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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 21, 2025 has been entered.
The amendment of November 21, 2025, filed with the RCE submission, has been received and entered. With the entry of the amendment, claims 1-13 are withdrawn, and claims 14- 21 are pending for examination.
Election/Restrictions
Claims 1-13 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 was made without traverse in the reply filed on February 9, 2025.
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 14-21 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.
Claim 14, last line, “where the second coating layer is about 1 to 1.5 wt%” is confusing and indefinite as worded, because it is not defined as to what about the coating layer is 1 to 1.5 wt%. As worded, it could be the amount of P, the amount of Co or the amount of W in the second coating, or the amount of the second coating compared to the substrate metal or first coating, etc. for example. In the Remarks, applicant refers to it being intended to be the amount of P in the second coating, but this does not limit the actual claim. For the purpose of examination, anything that can be considered as 1 to 1.5 wt% of the second coating is understood to meet the requirements of the claim, but applicant should clarify what is intended, without adding new matter.
The other dependent claims do not cure the defects of the claim and therefore are also rejected.
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 14-16 and 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al (US 2018/0002812) in view Japan 2007-162069 (hereinafter ‘069) and Murukesan et al (US 2022/0307516).
Claim 14: Watanabe teaches a method for making a wheel (compressor impeller corresponding to applicant’s wheel) (note 0109, 0065, figures 11-12), where a substrate wheel/impeller is provided with a hub portion that would rotate around a rotational axis (note figure 12, 0065, hub 102). A plurality of blades 104 are provided extending radially outwards from the hub portion, where each blade would comprise a leading edge and a trailing edge (note 0065, figure 12). The hub portion and blades comprise a substrate metal that comprises aluminum or an alloy thereof (note 0010, 0065, 0078). Watanabe indicates to form on the substrate metal a first coating layer 56 (under layer 56) that can be comprising electroless nickel-phosphorus (phosphorous) having a phosphorus content of 10-13 wt%, in the claimed range (note figure 2, 0109, 0090-0092). Further, on the first coating layer, a second coating layer (surface layer 54) is formed, where the second coating layer can also be an electroless nickel phosphorus containing layer, where the second layer has the option of containing 4-10 wt% P (but would not be limited to this as it is an option), with the desire to form a high hardness coating, with high anti-erosion property (note 0015, 0109, 0078, 0084, 0104), as to the specific hardness, the broad teaching of a high hardness greater than the underlayer is used (note 0010-0011, 0084), where embodiments of 500-700 HV is described (note 0104), but the hardness used would not be limited to this.
As to the features of providing the coatings, features of the second coating layer and the further heat treatment process, and relative P content of the layers,
‘069 indicates that a desirable plating film with high hardness can be provided with electroless nickel plating to provide a film/coating with Co, W (tungsten), and P in an overlapping amount to the amount option for Watanabe’s second coating (abstract, claim 1, translation), and thus provides an electroless nickel phosphorus poly-alloy layer (note page 2, translation). The plating is performed with a plating bath with the Ni, Co and W ions (from salts) and P (from hypophosphite reducing agent) (page 2, translation). It is indicated that adding tungsten helps improve room temperature hardness (page 2, translation). The Ni and Co ions can be in the form of cations (from nickel or cobalt sulfate, for example), and the W also from cations (from sodium tungstate, for example) (note page 2, translation, and Example 1, page 3, translation). The phosphorus can be provided from hypophosphites (note page 2, translation). The plating can be performed by immersing the substrate in the plating bath (note page2, translation). It is further described to, after plating, expose the plated article to a heat treatment to increase the hardness, where the heat treatment can be at 150-450 degrees C (note page 2, translation), with Example heat treatment at 200 degrees C (note Example 2, page 3, translation), which in the Example gave a hardness HV greater than 800 HV at 25 degrees C (note pages 3, 4, translation, and Table 1). The bath pH can be 7-8, in the claimed range (page 2, translation). The bath can be buffered (has buffering action) with use of organic acid and chelating agent (page 2, translation). The resulting plating can have a P content of 1-5 wt%, 1-50 wt% Co and 1-20 wt% W (page 2, translation). The plating can be applied to aluminum alloy parts, for example (note page 3, translation).
