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 .
Applicant's submission filed on 11/13/25 has been entered. Claims 1-2, and 4-9 are pending examination, claim 3 was canceled.
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 (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.
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.
Claim(s) 1-2 and 4-9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Mazany et al (US 2007/0154721; provided in 2/29/24 IDS; hereafter Mazany) in view of Andrus et al (US 5,153,070; hereafter Andrus).
Claim 1: Mazany teaches a method for protecting a carbon/carbon composite material part from oxidation (see, for example, abstract), the method comprising:
applying onto at least a portion of an external surface of the part an impregnation composition comprising mono-aluminum phosphate (MALP) (see, for example, pretreatment with composition comprising MALP (see, for example, abstract, [0008-0010], [0088], [0098], [0101-0104]);
depositing, after application of the impregnation composition, onto at least a portion of the external surface of the part an oxidation-resistant glass composition (at least on phosphate glass) (see, for example, abstract, [0031], [0065]);
and performing an impregnation heat treatment in order to soften or melt the deposited composition, to allow the impregnation of the internal porosity of the part by the composition thus softened or melted, and to form an oxidation-resistant glass in the internal porosity of the part (see, for example, abstract, figures, [0018], [0068], [0076])
Mazany has taught wherein deposition of the impregnation composition can be achieved by painting, dipping, spraying or other application methods, but does not explicitly teach dry depositing solid oxidation-resisting glass composition. Andrus teaches a method of for protecting a carbon/ carbon composite material part from oxidation, further with oxidation -resistant glass compositions (See, for example, abstract, col 1 lines 1-25, and col 3 lines 15-28). Andrus further teaches wherein such coatings can predictably be applied by mixing the glass with a liquid medium and drying, or preferably can be performed by electrostatic spraying wherein dry glass powder is sprayed with a high degree of uniformity onto the surface of the selected substrate; and then subsequently heated to allow the glass composition to soften and flow (See, for example, col 5 line25 -col 6 line 14). Therefore it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated dry depositing the solid oxidation-resisting glass composition as such a mode is a well known and predictable alternative to wet deposition methods (Where two known alternatives are interchangeable for a desired function, an express suggestion to substitute one for the other is not needed to render a substitution obvious. In re Fout, 675 F.2d 297,301 (CCPA 1982); In re Siebentritt, 372 F.2d 566, 568 (CCPA 1967))); and / or since dry depositing via electrostatic spraying has been demonstrated to provide for enhanced uniformity of deposition.
Mazany further teaches a preliminary heat treatment step at a temperature comprised between 600-1000oC, 200-900oC, or 400oC to 850oC, carried out after the impregnation composition application step and before the solid composition deposition step (See, for example, [0089]). Although such a range is not explicitly between 680° C. and 740° C., it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated a temperature within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976).
Claim 2: Mazany in view of Andrus teach the method of claim 1 above, and Andrus has further taught wherein the dry deposition of the solid composition is carried out by electrostatic spraying (see, for example, col 5 line25 -col 6 line 14).
Claims 4-5: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches after the impregnation / second impregnation heat treatment step: dry depositing onto at least a portion of the external surface of the part a second / third solid oxidation-resistant glass composition, identical or different to the solid composition; then performing a second / third impregnation heat treatment in order to soften or melt the second dry deposited solid composition, to allow the impregnation of the internal porosity of the part by the second / third composition thus softened or melted, and to form a second / third oxidation-resistant glass in the internal porosity of the part (see, for example, Fig 1 and [0069-0070], [0076-0078] wherein multiple cycles such 4 cycles of deposition and heating have been explicitly taught).
Claim 6 Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches a total quantity of solid composition deposited onto at least a portion of the external surface of the part during the dry deposition step or steps of a solid composition is 10-60mg/cm2 (see, for example, [0063-65]; for sake of argument that this is not “solid composition” but inclusive of liquid components, the examiner notes that the composition is taught to comprise “about 35% to about 40% by weight of at least one phosphate glass, so there is at least 3.5 mg/cm2 solids deposited (actually more when considering the other solid components such as phosphates and refractory compounds).
Claim 7: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches the solid composition(s) are chosen from: a composition comprising, in mol percentages: 3 to 80%, preferably 40-60% phosphorus pentoxide P.sub.2O.sub.5; 5 to 50%, preferably 15-30 of a combination of potassium oxide K.sub.2O and sodium oxide Na.sub.2O; 1-20% aluminum oxide Al.sub.2O.sub.3; and 1 to 70%, further 5-20% boron sesquioxide B.sub.2O.sub.3 (See, for example, [0033-0039], and [0045]). Although such a chemistry concentration is not explicitly one of the recited ranges, it would have been obvious to one of ordinary skill in the art at the time before the effective filing date of the claimed invention to have incorporated concentrations within the claimed range since in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976), “[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.” In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955), and generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.(MPEP 2144.05 II A).
