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 § 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 1-7 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.
Claim 1 contains the limitation “hard chrome plating film”. The term “hard” in claim 1 is a relative term which renders the claim indefinite. The term “hard” 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. It is not clear what would distinguish a “hard chrome plating film” from one that isn’t considered hard or considered “soft”.
Claims 2-7 are rejected as being dependent on claim 1.
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.
The factual inquiries 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.
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.
Claims 1-3 and 7 are rejected under 35 U.S.C. 103 as being unpatentable over Takashina et al. (JP2014-196533) (cited in the IDS filed on 05/16/2024) in view of Feldstein (U.S. Pat. No. 5,605,565) and Shinada et al. (WO 2012/133613).
Citations to Takashina and Shinada et al., below, refer to the machine translation documents provided with this office action.
Regarding claims 1-2, Takashina et al. discloses a trivalent chromium plating film designed to suppress the formation of through cracks which includes in the film platelike or fibrous ceramic fillers in the form of oxides, carbides and nitrides of Si, Al, Ti and B. (page 3, first 3 paragraphs). Example 1 of the reference specifically refers plate-like Al2O3 having an aspect ratio of 33 (i.e. tabular alumina as claimed) and that the film is form using a plating bath including a cathode and counter electrode (Page 2, last line and Example 1). Takashima et al. therefore discloses a trivalent chromium composite film including tabular alumina therein.
Takashima et al. does not disclose the acid adsorption per surface area A and base adsorption per surface area B having a ratio of 0.5 to 1.5, as claimed.
Feldstein teaches a process for making metallized articles by coating containing both a metal composition and a particulate matter co-deposited with the metal. (Abstract). The metal composition and particulate material are formed together into an electroless plating solution onto the surface (col. 1, lines 25-45) and Feldstein et al. teaches that the charge on the surface of the particles should of such nature that it prevents unwanted co-deposition of the particles and is measured by the Zeta potential. (col. 2, line 60-col. 3, line 21). Feldstein et al. teaches that the Zeta potential should have a negative surface charge to result in improved performance of the plating solution such as preventing aggregation and tie up dust and dirt particles.
Shinada et al. teaches a trivalent chromium plating solution including therein ceramic particles include aluminum oxide which have a zeta potential in the range of 20-100 mV at a pH of 0.5-2.0 to prevent aggregation of the particles and improving the dispersibility of the particles in the plating solution. (page 5, 3rd-7th full paragraph).
It would have been obvious to one of ordinary skill in the art to control the zeta potential of the aluminum oxide particles of Takashina et al. to lie in the range of 20-100 mV at pH of 0.5 to 2.0 such that the particles have a net negative charge in view of the teachings of Feldstein and Shinada et al.
One of ordinary skill in the art would have found it obvious to optimize the Zeta potential of the alumina particles in order to prevent unwanted aggregation of the particles resulting in reduced performance of the chromium film containing the alumina particles as recognized in both Feldstein and Shinada et al.
While neither reference specifically refers to the limitations of acid adsorption per surface area and base adsorption per surface area, the specification of the present application suggests that the claimed values are essentially equivalent to particles having a negative surface charge and low zeta potential (Applicant’s specification, par. [0021]-[0024]). It appears therefore that Applicant is claiming the feature of improved properties of the alumina particles in the plating solution due to the charges on the surface thereof which recognized in the prior art by the teachings of control of zeta potential and net negative charges. One of ordinary skill in the art would therefore have found it obvious to optimize the relative amounts of acid and base charge absorption per surface area as this would allow to control the net negative/positive charge on the particle surface in order to improve the dispersibility/aggregation properties in the plating solution of Takashima et al. "Where 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 (CCPA 1955). MPEP 2144.05 (II).
Regarding claim 3, Takashina et al. teaches a particle size in the range of 5-50 micrometers with an aspect ratio of 5 to 100 for the plate-like alumina particles (page 3, 2nd full paragraph), overlapping with the presently claimed range. 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).
Regarding claim 7, Takashina et al. discloses applying the trivalent chromium plating film onto a substrate of a sliding member. (Abstract).
Claims 4-6 are rejected under 35 U.S.C. 103 as being unpatentable over Takashina et al. (JP2014-196533) (cited in the IDS filed on 05/16/2024) in view of Feldstein (U.S. Pat. No. 5,605,565) and Shinada et al. (WO 2012/133613), further in view of Takada et al. (WO 2020/036139).
Citations to Takada et al., below, refer to the machine translation documents provided with this office action.
Takashina in view of Feldstein and Shinada et al. are relied upon as described in the rejection of claim 1, above.
Regarding claim 4, Takashina in view of Feldstein and Shinada et al. does not disclose that the tabular alumina further contains an atom or compound derived from a shape control agent.
Takada et al. teaches tabular alumina particle that do not tend to wear away devices in which they are used including germanium or a germanium compound. (Abstract). Takada et al. teaches that the presence of the germanium compound allows the plate alumina to have improved properties including reducing the wear of devices in contact with the alumina. (page 3, 3rd paragraph). The germanium compound responsible for the presence of germanium in the alumina particle is disclosed to be a shape control agent. (page 4, 2nd full paragraph).
It would have been obvious to one of ordinary skill in the art to use plate like alumina particles as disclosed in Takada et al. in the trivalent chromium composition taught in Takashima et al., which contain a shape control atom in the form of germanium.
One of ordinary skill in the art would have found it obvious to use the alumina particles of Takada et al. in the composition of Takashina et al. in view of the reduced wear associated with the presence of germanium in the alumina particles which would be an improvement to the chromium coating containing the alumina particles.
Regarding claim 5, Takada et al. teaches that the shape control agent includes germanium. (page 4, 2nd full paragraph).
Regarding claim 6, Takada et al. further teaches that the alumina particles include molybdenum. (page 4, 2nd full paragraph).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRE F FERRE whose telephone number is (571)270-5763. The examiner can normally be reached M-F: 8 am to 4 pm ET.
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/ALEXANDRE F FERRE/Primary Examiner, Art Unit 1788 05/26/2026
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