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 .
Election/Restrictions
Claim 3 is withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected species, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on October 8, 2025.
Accordingly, the requirement is made FINAL.
Claim Objections
Claim 2 is objected to because of the following informalities:
Regarding claim 2, HVAF should be corrected to “high velocity air fuel (HVAF)” for the sake of clarify.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-2 and 4-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 1, the limitations of “establishing a granulometry of powder to be sprayed” (a), “establishing an objective roughness (Ra) and an objective thickness (t) of the coating” (b), “defining the rotational speed (Vr) and translational speed (Vt) from an equation” (d), as drafted, is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind carrying out the functions through observation, evaluation, judgment and /or opinion, or even with the aid of pen and paper, or generic computer components. Thus, these limitations recite and fall within the “Mental Processes” grouping of abstract ideas. According, the claim recites an abstract idea (Step 2A, Prong 1).
This judicial exception is not integrated into a practical application. In particular, the claim does not include a process/step of actively applying the rotational speed and translational speed that have been determined. Thus, there is no application much less a particular practical application. Even if the limitation is corrected to indicate the application of the determined rotational speed and translational speed, such limitation is amount to more than generally linking the use of the abstract idea to a particular technological environment or field of use (thermal spraying) (see MPEP 2106.05 (h)). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. (Step 2A, prong 2).
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The other limitations of the claim (rolling mill roll with a high-speed thermal spraying) represent no more than what is well-understood, routine, and conventional in the art (Kato JPH0900008A in view of Hyde US5582874, see103 rejections below). There are no other elements to the claim other than the abstract ideas and the attempts at integration into a practical application, therefore, there is nothing that goes beyond the well understood, routine and conventional within the art. The claim is not patent eligible. (Step 2B).
Claims 2 and 4-6 do not resolve the issues above.
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 1-2 and 4-6 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.
Regarding claim 1, the phrase “more specifically” in line 2 renders the claim indefinite, as it is unclear if the limitations following such phrase are required by the claim. For purpose of examination, those limitations are not required. However, applicant should clarify what is intended, without adding new matter. Unlike high velocity air fuel (HVAF) or high velocity oxygen fuel (HVOF), “high-speed thermal spray” is not an art recognized term, thus, the term “high speed” in the claim is a relative term which renders the claim indefinite. The term “high speed” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. For purpose of examination, the phrase is interpreted as HVAF or HVOF, however, applicant should clarify what is intended, without adding new matter. “Feed flow” is not being defined as where is the powder being fed to. For purpose of examination, “feed flow” is interpreted as the feeding flow (or rate) of the powder to the thermal spraying column. However, applicant should clarify what is intended, without adding new matter. While ƞ and ƞ are defined as the efficiency of “the process”, it is unclear what process is being referred to. It appears to be directed to the thermal spraying process; however, applicant should clarify without adding new matter. The phrase “the pitch per turn of the screw” renders the claimed indefinite. It is unclear what pitch, turn or screw is being described; there is also insufficient explanation in the specification. It is also unclear what is considered as “the spray cone”. For purpose of examination, any thermal spraying process that covers the whole surface of the roll is considered to read on the claimed limitations. However, applicant should clarify what is intended, without adding new matter. In addition, applicant is suggested to include the units of the parameters in the equations for the sake of clarity.
Regarding claim 5, it is unclear what is considered as Ln and the specification does not provide any definition of such parameter.
Regarding claim 6, it is unclear what is “the number of peaks” being referred to. For purpose of examination, the number of peaks in the instant claim are interpreted as the number of peaks on the coating surface. However, applicant should clarify what is intended, without adding new matter.
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 1-2 and 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kato (JPH09300008A) in view of Hyde (US5582874) and Leung (US20050202945).
Regarding claim 1, Kato teaches a method of forming wear resistance coating on mill roll by high velocity flame thermal spraying method (paragraphs 0004-0006), wherein the coating has a desired roughness (paragraphs 0014-0015) (optimizing the roughness of a rolling mill roll by means of high-speed thermal spraying). Kato teaches powder particles are blown out from the nozzle of the high velocity flame thermal sprayer 13 and are stuck at high speed against the peripheral surface of the roll substate to form the thermal spray coating 12 (paragraph 0012), wherein the surface of the coating has a surface roughness due to the hard particles in the powder particles (paragraphs 0014-0015) (thermal spraying of a powder by means of a spraying column to form an isotropic roughness of the surface of said mill roll). Kato teaches a range of desired particles size (paragraphs 0013-0015), thus Kato teaches to establishing a granulometry (G) of powder to be sprayed. Kato teaches a range of desired roughness (paragraphs 0014-0015), thus, Kato teaches to establishing an objective roughness (Ra). Kato teaches a range of desired thickness (paragraph 0033), thus, Kato teaches to establishing an objective thickness (t) of the coating.