Claim 8: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the carbon/carbon composite material part is a friction part (such a brakes) (see, for example, [0002-0006], [0065]).
Claim 9: Mazany in view of Andrus teach the method of claim 1 above, and Mazany further teaches wherein the oxidation-resistant glass is formed to a depth about 2-5 mm, measured from the external surface of the part (See, for example, [0076], Table 4)).
Response to Arguments
The arguments (particularly the “Third” argument, pg 7 of remarks) and declaration under 37 CFR 1.132 filed 11/13/25 is insufficient to overcome the rejection of claims 1-2 and 4-9 based upon the 35 USC 103 rejection over Mazany in view of Andrus as set forth in the last Office action, and herein, because:
There is no adequate basis for reasonably concluding that the great number and variety of compositions / materials / conditions included in the claim would behave in the same manner as the unique combination tested (MPEP 716.02(d)). For example, the two experiments reported have selected a singular type of substrate (not provided), pretreatment composition (inclusive of concentration not provded), and one singular particular chemical composition of glass thereon (not provided), applied and then treated under particular conditions (pg 3-4 of Declaration). Such limits are not similarly shared with the claims which are open to any C/C composite material, any composition comprising MALP, and any “solid-oxidation-resistant glass composition” and wherein applicant and treatment thereof is open a multitude of methods and conditions. Applicant argues there exists a particular adhesion benefit, but the examiner notes that adhesion would be influenced by not only the chemistry of the pretreatment material, but additionally the interfacing materials of the substrate and the overlaying protective material, as well as various conditions in which the materials are prepared and processed and further combinations of such conditions / materials. So the supplied evidence is not commensurate in scope with the essentially infinite combinations of materials and processing conditions claimed. Further the evidence only presents data from two different temperature treatments 1) 90oC then 200oC vs 2) “in the 680-740oC range”. To establish unexpected results over a claimed range, applicants should compare a sufficient number of tests both inside and outside the claimed range to show the criticality of the claimed range. In re Hill, 284 F.2d 955, 128 USPQ 197 (CCPA 1960). The low temperature testing is not sufficiently close to the lower boundary of the claimed range to sufficiently establish the argued unexpected result, and there is no evidence establishing unexpected results of the upper boundary (740C). Further the evidence does not identify what exact temperature(s) was actually even used within the range of 680-740C. As such, In view of the foregoing, when all of the evidence is considered, the totality of the rebuttal evidence of nonobviousness fails to outweigh the evidence of obviousness.
Applicant further argues (First argument) that the process at [0089] of Mazany is a slurry-drying process, not a pre-glass preheating of a phosphate impregnated in a dry powder process. It is noted that the features upon which applicant relies (i.e., the claimed preliminary heat treatment step is performed on a material deposited by dry deposition process) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As presently recited, the claim only requires wherein a solid oxidation resistance glass composition is “dry deposit(ed) (ing)”. The claim places no limitation as to the mode of application of the impregnation composition, solely reciting “applying” it, thus the impregnation composition is not required to be deposited by dry deposition method. The examiner further notes that Mazany is not solely concerned with the heating as being for drying, but alternatively articulates that the thermal treatment can also serve to bake the pretreatment; and further notes that drying would proceed at 30-200oC, whereas temperatures of from 600-1000oC, 200-900oC, or 400oC to 850oC are alternatively provided for the thermal treatment (See, for example, [0088-0089]), thus Mazany is not solely concerned with drying.
In response to applicant's arguments (particularly “second” argument) against the references individually, (Andrus…contains no teaching of preheating a phosphate impregnated C/C part at 680-740oC prior to dry deposition of glass powder), one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The rejection is over a combination of references, not Andrus alone. The argued deficiencies of pre-treatment are derived from the teaching of the primary reference Mazany, not Andrus, thus Andrus is not required to similarly teach such conditions.
Applicant additionally argues (botton of pg 7 of remarks) that Mazany’s upper-end temperatures approach 1000oC, where the Rousseau article shows Al(PO3)3 decomposition at about 1000oC, therefore Mazany’s taught range of 600-1000oC would not obviate the claimed range of 680-740C. First, as discussed above, Applicant has not adequately demonstrated sufficient evidence of unexpected results for the claimed range, further there is no comparative evidence provided at the upper endpoint of the range. Second, avoidance of Al(PO3)3 decomposition is not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Third, Mazany is not solely / rigidly taught the argued range of 600-1000C, but rather has taught alternative ranges, such as 200-900C or 400-850C ([0089]), which would not reach the argued temperature of 1000C, thus such alternative ranges would not achieve the argued phosphate decomposition.
As to the remaining dependent claims they remain rejected as no additional separate arguments are provided
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 NATHAN H EMPIE whose telephone number is (571)270-1886. The examiner can normally be reached Monday-Thursday 5:30AM - 4 PM.
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/NATHAN H EMPIE/Primary Examiner, Art Unit 1712