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
Claims 31 and 32 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on December 23, 2025.
Applicant’s election without traverse of Group I in the reply filed on December 23, 2025 is acknowledged. Claims 17-30 are pending, claim 17 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The abstract should be in narrative form and generally limited to a single paragraph on a separate sheet within the range of 50 to 150 words in length. The abstract should describe the disclosure sufficiently to assist readers in deciding whether there is a need for consulting the full patent text for details.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided. Specifically, “The invention relates to” is language that can be implied AND it is too short.
Claim Objections
Claim 1 is objected to because of the following informalities: claim 1 should be introduced with a preposition, “A”, i.e., “Base body” should read “A base body”. Appropriate correction is required.
Regarding claims 18-30, they are each objected to because of the following informalities: "Base body" in each preamble should read "The base body". Appropriate correction is required.
Further regarding claim 23, the last limitation “more preferably at most 0.15 wt.%” repeats the opening limitation of the claim and should be removed.
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.
Claims 18-20, 22-24, 26, 27 and 30 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention.
Regarding claim 18, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 18 recites the broad recitation “at most 0.5 wt.%” of nickel, and the claim also recites "preferably 0.3 wt.%", "more preferably at most 0.2 wt.%", "more preferably at most 0.1 wt.%" and "more preferably at most 0.01 wt.%" which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
Regarding claim 19, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 19 recites the broad recitation “at least 10 wt.% of chromium”, and the claim also recites "preferably which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
Further, claim 19 is rejected for being indefinite to the upper limit of Cr (listed as 25 wt.% in claim 17 from which claim 19 depends, but unlimited in claim 19).
Regarding claim 20, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 20 recites the broad recitation “at least 1.0 wt.%” of manganese, and the claim also recites "preferably which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
Regarding claim 22, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 22 recites the broad recitation “at most 0.75 wt.%” of tungsten, and the claim also recites "preferably which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
Regarding claim 23, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 23 recites the broad recitation “at most 0.15 wt.%” of phosphorus, and the claim also recites , which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered. Further, claim 23 is indefinite for including a larger range than that initially claimed in a further limitation of the claim (“further comprises at most 0.15 wt.%...more preferably at most 0.25 wt.%”), for purposes of examination the broadest limitation shall be considered.
Regarding claim 24, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 24 recites the broad recitation “at least 35 wt.%” of carbides, and the claim also recites which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
Regarding claim 26, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 26 recites the broad recitation proportion of titanium carbides comprises “at least 35 wt.%” of carbides, and the claim also recites which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered. Claim 26 is further indefinite if the proportion of titanium carbide is to the carbides or the coating, for purposes of examination, either shall be considered to meet the limitation.
Regarding claim 27, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 27 recites the broad recitation “for coating a gray cast iron base body”, and the claim also recites "preferably a gray cast iron brake disk” which is a narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered. Claim 27 is further rejected for being indefinite if the base body of claim 17 is providing a coating itself or if the base body is a gray cast iron base body that then has the coating upon it. For purposes of examination, either shall be considered to meet the limitation.
Regarding claim 30, a broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, claim 27 recites the broad recitation “Base body” and also recites “preferably gray cast iron base body”, and “preferably gray cast iron brake disk”, which are narrower statements of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims. For purposes of examination the broadest limitation shall be considered.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 19 is rejected under 35 U.S.C. 112(d), as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Specifically, claim 17 from which claim 19 depends has an upper limit of 25 wt.% chromium" and claim 19 claims "at least" multiple values of chromium, which is indicative of no upper limit. For purposes of examination, the upper limit of claim 17 shall be considered to read on the Cr of claim 19. Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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.
Claim(s) 17-30 are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 108103499 B, herein referring to the Google Patents machine translation of February 11, 2026), hereinafter Wang (original provided by applicant, translation provided herewith).
Regarding claim 1, Wang teaches a substrate (base body) with a surface thin layer coating (Pg. 2 [3], [5]), the coating made by laser melting (Pg. 2 [6]) of the following material by mass percent shown in Table 1 (Pg. 2 [9] claim 1).
