DETAILED CORRESPONDENCE
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 .
Status of Claims
This is the first Office Action on the merits for application no. 18/782,968 filed on July 24th, 2024. Claims 1-10 are pending.
Priority
Examiner acknowledges the Applicant’s claim to priority of application DE 10 2023 207 017.0 filed on July 24th, 2023. A certified copy was received on September 16th, 2024.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on January 14th, 2025 and September 23rd, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements were considered by the Examiner.
Claim Objections
Regarding Claim 7 (lines 1-2), please change the recitation of “wherein the first build-up layer, viewed substantially perpendicularly with respect to an areal extent of a planar side” to - - wherein the first build-up layer, viewed substantially perpendicularly with respect to an areal extent of a respective one of the planar sides - - as antecedent basis has already been established in claim 1 (line 2).
Regarding Claim 8 (lines 1-2), please change the recitation of “wherein the second build-up layer, viewed substantially perpendicularly with respect to an areal extent of a planar side” to - - wherein the second build-up layer, viewed substantially perpendicularly with respect to an areal extent of a respective one of the planar sides - - as antecedent basis has already been established in claim 1 (line 2).
Double Patenting
Claims 1, 4-6 and 9-10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 3-4 of U.S. Patent No. 12,601,382 (hereinafter Harke (‘382)). Although the claims at issue are not identical, they are not patentably distinct from each other because conflicting claims 1, 4-6 and 9-10 in the instant application are rendered obvious by claims 1 and 3-4 of Harke (‘382), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381). Becker was cited on the IDS filed January 14th, 2025. See translation provided by Applicant.
Regarding Claim 1, claim 1 of Harke (‘382) teaches a brake element for a motor vehicle (col. 10, lines 23-24), the brake element comprising:
a base body that is planar at least in areas to planar sides of which at least two build-up layers are applied, at least in areas, the build-up layers forming a surface which, in a mounted state of the brake element on the motor vehicle, is used as a friction surface for a brake pad (col. 10, lines 25-32);
a first build-up layer that adjoins the base body (col. 10, lines 25-27, 33-35 and 38-39); and
a second build-up layer being applied to the first build-up layer (col. 10, lines 39-40), the second build-up layer being made of a composite of an iron alloy matrix with intercalated tungsten carbide particles or with intercalated titanium carbide particles (col. 10, lines 46-48).
Harke (‘382) does not teach “wherein at least the first build-up layer is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”.
Becker teaches a first build-up layer (Z) is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0047] – “The intermediate layer Z was produced from a commercially available Ni-base material in powder form, which consisted of (in wt. %) 19% Cr, 18% Fe, 3.0% Mo, 5% Nb+ Ta, the remainder Ni and unavoidable impurities” emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the brake element taught by Harke (‘382) with the molybdenum taught by Becker, such that “wherein at least the first build-up layer is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of providing the brake element taught by Harke (‘382) with adequate resistance to corrosion as evidenced by Carminati ([0061] – “According to a variant of the invention, in order to compensate for the low quantity or complete absence of nickel and to obtain adequate performance for a brake disc, the steel of the base layer 30 has a molybdenum content between 0.5% and 10%, even more preferably between 0.5% and 4.5%, extremes included and a manganese content between 0.5% and 5%. The presence of molybdenum and manganese in the above percentages allows adequate resistance to corrosion and at the same time adequate mechanical resistance to be obtained”).
Regarding Claim 4, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1,
claim 1 of Harke (‘382) teaches wherein the proportion of a volume of the intercalated titanium carbide particles to a volume of the iron alloy matrix is in a range of 10% to 40% (col. 10, lines 50-53).
Regarding Claim 5, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1,
claim 3 of Harke (‘382) teaches wherein the iron alloy in the first build-up layer is made of an austenitic stainless steel having material properties corresponding to the material 1.4404 according to the DIN EN 10027-2 standard, or to the material 316L according to the AISI standard (see claim 3).
Regarding Claim 6, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1,
claim 3 of Harke (‘382) teaches wherein the material of the first build-up layer has material properties which correspond to those of material 1.4404 according to standard EN10027-2 or material 316L according to the AISI standard.
Claims 1 and 3 of Harke (‘382) do not teach “wherein the iron alloy of the first build-up layer is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”.