Murukesan further describes plating a first coating layer of electroless Ni-P on an aluminum containing wheel substrate to be followed by a further second layer of coating over the first coating layer (note 0010, 0032). The substrate can be a compressor wheel with a hub portion configured to rotate about a rotational axis and a plurality of blades extending radially outward from the wheel portion, wherein each blade of the plurality of blades comprises a leading edge and a trailing edge, and the bub and blades comprise a substrate metal that comprises aluminum or an alloy thereof (note 0010, 0032). To apply the electroless Ni-P coating, a plating bath is provided and the substrate wheel can be immersed in the plating bath (0010, 0035). It is indicated that the bath would contain nickel cations and phosphorus oxide anions (note 0010). From the example bath materials of nickel cations from nickel sulfate and reducing agent from hypophosphite described as H2PO3-, it is understood that hypophosphite reducing agent will give the desired phosphorus oxide anions (note 0035). The plating bath can be aqueous (note 0035). It is indicated that the P content of the first Ni-P coating layer can be about 10 to about 15 wt%, in the claimed range (note 0032).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Watanabe to apply the first coating layer of Ni-P by immersing the substrate wheel/impeller in a first electroless Ni-P plating bath comprising nickel cations and phosphorus oxide anions, and then form the second coating layer of a Ni-P poly-alloy with a lower P content than the P content of the first coating layer by immersing the substrate wheel with the first coating layer in a second electroless N-P plating bath comprising nickel cations, phosphorus oxide anions and other alloy ions of cobalt and tungsten cations, with a pH of 7-8, and subsequently, exposing the substrate wheel, including the first and second coating layers to a heat treatment process to thereby selectively increase a hardness of the second coating layer as a functional coating layer with a hardness at least about 800 HV and with erosion resistance enhanced relative to the substrate metal without the second coating as suggested by ‘069 and Murukesan in order to provide a desirable protective coating system, since Watanabe teaches to provide a two layer Ni-P protective coating system on the substrate/wheel, where for the first layer being applied by immersing in a first Ni-P plating bath with nickel cations and phosphorus oxide anions, ‘069 notes Ni-P plating with immersion of the substrate in a plating bath, and Murukesan notes the conventional providing of an electroless Ni-P layer of similar P content to that desired by the first layer of Watanabe by immersing in an aqueous Ni-P electroless plating bath containing nickel cations and phosphorus oxide anions, giving a suggested process to use, and Murukesan would further specifically suggest the substrate as a wheel form with the claimed hub and blade features, and further as to the second layer, Watanabe indicates to provide this second layer over the first layer where the second layer can be an Ni-P based alloy with high Vickers hardness, and ‘069 notes how an Ni-P alloy layer that provides a desirable high Vickers hardness would be an Ni-P-Co-W poly-alloy, where this layer can be applied by immersing the substrate to be coated (which here would be that coated with the first layer) in an electroless bath with ions of Ni, Co, W and hypophosphite ions, where Murukesan would indicate that the P in similar baths can come from phosphorus oxide anions and the Ni ions form nickel cations, and, the bath materials further described in ‘069 would also be understood to provide nickel cations, cobalt cations and W cations, where from the conventional use of water as the base material of the bath, it would be understood that this would also be conventionally expected for use with the bath in ‘069 with an expectation of predictably acceptable results, and ‘069 would further suggest that the bath pH can be provided at 7-8, in the claimed range, and ‘069 would further expose the plated parts (so here the substrate wheel including the first and second coating) to heat treatment to increase the hardness of the second coating as a functional coating, where the second layer would be selectively increased in hardness to the extent claimed because this has the alloy materials for such hardness increase, and understood to be increased over the substrate metal without the second coating layer, since the second coating layer is described as giving the high hardness, where since ‘069 indicates hardness of in a range of 700-900 HV, with an example above 800 HV, it would have been obvious to optimize the hardness for the specific coating with the heat treatment, giving a value in the claimed range of at least about 800 HV. Furthermore as to the second coating layer having a lower P content than the first coating layer, Watanabe indicates that the first layer can have a P content of 10-13 wt% and ‘069 suggests the high hardness layer (so second layer) have a P content of 1-5 wt%, which would be lower than that of the first layer, where from ‘069 such a P content would be desirable for providing a high hardness layer with toughness that can be formed with high speed (note the abstract). Furthermore, as to the enhanced erosion resistance, this would be expected, as a second layer of an alloy meeting the desired composition requirements would be formed by the claimed electroless plating and provided with the claimed heat treatment (also note the discussion as to claims 15 and 16 above as to providing heat treatment under the desired conditions) to improve desired hardness to a range of at least 800 HV, and so understood to give the desired enhance erosion resistance as well. Note 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). Moreover, as to the second coating layer being about 1.5 wt% of something, ‘069 would indicate ranges that would overlap this, for the amount of P, Co and W, and it would have been obvious to optimize from any of these overlapping ranges, giving values in the claimed range. Note In the case where the claimed ranges "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). Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 15 and 16: as to the heat treatment conditions, ‘069 suggests conditions to use including indicating heat treating at 150-450 degrees C, including an example at 200 degrees C, in the claimed range (note page 2, translation, and Example 2, page 3, translation), and for a time of 30-120 minutes (o.5-2 hours), in the claimed range, and with an example at 1 hour, in the claimed range (note page 2, translation, and Example 2, page 3, translation), and for the temperature, since the temperatures of heat treatment are as listed above, it is understood that the substrate wheel would be exposed to such temperatures, which would overlap or be in the ranges of temperature claimed, thus the temperatures and times would either be taught or at the least, it would have been obvious to optimize from such ranges, giving values in the claimed range. Note In the case where the claimed ranges "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), and as selective increased hardness is provided as discussed for claim 14 above, this would also be provided.
