DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 March 4, 2026 has been entered. Claims 1-3 and 5-21 are pending, claim 4 has been cancelled, claim 21 is new, and claims 9-18 remain withdrawn as directed to non-elected subject matter.
Claim Rejections - 35 USC § 103
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 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (CN110885995, references herein made to the English language translation obtained from EPO espacenet July 8, 2025) in view of Murakami (PGPub US 2009/0245709).
Regarding applicants’ claims 1-3 and 6, Fan et al. disclose a multilayer solid lubricating coating comprising a substrate and 4 to 8 composite layers including a bottom layer and a lubricant layer, the bottom layer deposited from an electrolyte solution containing copper, and the lubricant layer deposited from a solution containing copper and graphite (page 3 line 16 – page 4 line 15). The resulting layer structure includes layers of copper (not containing graphite) alternating with layers of copper containing graphite. The bottom layer of the first composite layer is a layer copper and is considered a first metal layer plated on the outside of a substrate which does not include graphite, where the subsequently deposited lubricant layer is a second alloy layer on the outside of the first metal layer, the second alloy layer including an alloy synthesized from graphite and metal (copper). The second composite layer constitutes a third metal layer and fourth alloy layer as set forth in claim 1, where the third composite layer constitutes a fifth metal layer and sixth alloy layer as set forth in claims 2 and 3 respectively.
Fan et al. disclose a porosity to the composite layers but do not appear to explicitly disclose an organic layer covering the outermost side of the coting structure. Murakami disclose a pore sealing coating formed from organic compounds that improves the mechanical properties of the base material is for use with bearings (paragraph 0015-0016 and 0029). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to apply the coating of Murakami to the lubricating coating of Fan et al. to provide improved mechanical properties. The application of a coating comprising organic compounds is an organic layer covering that is also a sealing agent.
Regarding applicants’ claim 5, the fourth or outermost composite layer may be considered a metal sealing layer plated on the coating structure where the composite layer comprises metal and isolates the layers underneath from the environment.
Regarding applicants’ claims 7 and 8, Fan et al. do not appear to exemplify a coating where the first and third metal layers, and the second and fourth alloy layers include a metal selected from those materials claimed, such as tin or silver. Fan et al. lists examples of softer metals from which solid lubricating coatings are generally made, the list including Ag (silver) and Sn (tin) (page 1 lines 32). One of ordinary skill in the art would before the effective filing date of the invention would have found it obvious to form the composite layers of Fan et al. from known solid lubricating materials such as tin or silver which have been demonstrated effective metals in solid lubricating coatings. Where a metal such as silver is selected, the composite would be formed of silver such that the bottom layer would be silver without graphite, and the lubricating layer would be silver including graphite.
Regarding applicants’ claim 21, the surface of at least one of the lubricating layers is expected to be substantially free of graphite where the graphite particles are entrained in the copper during deposition of the lubricating layer. While it is possible that a limited number of particles may be left behind when the surface is removed from the electrolyte, the claims require at least one surface to be substantially free of graphite particles, thereby allowing the presence of some particles. Fan et al. do not disclose fixing of, or the addition of graphite particles on the surface such that the surface would be considered to have, thereon, an appreciable amount of graphite powder.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Fan et al. (CN110885995, references herein made to the English language translation obtained from EPO espacenet July 8, 2025) in view of Murakami (PGPub US 2009/0245709).
Regarding applicants’ claim 19, Fan et al. disclose a multilayer solid lubricating coating comprising a substrate and 4 to 8 composite layers including a bottom layer and a lubricant layer, the bottom layer deposited from an electrolyte solution containing copper, and the lubricant layer deposited from a solution containing copper and graphite (page 3 line 16 – page 4 line 15). The resulting layer structure includes layers of copper (not containing graphite) alternating with layers of copper containing graphite. The bottom layer of the first composite layer is a layer copper and is considered a first metal layer plated on the outside of a substrate which does not include graphite, where the subsequently deposited lubricant layer is a second alloy layer on the outside of the first metal layer, the second alloy layer including an alloy synthesized from graphite and metal (copper).
One of ordinary skill in the art before the effective filing date of applicants’ claimed invention would have found it obvious to select a number of layers for the composite within the disclosed range of layers including numbers of layers that result in the outer layer being a copper layer without graphite. Where the final layer is selected to be a copper layer (not containing graphite) it has the necessary structure to be a meal sealing layer consisting of metal and plated on the stack of layers (the remaining layers of the composite).
The surface of at least one of the lubricating layers is expected to be substantially free of graphite where the graphite particles are entrained in the copper during deposition of the lubricating layer. While it is possible that a limited number of particles may be left behind when the surface is removed from the electrolyte, the claims require at least one surface to be substantially free of graphite particles, thereby allowing the presence of some particles. Fan et al. do not disclose fixing of, or the addition of graphite particles on the surface such that the surface would be considered to have, thereon, an appreciable amount of graphite powder.
Regarding applicants’ claim 20, Fan et al. disclose a coating where the outermost composite layer may be considered a metal sealing layer plated on the coating structure (as discussed above) where the composite layer comprises metal and isolates the layers underneath from the environment. Fan et al. however do not appear to explicitly disclose an organic layer covering the outermost side of the coting structure. Fan et al. disclose a porosity to the composite layers but do not appear to explicitly disclose an organic layer covering the outermost side of the coating structure. Murakami disclose a pore sealing coating formed from organic compounds that improves the mechanical properties of the base material is for use with bearings (paragraph 0015-0016 and 0029). One of ordinary skill in the art before the effective filing date of the invention would have found it obvious to apply the coating of Murakami to the lubricating coating of Fan et al. to provide improved mechanical properties. The application of a coating comprising organic compounds is an organic layer covering that is also a sealing agent.
Response to Amendments/Arguments
Applicants’ amendments to the claims filed March 4, 2026 have overcome the rejections over Liang et al. Liang et al. disclose an overlay containing graphite where there is no motivation such that one of ordinary skill in the art would not have found it obvious to modify the overlay to remove the graphite. Following further search and consideration new grounds of rejection have been identified in view of Murakami as applied above. This office action is non-final.
Conclusion
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/Adam Krupicka/Primary Examiner, Art Unit 1784
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