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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/15/2026 has been entered.
Response to Arguments
Applicant's arguments filed 6/25/2026 have been fully considered but they are not persuasive.
Applicant argues on pages 5-8 that Werger does not make up for the deficiencies of Henderson.
Examiner’s position is that the Werger reference is no longer being used and the arguments are moot.
Applicant argues on pages 8-9 that as the closest prior art, Henderson, is silent with regard to the limitations of claim 8 directed to mapping the claimed thicknesses & particle density levels to determine relative wear depth, the combination of Henderson and Werger cannot support an argument based on unexpected results.
Examiner’s position is that Henderson teaches the correlation between the presence & concentration of particles in the lubricant, and the amount (i.e. depth) of wear in the component (paragraph 0070 “The presence of one failure indicating character spectrum of a smaller magnitude, or the presence of fewer different failure-indicating characteristic spectra, can indicate that abrasive wear is at an earlier stage of incipient failure, and the presence of one failure indicating character spectrum of a larger magnitude, or the presence of more different failure-indicating characteristic spectra, can indicate that abrasive wear is at a later stage of incipient failure.”). Lacking an applicant’s teaching of the criticality of limitations directed to precise layer thicknesses (page 3, lines 17-22 of the instant specification indicates the claimed thicknesses & concentrations are “for example”), an argument based on the obviousness of such limitations is deemed proper.
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 1, 3-4, 7-9, 11 are rejected under 35 U.S.C. 103 as being unpatentable over Henderson et al (United States Patent Application Publication 20240044779) in view of Probert et al (DE 102017130965, with paragraph numbers directed to the attached translation), the combination of which is hereafter referred to as “HP”.
As to claim 1, Henderson teaches a method of evaluating wear depth of a non-metallic part (Abstract “An elastomeric seal has one or more failure indicators including a spectrally distinguishable element and/or molecule from operating-native constituent matter of a mechanical system underlying at one or more subsurface distances”) comprising:
a. forming a non-metallic part (paragraph 0101 “Mechanical systems include non-metallic wear components, such as elastomeric seals.”) with a plurality of layers (paragraph 0080 “a failure indicator can be applied to at least part of the outer face of the inner core; and an outer layer member of the elastomeric seal can be manufactured upon the inner core by subjecting additional polymeric material to the molding and vulcanization process, where the outer layer can be molded over top of the inner core or the outer layer can be molded separately and bonded to the inner core.” and “this process can be repeated, wherein each outer layer becomes the outer face of a new inner core”) wherein selected amounts of metal particles are present in said layers (paragraph 0055 “while failure indicator elements and/or molecules can be embedded in non-metallic wear components to indicate abrasive wear, failure indicator elements and/or molecules can still be metallic in nature.”) at selected density levels for each of said layers (the choice of particle type and density for each layer is inherently made at the time of design/manufacture, and as Henderson teaches the existence of particles in a layer (paragraph 0055 “failure indicator elements and/or molecules can be embedded in non-metallic wear components”) there is inherently a selected density level at each layer);
b. exposing said non-metallic part to wear in a lubricating environment containing lubricant (paragraph 0062 “Since the elastomeric seal 300 is lubricated as with other wear components of a mechanical system (and the elastomeric seal 300 can, furthermore, be self-lubricated), exposure of the subsurface stratum 304 causes the failure indicator including a spectrally distinguishable element and/or molecule to mingle with lubricant of the mechanical system”);
c. determining the metal particle concentration in said lubricant (paragraph 0038 “After a computing system determines magnitude of various constituent spectra, the computing system can calculate a concentration of various matters in the lubricant sample.”) and identifying a wear depth in said non-metallic part by mapping the metal particle concentration in the lubricant to the selected density levels of each of said layers (paragraph 0076 “Furthermore, any, some, or all of the elastomeric seals 414B, 418B, and 420B can have more than one different failure indicator embedded therein at multiple subsurface strata of different depths.” and paragraph 0070 “The presence of one failure indicating character spectrum of a smaller magnitude, or the presence of fewer different failure-indicating characteristic spectra, can indicate that abrasive wear is at an earlier stage of incipient failure, and the presence of one failure indicating character spectrum of a larger magnitude, or the presence of more different failure-indicating characteristic spectra, can indicate that abrasive wear is at a later stage of incipient failure.”, so when you see an indicator (that is, you see a non-zero concentration of a particular particle that is known to be inside a seal at a certain depth), you know the seal has worn to that particular depth).
wherein the non-metallic part has a surface (Figure 1, elastomeric seal 112 has a surface and layers, see paragraph 0081 “progressively molding outer layers over each stratum”).