Claim 19: As to the second bath being a buffered aqueous solution with nickel cations, phosphorus oxide anions, cobalt cations and tungsten cations, with a pH of 6-9, the use of the second bath being aqueous with nickel cations, phosphorus oxide anions, cobalt cations and tungsten cations, with a pH of 7-8, in the claimed range, is suggested as discussed for claim 14 above, thus giving an aqueous solution. Furthermore, as to the solution being buffered, ‘069 suggests that the bath can be buffered (has buffering action) with use of organic acid and chelating agent (page 2, translation).
Claim 20: As to the time of immersing/ plating for the second coating, Watanabe notes a desired second layer thickness of 15-60 microns (note 0030). Murukesan indicates plating for an overlapping thickness of 20-30 microns for an electroless Ni-P coating (note 0035), and indicates that that the plating is controlled with temperature and time to achieve the desired thickness (note 0035). Additionally, ‘069 indicates that the Ni-P-Co-W plating can occur for 2 hours and 20 minutes (140 minutes, in the claimed range) to plate 40 microns, in the range of Watanabe (note page 3, translation, Example 1). Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the time of plating as a known result effective variable such that the optimizing would include time values in applicant’s claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe in view of ‘069 and Murukesan as applied to claims 14-16 and 19-20 above, and further in view of Parker et al (US 3887732).
Claim 17: as to the pH of the first electroless Ni-P plating bath, Murukesan does not give a specific pH. It is noted to use a Ni-P plating bath with nickel ions such as from nickel sulfate and hypophosphite reducing agent (note 0035).
However, Parker describes a Ni-P plating bath that can be used for plating aluminum, where the bath is a nickel cation-hypophosphite anion type bath, where the pH of the bath is 3.5-7, that can deposit P content of 3-13 percent (note column 1, lines 25-50), where at pH of 4-5, in the claimed range, the P content can be 6-12% (note column 6, lines 1-15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Watanabe in view of ‘069 and Murukesan to provide the first Ni-P plating using a bath with a pH in the range of 4-5 as suggested by Parker with an expectation of providing a desirable plating, since Watanabe in view of ‘069 and Murukesan indicates that the first electroless Ni-P bath has nickel cations and phosphorus oxide anions (from hypophosphite) with P content of 10-13 wt% for the coating, and Parker indicates that a similar such bath, with overlapping P content for the coating can have a pH of 4-5.
Claim 18: As to the time of immersing/ plating for the first coating, Watanabe notes a desired first layer thickness of 15-60 microns (note 0105). Murukesan indicates plating for an overlapping thickness of 20-30 microns for the electroless Ni-P coating (note 0035), and indicates that that the plating is controlled with temperature and time to achieve the desired thickness (note 0035). Therefore, Murukesan would suggest that the time of plating is a known result effective variable to optimize to get the desired thickness, suggesting to perform such optimization, resulting in a value in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 14-16 and 19-21 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe et al (US 2018/0002812) in view of Zitko (US 6146702), Murukesan et al (US 2022/0307516) and Japan 2013-204084 (hereinafter ‘084).