Becker teaches an iron alloy of a build-up layer (D) is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard ([0027] – “Suitable for this purpose are, for example, stainless steels that are standardized under the material number 1.4404 or according to the US standards AISI/ASTM in the number series 340 - 430L”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the material taught by claim 3 of Harke (‘382) with the material taught by Becker, such that “wherein the iron alloy of the first build-up layer is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of providing a corrosion resistant material.
Regarding Claim 9, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1,
claim 4 of Harke (‘382) teaches wherein the iron alloy matrix in the second build-up layer is made of a material that has material properties corresponding to the material 1.4404 according to DIN EN 10027-2 standard, or to the material 316L according to the AISI standard.
Regarding Claim 10, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1,
claim 4 of Harke (‘382) teaches wherein the iron alloy matrix consists of a material which has material properties which correspond to those of material 1.4404 according to standard EN10027-2 or material 316L according to the AISI standard.
Claims 1 and 4 do not teach “wherein the iron alloy matrix in the second build-up layer is made of a material that has material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”.
Becker teaches an iron alloy of a build-up layer (D) is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard ([0027] – “Suitable for this purpose are, for example, stainless steels that are standardized under the material number 1.4404 or according to the US standards AISI/ASTM in the number series 340 - 430L”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the material taught by claim 4 of Harke (‘382) with the material taught by Becker, such that “wherein the iron alloy of the first build-up layer is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of providing a corrosion resistant material.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Harke (‘382), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381), and in view of Lembach (US 2017/0122392).
Regarding Claim 2, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1.
Claim 1 of Harke (‘382) or Becker do not teach “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”.
Lembach teaches a second build-up layer (Figs. 1-3, “cover layer” 4) is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0057] – “On the surface of the substrate 2 which forms the base plate of the brake disc 1, a hardened surface layer 3 is formed by nitriding, carburizing, nitrocarburizing and/or oxidizing, onto which a cover layer 4 is applied. The cover layer 4 consists of a cermet material made of a metallic matrix and a ceramic component distributed in it, the component making up 30 to 70% b. w. of the cermet material” and [0025] – “A further advantageous solution provides that the metallic matrix is a high alloy CrNiMo steel, which preferably has a composition comprising 28% b.w. chromium, 16% b.w. nickel, 4.5% b. w. molybdenum, 1.5% b.w. silicon, 1.75% b. w. carbon, and the rest iron” emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the brake element taught by Harke (‘382) with the molybdenum taught by Lembach, such that “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of providing the brake element taught by Harke (‘382) with adequate resistance to corrosion.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Harke (‘382), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381), and in view of Oh (WO 2023/214761).
Regarding Claim 3, claim 1 of Harke (‘382) and Becker teach the brake element according to claim 1.
Claim 1 of Harke (‘382) or Becker do not teach “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”.
Oh teaches a proportion of a volume of intercalated tungsten carbide particles to a volume of an iron alloy matrix is in a range of 10% to 20% (“In one embodiment, the additive is a first additive comprising at least one selected from Cr-C powder, Ti-C powder, Zr-C powder, Hf-C powder, Ta-C powder, and Si-C powder. , and a second additive including W-C powder”, “In one embodiment, the mixing volume ratio of the first additive and the second additive may be 1.5:1 to 3:1” and “Meanwhile, the additive may be contained in an amount of 0.1 to 50 vol% based on the total volume of the WC-Ni-Cr composite. Preferably, it may be contained in 5 to 30 vol%. If it is contained less than 0.1 vol%, the effect is minimal, and if it exceeds 50 vol%, it exists as a particle-like material from the coating matrix, which may cause it to fall off”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the titanium carbide particles taught by claim 1 of Harke (‘382) with the tungsten carbide particles taught by Oh, such that “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of hardening the second build-up layer taught by Harke (‘382). In this case, discovering the optimum proportion of tungsten carbide particles would have been obvious to try as there are a finite number of tungsten carbide particles that can be added to an iron alloy matrix. See MPEP 2144.06(II) – “Substituting Equivalents Known for the Same Purpose”, MPEP 2144.05(I) – “Overlapping, Approaching, And Similar Ranges, Amounts, and Proportions” 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Claims 1 and 5-10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 3-4 and 6-7 of copending Application No. 18/655,049 (hereinafter Harke (‘116)), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381).
