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 .
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 1-4, 6, 10-12, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US 10,274,031 – previously cited) in view of Porkert et al. (US 5,894,010).
Considering claim 1, Chung teaches a method of manufacturing a brake disk (abstract) comprising casting a disk body with gray cast iron containing 3.1-3.7 wt.% C, 1.7-2.5 wt.% Si, and impurities (Column 1 lines 63-66), subsequently machining the surface of the disk body (post-processing a surface), then performing a nitride treatment on the machined surface (Column 3 lines 40-49) using a nitriding gas (Column 4 lines 19-28). However, Chung does not teach the claimed alloy.
In a related field of endeavor, Porkert teaches a gray cast iron for casting blanks of brake disks (abstract). The alloy comprises by weight C: 3.65-3.95%, Si: 1.8-2.20, Mn: 0.60-0.80%, Cu: 0.30-0.50% (Column 1 lines 53-67) and contain 0.01-0.06% of impurities of Ni, etc. (abstract). The alloy has a higher service life and reduced heat crack formation (Column 1 lines 49-52).
As both Chung and Porkert teach cast iron for brake discs they are considered analogous. It would have been obvious to one of ordinary skill in the art to modify the teachings of Chung with the alloy of Porkert as this is known to have a higher service life and reduced heat crack formation and one would have had a reasonable expectation of success. Further, the composition disclosed by modified Chung 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.
Considering claim 2, Porker teaches where the Ni content may be 0.01-0.06% (abstract). See MPEP 2144.05.
Considering claim 3, Porker teaches where the content range of Cu is 0.30-0.50% (Column 1 lines 53-67).
Considering claim 4, Porker teaches where the Sn content may be 0.01-0.06% (abstract). See MPEP 2144.05.
Considering claim 6, Chung teaches where the nitriding is performed using NH3 (Column 4 lines 19-21).
Considering claim 10, Chung does not specify the claimed nitrogen potential. However, as outlined above, Chung teaches a substantially identical nitriding treatment using ammonia as that which is claimed and disclosed and therefore this feature is expected to be present, absent an objective showing. See MPEP 2112.02.
Considering claims 11-12, Chung teaches where the nitriding step forms a diffusion layer between the disk body and nitride layer with a thickness of 0.2 mm or less (e.g. 200 µm or less) (Column 2 lines 6-9). See MPEP 2144.05.
Considering claim 16, Chung teaches where an oxynitride step to form an iron oxide layer is not performed (Column 2 lines 34-36).
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US 10,274,031 – previously cited) in view of Porkert et al. (US 5,894,010) as applied to claim 1 above further in view of Kwon et al. (US 2020/0191215 – previously cited).
Considering claim 9, the teachings of Chung and Porkert as applied to claim 1 are outlined above. Neither Chung nor Porkert teach the claimed materials.
In a related field of endeavor, Kwon teaches a method of manufacturing a brake disc with a nitride layer (abstract). The part comprises a gray cast iron (Paragraph 11) with the nitride layer formed thereon which contains a nitride of an epsilon phase to strengthen the region (Paragraphs 14 and 27) having a composition of Fe2-3N (Paragraph 44).
As Chung, Porkert, and Kwon teach cast iron brake components they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the teachings of Chung and Porkert with the epsilon nitride material as this is known to strengthen the coating and one would have had a reasonable expectation of success.
Claims 1, 3-8, and 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Sugai et al. (US 2014/0060983 – previously cited) in view of Cha et al. (KR 20140012306 – machine translation).
Considering claim 1, Sugai teaches a method of manufacturing a cast-iron friction member (abstract) including vehicular disc brake components (Paragraphs 2 and 4) (e.g. a disc body). The method comprises casting the body with cast iron, removing unnecessary parts and degreasing (e.g. a post-processing a surface), and subsequently nitriding in an ammonia and nitrogen atmosphere (Paragraphs 74-75). The cast iron may be a gray cast iron (Paragraph 36). However, Sugai does not teach the claimed cast iron alloy.
In a related field of endeavor, Cha teaches a method of forming a nitride layer on a brake disc on a cast iron alloy (abstract). The alloy comprises gray cast iron with a composition by weight of C: 3.65%, Si: 2.1%, Mn: 0.6%, P: 0.072%, S: 0.1%, Cr: 0.15%, Mo: 0.01%, Cu: 0.25%, Sn: 0.008%, balance Fe (p.4, 5th paragraph).
