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 .
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 6-8, 10-12, 17 and 19-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kato et al. (WO2016121937).
Regarding claims 6, 10 and 21, Kato teaches that it is known to provide bodies made from stainless steel (see 3rd paragraph of Description of Embodiments) that may comprise a two layer coating system comprising a lower layer DLC coating covered by an upper layer PLC coating (see Fig 5A and description thereof).
Regarding claim 7, Kato teaches an exemplary embodiment wherein the combined film thickness may be 375nm (Fig. 5B) but also teaches wherein layers may read upon the claimed range (see Description of Embodiments, para. 5).
Regarding claim 8, Kato teaches wherein the DLC layer may be silicon doped (see Fig. 5B).
Regarding claim 11, Kato further teaches wherein the PLC may comprise oxygen (see Thirteenth Friction Test section, third from last paragraph).
Regarding claim 12, Kato teaches hardness values in the range claimed (see Fig. 5B).
Regarding claim 17, the layers of Kato are shown to vary in thickness (Fig. 5B).
Regarding claims 19-20, the coating of Kato would be expected to be resistant to the same materials for the same length of time as the current claims because the coating of Kato is shown to be the same coating material claimed. The discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer.” Atlas Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.
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 13-14, 18 and 25 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (WO2016121937) as applied to 6-8, 10-12, 17 and 19-21 above.
Regarding claim 13, the teachings of Kato are as shown above. Kato fails to teach wherein the coating hardness is within the range claimed but rather slightly above the range claimed. However, those of ordinary skill in the art would readily recognize that the hydrogen and oxygen additives applied to the PLC coating and the silicon additive added to the DLC coating of Kato as cited above are stabilizing dopants provided in the PLC and DLC compositions wherein these elements and the amount of them present would directly affect the physical properties of the PLC and DLC coatings including the hardness of the coatings provided. Therefore, in the absence of criticality of the specific hardness range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amounts of dopants present in the PLC and DLC coatings of Kato in order to control the hardness of the coating of Kato.
Regarding claim 14, the teachings of Kato are as shown above. Kato fails to teach wherein the coefficient of friction is within the range claimed but rather slightly below the range claimed and sometimes bordering thereon (see Figs 6-18) . However, those of ordinary skill in the art would readily recognize that the hydrogen and oxygen additives applied to the PLC coating are stabilizing dopants provided in the PLC composition wherein these elements and the amount of them present would directly affect the physical properties of the PLC coating including the coefficient of friction of the coatings provided. Therefore, in the absence of criticality of the specific coefficient of friction range of the current claims, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the amounts of dopants present in the PLC coatings of Kato in order to control the coefficient of friction of the coating of Kato.
Regarding claim 18, the teachings of Kato are as shown above. Kato fails to teach wherein a third layer is present. However, the current claim would read upon merely duplicating the PLC coating of Kato or dividing the PLC coating of Kato arbitrarily into two layers wherein the Court has long held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Regarding claim 25, the teachings of Kato are as shown above. Kato fails to teach wherein a third layer is present. However, the current claim would read upon merely duplicating the DLC coating of Kato or dividing the DLC coating of Kato arbitrarily into two layers and further coating them with the PLC coating as described above wherein the Court has long held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. See In reHarza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).
Claims 9 and 24 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (WO2016121937) as applied to claims 6-8, 10-12, 17 and 19-21 above and further in view of Bhavsar et al. (USPGPub 2008/0236842).
Regarding claim 9,the teachings of Kato are as shown above. Kato fails to teach wherein the DLC is doped with tungsten. However, Bhavsar teaches that it is known to dope DLC coatings with tungsten in order to control the tribological properties of the DLC material [0032]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include the tungsten of Bhavsar in the DLC coating of Kato in order to control the tribological properties of the DLC materials of Kato.
Regarding claim 24, the teachings of Kato are as shown above. Kato fails to teach wherein the base material is a nickel-based alloy. However, Bhavsar teaches that nickel-based alloys are known substitutes for stainless stee materials as base material for DLC overcoats [0012-0013]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the nickel based alloy of Bhavsar as the base metal of Kato as a simple substitution of one known base metal substrate for DLC coating for another wherein the results of said substitution would have been predictable based upon the teachings of Bhavsar.
Claims 6 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Schaeffer et al. (DE102007018716) in view of Kato et al. (WO2016121937).
Regarding claims 6 and 15, Schaeffer teaches that it is known to apply DLC frictional coatings metallic substrates (see paragraph before Reference-Signs-List section) on the contact areas between pistons and piston housing (see Fig. 3 and 4 and Field of Invention section). Schaeffler fails to teach wherein the DLC coating is a DLC coating covered with PLC. However, Kato teaches that it is known to provide a DLC/PLC combination coating as an alternative to DLC coatings alone in lubrication films (see Background of Invention section) wherein it is noted that Kato also teaches the use of the coating on piston parts (see Description of Embodiments section). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to DLC/PLC coating system of Kato for the DLC coating system of Schaeffler as a simple substitution of one known DLC based frictional coating on piston parts for another wherein the results of said substitution would have been predictable based upon the teachings of Kato.
Claims 6 and16 are rejected under 35 U.S.C. 103 as being unpatentable over Bailey et al. (USPGPub 2010/0206553) in view of Kato et al. (WO2016121937).
Regarding claims 6 and 16, Bailey teaches that it is known to apply DLC coatings (abstract) for frictional purposes onto oil production parts that may be part of fluid analysis systems [0012]. Bailey fails to teach wherein the DLC coating is a DLC coating covered with PLC. However, Kato teaches that it is known to provide a DLC/PLC combination coating as an alternative to DLC coatings alone in lubrication films (see Background of Invention section). Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to DLC/PLC coating system of Kato for the DLC coating system of Bailey as a simple substitution of one known DLC based frictional coating for another wherein the results of said substitution would have been predictable based upon the teachings of Kato.
Claims 22-23 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (WO2016121937) as applied to claims 6-8, 10-12, 17 and 19-21 above and further in view of Dorfman et al. (WO2005/043648).
Regarding claims 22-23, the teachings of Kato are as shown above. Kato fails to teach wherein the PLC coating may further comprises silicon dopants. However, Dorfman teaches that it is known to incorporate silicon and oxygen into PLC coating structures in order to stabilize them [0013]. Therefore, it would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to include the silicon and oxygen dopants of Dorfman in the PLC coating of Kato in order to stabilize said coating.
Response to Arguments
Applicant’s arguments with respect to claim(s) have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 ANDREW J BOWMAN whose telephone number is (571)270-5342. The examiner can normally be reached Mon-Sat 5:00AM-11:00AM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dah-Wei Yuan can be reached at 571-272-1295. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDREW J BOWMAN/Examiner, Art Unit 1717
/Dah-Wei D. Yuan/Supervisory Patent Examiner, Art Unit 1717
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