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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-12, 14, and 16-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-5, 7, 11-12, 15, and 17-18 of U.S. Patent No. 12,163,208. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition with structure and grain size overlapping the hydraulic device and piston with surface coating of an alloy layer and composition of claim 1 of the ‘208 patent and the courts have held that where claimed ranges overlap or lie inside one another a prima facie case of obviousness exists. See MPEP 2144.05.
Instant claim 2 overlaps materials of claim 3 of the ‘208 patent. Instant claims 3-4 recite Mo content overlapping claim 5 of the ‘208 patent. Instant claims 5-6 recite W, Ni, or Sn content overlapping claim 1 of the ‘208 patent. Instant claim 7 recites materials overlapping claim 18 of the ‘208 patent. Instant claim 8 recites a roughness and composition overlapping claims 12 and 15 of the ‘208 patent. Instant claim 9 recites an electrodeposited layer overlapping claim 4 of the ‘208 patent. Instant claim 10 recites materials overlapping claim 17 of the ‘208 patent. Instant claims 11-12 recite layers overlapping claim 11 of the ‘208 patent. Instant 14 recites an outer layer overlapping claims 12 and 15 of the ‘208 patent. Instant claims 16-20 recite features overlapping claim 7 of the ‘208 patent.
Claims 1 and 3-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 4-11, and 16-17 of U.S. Patent No. 12,359,289. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition with structure and grain size overlapping claims 1 and 16-17 of the ‘289 patent. Instant claims 3-4 overlap claim 4 of the ‘289 patent. Instant claims 5-6 overlap claim 1 of the ‘289 patent. Instant claim 7 overlaps claim 5 of the ‘289 patent. Instant claim 8 overlaps claim 6 of the ‘289 patent. Instant claim 9 overlaps claim 7 of the ‘289 patent. Instant claim 10 overlaps claim 8 of the ‘289 patent. Instant claims 11-12 overlap claim 9 of the ‘289 patent. Instant claim 13 overlaps claim 10 of the ‘289 patent. Instant claim 14 overlaps claim 11 of the ‘289 patent. Instant claim 15 overlaps claim 10 of the ‘289 patent. Instant claim 16 overlaps claim 1 of the ‘289 patent. Instant claim 17 overlaps claim 1 of the ‘289 patent. Instant claims 18-19 recite features overlapping claim 1 of the ‘289 patent.
Claims 1, 3-15, and 17-18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 2, 5-7, 9, 11-13, and 16-17 of U.S. Patent No. 12,516,403. Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition with structure and grain size overlapping claim 2 of the ‘403 patent. Instant claims 3-4 overlap claims 6-7 of the ‘403 patent. Instant claims 5-6 overlap claim 2 of the ‘403 patent. Instant claim 7 overlaps claim 5 of the ‘403 patent. Instant claim 8 overlaps claim 9 of the ‘403 patent. Instant claim 9 overlaps claim 11 of the ‘403 patent. Instant claim 10 overlaps claim 11 of the ‘403 patent. Instant claims 11-12 overlap claims 12-13 of the ‘‘403 patent. Instant claim 13 overlaps claim 16 of the ‘403 patent. Instant claim 14 overlaps claim 17 of the ‘403 patent. Instant claim 15 overlaps claim 16 of the ‘403 patent. Instant claims 17-18 recite features overlapping claim 2 of the ‘403 patent.