Claim 14: Watanabe teaches a method for making a wheel (compressor impeller corresponding to applicant’s wheel) (note 0109, 0065, figures 11-12), where a substrate wheel/impeller is provided with a hub portion that would rotate around a rotational axis (note figure 12, 0065, hub 102). A plurality of blades 104 are provided extending radially outwards from the hub portion, where each blade would comprise a leading edge and a trailing edge (note 0065, figure 12). The hub portion and blades comprise a substrate metal that comprises aluminum or an alloy thereof (note 0010, 0065, 0078). Watanabe indicates to form on the substrate metal a first coating layer 56 (under layer 56) that can be comprising electroless nickel-phosphorus (phosphorous) having a phosphorus content of 10-13 wt%, in the claimed range (note figure 2, 0109, 0090-0092). Further, on the first coating layer, a second coating layer (surface layer 54) is formed, where the second coating layer can also be an electroless nickel phosphorus containing layer, where the second layer has the option of containing 4-10 wt% P (but would not be limited to this as it is an option), with the desire to form a high hardness coating, with high anti-erosion property (note 0015, 0109, 0078, 0084, 0104), as to the specific hardness, the broad teaching of a high hardness greater than the underlayer is used (note 0010-0011, 0084), where embodiments of 500-700 HV is described (note 0104), but the hardness used would not be limited to this.
As to the features of providing the coatings, features of the second coating layer and the further heat treatment process, and relative P content of the layers,
Zitko further describes an electroless nickel coating to be used on aluminum substrates, where the coating enhances the wear resistance of the substrate article and can be provided with high hardness above approximately 600 HV (note column 1, lines 10-20 and 55-68, column 2, lines 60-68, which would include above about 800 HV, and also notes a possible embodiment range overlapping that claimed of 700-800 HV, note column 1, lines 60-68). The electroless plating provides use of an electroless plating bath containing nickel, cobalt and phosphorus to form a coating containing nickel, cobalt and phosphorus (thus giving a nickel-phosphorus poly-alloy) (note column 1, lines 10-20, column 3, lines 5-40). The plating process comprises providing a bath with ions of nickel (in the form of nickel cations from the salts used) and cobalt (in the form of cobalt cations from the salts used) and phosphorus reducing agent, which can be hypophosphite ions, and immersing the article to be coated in the bath (note column 3, lines 5-40, column 4, lines 25-60, column 5, lines 30-45). The bath is aqueous (note column 3, lines 5-15). Subsequently, the substrate article that has been coated is exposed to a heat treatment process to increase the hardness of the coating layer as a functional coating layer with increased erosion resistance (where increased wear resistance and hardness would give the desired erosion resistance) (note column 5, lines 50-60). The pH can be 7.5-9, in the claimed range (note column 4, lines 55-65).
Murukesan further describes plating a first coating layer of electroless Ni-P on an aluminum containing wheel substrate to be followed by a further second layer of coating over the first coating layer (note 0010, 0032). The substrate can be a compressor wheel with a hub portion configured to rotate about a rotational axis and a plurality of blades extending radially outward from the wheel portion, wherein each blade of the plurality of blades comprises a leading edge and a trailing edge, and the bub and blades comprise a substrate metal that comprises aluminum or an alloy thereof (note 0010, 0032). To apply the electroless Ni-P coating, an aqueous plating bath is provided and the substrate wheel can be immersed in the plating bath (0010, 0035). It is indicated that the bath would contain nickel cations and phosphorus oxide anions (note 0010). From the example bath materials of nickel cations from nickel sulfate and reducing agent from hypophosphite described as H2PO3-, it is understood that hypophosphite reducing agent will give the desired phosphorus oxide anions (note 0035). It is indicated that the P content of the first Ni-P coating layer can be about 10 to about 15 wt%, in the claimed range (note 0032).
