Prosecution Insights
Last updated: September 17, 2026
Application No. 18/665,830

APPARATUS AND METHOD TO EVALUATE THE EFFECT OF ELECTRICAL POTENTIAL BETWEEN MOVING SURFACES

Non-Final OA §103
Filed
May 16, 2024
Priority
May 16, 2023 — provisional 63/502,515
Examiner
ZHONG, XIN Y
Art Unit
2855
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Pcs Instruments Ltd.
OA Round
1 (Non-Final)
76%
Grant Probability
Favorable
1-2
OA Rounds
5m
Est. Remaining
92%
With Interview

Examiner Intelligence

Grants 76% — above average
76%
Career Allowance Rate
484 granted / 634 resolved
+8.3% vs TC avg
Strong +15% interview lift
Without
With
+15.3%
Interview Lift
resolved cases with interview
Typical timeline
2y 9m
Avg Prosecution
34 currently pending
Career history
657
Total Applications
across all art units

Statute-Specific Performance

§101
1.0%
-39.0% vs TC avg
§103
56.1%
+16.1% vs TC avg
§102
16.4%
-23.6% vs TC avg
§112
24.4%
-15.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 634 resolved cases

Office Action

§103
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 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 1-6, 8 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS). Regarding claim 1, Yamamoto teaches an electrically insulated ball on disk test unit comprising: a. a disk (Fig.1, “disc”); b. a rotating ball (Fig.1, “rotating ball”) configured to be mechanically loaded against the disk (Pages 641-642, under subtitle “2. Experimental Method”); c. a negative electrode in electrical communication with the rotating ball and a positive electrode in electrical communication with the disk, or a positive electrode in electrical communication with said ball and a negative electrode in communication with said disk; d. wherein the negative and positive electrodes are configured to supply an electrical potential between the rotating ball and the disk (Figs.1-2 and pages 641-642, under subtitle “2. Experimental Method”). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 2, the combination of Yamamoto and Larsson teaches all the features of claim 1 as outlined above, Yamamoto further teaches a container configured to contain a lubricant or oil and said disk (Page 642, Fig.1, “Oil reservoir”). Larsson teaches the disk is an electrically isolated rotating disk (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 3, the combination of Yamamoto and Larsson teaches all the features of claim 2 as outlined above, Yamamoto further teaches wherein said container includes one or a plurality of heaters configured to heat contained oil or lubricant (Page 642, Fig.1, “Heater”). Regarding claim 4, the combination of Yamamoto and Larsson teaches all the features of claim 3 as outlined above, Larsson further teaches a thermocouple to measure temperature (Page 21, under subtitle “3.1.1 Temperature”). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to incorporate Larsson’s thermocouple into Yamamoto’s system because it would measure the temperature of the lubricant. Regarding claim 5, Yamamoto teaches a method for evaluating the effects of electrical potential on one or more lubricants or oils in a test unit comprising: supplying a test unit having a disk (Fig.1, “disc”), a rotating ball (Fig.1, “rotating ball”) configured to be mechanically loaded against said disk (Pages 641-642, under subtitle “2. Experimental Method”), a negative electrode in electrical communication with said ball and a positive electrode in electrical communication with said disk or a positive electrode in electrical communication with said ball and a negative electrode in communication with said disk, wherein said negative and positive electrodes are configured to supply an electrical potential between said rotating ball and said disk; introducing one or more lubricants or oils between said rotating ball and said disk; rotating said ball relative to said disk; and applying a mechanical load and an electrical potential between said ball and said disk (Figs.1-2 and pages 641-642, under subtitle “2. Experimental Method”). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 6, the combination of Yamamoto and Larsson teaches all the features of claim 5 as outlined above, Yamamoto further teaches heating said one or more lubricants or oils between said rotating ball and disk (Page 642, Fig.1, “Heater”). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 8, the combination of Yamamoto and Larsson teaches all the features of claim 5 as outlined above, Yamamoto further teaches measuring the friction between said ball and said disk (Abstract). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 10, the combination of Yamamoto and Larsson teaches all the features of claim 5 as outlined above, Yamamoto further teaches wherein said lubricant or oil comprises automatic transmission fluid (Pages 641-642, under subtitle “2. Experimental Method”). Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Hamer et al. (U.S. Publication No. 20220316975). Regarding claim 7, the combination of Yamamoto and Larsson teaches all the features of claim 6 as outlined above, the combination of Yamamoto and Larssonis silent about heating said one or more lubricants or oils to a selected temperature. Hamer teaches heating said one or more lubricants or oils to a selected temperature (Paragraphs 44 and 80). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to heat Yamamoto’s oils to a selected temperature because it would simulate real-world operating conditions and measures how heat affects fluid performance. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Mihoya et al. (U.S. Publication No. 6171706). Regarding claim 9, the combination of Yamamoto and Larsson teaches all the features of claim 5 as outlined above, Larsson further teaches said electrically isolated ball and said electrically isolated disk (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. The combination of Yamamoto and Larssonis silent about measuring the wear track-volumetric wear between said ball and said disk. Mihoya teaches measuring the wear track-volumetric wear between said ball and said disk (Column 8, lines 11-29). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to measure volumetric wear in Yamamoto’s system because volumetric wear measures the actual volume of material lost from a surface over time, rather than just changes in depth or weight. It is the gold standard for evaluating material degradation in engineering, manufacturing, and medicine Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Wilson et al. (U.S. Publication No. 20010013247). Regarding claim 11, the combination of Yamamoto and Larsson teaches all the features of claim 5 as outlined above, the combination of Yamamoto and Larssonis silent about wherein said lubricant or oil comprises differential fluid. Wilson teaches wherein said lubricant or oil comprises differential fluid (Paragraph 19). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use differential fluid in Yamamoto’s system because measuring differential oil quality ensures your vehicle's drivetrain operates smoothly and prevents costly mechanical failures Claims 12-13, 15 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Jiang et al. (“Effects of external D.C. electric fields on friction and wear behavior of alumina/brass sliding pairs”, published in 1998, see attached publication). Regarding claim 12, Yamamoto teaches a method for evaluating the effects of electrical potential on one or more lubricants or oils in a test unit comprising: supplying a test unit having a disk (Fig.1, “disc”), a rotating ball (Fig.1, “rotating ball”) configured to be mechanically loaded against said disk (Pages 641-642, under subtitle “2. Experimental Method”), a negative electrode in electrical communication with said ball and a positive electrode in electrical communication with said disk or a positive electrode in electrical communication with said ball and a negative electrode in communication with said disk, wherein said negative and positive electrodes are configured to supply an electrical potential between said rotating ball and said disk; introducing one or more lubricants or oils between said rotating ball and said disk (Figs.1-2 and pages 641-642, under subtitle “2. Experimental Method”). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball, and initially rotating said ball relative to said disk followed by applying a mechanical load and an electrical potential between said electrically isolated ball and said electrically isolated disk. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. The combination of Yamamoto and Larsson is silent about initially rotating said ball relative to said disk followed by applying a mechanical load and an electrical potential between said ball and said disk. Jiang teaches initially sliding said ball relative to said disk (Page 618, under subtitle “1.1 Experimental apparatus”, “the upper specimen, which is drawn by a traction stage through a connect rod and a force sensor, is sliding reciprocally against the static lower specimen at a low speed of 1.25 mm/s, with the period of 1 min”) followed by applying a mechanical load (Page 618, under subtitle “1.1 Experimental apparatus”, “A ceramic cylinder…is pressed onto the surface of the lower specimen under applied load”) and an electrical potential between said upper specimen and said lower specimen (Page 619, under subtitle “1.3 Method for applying external electric fields”). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to initially rotate Yamamoto’s ball, and followed by applying a machinal load and an electrical potential between Yamamoto’s ball and disk because it would avoid mechanical breakthrough (applying a heavy mechanical load onto a stationary contact squeezes out all lubricant, resulting in boundary friction or direct solid contact), also it would prevent static short-circuiting. Regarding claim 13, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 12 as outlined above, Yamamoto further teaches heating said one or more lubricants or oils between said rotating ball and disk (Page 642, Fig.1, “Heater”). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 15, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 12 as outlined above, Yamamoto further teaches measuring the friction between said ball and said disk (Abstract). Yamamoto is silent about the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball. Larsson teaches the disk is an electrically isolated rotating disk; the rotating ball is an electrically isolated rotating ball (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. Regarding claim 17, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 12 as outlined above, Yamamoto further teaches wherein said lubricant or oil comprises automatic transmission fluid (Pages 641-642, under subtitle “2. Experimental Method”). Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Jiang et al. (“Effects of external D.C. electric fields on friction and wear behavior of alumina/brass sliding pairs”, published in 1998, see attached publication) and Hamer et al. (U.S. Publication No. 20220316975). Regarding claim 14, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 13 as outlined above, the combination of Yamamoto, Larsson and Jiang silent about heating said one or more lubricants or oils to a selected temperature. Hamer teaches heating said one or more lubricants or oils to a selected temperature (Paragraphs 44 and 80). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to heat Yamamoto’s oils to a selected temperature because it would simulate real-world operating conditions and measures how heat affects fluid performance. Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Jiang et al. (“Effects of external D.C. electric fields on friction and wear behavior of alumina/brass sliding pairs”, published in 1998, see attached publication) and Mihoya et al. (U.S. Publication No. 6171706). Regarding claim 16, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 12 as outlined above, Larsson further teaches said electrically isolated ball and said electrically isolated disk (Page 25, “Ideally, the ball and the disc should also be isolated from the rest of the rig”, also in page 2, Fig.1 shows a rotating disk). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to make Yamamoto’s disk and ball electrically isolated because it would minimize stray capacitance and interference. The combination of Yamamoto, Larsson and Jiang silent about measuring the wear track-volumetric wear between said ball and said disk. Mihoya teaches measuring the wear track-volumetric wear between said ball and said disk (Column 8, lines 11-29). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to measure volumetric wear in Yamamoto’s system because volumetric wear measures the actual volume of material lost from a surface over time, rather than just changes in depth or weight. It is the gold standard for evaluating material degradation in engineering, manufacturing, and medicine Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Yamamoto et al. (‘Effect of externally applied electric field on friction and wear characteristics”, published in 1992, see attached publication) in view of Larsson et al. (“Ball-on-disc Machine”, Published in 2014, cited in IDS) and Jiang et al. (“Effects of external D.C. electric fields on friction and wear behavior of alumina/brass sliding pairs”, published in 1998, see attached publication) and Wilson et al. (U.S. Publication No. 20010013247). Regarding claim 18, the combination of Yamamoto, Larsson and Jiang teaches all the features of claim 12 as outlined above, the combination of Yamamoto, Larsson and Jiang silent about wherein said lubricant or oil comprises differential fluid. Wilson teaches wherein said lubricant or oil comprises differential fluid (Paragraph 19). It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to use differential fluid in Yamamoto’s system because measuring differential oil quality ensures your vehicle's drivetrain operates smoothly and prevents costly mechanical failures. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIN Y ZHONG whose telephone number is (571)272-3798. The examiner can normally be reached M-F 9 a.m. - 6 p.m.. 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, Kristina Deherrera can be reached at 303-297-4237. 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. /XIN Y ZHONG/ Primary Examiner, Art Unit 2855
Read full office action

Prosecution Timeline

May 16, 2024
Application Filed
Sep 01, 2026
Non-Final Rejection mailed — §103 (current)

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Prosecution Projections

1-2
Expected OA Rounds
76%
Grant Probability
92%
With Interview (+15.3%)
2y 9m (~5m remaining)
Median Time to Grant
Low
PTA Risk
Based on 634 resolved cases by this examiner. Grant probability derived from career allowance rate.

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