Claims 1, 3-7, and 9-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4, 7, and 9-14 of copending Application No. 17/844,400 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition with structure and grain size overlapping claim 1 of the ‘400 application. Instant claims 3-4 overlap claims 3-4 of the ‘400 application. Instant claims 5-6 overlap claim 1 of the ‘400 application. Instant claim 7 overlaps claim 7 of the ‘400 application. Instant claim 9 overlaps claim 9 of the ‘400 application. Instant claim 10 overlaps claim 10 of the ‘400 application. Instant claims 11-12 overlap claims 11-12 of the ‘400 application. Instant claim 13 overlaps claim 13 of the ‘400 application. Instant claim 14 overlaps claim 14 of the ‘400 application. Instant claim 15 overlaps claim 13 of the ‘400 application. Instant claims 16-20 recite features overlapping claim 1 of the ‘400 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5-6, 9-10, 12-16, and 19 of copending Application No. 17/844,406 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition overlapping claim 1 of the ‘406 application. Instant claim 2 overlaps claim 1 of the ‘406 application. Instant claims 3-4 overlap claims 5-6 of the ‘406 application. Instant claims 5-6 overlap claim 1 of the ‘406 application. Instant claim 7 overlaps claim 9 of the ‘406 application. Instant claim 8 overlaps claim 10 of the ‘406 application. Instant claim 9 overlaps claim 16 of the ‘406 application. Instant claim 10 overlaps claim 12 of the ‘406 application. Instant claims 11-12 overlap claims 13-14 of the ‘406 application. Instant claim 13 overlaps claim 15 of the ‘406 application. Instant claim 14 overlaps claim 16 of the ‘406 application. Instant claim 15 overlaps claim 15 of the ‘406 application. Instant claim 16 overlaps claim 19 of the ‘406 application. Instant claim 17 overlaps claim 1 of the ‘406 application. Instant claims 18-20 recite features overlapping claim 19 of the ‘406 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1, and 3-16 and 18-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, 7, 9, 11, and 13-16 of copending Application No. 17/844,480 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component, a surface coating alloy layer, and composition with structure and grain size overlapping claim 5 of the ‘480 application. Instant claims 3-4 overlap claim 5 of the ‘480 application. Instant claims 5-6 overlap claims 1 and 7 of the ‘480 application. Instant claim 7 overlaps claim 4 of the ‘480 application. Instant claim 8 overlaps claim 10 of the ‘480 application. Instant claim 9 overlaps claim 11 of the ‘480 application. Instant claim 10 overlaps claim 1 of the ‘480 application. Instant claims 11-12 overlap claims 13-14 of the ‘480 application. Instant claim 13 overlaps claim 15 of the ‘480 application. Instant claim 14 overlaps claim 16 of the ‘480 application. Instant claim 15 overlaps claim 15 of the ‘480 application. Instant claim 16 overlaps claim 1 of the ‘480 application. Instant claims 18-20 recite features overlapping claim 1 of the ‘480 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 and 3-15 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-7, 9, 11-13, and 16-18 of copending Application No. 18/542,659 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because instant claim 1 recites a device comprising a movable component a surface coating alloy layer and composition with structure and grain size overlapping claim 1 of the ‘659 application. Instant claims 3-4 overlap claims 3-4 of the ‘659 application. Instant claims 5-6 overlap claims 5-6 of the ‘659 application. Instant claim 7 overlaps claim 7 of the ‘659 application. Instant claim 8 overlaps claim 9 of the ‘659 application. Instant claim 9 overlaps claim 11 of the ‘659 application. Instant claim 10 overlaps claim 1 of the ‘659 application. Instant claims 11-12 overlap claims 12-13 of the ‘659 application. Instant claim 13 overlaps claim 16 of the ‘659 application. Instant claim 14 overlaps claim 17 of the ‘659 application. Instant claim 15 overlaps claim 18 of the ‘659 application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Instant claim 1 recites “wherein the alloy layer comprises uniform and non-uniform grain sizes with an average grain size less than 2 microns” and the only support for this limitation is found in Paragraph 133 of the originally filed specification which states, “a nickel molybdenum alloy with uniform and non-uniform grain sizes, a nickel molybdenum alloy with an average grain size less than 2 microns”. Instant claim 1 recites where the alloy comprises material (iii) of at least one of W, Ni, and Sn. Accordingly, the recited uniformity, non-uniformity, and average grain size is considered new matter as the original disclosure requires the presence of both Ni and Mo in the alloy and the scope of the instant claim extends to embodiment of alloys not requiring Ni, but having the claimed features. These non-Ni containing embodiments are not supported in applicant’s original disclosure. Claims 2-20 are included in this rejection as they depend upon a rejected claim.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-7 and 9-20 are rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger et al. (US 2011/0256356 – previously cited).
Considering claim 1, Tomantschger teaches deposited fine-grained metallic materials (abstract) where the article comprises brake components, steering components, oil and transmission pumps (Paragraph 111), pistons, etc. (Paragraph 160) (e.g. a device comprising a movable component configured to contact a functional fluid during movement). The metallic material is an electrodeposited coating (Paragraph 9) of an alloy comprising (i) Ni, etc., (ii) at least one of C, O, and S, and (iii) at least one of B, P, Mo, and W (Paragraphs 95-98) where (i) is present from 75-99.% by weight (Paragraph 99). Further, the alloy may have grain sizes which vary as demonstrated in Fig.1 showing a Ni layer with three sections containing grain sizes of an average of 40 nm, 85 nm, and 275 nm (Fig. 1; Paragraph 43) and each section comprises uniform grains and the section comprising 40 nm average grain sizes is non-uniform to the section containing average grain sizes of 85 nm.
While not expressly teaching a singular example of the claimed device this would have been obvious to one of ordinary skill in the art before the effective filing date in view of the teachings of Tomantschger as this is considered a combination of a conventionally known device with a metal coating known to improve durability and one would have had a reasonable expectation of success. Further, the Ni content taught by Tomantschger overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed by the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Considering claim 2, Tomantschger teaches where (i) may comprise Cr and Co (Paragraph 96).
