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
An amendment responsive to the non-final Office Action dated August 11, 2025 was submitted on November 11, 2025. Claims 1, 7, 14, 15 and 25 were amended. Claims 8-10, 13, 20 and 21 were canceled. Claims 1-7, 11, 12, 14-19 and 22-25 are currently pending.
The amendments to claims 1 and 15 have overcome the prior art rejections of claims 1-7, 11, 12, 14-19 and 22-25 (¶¶ 4-16 and 21-31 of the Office Action). These rejections have therefore been withdrawn. However, upon further consideration, new grounds of rejection of these claims have been made as detailed below.
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 1-4, 6, 7 and 15-18 are rejected under 35 U.S.C. 103 as being unpatentable over Zou et al. (U.S. Patent Application Publication No. 2016/0333287 A1, cited in previous Office Action) in view of Micro Surface Corp. (“All Important Questions on Dry Film Lubricants Answered”, April 27, 2018, https://ws2coating.com/all-important-questions-on-dry-film-lubricants-answered/#:~:text=Dry%20film%20lubricants%20are%20solids%20used%20between,impingement%20*%20Sputtering%20*%20Heat%20fusion%20alloys).
Regarding claim 1, Zou discloses a system ([0004] of Zou, solid substrate with adhered graphite coating; [0019] of Zou, coated substrate placed into sliding contact with opposing surface of counterface thereby forming a system) comprising: a first surface ([0019] of Zou, coated surface of substrate) and a second surface operational to associate with one another ([0019] of Zou, surface of counterface contacting surface of substrate), wherein at least one of the first surface and the second surface comprises an adhesive layer and a graphite layer positioned on the adhesive layer ([0010]-[0011] of Zou, substrate provided with a two layer coating of polydopamine and graphite; [0016] of Zou, graphite coating formed on polydopamine or PDA substrate and heated; [0021] of Zou, resulting graphite coating has high durability when subjected to tribological testing; PDA layer would therefore function as an adhesive to stick the graphite to the substrate).
Zou does not disclose that each of the first and second surfaces comprises the adhesive and graphite layers and that the graphite layers of the first surface and the second surface are operable to associate with one another. Micro Surface, however, discloses applying dry film lubricants such as graphite to both sliding surfaces (pg. 1, 2nd full ¶ and pg. 2, 1st full ¶ of Micro Surface). According to Micro Surface, applying the lubricant to both sliding surfaces will increase the wear life of the system (pg. 2, 1st full ¶ of Micro Surface). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to apply the adhered graphite coating to both sliding surfaces in the system of Zou. One of skill in the art would have been motivated to do so in order to increase the wear life of the system as taught by Micro Surface (pg. 2, 1st full ¶ of Micro Surface).
Regarding claim 2, Zou discloses that the adhesive layer comprises an adhesive material comprising a polymer ([0010]-[0011] of Zou, substrate provided with a two layer coating of polydopamine and graphite; polydopamine which is a polymer therefore functions as the adhesive).
Regarding claim 3, Zou discloses that the polymer comprises polydopamine (PDA) ([0010]-[0011] of Zou, substrate provided with a two layer coating of polydopamine and graphite; polydopamine which is a polymer therefore functions as the adhesive).
Regarding claim 4, Zou discloses that the graphite layer is derived from a dispersion of graphite materials ([0016] of Zou, graphite diluted in water used to form coating; graphite would necessarily be dispersed in the water).
Regarding claim 6, Zou discloses that each of the first surface and second surface are independently selected from the group consisting of a metal surface, a steel surface, a galvanized steel surface, a plastic surface, a polymer surface, a composite surface, a ceramic surface, or combinations thereof ([0018] of Zou, graphite coating formed on stainless steel substrate; [0019] of Zou, chrome steel ball used as counterface; surfaces are therefore metal and steel; claim only requires one of the recited types of materials for each surface).
Regarding claim 7, Zou discloses that the graphite layer of at least one of the first surface and the second surface reduces the friction between the first surface and the second surface (Abstract of Zou, coating reduces friction), and wherein the adhesive layer maintains the position of the graphite layer on at least one of the first surface and the second surface ([0004] of Zou, graphite is well adhered to substrate; [0010] of Zou, PDA layer between graphite and substrate would necessarily provide adhesion and maintain the position of the graphite on the surface of the substrate).
Regarding claim 15, Zou discloses a method of modifying a system comprising a first surface and a second surface operational to associate with one another ([0004] of Zou, solid substrate with adhered graphite coating; [0019] of Zou, coated substrate placed into sliding contact with opposing surface of counterface thereby forming a modified system), said method comprising: applying an adhesive material to at least one of the first surface and the second surface to form an adhesive layer on at least one of the first surface and the second surface ([0015] of Zou, substrate coated with DPA layer); and applying a graphite material onto the adhesive layer to form a graphite layer on the adhesive layer ([0016] of Zou, graphite layer coated on top of PDA layer; [0004] of Zou, graphite coating is “well adhered” to substrate; PDA layer therefore is an adhesive).
