Drawings
The drawings were received on 25 April 2023. These drawings are accepted.
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 30-52 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.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 30 recites the broad recitation “in cast iron,” and the claim also recites “preferably in gray cast iron” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claims 31-52 are rejected as dependent on claim 30.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 33 recites the broad recitation “not less than 680 C” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 34 recites the broad recitation “predefined immersion time” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 36 recites the broad recitation “predefined decarburization depth” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 38 recites the broad recitation “immersing…” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 40 recites the broad recitation “iron content” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 42 recites the broad recitation “impurity content” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 43 recites the broad recitation “iron content in solution not exceeding 5%” and the claim also recites “more preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 44 recites the broad recitation “temperature below 680 C” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 45 recites the broad recitation “time” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 47 recites the broad recitation “surface pre-treatment step” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
A broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 52 recites the broad recitation “chemical removal” and the claim also recites “preferably…” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 30-32, 34, 39, 47-51 is/are rejected under 35 U.S.C. 102(a)(1) and 35 U.S.C. 102(a)(2) as being anticipated by US 2016/0215839 A1 (hereinafter “Bruggen”).
Regarding claim 30, Bruggen teaches a method of making a brake disc (see title, abstract). Bruggen shows that the disc includes a braking band (brake rim 3) in Fig 2 and [0049]). Bruggen teaches that the process provides improved corrosion and wear resistance (see SUMMARY). Bruggen teaches that the disc is made from gray cast iron (see [0019]). Bruggen teaches that the disc is then applied with a metallic coating (See [0020]-[0022]). Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen describes that this is intermetallic (see [0021]-[0023]). Thus Bruggen clerly envisions that the disc is left a predetermined time, in aluminum at predetermined temperature (i.e., above the melt temperature), and allowed to form intermetallics.
Bruggen teaches that the disc is exposed to an oxidation treatment (See [0027]-[0028]). Thus the disc is removed from the molten aluminum and the intermetallics exposed inherently. Bruggen teaches that the process provides improved corrosion and wear resistance (see SUMMARY). The same process using the same materials to make the same part for the same advantageous effects would have inherently possessed all of the same characteristics of the claimed process. Applicant is directed to MPEP 2112.
Regarding claim 31, Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen describes that this is intermetallic (see [0021]-[0023]).
Regarding claim 32, Bruggen does not describe the FeAl3 phase. Bruggen does not specify a chemical composition of the intermetallic connection of aluminum to iron. The same process using the same materials to make the same part for the same advantageous effects would have inherently possessed all of the same characteristics of the claimed process. Applicant is directed to MPEP 2112.
Regarding claim 34, Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Thus Bruggen clerly envisiosn that the disc is left a predetermined time, in aluminum at predetermined temperature (i.e., above the melt temperature), and allowed to form intermetallics. The same process using the same materials to make the same part for the same advantageous effects would have inherently possessed all of the same characteristics of the claimed process. Applicant is directed to MPEP 2112.
Regarding claim 39, Bruggen teaches that the process uses molten aluminum (see [0024]) and [0053]). Bruggen does not describe a silicon containing alloy, thus reading on less than 1%.
Regarding claim 47, Bruggen teaches that the process includes a machining of the brake disc prior to the metallic coating (See [0037]).
Regarding claim 48, Bruggen teaches that the process of coating is conducted under a shield gas (see [0024]).
Regarding claim 49, Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen teaches that the disc is removed (see Fig 5). This reads on a first sub-step of removing aluminum. Bruggen teaches that the coating is further surface worked, by grinding, to remove some of the aluminum (fig 5 and [0056]). This reads on the second sub-step.
Regarding claim 50, Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen teaches that the disc is removed (see Fig 5). This reads on a quench.
Regarding claim 51, Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen teaches that the disc is removed (see Fig 5). This reads on a “mechanical shaving.”
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.
Claim(s) 33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruggen.
Bruggen is applied as stated above. Bruggen teaches that the brake disc is immersed in molten aluminum (see [0023]-[0024]). Bruggen teaches that the disc is left in the molten material until metallic connections form from the aluminum to the cast iron by diffusion (see [0024] and [0026]). Bruggen does not teach a temperature in a rnage as claimed. Bruggen teaches that the material is molten but is silent as to the exact temperature. The description of molten aluminum is close enough to the claimed temperature range that the skilled artisan would have expected the coating to have had similar properties to what is claimed. In fact this is what Bruggen explicitly teaches – a diffusion process to create intermetallic for coating gray cast iron with molten aluminum. The process using a temperature as claimed is considered an obvious variant over Bruggen for these reasons. Applicant is directed to MPEP 2144.05.
Claim(s) 40 is/are rejected under 35 U.S.C. 103 as being unpatentable over Bruggen as applied to claim 30, and further in view of US 3197828 A (hereinafter “Cartoux”).
Bruggen is applied as stated above.
Cartoux teaches that it is known to improve the corrosion resistance of cast iron as by immersing in aluminum (see Col 1, ll 40-51). Cartoux teache that ferroalulminum with no more than 5% iron can also be used for the same effect (see Col 1, ll 40-51).
It would have been an obvious matter to the skilled artisan to have altered the method of Bruggen, as to have used a ferroaluminum as described by Cartoux, because Cartoux teaches that this is suitable for improving the corrosion resistance of the cast iron (col. 1). The simple substitution of one known element for another in a known process to achieve predictable results would have been prima facie obvious to the skilled artisan.
Allowable Subject Matter
Claim 35-38, 41-46 and 52 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: Claim 35 requires a decarburization process prior to the aluminum coating step. The prior art does not contemplate a process overall including the claims steps. For example US 3,371,703 teaches to manufacture brake drums by immersing cast iron into molten aluminum, and teaches that a machining step is used to enhance the wettability. This is considered similar to the teachings of Bruggen. JP2008-303425 teaches to make aluminum casting vessels with cast iron by decarburization followed by the immersion in aluminum, which is useful when the cast iron products are immersed in the aluminum thereafter. The problems solved by JP2008-303425 are considered as different to the problems solved by Bruggen and the instant application, and they are not considered to be the same field of endeavor.
Claim 41 requires a two-step immersion including a first immersion into a pure aluminum and second immersion into a aluminum including iron in solution. Such a process is not contemplated by the prior art.
Claim 52 requires a chemical removal of the aluminum, which is also not contemplated by Bruggen.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER S KESSLER whose telephone number is (571)272-6510. The examiner can normally be reached 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Curt Mayes can be reached at 571-272-1234. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER S. KESSLER
Primary Examiner
Art Unit 1734
/CHRISTOPHER S KESSLER/ Examiner, Art Unit 1759