Regarding Claim 1, claim 1 of Harke (‘116) teaches a brake element for a motor vehicle (line 1), the brake element comprising:
a base body that is planar at least in areas to planar sides of which at least two build-up layers are applied, at least in areas, the build-up layers forming a surface which, in a mounted state of the brake element on the motor vehicle, is used as a friction surface for a brake pad (lines 2-5);
a first build-up layer that adjoins the base body (line 8); and
a second build-up layer being applied to the first build-up layer, the second build-up layer being made of a composite of an iron alloy matrix with intercalated tungsten carbide particles or with intercalated titanium carbide particles (lines 9-11).
Harke (‘116) does not teach “wherein at least the first build-up layer is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”.
Becker teaches a first build-up layer (Z) is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0047] – “The intermediate layer Z was produced from a commercially available Ni-base material in powder form, which consisted of (in wt. %) 19% Cr, 18% Fe, 3.0% Mo, 5% Nb+ Ta, the remainder Ni and unavoidable impurities” emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the brake element taught by Harke (‘116) with the molybdenum taught by Becker, such that “wherein at least the first build-up layer is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of providing the brake element taught by Harke (‘116) with adequate resistance to corrosion as evidenced by Carminati (see [0061] above).
Regarding Claim 5, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 6 of Harke (‘116) teaches wherein the iron alloy in the first build-up layer is made of an austenitic stainless steel having material properties corresponding to the material 1.4404 according to the DIN EN 10027-2 standard, or to the material 316L according to the AISI standard (see claim 6).
Regarding Claim 6, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 6 of Harke (‘116) teaches wherein the material of the first build-up layer has material properties corresponding to the material 1.4404 according to the EN 10027-2 standard, or to a material 316L according to the AISI standard.
Claims 1 and 6 of Harke (‘116) do not teach “wherein the iron alloy of the first build-up layer is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”.
Becker teaches an iron alloy of a build-up layer (D) is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard ([0027] – “Suitable for this purpose are, for example, stainless steels that are standardized under the material number 1.4404 or according to the US standards AISI/ASTM in the number series 340 - 430L”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the material taught by claim 6 of Harke (‘116) with the material taught by Becker, such that “wherein the iron alloy of the first build-up layer is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of providing a corrosion resistant material.
Regarding Claim 7, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 3 of Harke (‘116) teaches wherein the first build-up layer, viewed substantially perpendicularly with respect to an areal extent of a planar side, has a thickness in a range of 50 μm to 350 μm (see claim 3).
Regarding Claim 8, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 4 of Harke (‘116) teaches wherein the second build-up layer, viewed substantially perpendicularly with respect to an areal extent of a planar side, has a thickness in a range of 60 μm to 420 μm (see claim 4).
Regarding Claim 9, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 7 of Harke (‘116) teaches wherein the iron alloy matrix in the second build-up layer is made of a material that has material properties corresponding to the material 1.4404 according to DIN EN 10027-2 standard, or to the material 316L according to the AISI standard (see claim 7).
Regarding Claim 10, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 7 of Harke (‘116) teaches wherein the iron alloy matrix is made of a material that has material properties corresponding to the material 1.4404 according to the EN 10027-2 standard, or to a material 316L according to the AISI standard.
Claims 1 and 7 of Harke (‘116) do not teach “wherein the iron alloy matrix in the second build-up layer is made of a material that has material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”.
Becker teaches an iron alloy of a build-up layer (D) is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard ([0027] – “Suitable for this purpose are, for example, stainless steels that are standardized under the material number 1.4404 or according to the US standards AISI/ASTM in the number series 340 - 430L”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the material taught by claim 7 of Harke (‘116) with the material taught by Becker, such that “wherein the iron alloy matrix in the second build-up layer is made of a material that has material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of providing a corrosion resistant material.
Claim 2 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Harke (‘116), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381), and in view of Lembach (US 2017/0122392).
Regarding Claim 2, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1.
Claim 1 of Harke (‘116) does not teach “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”.
Lembach teaches a second build-up layer (Figs. 1-3; 4) is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0057] – “On the surface of the substrate 2 which forms the base plate of the brake disc 1, a hardened surface layer 3 is formed by nitriding, carburizing, nitrocarburizing and/or oxidizing, onto which a cover layer 4 is applied. The cover layer 4 consists of a cermet material made of a metallic matrix and a ceramic component distributed in it, the component making up 30 to 70% b. w. of the cermet material” and [0025] – “A further advantageous solution provides that the metallic matrix is a high alloy CrNiMo steel, which preferably has a composition comprising 28% b.w. chromium, 16% b.w. nickel, 4.5% b. w. molybdenum, 1.5% b.w. silicon, 1.75% b. w. carbon, and the rest iron” emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the brake element taught by Harke (‘116) with the molybdenum taught by Lembach, such that “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of providing the brake element taught by Harke (‘116) with adequate resistance to corrosion as evidenced by Carminati (see [0061] above).