Henderson does not teach the density level of said metal particles present in said layers increases from said surface of the non-metallic part down to a selected lower layer. However, it is known in the art as taught by Probert. Probert teaches engine components (Figure 1) comprising a series of ablative layers (Figures 4-5, paragraph 5 “It is provided that the sealing element (9) contains at least one marking material (110, 120, 130, 150) which is arranged in a defined region of the sealing element (9) in the non-worn state of the sealing element (9). 9) is arranged at a spatial distance from the contact surface (90) and after reaching a defined wear of the contact surface (90) forms or is contained in the contact surface (90), the marking material (110, 120, 130, 150) being suitable for this purpose is to be detected via detection means.”) where the density level of said metal particles present in said layers increases from said surface of the non-metallic part down to a selected lower layer (Figure 4, paragraph 157 “The marking material 110 For example, it consists of metal particles that are in the base material in the layers 92 . 93 are embedded with different concentration.” and paragraph 156 “In the shift 93 is the marking material 110 contained in a higher concentration than in the layer 92”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have the density level of said metal particles present in said layers increase from said surface of the non-metallic part down to a selected lower layer, in order to better evaluate the degree of wear (see paragraph 78 “By means of the detected marking material, the amount of the detected marking material and / or the particle sizes of the detected marking material, it can thus be determined from which layer and hence from which depth of the sealing element the currently detected marking material originates.”).
As to claim 3, HP teaches everything claimed, as applied above in claim 1, in addition Henderson teaches said non-metallic part comprises polymeric material (paragraph 0023 “An elastomeric compound can be composed of a combination of a polymer and other agents”).
As to claim 4, HP teaches everything claimed, as applied above in claim 3, with the exception said polymeric material is acrylonitrile-butadiene styrene (ABS), polyethylene terephthalate (PET), polycarbonate, polyetheretherketones (PEK), polypropylene, polyamides, fluorocarbon polymers (e.g., polytetrafluroethylene or PTFE), epoxy resins or polyurethanes. However, Henderson teaches the use of elastomers (Abstract “elastomeric seals”) and elastomers are polymers characterized by their ability to undergo significant deformation under low stress and return to their original shape when released (e.g. rubber, neoprene), and it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use any material appropriate for an engine seal including the claimed materials, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP 2144.07. In this case it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to use one of the claimed materials, in order to improve the seal performance for a given application.
As to claim 7, HP teaches everything claimed, as applied above in claim 1, in addition Henderson teaches said non-metallic part with said plurality of layers comprises a first layer with no metallic particles (paragraph 0080 “an outer layer member of the elastomeric seal can be manufactured upon the inner core by subjecting additional polymeric material to the molding and vulcanization process”).
As to claim 8, HP teaches everything claimed, as applied above in claim 1, with the exception of the claimed layer thicknesses & particle densities. However, the environment of Henderson is a machine in which lubricant is monitored for failure indicators by means of spectroscopic analysis (Abstract & paragraph 0033) for particles being worn from a series of layers (paragraph 0080), and Probert teaches different concentrations of particles in a series of layers (paragraphs 157-156) and that the particles & their concentration in the lubricant is correlated to the amount of wear (paragraph 78). Spectroscopic analysis detects a signal (e.g., light absorption or emission) measured at a specific wavelength, and the intensity of that signal depends upon the amount of material present, indicating both layer thickness and the concentration of particles in the layer affect how many particles are in the lubricant, which affect the strength of the spectroscopic signal and as such are both results effective variables. As the thickness of a layer is a results effective variable and there are a limited range of thicknesses, it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to enable the claimed thicknesses, in order to better determine much wear they want to let happen before being alerted (i.e. when the second indicator is detected, the thickness of the first layer must have worn away). See MPEP 2144.05(II).
As Henderson teaches the correlation between the presence & concentration of particles in the lubricant, and the amount (i.e. depth) of wear in the component (paragraph 0070 “The presence of one failure indicating character spectrum of a smaller magnitude, or the presence of fewer different failure-indicating characteristic spectra, can indicate that abrasive wear is at an earlier stage of incipient failure, and the presence of one failure indicating character spectrum of a larger magnitude, or the presence of more different failure-indicating characteristic spectra, can indicate that abrasive wear is at a later stage of incipient failure.”), and the applicant has not indicated that the claimed thicknesses are critical or yield an unexpected result (page 3, lines 17-22 of the instant specification indicates the claimed thicknesses are “for example”), an obviousness-type rejection is deemed proper.