As both Sugai and Cha teach methods of nitriding brake discs 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 teachings of Sugai and to substitute the gray cast iron alloy taught by Cha as this is considered a combination of conventionally known prior art elements according to known methods and one would have had a reasonable expectation of success. Further, the composition disclosed by modified Sugai 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.
Considering claim 3, Cha teaches where the alloy comprises Cu: 0.25% (p.4, 5th paragraph) and while not expressly overlapping the claimed 0.3-0.8% Cu, the courts have held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close such that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05(I) and Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985). It is the examiner’s position that no patentable distinction exists between the 0.25% Cu taught by Cha and that which is claimed.
Considering claim 4, Cha taches a Sn content of 0.008% (p.4, 5th paragraph). See MPEP 2144.05.
Considering claim 5, Sugai teaches where the nitriding is performed at 500-590 °C (Paragraph 61) for 0.5-4 hours (Paragraph 62). See MPEP 2144.05.
Considering claim 6, Sugai teaches where the nitriding is conducted with gases of ammonia and nitrogen (Paragraph 54).
Considering claims 7-8, Sugai teaches where the thickness of the nitride layer is 5-25 µm (Paragraph 22). See MPEP 2144.05.
Considering claim 10, Sugai does not specifically teach the claimed nitrogen potential. However, as outlined above, Sugai teaches a substantially identical nitriding treatment using ammonia and nitrogen as that which is claimed and disclosed and therefore this feature is expected to be present, absent an objective showing. See MPEP 2112.02.
Considering claims 11-12, Sugai teaches where the nitriding forms a diffusion layer beneath the nitrogen compound layer having a thickness of 25-450 microns (Paragraph 22). See MPEP 2144.05.
Considering claim 13, Sugai teaches where the cast iron body is heated at 600-700 °C under similar conditions as the forming process (e.g. under a reducing atmosphere) after casting (Paragraph 56). See MPEP 2144.05.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Sugai et al. (US 2014/0060983) in view of Cha et al. (KR 20140012306 – machine translation) as applied to claim 1 above further in view of Kwon et al. (US 2020/0191215).
Considering claim 9, the teachings of Sugai and Cha as applied to claim 1 are outlined above. Neither Sugai nor Cha teach the claimed materials.
In a related field of endeavor, Kwon teaches a method of manufacturing a brake disc with a nitride layer (abstract). The part comprises a gray cast iron (Paragraph 11) with the nitriding layer formed thereon which contains a nitride of an epsilon phase to strengthen the region (Paragraphs 14 and 27) having a composition of Fe2-3N (Paragraph 44).
As Sugai, Cha, and Kwon teach cast iron brake components they are considered analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to further modify the teachings of Sugai and Cha with the epsilon nitride material as this is known to strengthen the coating and one would have had a reasonable expectation of success.
Allowable Subject Matter
Claims 14-15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter: The closest prior art to the instant claims 14-15 is that of Sugai as outlined above. The claims differ in that Sugai teaches where the component is cooled after nitriding from 400-480 °C in the furnace and then is removed from the furnace and cooled to room temperature (Paragraph 42). There is no teaching or suggestion to modify Sugai to cool to the recited temperature within the furnace as Sugai teaches where cooling below 400 °C in the furnace prevents forming a uniform and dense oxide (Paragraph 43) which teaches away from that which is claimed.
Response to Arguments
Applicant’s arguments, see remarks p.6, 1st paragraph, filed 12 August 2026, with respect to the rejection(s) of claim(s) 1-13 and 16 under 35 USC in view of primary references Chung and Sugai in view of Zhang and also in view of Lampic-Oplander and Kwon have been fully considered and are persuasive. Zhang does not teach the amended Si content in the alloy. Therefore, the rejections have been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Chung in view of Porkert and Sugai in view of Cha as outlined above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Larson et al. (US 3,373,484), Miller (US 3,559,775), Suenaga et al. (US 4,807,728), and Daudi et al. (US 2001/0040075) teach cast iron alloys similar to that which is claimed.
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.
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SETH DUMBRIS
Primary Examiner
Art Unit 1784
/SETH DUMBRIS/Primary Examiner, Art Unit 1784
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