Claims 3-4 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of Harke (‘116), in view of Becker (DE 10 2018 120 897) as evidenced by Carminati (US 2024/0044381), in view of Oh (WO 2023/214761). See translation provided to Applicant with this Office Action.
Regarding Claim 3, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1,
claim 1 of Harke (‘116) teaches wherein a proportion of a volume of the intercalated tungsten carbide particles to the volume of the iron alloy matrix is in a range of 1% to 19% (lines 12-13).
Claim 1 of Harke (‘116) or Becker do not teach “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”.
Oh teaches a proportion of a volume of intercalated tungsten carbide particles to a volume of an iron alloy matrix is in a range of 10% to 20% (“In one embodiment, the additive is a first additive comprising at least one selected from Cr-C powder, Ti-C powder, Zr-C powder, Hf-C powder, Ta-C powder, and Si-C powder. , and a second additive including W-C powder”, “In one embodiment, the mixing volume ratio of the first additive and the second additive may be 1.5:1 to 3:1” and “Meanwhile, the additive may be contained in an amount of 0.1 to 50 vol% based on the total volume of the WC-Ni-Cr composite. Preferably, it may be contained in 5 to 30 vol%. If it is contained less than 0.1 vol%, the effect is minimal, and if it exceeds 50 vol%, it exists as a particle-like material from the coating matrix, which may cause it to fall off”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the proportion of tungsten carbide particles taught by Harke (‘116), such that “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of hardening the second build-up layer taught by Harke (‘116). In this case, discovering the optimum proportion of tungsten carbide particles taught by Harke (‘116) would have been obvious to try as there are a finite number of tungsten carbide particles that can be added to an iron alloy matrix. See MPEP 2144.05(I) – “Overlapping, Approaching, And Similar Ranges, Amounts, and Proportions” 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Regarding Claim 4, claim 1 of Harke (‘116) and Becker teach the brake element according to claim 1.
Claim 1 of Harke (‘116) does not teach “wherein the proportion of a volume of the intercalated titanium carbide particles to a volume of the iron alloy matrix is in a range of 10% to 40%”.
Oh teaches a proportion of a volume of intercalated titanium carbide particles to a volume of an iron alloy matrix is in a range of 10% to 40% (“In one embodiment, the additive is a first additive comprising at least one selected from Cr-C powder, Ti-C powder, Zr-C powder, Hf-C powder, Ta-C powder, and Si-C powder. , and a second additive including W-C powder”, “In one embodiment, the mixing volume ratio of the first additive and the second additive may be 1.5:1 to 3:1” and “Meanwhile, the additive may be contained in an amount of 0.1 to 50 vol% based on the total volume of the WC-Ni-Cr composite. Preferably, it may be contained in 5 to 30 vol%. If it is contained less than 0.1 vol%, the effect is minimal, and if it exceeds 50 vol%, it exists as a particle-like material from the coating matrix, which may cause it to fall off”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the tungsten carbide particles taught by claim 1 of Harke (‘116) with the titanium carbide particles taught by Oh, such that “wherein the proportion of a volume of the intercalated titanium carbide particles to a volume of the iron alloy matrix is in a range of 10% to 40%”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in substituting known elements, and have the obvious advantage of hardening the second build-up layer taught by Harke (‘116). In this case, discovering the optimum proportion of titanium carbide particles taught by Harke (‘116) would have been obvious to try as there are a finite number of titanium carbide particles that can be added to an iron alloy matrix. See MPEP 2144.06(II) – “Substituting Equivalents Known for the Same Purpose”, MPEP 2144.05(I) – “Overlapping, Approaching, And Similar Ranges, Amounts, and Proportions” 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office Action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 5-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Becker (DE 10 2018 120 897).
