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 § 102/103
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.
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 and 3 are rejected under 35 U.S.C. 102(a)(1) as anticipated by Shibuya et al. (WO 2006/006697) or, in the alternative, under 35 U.S.C. 103 as obvious over Shibuya et al. (WO 2006/006697) in view of Gates et al. (US Pat. 4,919,829).
Regarding claims 1 and 3, Shibuya et al. teach a sliding member [0022] including sliding bearing comprising a base layer (substrate) and a resin coating layer formed on the base layer wherein the resin coating layer includes a polyamideimide resin [0030] as a binder, a solid lubricant (including molybdenum disulfide) [0051 and 0054], boehmite particles of greater than 0 vol% and less than or equal to 1.0 vol. % [0057] and inevitable impurities (as stated in the claim, the impurities are inevitable so they are present). Shibuya et al. teach 100 pbw resin, 400 pbw or less of molybdenum disulfide and 0-99 pbw of boehmite filler based on 100 pbw resin and therefore with a simple match calculation the volume percent is determined to be in the claimed range. As set forth in MPEP 2144.05, in the case where the claimed range “overlap or lie inside ranges disclosed by the prior art”, a prima facie case of obviousness exists, In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
In the alternative, Gates et al. teach use of boehmite because it reduces frictional coefficients between contacting surfaces. It would have been obvious to one of ordinary skill in the art to use the boehmite as taught by Gates et al. in Shibuya et al. because it reduces frictional coefficients between contacting surfaces and arrive at the claimed invention.
Art Not Used but Relevant
PG Pub. 2013/0337271 teaches a sliding member comprising a base layer and a resin coating layer.
Response to Arguments
Applicant’s arguments with respect to the claims 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 SHAWN MCKINNON whose telephone number is (571)272-6116. The examiner can normally be reached Monday thru Friday generally 8:00am-5:00pm EST.
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/Shawn Mckinnon/Examiner, Art Unit 1789