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 .
DETAILED ACTION
Election/Restrictions
Applicant’s election of Group A, claims 1-5 and 7-10 without traverse in the reply filed on 26 Mar. 2026 is acknowledged.
Claims 6 and 11-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 26 Mar. 2026.
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 3, 5, and 9-10 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). It is not clear what is the meaning of the term “reactive” in claims 3, 5, and 9-10, and how this modifier is meant to limit the phrase “carbon-containing reactive layer”. The specification of the current invention states that the reaction may simply be the diffusion of the silver atoms into the carbon-containing reactive layer (US Patent Application 2024/0279816 A1, paragraph 0073 or paragraph 0030 of the specification of the current invention), which would not normally be considered a reaction. The term is indefinite because the specification does not clearly redefine the term. It is the examiner’s position that none of the particle types used in applicant’s examples (Table 2) would undergo a reaction during a sliding process.
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.
(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 1, 3-5, and 7-8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Uno et al. (JP 2008/248295 A, published 16 Oct. 2008, hereinafter Uno) as evidence provided by Material Properties (“Polyamide – Nylon – Density – Strength – Melting Point – Thermal Conductivity,” accessed 10 Apr. 2026, hereinafter Material Properties) and World Material (“Density Of Metals, All Common Metal Density Chart & Table PDF,” accessed 10 Apr. 2026, hereinafter World Material).
Regarding claims 1, 3-5 and 7-8, Uno teaches a plated material having lubricative particles, in which a composite plating layer has lubricating particles dispersed in silver, and this part is used in a sliding contact (Abstract and paragraphs 0014 and 0046). Uno teaches the size of the lubricating particle is 0.2 to 3 µm (paragraph 0026), and the amount of the lubricating particles is 1 to 30 vol.% (paragraph 0033). Uno teaches that when the contact is slid, the surface plating layer is scraped away, capsules are crushed, releasing the lubricant, and the lubricant is supplied to the contact area (paragraph 0026). Uno teaches the amount of lubricant supplied can be controlled, so the required amount of lubricant is released only during sliding (paragraph 0026).
As evidenced by Material Properties, the density of polyamide is 1140 kg/m3 (1.14 g/cm3) (page 2, table).
As evidenced by World Material, the density of silver is 10.49 g/cm3 (page 3, table).
Since Uno teaches the amount of the lubricating particles in the silver plating layer is 1 to 30 vol.% (paragraph 0033) and assuming the density of the lubricant inside of the microcapsules is approximately the same density as the polyamide, the mass% of silver is 95.5 ((100-30 vol.%)*10.49/(100-30 vol.%+30 vol.%*1.14)) to 99.9 mass% ((100-1 vol.%)*10.49/(100-1 vol.%+1 vol.%*1.14)).
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 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.
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.
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied 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.
Claims 2 and 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Uno et al. (JP 2008/248295 A, published 16 Oct. 2008, hereinafter Uno) as evidence provided by Material Properties (“Polyamide – Nylon – Density – Strength – Melting Point – Thermal Conductivity,” accessed 10 Apr. 2026, hereinafter Material Properties) and World Material (“Density Of Metals, All Common Metal Density Chart & Table PDF,” accessed 10 Apr. 2026, hereinafter World Material).
Regarding claim 2, Uno teaches the elements of claim 1, and Uno teaches his lubricating particles have polyamide- or polyester-based outer walls and a higher alcohol, a polyhydric alcohol, or a fatty acid lubricant enclosed inside (paragraphs 0028-0029 and 0052). Polyamide contain carbonyl groups and amino groups, polyesters contain carbonyl groups, alcohols contain hydroxy groups, and fatty acids contain carbonyl groups.
Regarding claims 9 and 10, Uno teaches the elements of claims 3 and 5, and Uno teaches the size of the lubricating particle is 0.2 to 3 µm (paragraph 0026), and the amount of the lubricating particles is 1 to 30 vol.% (paragraph 0033). Uno teaches that when the contact is slid, the surface plating layer is scraped away, capsules are crushed, releasing the lubricant, and the lubricant is supplied to the contact area (paragraph 0026). Uno teaches the amount of lubricant supplied can be controlled, so the required amount of lubricant is released only during sliding (paragraph 0026).
It is the examiner’s position that given the size of the capsules ranges from 0.2 to 3 µm (200 to 3000 nm) and the 0.1 to 4.5 mass% of capsules in the silver layer, and the capsules are partially embedded in the silver layer, the lubricating layer formed after the crushing of the capsules during sliding would overlap with the claimed layer thickness of 200 nm or less.
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).
Therefore, it would have been obvious to one of ordinary skill in the art to have selected a size and an amount of the capsules or lubricating particles (and the resulting film thickness) from the overlapping portions of the ranges taught by Uno because overlapping ranges have been held to be prima facie obviousness.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Kitagawa et al. (WO 2012/067202 A1, published 24 May 2012, hereinafter Kitagawa) teaches a composite plating material comprising silver and capsules of lubricants. Yokoyama (JP S56/58994 A, published 22 May 1981, hereinafter Yokoyama) teaches a composite noble metal plating layer comprising silver and a nonmetallic fine powder. Yugawa (JP 2002/030489 A, published 31 Jan. 2002, hereinafter Yugawa) teaches a composite plating film comprising silver and fluorine-based polymer.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN VINCENT LAWLER whose telephone number is (571)272-9603. The examiner can normally be reached on M - F 8:00 am - 5:00 pm ET.
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, Callie Shosho can be reached on 571-272-1123. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JOHN VINCENT LAWLER/Primary Examiner, Art Unit 1787
Prosecution Insights