Regarding Claim 1, Becker teaches a brake element (“brake disc” 1) for a motor vehicle, the brake element (1) comprising:
a base body (“friction ring” 4) that is planar at least in areas to planar sides of which at least two build-up layers (“intermediate layer” Z and “cover layer” D) are applied, at least in areas, the build-up layers (Z, D) forming a surface which, in a mounted state of the brake element (1) on the motor vehicle, is used as a friction surface for a brake pad ([0002] – “The friction surface formed on the friction ring of the brake disc, which is loaded by a brake pad pressed against it during braking”);
a first build-up layer (Z) that adjoins the base body (4); and
a second build-up layer (D) being applied to the first build-up layer (Z),
the second build-up layer (D) being made of a composite of an iron alloy matrix (see [0036]) with intercalated tungsten carbide particles or with intercalated titanium carbide particles ([0036] – “The material from which the base body of the component according to the invention is made is typically a metallic cast material that enables the base body to be produced by casting. These include in particular iron or aluminum cast materials whose thermal conductivity corresponds particularly well to the requirements of the invention and which are particularly suitable for the production of friction rings” and [0052] – “After the intermediate layer Z, the top layer D was applied to the intermediate layer Z. For this purpose, a powder consisting of a mixture of 50 vol. % of a stainless steel standardized under the material number 1.4404 according to the Steellron List and 50 vol. % of tungsten carbide particles”),
wherein at least the first build-up layer (Z) is an iron alloy that is alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0047] – “The intermediate layer Z was produced from a commercially available Ni-base material in powder form, which consisted of (in wt. %) 19% Cr, 18% Fe, 3.0% Mo, 5% Nb+ Ta, the remainder Ni and unavoidable impurities” emphasis added).
Regarding Claim 5, Becker teaches the brake element according to claim 1,
wherein the iron alloy in the first build-up layer (Z) is made of an austenitic stainless steel having material properties corresponding to the material 1.4404 according to the DIN EN 10027-2 standard, or to the material 316L according to the AISI standard ([0027] – “Suitable for this purpose are, for example, stainless steels that are standardized under the material number 1.4404 or according to the US standards AISI/ASTM in the number series 340 - 430L”).
Regarding Claim 6, Becker teaches the brake element according to claim 1,
wherein the iron alloy of the first build-up layer (Z) is made of a ferritic stainless steel having material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard (see [0027]).
Regarding Claim 7, Becker teaches the brake element according to claim 1,
wherein the first build-up layer (Z), viewed substantially perpendicularly with respect to an areal extent of a planar side, has a thickness in a range of 50 μm to 350 μm ([0034] – “the thickness of the intermediate layer being 60 - 100 μm”).
Regarding Claim 8, Becker teaches the brake element according to claim 1,
wherein the second build-up layer (D), viewed substantially perpendicularly with respect to an areal extent of a planar side, has a thickness in a range of 60 μm to 420 μm ([0034] – “the thickness of the top layer being 70 - 150 μm”).
Regarding Claim 9, Becker teaches the brake element according to claim 1,
wherein the iron alloy matrix in the second build-up layer (D) is made of a material that has material properties corresponding to the material 1.4404 according to DIN EN 10027-2 standard ([0052] – “After the intermediate layer Z, the top layer D was applied to the intermediate layer Z. For this purpose, a powder consisting of a mixture of 50 vol. % of a stainless steel standardized under the material number 1.4404”), or to the material 316L according to the AISI standard.
Regarding Claim 10, Becker teaches the brake element according to claim 1,
wherein the iron alloy matrix in the second build-up layer (D) is made of a material that has material properties corresponding to the material 1.4016 according to the DIN EN 10027-2 standard, or to the material 430L according to the AISI standard (see [0027]).
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.
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Becker (DE 10 2018 120 897), in view of Lembach (US 2017/0122392) as evidenced Carminati (US 2024/0044381).
Regarding Claim 2, Becker teaches the brake element according to claim 1.
Becker does not teach “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”.