‘084 describes providing a Ni-P-Co-W electroless plating that is hard and with good wear resistance (page 2, translation), where a first layer of Ni-P plating can be provided to give a 5-10 wt% P layer on a base of aluminum, which gives good adhesion (note page 3, translation). The second upper layer of Ni-P-Co-W is applied over the first layer to give a plating with 0.6-2.8 wt% P, 0.5-1.8 wt% Co, and 0.005-0.5 wt% tungsten, rest nickel (pages 2-3, translation), where these ranges overlap that claimed and give a P amount in the second layer below the P amount in the first layer. It is indicated that the hardness of the applied second layer can be about 700 HV (note page 3, translation) as described without heat treatment. This is indicated as a desirably inexpensive coating (page 2, translation). The plating can be provided using a plating bath with Ni-P materials and also a source of cobalt cations (cobalt sulfate) and a source of W cations (cobalt tungstate) (note Example 1, page 3, translation).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Watanabe to apply the first coating layer of Ni-P by immersing the substrate wheel/impeller in a first electroless Ni-P plating bath comprising nickel cations and phosphorus oxide anions, and then form the second coating layer of a Ni-P poly-alloy with a lower P content than the P content of the first coating layer by immersing the substrate wheel with the first coating layer in a second electroless N-P plating bath comprising nickel cations, phosphorus oxide anions cobalt cations and tungsten cations, with a pH in the ration of 7.5-9, and subsequently, exposing the substrate wheel, including the first and second coating layers to a heat treatment process to thereby selectively increase a hardness of the second coating layer as a functional coating layer with a hardness at least about 800 HV and with erosion resistance enhanced relative to the substrate metal without the second coating as suggested by Zitko, Murukesan and ‘084 in order to provide a desirable protective coating system, since Watanabe teaches to provide a two layer Ni-P protective coating system on the substrate/wheel, where for the first layer being applied by immersing in a first Ni-P plating bath with nickel cations and phosphorus oxide anions, Zitko notes Ni-P plating with immersion of the substrate in a plating bath, and Murukesan notes the conventional providing of an electroless Ni-P layer of similar P content to that desired by the first layer of Watanabe by immersing in an Ni-P electroless plating bath containing nickel cations and phosphorus oxide anions, giving a suggested process to use, and Murukesan would further specifically suggest the substrate as a wheel form with the claimed hub and blade features, and further as to the second layer, Watanabe indicates to provide this second layer over the first layer where the second layer can be an Ni-P based alloy with high Vickers hardness, and Zitko notes how an Ni-P alloy layer that provides a desirable high Vickers hardness and wear resistance would be an Ni-P-Co poly-alloy, where this layer can be applied by immersing the substrate to be coated (which here would be that coated with the first layer) in an aqueous electroless bath with cations of Ni and Co, and hypophosphite ions and also a pH of 7.5-9, where Murukesan would indicate that the P in similar baths can come from phosphorus oxide anions and the Ni ions form nickel cations, and ‘084 would further suggest the when providing the electroless plated Ni-P alloy layer along with cobalt cations, tungsten cations would be desirably present in the plating bath (which would help improve friction characteristics, note page 3, translation, and therefore also wear), and Zitko would further expose the plated parts (so here the substrate wheel including the first and second coating) to heat treatment to increase the hardness of the second coating as a functional coating with enhanced erosion resistance as the wear resistance improved, where the second layer would be selectively increased in hardness to the extent claimed because this has the alloy materials for such hardness increase, and understood to be increased over the substrate metal without the second coating layer, since the second coating layer is described as giving the high hardness, where since Zitko indicates hardness of in a range of above about 600 HV, it would have been obvious to optimize the hardness for the specific coating with the heat treatment, giving a value in the claimed range of at least about 800 HV. Furthermore as to the second coating layer having a lower P content than the first coating layer, Watanabe indicates that the first layer can have a P content of 10-13 wt% and ‘084 suggests the high hardness layer (so second layer) have a P content of 0.6 to 2.8 wt%, which would be lower than that of the first layer, where from ‘084 such a P content would be desirable for providing a high hardness layer excellent slidability (note translation, page 2). As to the second coating layer having about 1 to 1.5 wt% of something, ‘084 would suggest that the second layer can have a plating with 0.6-2.8 wt% P and 0.5-1.8 wt% Co, each of which overlap with the claimed amount, and it would have been obvious to optimize from these ranges, giving at least one of P or Co in the claimed range. It is further understood that the second layer with have increase erosion resistance as claimed, given that the same process and features are provided, and the suggestion from Zitko that would increase erosion resistance. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claims 15 and 16: as to the heat treatment conditions, Zitko suggests conditions to use including indicating heat treating at 170-200 degrees C, for example or temperatures below 250 degrees C in general, and for a time of abut 1-6 or 2-5 hours (note column 5, lines 50-60), and gives an example of heat treating at 200 degrees C, for one hour (note column 6, lines 30-40), where these times would overlap or at one hour be in the time ranges claimed, and for the temperature, since the temperatures of heat treatment are as listed above, it is understood that the substrate wheel would be exposed to such temperatures, which would overlap or be in the ranges of temperature claimed, thus the temperatures and times would either be taught or at the least, it would have been obvious to optimize from such ranges, giving values in the claimed range. Note In the case where the claimed ranges "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), and as selective increased hardness is provided as discussed for claim 14 above, this would also be provided.