Zou does not disclose that each of the first and second surfaces comprises the adhesive and graphite layers and that the graphite layers of the first surface and the second surface are operable to associate with one another. Micro Surface, however, discloses applying dry film lubricants such as graphite to both sliding surfaces of a system (pg. 1, 2nd full ¶ and pg. 2, 1st full ¶ of Micro Surface). According to Micro Surface, applying the lubricant to both sliding surfaces will increase the wear life of the system (pg. 2, 1st full ¶ of Micro Surface). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to apply the adhered graphite coating to both sliding surfaces in the system of Zou. One of skill in the art would have been motivated to do so in order to increase the wear life of the system as taught by Micro Surface (pg. 2, 1st full ¶ of Micro Surface).
Regarding claim 16, Zou discloses that each of the applying steps comprises spray coating ([0024] of Zou, PDA and graphite can be applied by spray coating).
Regarding claim 17, Zou discloses that the method is utilized to reduce friction between the first surface and the second surface (Abstract of Zou, coating reduces friction).
Regarding claim 18, Zou discloses that the adhesive material comprises a polymer comprising polydopamine (PDA) ([0011] of Zou).
Claims 4, 5 and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Zou in view of Micro Surface as applied to claims 1 and 15 above and further in view of Spahr et al. (U.S. Patent Application Publication No. 2017/0256778 A1, cited in previous Office Action).
Regarding claims 4, 5 and 19, Zou does not specifically disclose that the graphite layer is derived from a dispersion of graphite materials as recited in claim 4 or that the graphite materials comprise non-exfoliated graphite as recited in claims 5 and 19. Spahr, however, discloses a non-exfoliated graphite powder (Abstract of Spahr) which is provided as a dispersion in water or an organic solvent ([0070] of Spahr) and which has high lubricity and mechanical properties and which can be used as a lubricant ([0062] of Spahr). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use the dispersion of non-exfoliated graphite powder of Spahr to form the graphite coating in the system or method of Zou. One of skill in the art would have been motivated to do so in order to provide a graphite coating having high lubricity and mechanical strength as taught by Spahr ([0062] of Spahr).
Claims 11, 12, 14 and 22-25 are rejected under 35 U.S.C. 103 as being unpatentable over Zou in view of Micro Surface as applied to claims 1 and 15 above and further in view of in view of Lewis et al. (U.S. Patent Application Publication No. 2005/0003973 A1, cited in previous Office Action).
Regarding claims 11 and 22, Zou does not specifically disclose that the system comprises a conveyor system. Lewis, however, discloses applying cured lubricant coatings to conveyor surfaces such as conveyor belts (Abstract, [0016] of Lewis). According to Lewis, the coatings have very low coefficients of friction and provide wear resistance to the conveyor parts ([0005] of Lewis). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to use the parts of a conveyor system as a substrate in the system of Zou. One of skill in the art would have been motivated to do so in order to provide wear resistance to the conveyor parts as taught by Lewis ([0005] of Lewis).
Regarding claims 12 and 23, Lewis does not specifically disclose that the first surface comprises a conveyor belt surface, and wherein the second surface comprises a conveyor bed surface. Moreover, Lewis discloses coating parts of a conveyor system that include conveyor belts, tracks, chains and chute guides ([0016] of Lewis) but does not specifically disclose coating the surface of the belt associated with (i.e., in sliding engagement with) a conveyor bed surface. Micro Surface, however, discloses coating both sliding surfaces of a system with a solid lubricant coating such as graphite to increase the wear life of the system (pg. 2, 1st full ¶ of Micro Surface; see analysis of claims 1 and 15 above). It would have been obvious to a person having ordinary skill in the art as of the effective filing date of the claimed invention to coat sliding surfaces of the modified system or process, including the sliding surfaces between the conveyor belt and bed with PDA/graphite lubricant coatings. One of skill in the art would have been motivated to do so in order to increase the wear life of the system as taught by Micro Surface (pg. 2, 1st full ¶ of Micro Surface).
Regarding claims 14 and 25, Zou suggests that the graphite layers of the conveyor bed surface and the conveyor belt surface are operable to reduce the coefficient of friction (COF) between the conveyor bed surface and the conveyor belt surface (Abstract of Zou, coating reduces friction) by at least 30% when compared to conveyor bed and conveyor belt surfaces without graphite layers and adhesive layers (FIG. 4, [0021] of Zou, coefficient of friction is reduced from 0.175 for the “best commercial product” to 0.1 which is an almost 43% reduction in COF), and wherein the adhesive layers on the conveyor bed surface and the conveyor belt surface are operable to maintain the position of the graphite layers on the conveyor bed surface and the conveyor belt surface ([0004] of Zou, graphite coating is well adhered, PDA would therefore maintain position of the graphite on the substrate surfaces).
Response to Arguments
Applicant's arguments have been fully considered to the extent that they apply to the new grounds of rejection but they are not persuasive.
The applicant asserts that Zou fails to teach any system with a first surface and a second surface that each include an adhesive layer and a graphite layer positioned on the adhesive layer wherein the graphite layers are operable to associate with one another as recited in claims 1 and 15 (pg. 5, 3rd full ¶ of the amendment). The Office Action, however, is relying upon the newly cited Micro Surface reference to address this limitation.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER W. RAIMUND whose telephone number is (571) 270-7560. The examiner can normally be reached M-Th 7:00-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael Orlando can be reached at (571) 270-5038. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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CHRISTOPHER W. RAIMUND
Primary Examiner
Art Unit 1746
/CHRISTOPHER W RAIMUND/Primary Examiner, Art Unit 1746