Lembach teaches a second build-up layer (Figs. 1-3, “cover layer” 4) is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt % ([0057] – “On the surface of the substrate 2 which forms the base plate of the brake disc 1, a hardened surface layer 3 is formed by nitriding, carburizing, nitrocarburizing and/or oxidizing, onto which a cover layer 4 is applied. The cover layer 4 consists of a cermet material made of a metallic matrix and a ceramic component distributed in it, the component making up 30 to 70% b. w. of the cermet material” and [0025] – “A further advantageous solution provides that the metallic matrix is a high alloy CrNiMo steel, which preferably has a composition comprising 28% b.w. chromium, 16% b.w. nickel, 4.5% b. w. molybdenum, 1.5% b.w. silicon, 1.75% b. w. carbon, and the rest iron” emphasis added).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide the second build-up layer taught by Becker with the molybdenum taught by Lembach, such that “wherein the second build-up layer is also alloyed at least with molybdenum in a range of 3 wt % to 20 wt %”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in combining known elements, and have the obvious advantage of providing adequate resistance to corrosion as evidenced by Carminati (see [0061] above).
Claims 3-4 are rejected under 35 U.S.C. 103 as being unpatentable over Becker (DE 10 2018 120 897), in view of Oh (WO 2023/214761). See translation provided to Applicant with this Office Action.
Regarding Claim 3, Becker teaches the brake element according to claim 1.
Becker does not teach “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”.
Oh teaches a proportion of a volume of intercalated tungsten carbide particles to a volume of an iron alloy matrix is in a range of 10% to 20% (“In one embodiment, the additive is a first additive comprising at least one selected from Cr-C powder, Ti-C powder, Zr-C powder, Hf-C powder, Ta-C powder, and Si-C powder. , and a second additive including W-C powder”, “In one embodiment, the mixing volume ratio of the first additive and the second additive may be 1.5:1 to 3:1” and “Meanwhile, the additive may be contained in an amount of 0.1 to 50 vol% based on the total volume of the WC-Ni-Cr composite. Preferably, it may be contained in 5 to 30 vol%. If it is contained less than 0.1 vol%, the effect is minimal, and if it exceeds 50 vol%, it exists as a particle-like material from the coating matrix, which may cause it to fall off”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to adjust the proportion of tungsten carbide particles taught by Becker as suggested by Oh, such that “wherein the proportion of a volume of the intercalated tungsten carbide particles to a volume of the iron alloy matrix is in a range of 10% to 20%”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of hardening the second build-up layer taught by Becker. In this case, discovering the optimum proportion of tungsten carbide particles taught by Becker would have been obvious to try as there are a finite number of tungsten carbide particles that can be added to an iron alloy matrix. See MPEP 2144.05(I) – “Overlapping, Approaching, And Similar Ranges, Amounts, and Proportions” 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Regarding Claim 4, Becker teaches the brake element according to claim 1.
Becker does not teach “wherein the proportion of a volume of the intercalated titanium carbide particles to a volume of the iron alloy matrix is in a range of 10% to 40%”.
Oh teaches a proportion of a volume of intercalated titanium carbide particles to a volume of an iron alloy matrix is in a range of 10% to 40% (“In one embodiment, the additive is a first additive comprising at least one selected from Cr-C powder, Ti-C powder, Zr-C powder, Hf-C powder, Ta-C powder, and Si-C powder. , and a second additive including W-C powder”, “In one embodiment, the mixing volume ratio of the first additive and the second additive may be 1.5:1 to 3:1” and “Meanwhile, the additive may be contained in an amount of 0.1 to 50 vol% based on the total volume of the WC-Ni-Cr composite. Preferably, it may be contained in 5 to 30 vol%. If it is contained less than 0.1 vol%, the effect is minimal, and if it exceeds 50 vol%, it exists as a particle-like material from the coating matrix, which may cause it to fall off”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to substitute the tungsten carbide particles taught by Becker with the titanium carbide particles taught by Oh, such that “wherein the proportion of a volume of the intercalated titanium carbide particles to a volume of the iron alloy matrix is in a range of 10% to 40%”, as one of ordinary skill in the art would have recognized there was a reasonable expectation of success in doing so, and have the obvious advantage of hardening the second build-up layer taught by Becker. In this case, discovering the optimum proportion of titanium carbide particles would have been obvious to try as there are a finite number of titanium carbide particles that can be added to an iron alloy matrix. See MPEP 2144.06(II) – “Substituting Equivalents Known for the Same Purpose”, MPEP 2144.05(I) – “Overlapping, Approaching, And Similar Ranges, Amounts, and Proportions” 2144.05(II)(A) – “Optimization within Prior Art Conditions or Through Routine Experimentation”.
Conclusion
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JAMES J. TAYLOR II
Primary Examiner
Art Unit 3655
/JAMES J TAYLOR II/Primary Examiner, Art Unit 3655
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