Claim 19: The second coating would be provided with an aqueous solution containing nickel cations, phosphorus oxide anions, cobalt cations and tungsten cations at a pH of 7.5-9, as discussed for claim 14 above. As to the solution being buffered, Murukesan also notes the use of buffers in the plating bath (0035), indicating that a buffered solution would be known and suggested in the electroless nickel plating art.
Claim 20: As to the time of immersing/ plating for the second coating, Watanabe notes a desired second layer thickness of 15-60 microns (note 0030). Murukesan indicates plating for an overlapping thickness of 20-30 microns for an electroless Ni-P coating (note 0035), and indicates that that the plating is controlled with temperature and time to achieve the desired thickness (note 0035). Zitko further notes when plating the electroless Ni-P poly-alloy, plating is commonly done for about 30 to 120 minutes for plating thickness that can be 5-50 microns (note column 5, lines 30-45). Either “about 120” can be considered as overlapping with the end point of applicant “about 130 minutes” or the suggestion to optimize as a known result effective variable is such that the optimizing would include time values in applicant’s claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Claim 21: As to the coating layer amounts, ‘084 describes providing a Ni-P-Co-W electroless plating that is hard and with good wear resistance (page 2, translation), where a first layer of Ni-P plating can be provided to give a 5-10 wt% P layer on a base of aluminum, which gives good adhesion (note page 3, translation). The second upper layer of Ni-P-Co-W is applied over the first layer to give a plating with 0.6-2.8 wt% P, 0.5-1.8 wt% Co, and 0.005-0.5 wt% tungsten, rest nickel (pages 2-3, translation), where these ranges overlap that claimed and give a P amount in the second layer below the P amount in the first layer. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize from the ranges taught giving values in applicant’s claimed ranges. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). Watanabe would suggest the P content in the first layer above 4 wt% as discussed for claim 14 above, and thus from the suggest P range from ‘084, the P content of the second layer would be lower than that of the first layer.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Watanabe in view of Zitko, Murukesan and ‘084 as applied to claims 14-16 and 20 above, and further in view of Parker et al (US 3887732).
Claim 17: as to the pH of the first electroless Ni-P plating bath, Murukesan does not give a specific pH. It is noted to use a Ni-P plating bath with nickel ions such as from nickel sulfate and hypophosphite reducing agent (note 0035).
However, Parker describes a Ni-P plating bath that can be used for plating aluminum, where the bath is a nickel cation-hypophosphite anion type bath, where the pH of the bath is 3.5-7, that can deposit P content of 3-13 percent (note column 1, lines 25-50), where at pH of 4-5, in the claimed range, the P content can be 6-12% (note column 6, lines 1-15).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Watanabe in view of Zitko, Murukesan and ‘084 to provide the first Ni-P plating using a bath with a pH in the range of 4-5 as suggested by Parker with an expectation of providing a desirable plating, since Watanabe in view of Zitko, Murukesan and ‘084 indicates that the first electroless Ni-P bath has nickel cations and phosphorus oxide anions (from hypophosphite) with P content of 10-13 wt% for the coating, and Parker indicates that a similar such bath, with overlapping P content for the coating can have a pH of 4-5.
Claim 18: As to the time of immersing/ plating for the first coating, Watanabe notes a desired first layer thickness of 15-60 microns (note 0105). Murukesan indicates plating for an overlapping thickness of 20-30 microns for the electroless Ni-P coating (note 0035), and indicates that that the plating is controlled with temperature and time to achieve the desired thickness (note 0035). Therefore, Murukesan would suggest that the time of plating is a known result effective variable to optimize to get the desired thickness, suggesting to perform such optimization, resulting in a value in the claimed range. Note "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) (Claimed process which was performed at a temperature between 40°C and 80°C and an acid concentration between 25% and 70% was held to be prima facie obvious over a reference process which differed from the claims only in that the reference process was performed at a temperature of 100°C and an acid concentration of 10%.).