Additionally, particle concentration is also a results effective variable that directly affects the quantity of particles in the lubricant, and it is a straightforward matter of engineering expedience to increase the concentration in successively deeper layers. As it is inherent that over time the lubricant becomes filled with more and more particles (from the worn-off layers, from wear occurring to the machinery, from combustion residue, etc), it would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to want a stronger signal from deeper layers, that is, to enable the claimed increasing particle concentrations, in order to more easily detect the spectroscopic signal of a failure indicator amidst an increasing amount of noise.
As to claim 9, HP teaches everything claimed, as applied above in claim 1, in addition Henderson teaches said plurality of layers comprises 2-15 layers (paragraph 0080 “an outer layer member of the elastomeric seal can be manufactured upon the inner core” and “this process can be repeated, wherein each outer layer becomes the outer face of a new inner core” indicating at least two layers).
As to claim 11, HP teaches everything claimed, as applied above in claim 1, in addition Henderson teaches said lubricating environment comprises a lubricated engine environment (paragraph 0084 “Furthermore, the present disclosure provides a wear indicator borne in a sealed cavity of a mechanical system (a “cavity-borne wear indicator”). … By way of example, pistons and/or rods of other actuators, including hydraulic actuators, pneumatic actuators, combustion engine actuators”).
Claims 2, 12 are rejected under 35 U.S.C. 103 as being unpatentable over HP, and further in view of Eisentraut et al (United States Patent 5506677).
As to claim 2, HP teaches everything claimed, as applied above in claim 1, and while Henderson teaches spectroscopic analysis techniques (paragraph 0033 “such as … inductively coupled plasma spectroscopy (“ICP”), and the like”), Henderson as modified by Probert above does not explicitly teach the metal particle concentration in said lubricant is determined by inductively coupled plasma atomic emission spectroscopy. However, it is known in the art as taught by Eisentraut. Eisentraut teaches analysis of wear particles in lubricants (column 1:58-60 “It is another object of the present invention to provide a method for the spectroscopic determination of wear metals in PFPAE lubricants.”) in which the metal particle concentration in said lubricant is determined by inductively coupled plasma atomic emission spectroscopy (column 2:31-34 “This method is particularly suitable for determining the concentration of at least one wear metal in a PFPAE fluid by inductively coupled plasma-atomic emission spectroscopy.”). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have the metal particle concentration in said lubricant be determined by inductively coupled plasma atomic emission spectroscopy, in order to better simultaneously determine both the presence and concentration of elements that are present.
As to claim 12, HP teaches everything claimed, as applied above in claim 1, in addition Henderson teaches the use of metal particles (paragraph 0055 “while failure indicator elements and/or molecules can be embedded in non-metallic wear components to indicate abrasive wear, failure indicator elements and/or molecules can still be metallic in nature.”).
Henderson as modified by Probert above does not teach said metal particles are steel, copper, lead or aluminum. However, it is known in the art as taught by Eisentraut. Eisentraut teaches detecting metal particles of steel, copper, lead or aluminum in lubricants (column 4, Table II lists aluminum, copper & iron). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have the metal particles be steel, copper, lead or aluminum, in order to use particles with well-known models (thus making analysis easier).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over HP, and further in view of Kawabata et al (JP 2003344293, with paragraph numbers directed to the attached translation).
As to claim 10, HP teaches everything claimed, as applied above in claim 1, with the exception of said metal particles have a particle size of 1.0 μm to 999.0 μm. However, it is known in the art as taught by Kawabata. Kawabata teaches analyzing lubricant for metal particles (Abstract “a diagnostic method of lubricated part capable of precisely measuring the metal concentration in lubricating oil”) wherein said metal particles have a particle size of 1.0 μm to 999.0 μm (Abstract “filtering this sample oil to separate major diameter metal particles having particle sizes exceeding 0.5 μm, measuring the metal concentration in a solution of the major diameter metal particles dissolved in an acid by inductively coupled plasma-atomic emission spectroscopy” and the claimed range is taught by the “exceeding 0.5 μm” range). It would have been obvious to one of ordinary skill in the art before applicant’s effective filing date to have said metal particles have a particle size of 1.0 μm to 999.0 μm, in order to apply appropriate analysis techniques that work best for each particle size group.
Conclusion
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/J.C.U/Examiner, Art Unit 2877 /MICHELLE M IACOLETTI/Supervisory Patent Examiner, Art Unit 2877
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