Considering claims 3-4, Tomantschger teaches where (iii) comprises Mo in 500 ppm to 25% (Paragraphs 98-99). See MPEP 2144.05.
Considering claims 5-6, Tomantschger teaches where (i) comprises Ni and ranges from 75-99.9% (Paragraphs 96 and 99). See MPEP 2144.05.
Considering claim 7, Tomantschger teaches where the alloy may be Ni, Mo, and C (Paragraphs 96-98).
Considering claim 9, Tomantschger teaches where the alloy layer is electrodeposited (Paragraph 9) on the outer surface (Paragraph 111). Further, the recitation of “is an electrodeposited layer” is considered a product-by-process limitation and is not considered to render a patentable distinction absent a showing as to how the claimed process affects the structure of the final device. See MPEP 2113.
Considering claim 10, Tomantschger teaches where the alloy may be Ni, Mo, and C (Paragraphs 96-98).
Considering claim 11, Tomantschger teaches where inner layers may be included between the substrate and metallic alloy layer (Paragraph 118) and exemplifies the use of Ni, (Paragraph 43), Fe (Paragraph 49) and Cu (Paragraph 52).
Considering claim 12, Tomantschger teaches further alternating layer systems of 2 layers (Paragraph 125-126) and exemplifies the use of Ni (Paragraph 45) and Fe (Paragraph 184).
Considering claim 13, Tomantschger teaches where the alloy layer may comprise particles of metal oxides of silicon, polymer, diamond, SiC, etc. (Paragraph 100).
Considering claim 14, Tomantschger teaches where the metallic alloy layer may be the outer layer (Paragraph 111) (e.g. optionally exposed) and where the alloy may be absent precious metals (Paragraphs 96-99).
Considering claim 15, Tomantschger teaches where the alloy layer may comprise particles (Paragraph 100).
Considering claims 16-20, Tomantschger teaches where the component may be an oil and transmission pump or transmission component (Paragraph 111), pistons, etc. (Paragraph 160) or hydraulic components (Paragraph 118) (e.g. devices which move in a linear direction, rotational direction, in response to a compressive force and between positions, and in response to a hydraulic force).
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Tomantschger et al. (US 2011/0256356 – previously cited) as applied to claim 1 above further in view of Sklar (US 2016/0002803).
Considering claim 8, the teachings of Tomantschger as applied to claim 1 are outlined above. Tomantschger teaches where the alloy layer comprises Mo in a range of 500 ppm to 25% and is optionally absent precious metals (Paragraph 95-99) where the alloy layer affords wear resistance (Paragraph 11) and corrosion resistance (Paragraph 34). However, Tomantschger does not each the claimed surface roughness.
In a related field of endeavor, Sklar teaches electrodeposited Ni and/or Cr coatings with high hardness (abstract) which provide corrosion-, wear- and abrasion-resistance (Paragraph 4). The coating may comprise Ni, Mo, W, C, etc. (Paragraph 35) and have an average roughness Ra of less than 0.1 micrometers (Paragraph 38).
As both Tomantschger and Sklar teach Ni coatings for wear resistance they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the coatings of Tomantschger and to include the Ra roughness taught by Sklar as this is considered a combination of roughness features known to afford protective and decorative coatings and one would have had a reasonable expectation of success. Further, the Ra roughness taught by modified Tomantschger overlaps that which is claimed and the courts have held that where claimed ranges overlap or lie inside of those disclosed in the prior art a prima facie case of obviousness exists. See MPEP 2144.05.
Response to Arguments
Applicant's arguments filed 16 December regarding Double Patenting Rejections have been fully considered but they are not persuasive. Applicant indicates a terminal disclaimer may be filed after the claims are deemed allowable (remarks p.5, section III). As outlined above, the Double Patenting Rejections are still proper and therefore are maintained. The prior provisional rejections over application numbers 17/844436 and 17/844486 are no longer provisional rejections as the applications have been granted as US 12,359,289 and US 12,516,403, respectively.
Applicant’s arguments, see remarks p.5, section IV, filed 16 December 2025, with respect to 35 USC 112(b) have been fully considered and are persuasive. The rejection of claims 3-4 has been withdrawn. Applicant has amended the claims to remove indefiniteness.
Applicant’s arguments, see remarks pp.5-6, sections V-VI, filed 16 December 2025, with respect to 35 USC 103 rejections have been fully considered and are persuasive. The rejections of claims 1-20 in view of Rangaswamy and Haghdoost have been withdrawn. Applicant has amended the claims to recite a combination of features not disclosed by Rangaswamy or Haghdoost. However, upon further consideration, a new ground(s) of rejection is made in view of Tomantschger and Sklar as outlined above.
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 SETH DUMBRIS whose telephone number is (571)272-5105. The examiner can normally be reached M-F 6:00 AM - 3:30 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784