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 with traverse of Group II, claims 15-20 in the reply filed on 5/5/2026 is acknowledged. The traversal is on the ground(s) that (a) Groups I and II have unity of invention, (b) the Examiner has not established a serious burden per MPEP 803, and (c) Hunt does not teach the currently amended product claim.
This is not found persuasive because:
Regarding (a), Groups I and II lack unity of invention because even though the invention require the technical feature of claim 15, this technical feature is not a special technical feature as it does not make a contribution over the prior art of Jones in view of Yoshihiro (see 103 rejection below for full analysis).
Regarding (b), the present invention is being examined as a national stage application submitted under 35 U.S.C. 371, which requires unity of invention rather than independent and distinct analysis done for applications filed under 35 U.S.C. 111. Chapter 800 of the MPEP applies only to those restrictions in applications filed under 35 U.S.C. 111.
Regarding (c), the Examiner agrees that the newly amended claims are not disclosed in Hunt, however, upon updating the searches, Jones and Yoshihiro were found and in combination disclose all the limitations of claim 15. Therefore, there is still a lack of unity of invention (see 103 rejection below).
The requirement is still deemed proper and is therefore made FINAL.
Claims 1-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b), as being drawn to a nonelected invention, there being no allowable generic or linking claim. Applicant timely traversed the restriction (election) requirement in the reply filed on 5/5/2026.
Claim Objections
Claim 16 is objected to because of the following informalities:
Line 2: amend “Nickel” to “nickel”
Line 3: amend “Aluminum” to “aluminum”
Appropriate correction is required.
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.
Claim 16 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 16 recites the limitation “the component comprises less than 15 wt.% aluminum.” Claim 16 depends on claim 15 which recites that the component is the combination of a sintered dense wear body bonded to an aluminum substrate. It is unclear how the component can comprise only 15 wt.% aluminum when the substrate of the component is aluminum. For the sake of compact prosecution, the Examiner is assuming that this limitation actually refers to the amount of aluminum within the sintered dense wear body based on currently withdrawn claim 10 which states that the feedstock powder comprises less than 15 wt.% Al and the feedstock powder is used to form the sintered dense wear body. Clarification 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.
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.
Claims 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Jones et al. (US 5957251, hereinafter “Jones”) in view of Yoshihiro et al. (US 2005/0095163 A1, hereinafter “Yoshihiro”).
Regarding claims 15, 16, and 17, Jones teaches a braking component, such as a brake pad, brake rotor, brake drum, or clutch disk comprising a metal substrate having a friction material laminated on at least a portion of at least one face of the metal substrate (Jones, Abstract). Jones teaches the metal substrate can be ferrous alloys, aluminum and their alloys, titanium and their alloys, and magnesium and their alloy, preferably aluminum or aluminum alloys (Jones, Column 2, lines 43-50). Jones further teaches the friction material is a ceramic-metal composite comprised of a ceramic phase and a metal phase dispersed within each other (Jones, Column 3, lines 10-14). Jones teaches the metals include Si, Mg, Al, Ti, V, Cr, Fe, Cu, Ni, Co, Ta, W, Mo, Zr, Nb, or mixtures and alloys thereof (Jones, Column 3, lines 27-31). Jones further teaches the ceramic phase may be a boride, oxide, carbide, nitride, silicide, or combination thereof (Jones, Column 3, lines 41-42).
Additionally, Jones teaches the ceramic-metal composite is formed by forming a shaped body followed by a consolidation technique, where a greenware comprising the metal-ceramic particulate may be densified into the CMC by techniques, such as vacuum sintering, atmospheric pressure sintering, and pressure assisted sintering (Jones, Column 6, lines 48-51 and Column 7, lines 17-20). Jones then teaches the formed CMC is laminated to the metal substrate by contacting the metal substrate with the CMC and subsequently heating the contacted substrate and CMC to a temperature sufficient to bond the CMC to the metal substrate (Jones, Column 9, lines 1-7).
While Jones teaches the metal phase can include an iron alloy (Jones, Column 3, lines 27-31), Jones does not explicitly disclose a sintered dense wear body comprising ceramic and stainless steel or that the stainless steel comprises less than 0.5% Ni and the sintered body comprises less than 15 wt.% Al.
With respect to the difference, Yoshihiro teaches a sintered component made from stainless steel and perovskite oxide (Yoshihiro, Abstract). Yoshihiro teaches using a stainless steel powder to form the matrix, including 7.51-31.96 mass% Cr, 0.1-12 mass% REE, 0.02-6.48 mass% O, 0.1-5 mass% Al and a balance of Fe and impurities (Yoshihiro, [0021-0026]). Yoshihiro teaches Example 1 in which SUS310 powder, LaCrO3 powder, and La2O3 powder are mixed to obtain a raw powder, then the powder is formed into a green compact and sintered (Yoshihiro, [0030]).
As Yoshihiro expressly teaches the combination of stainless steel and perovskite oxides increases the corrosion resistance of the sintered component (Yoshihiro, [0014]).
Jones and Yoshihiro are analogous art as they are both drawn to the formation of a sintered component with increased properties (Jones, Abstract; Yoshihiro, Abstract).
In light of the motivation to form a sintered component comprising stainless steel and a ceramic as taught in Yoshihiro above, it therefore would have been obvious to one of ordinary skill in the art to use the sintered component as the CMC in Jones in order to increase the corrosion resistance (Yoshihiro, [0014]).
The component of Jones in view of Yoshihiro corresponds to a corrosion-resistant and wear-resistant component of claim 15. The sintered CMC component of Jones in view of Yoshihiro corresponds to a sintered dense wear body comprising ceramic and stainless steel of claim 15. Additionally, the composition of the stainless steel and sintered component of Yoshihiro falls within wherein the stainless steel comprises less than 0.5 wt.% Nickel and the component comprises less than 15 wt.% Aluminum of claim 16. The ceramic phase and metal phase dispersed within each other of Jones corresponds to wherein the ceramic and stainless steel are homogenously distributed in the sintered dense wear body of claim 17.
The preferred aluminum substrate of Jones corresponds to an aluminum substrate of claim 15. Bonding the CMC to the metal substrate by lamination of Jones corresponds to wherein the sintered dense wear body is bonded to the aluminum substrate of claim 15. The braking component of Jones corresponds to wherein the corrosion-resistant and wear-resistant component comprises a wear surface of a brake disc of a motorized or of a non-motorized vehicle of claim 15.
Regarding claim 18, given the materials and method of making the braking component of Jones in view of Yoshihiro are substantially identical to the materials and method as used in the present invention, as set forth above, it is clear that the sintered CMC of Jones in view of Yoshihiro would intrinsically have a porosity of less than 10% by volume as presently claimed.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Regarding claim 19, Jones teaches the CMC can have any density, but preferably has a density of at most 6 g/cc and at least about 1.5 g/cc (Jones, Column 4, lines 57-65). The density of the CMC of Jones overlaps with the density of claim 19. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Regarding claim 20, Jones teaches the ceramic phase is preferably present in an amount of at least about 50% by volume of the CMC (Jones, Column 4, lines 15-20). The amount of ceramic in Jones overlaps with the present invention. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fe. Cir. 1990).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIELLE CARDA whose telephone number is (571)270-1240. The examiner can normally be reached Monday-Friday 8:30-4:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sally Merkling can be reached at (571) 272-6297. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIELLE M. CARDA/Primary Examiner, Art Unit 1738
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