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Table (weight/mass%)
Claim 17
Claims 18-24 and 26
Wang Pg. 2 [9]; claim 1
Iron
Surplus (including inevitable impurities)
Cr
10-25
≥ 10
2-12
C
0.3-5
0.03-2
V
0.5-15
0.5-3
Ni
≤ 0.5
Mn
≥ 1.0
0.30-1.60
Si
≥ 0.1
0.5-2.80
W
≤ 0.75
P
≤ 0.15
≤ 0.03
Carbides
≥ 35
Selected from Al2O3, ZrO2, TiC or WC of 2-50% (“one or more of” Pg. 2 [17])
Titanium carbides
≥ 35
Regarding claims 18 and 22, Wang teaches each limitation of claim 17, as discussed above, and further teaches a substrate (base body) with a surface thin layer coating (Pg. 2 [3], [5]), the coating made by laser melting (Pg. 2 [6]) of the material by mass percent shown in Table 1 (Pg. 2 [9]; claim 1). Regarding W and Ni, Wang is silent to the presence of these elements, such that they are not considered to be present in an appreciable amount, also note examples. If these elements are not listed it is understood to one of ordinary skill in the art that it is reasonable that they are not present. Therefore the elements are considered to be present in an amount within, or at least overlapping, applicant’s claimed proportions (which include 0%). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claims 19-21 and 23-26, Wang teaches each limitation of claim 17, as discussed above, and further teaches a substrate (base body) with a surface thin layer coating (Pg. 2 [3], [5]), the coating made by laser melting (Pg. 2 [6]) of the material by mass percent shown in Table 1 (Pg. 2 [9]; claim 1). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding claim 27, Wang teaches each limitation of claim 17, as discussed above, and further teaches a substrate (base body) with a surface thin layer coating (Pg. 2 [3], [5]), the coating made by laser melting (Pg. 2 [6]). Examiner notes that “preferably a gray cast iron brake disk” is preferential language that is not definitely required by the claim (see 112(b) rejection above). Regarding “for coating a gray cast iron base body”, this is considered to be language to the intended use of the product. “’[A] recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from the prior art’ if the prior art apparatus teaches all the structural limitations of the claim” (MPEP 2114 II). In this instance, the base body with a coating of claim 1 is capable of meeting this intended use and meets the claim limitation.
Regarding claim 28, Wang teaches each limitation of claim 17, as discussed above, and further teaches a single layer cladding (step 4 Pg. 3; “single-ply”).
Regarding claim 29, Wang teaches each limitation of claim 17, as discussed above, and further teaches a hardness of an embodiment is 60 HRC (Pg. 3 12th line from the end; this is ~700 HV). In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists, (MPEP 2144.05 I). The proportions disclosed by the prior art overlap applicants claimed proportions and therefore establish a prima facie case of obviousness, where one of ordinary skill in the art before the effective filing date of the invention would have found it obvious to select from the proportions disclosed by the prior art, including those proportions, which satisfy the presently claimed requirements (MPEP 2144.05 I). As of the writing of this Office Action, no objective evidence of criticality to the claimed ranges has been presented.
Regarding HV at 0.01 this is functional language, where the feature hardness is defined by what it does, rather than what it is (MPEP 2173.05 (g)). The structural and property limitations (hardness itself is a property limitation) of the claims shall be considered for patentable distinction, as the testing method itself is functional language which does not distinguish over the prior art (claims cover what a device is, not what a device does; MPEP 2114 II). As discussed in the prior art rejection, the hardness is taught by the prior art.
Regarding claim 30, Wang teaches each limitation of claim 17, as discussed above, and further teaches a substrate (base body) with a surface thin layer coating (Pg. 2 [3], [5]), the coating made by laser melting (Pg. 2 [6]). Examiner notes “preferably gray cast iron base body, preferably gray cast iron brake disk” is preferential language that is not definitely required by the claim (see 112(b) rejection above), and as such “base body with a coating” meets the claim limitations as presently recited.
Conclusion
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/KATHERINE A CHRISTY/Primary Examiner, Art Unit 1784