Yasui et al (US 2009/0324405) notes coating two layers of Ni-P coating on a substate for corrosion resistance (note abstract).
Response to Arguments
Applicant's arguments filed November 21, 2025 have been fully considered.
Note the adjustment to the rejections, including the use of rejections using Watanabe in view of ‘069 and Murukesan, and rejections using Watanabe in view of Zitko, Murukesan and ‘084. Also note the new 35 USC 112 rejection.
As to the argument that the rejection does not articulate motivation to arrive at the claimed arrangement, with no teaching/reasons to use the low P Ni-P-Co-W layer to retain the high HV, however, the Examiner is of the position that such motivation is shown in the rejections above, where ‘084 or ‘069 indicate the use of low P Ni-P-Co-W coatings to provide desirable high hardness, etc., where there is a reasonable expectation of success given the teachings of the references as to providing high hardness.
As to the argument that optimization is inapplicable, the Examiner disagrees with this position. The cited references to either ‘084 or ‘069 shows the desirability of the baths with Ni, P, Co and W in ranges that meet the claim requirements (for claim 14, for example) for making high hardness platings, including overlapping P content, with ‘069 also giving pH in the claimed range and Zitko also showing pH for poly alloy nickel baths. Optimizing within taught ranges, for example, would be obvious as a result effective variable. It is noted that Watanabe, while it gives an example of 4-10 wt% for the P, is not limited to this (note 0015, where this range is an option), and the further references suggest desirable P amounts for high hardness that at least overlap the claimed range of claim 14. The expectation of meeting the hardness requirements is discussed in the rejections, where ‘069 indicates that such a range can be reached including with heat treatment, and Zitko also showing how heat treating expected to improve hardness.
It is argued that Zitko and Murukesan with Watanabe do not provide the features claimed. The Examiner notes however, that the rejections now also have ‘069 (without Zitko) or ‘084 as to the suggestion of the Ni-Co-W-P plating, including the amount of P, with the desire to provide high hardness platings.
As to the rejection of claims 15-16, when ‘069 used, it notes heating conditions that would include in the range claimed for the Ni-Co-W-P platings. When using Zitko and ‘084, the suggestion from Zitko is to use known heat treatments for Ni poly alloys to heat treat to provide higher hardness. It is argued that the claimed heat exposure is not a routine process variable, however, the Examiner disagrees, given the well known use of ranges to optimize from as shown by Zitko and ‘069. As to claim 20, when using ‘069 it notes treatment times in the claimed range, and Zitko when used, would suggest optimizing as discussed in the rejection above. Applicant has not shown that the time would not be a result effective variable or criticality.
As to claims 17-18, further using Parker, it is argued that Parker relates to general Ni-P plating and does not discuss use as the underlayer for the top layer claimed, and for claim 18 that time is treated as a generic deposition control, and does not suggest the claimed deposition time range. The Examiner notes these arguments, however, the rejections above are maintained. As to the pH, Parker provides the suggestion of a pH rate to use when applying Ni-P coatings to aluminum that can have an overlapping P amount to that claimed for the first layer, and thus there would be an expectation of predictably acceptable plating using those conditions. The rationale for combining does not have to be to provide specific reasons enumerated by applicant. The fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985). It is not hindsight to use features known to provide the effects desired (chemistry for providing the NiP plating with desired P amounts). As to the claim 18 immersion time, the Examiner has provided why it would be considered a result effective variable to be optimized, and applicant has not actually shown criticality to what is claimed, noting that features such as plating rate not claimed.
As to claim 19, it is understood that ‘069 and ‘084 provide the suggestion to provide the claimed features. As discussed for claim 14, the Examiner has provided discussion and detail as to why the features of these baths should be provided, that gives a proper rejection. As to the claim 20 immersion time, the Examiner has provided why it would be considered a result effective variable to be optimized, and applicant has not actually shown criticality to what is claimed, noting that features such as plating rate not claimed.
As to claim 21, the Examiner has provided ‘084 as to the contents of the composition, and the Examiner has provided motivation as to why ‘084 should be used, noting as discussed for claim 14 above. No showing of criticality has been made for the claimed ranges.
Conclusion
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/KATHERINE A BAREFORD/Primary Examiner, Art Unit 1718