Kato does not explicitly teach the mill roll rotates at a rotational speed (Vr) about the longitudinal axis thereof and the spraying column moves translationally at a translational speed (Vt), parallel to the axis of the mill roll to deposit the material according to a helical figure. However, Hyde teaches a method for forming a hardened coating on a roll by thermal spraying (abstract). Hyde teaches the thermal spray gun is traversed along the length of the roll while the roll is rotated about its axis during the spraying (column 2 lines 5-10); such movement intrinsically forms a helical spraying path for the thermal spray gun. Thus, Hyde teaches mill roll rotates at a rotational speed (Vr) about the longitudinal axis thereof and the spraying column moves translationally at a translational speed (Vt), parallel to the axis of the mill roll to deposit the material according to a helical figure. Hyde teaches the coating is uniform on the surface of the roll (column 1 lines 50-60), which indicates the coating covers the whole surface of the roll, which reads on the limitation of “ratio between the width of the spray cone and the pitch per turn of the screw is greater than one”. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to rotate the mill roll and move the spraying column translationally along the mill roll during the thermal spraying as suggested by Hyde in the method of Kato because Hyde teaches such movements ensure formation of uniform coating of the roll (column 2 lines 15-20).
Kato in view of Hyde does not explicitly teach finding the feed flow of powder which shows the objective roughness on the basis of the feed flow and granulometry according the claimed formula; or defining the rotational speed and translation speed from an equation that relates the objective coating thickness as a function of the fed flow, translation speed and rotational speed. However, Leung teaches a method of thermal spraying a grit layer with grit particles on the roller surface (paragraph 0006). Leung teaches the feed rate of the powder and the size of the particles governs the roughness (paragraphs 0039 and 0038) of the coating. Kato also teaches size of particles governs the roughness of the coating, with particle too small or too big would not be able to satisfied the desired roughness (paragraphs 0013-0015). Given that the claimed equation includes arbitrary value ƞ, A(G) and B(G) (the functions of granulometry of the powder are considered as arbitrary because it is not a fixed value) and the combination of reference teaches the relationship of roughness, feed rate and granulometry, the combination of references teaches the claimed equation. It would have been within the skill of the ordinary artisan to adjust and optimize the flow rate and the granulometry of the powder in the process to yield the desired roughness. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Leung further teaches the feed flow of the powder (paragraph 0039), the feed rate of the thermal spray gun (Vt) (paragraphs 0013-0014, 0037 and 0039), the rotational speed of the roller (Vr and N) (paragraphs 0013-0014, 0037 and 0039) and density of the spraying powder (paragraph 0028) governs the thickness of the coating. Given that the claimed equation includes arbitrary value ƞ, and the combination of reference teaches the relationship of thickness, feed rate of the powder, translational speed, rotational speed and density of the spraying powder, the combination of references teaches the claimed equation. It would have been within the skill of the ordinary artisan to adjust and optimize feed rate of the powder, translational speed, rotational speed (Vr and N) and density of the spraying powder in the process to yield the desired thickness of the coating. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215.
Regarding claim 2, Leung teaches the feed rate of the powder and the size of the particles governs the roughness (paragraphs 0039 and 0038) of the coating. Kato also teaches size of particles governs the roughness of the coating, with particle too small or too big would not be able to satisfied the desired roughness (paragraphs 0013-0015). It would have been within the skill of the ordinary artisan to adjust and optimize the flow rate and the granulometry of the powder in the process to yield the desired roughness. Discovery of optimum value of result effective variable in known process is ordinarily within skill of art. In re Boesch, CCPA 1980, 617 F. 2d 272, 205 USPQ215
Regarding claim 4, Kato teaches the hard particles has a size of 1 to 20µm (paragraph 0014) which touches the claimed range. When a touching or overlapping range is found in the prior art, this is considered sufficient to support a holding of obviousness. In re Malagari, 182 USPQ 549. Kato teaches the average particle size is 10 to 100 µm and the roughness is 0.3 to 3 µm (paragraphs 0013-0014), which overlap or fall within claimed ranges in claim 4. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Regarding claim 5, since the roughness in Kato is created by hard particles (paragraphs 0014-0015), the coating surface is expected to have certain number of peaks related to the roughness. As disclosed above in 112 rejections, Ln is an unknown parameter with arbitrary value, thus, Kata’s coating’s is reasonably expected to have Rpc that satisfy the claimed equation.
Regarding claim 6, Kato teaches the coating on the roll would become smoother (reduce number and height of peaks) overtime during rolling operation (paragraph 0003), which reads on the limitation of mechanical process. Kato teaches the roughens is 0.3 to 3 µm (paragraph 0014), which overlaps with the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exist. In re Wertheim, 541 F.2d 257, 191USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990); In re Geisler,116 F.3d 1465, 1469-71, 43 USPQ2d 1362, 1365-66 (Fed. Cir. 1997). See MPEP 2144.05.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Brennan (US20170183763).
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/NGA LEUNG V LAW/
Examiner, Art Unit 1717