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Claims 43-50 and 54-57 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.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 April 17, 2026.
Applicant’s election without traverse of Group I in the reply filed on April 17, 2026 is acknowledged.
Claims 27-41 and 51-53 are pending. Claim 27 is independent.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The abstract of the disclosure does not commence on a separate sheet in accordance with 37 CFR 1.52(b)(4) and 1.72(b). A new abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text.
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 present invention relates to” is language that can be implied.
Information Disclosure Statement
The information disclosure statement filed September 10, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, no copy of the NPL document was filed and has not been considered (see struck through annotation on the signed IDS filed herewith).
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.
Claim 32 is 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. Specifically, it is indefinite if “a process” in claim 32 is the same “process” as introduced in claim 27, from which claim 32 depends.
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 27-41 and 51-53 is/are rejected under 35 U.S.C. 103 as being unpatentable over Fuller et al. (US 20060272909 A1), hereinafter Fuller.
Regarding claims 27 and 41, Fuller teaches a brake assembly (braking system) comprising a first component with a surface and a coating applied to the surface, where the coating comprises a second constituent including titanium dioxide (claims 1 and 5) issued in an automotive brake assembly ([0005]; i.e. a car), and the component may be steel or aluminum (metal; [0033]).
Regarding “obtainable by” and the following process, the examiner first notes that this product is merely optionally “obtainable” by this process, not required to be produced by this process, as presently recited. Further, even if required the process results in product-by-process limitations. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). In this instance, the patentable distinction structurally of the process as claimed is that of a TiO2 coating on the substrate, addressed above.
Regarding claims 28-39 and 51-52, Fuller teaches each limitation of claim 27, as discussed above and further teaches a brake assembly (braking system) comprising a first component with a surface and a coating applied to the surface, where the coating comprises a second constituent including titanium dioxide (claims 1 and 5) issued in an automotive brake assembly ([0005]; i.e. a car), and the component may be steel or aluminum (metal; [0033]).
Regarding “obtainable by” in the independent claim from which these depend and the following process limitations of these dependent claims, the examiner first notes that this product is merely optionally “obtainable” by this process, not required to be produced by this process, as presently recited. Further, even if required the process results in product-by-process limitations. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). In this instance, the patentable distinction structurally of the process as claimed is that of a TiO2 coating on the substrate, addressed above.
Regarding claim 40, Fuller teaches each limitation of claim 27, as discussed above and further teaches the coating has a preferred thickness of about 0.5 to about 3.0 mils ([0053]). Examiner notes that this is not a firm limit of 0.5 mils for the lower limit for two reasons, 1) Fuller teaches this a “preferred” lower limit and also further 2) qualifies it with “about”. Therefore, no specific difference in properties is expected below the lower limit of preferred about 0.5 mils.
Fuller does not specifically teach the thickness is 1-5 microns; however, one of ordinary skill in the art before the effective filing date of the invention would have been motivated to modify Fuller to this range, because where the only difference between the prior art and the claims was a recitation of relative dimensions of the claimed device and a device having the claimed relative dimensions would not perform differently than the prior art device, the claimed device was not patentably distinct from the prior art device (MPEP 2144.04 IV A).
Regarding 53, Fuller teaches each limitation of claims 27 and 34, as discussed above and further teaches a brake assembly (braking system) comprising a first component with a surface and a coating applied to the surface, where the coating comprises a second constituent including titanium dioxide (claims 1 and 5) issued in an automotive brake assembly ([0005]; i.e. a car), and the component may be steel or aluminum (metal; [0033]).
Regarding “obtainable by” in the independent claim from which these depend and the following process limitation of claim 53, the examiner first notes that this product is merely optionally “obtainable” by this process, not required to be produced by this process, as presently recited. Further, even if required the process results in product-by-process limitations. Product-by-process claims are limited by and defined by the process, however, the determination of patentability is based on the product itself. The patentability of a product does not depend on its method of production. If the product in the product by process claim is the same or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process (MPEP 2113). In this instance, the patentable distinction structurally of the process as claimed is that of a TiO2 coating on the substrate, addressed above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE CHRISTY whose telephone number is (303)297-4363. The examiner can normally be reached Monday-Thursday, 7am-4pm MT.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Humera Sheikh can be reached at 571-272-0604. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/KATHERINE A CHRISTY/ Primary Examiner, Art Unit 1784
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