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 .
Specification
The disclosure is objected to because of the following informalities: Page 9 line 23 of the specification refers to “The polymer formulation”. However, there is no mention of a “polymer formulation” in the remainder of the specification, so it is unclear what this refers to.
Appropriate correction is required.
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 1-5, 7-11, 13, and 16-20 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.
Claims 1, 8, and their dependent claims recite a first tribological surface configured to be in contact with a second tribological surface of another machine component during machine operation, but claims 1 and 8 also recite coating the first tribological surface with a first and second coating layer. It is therefore not clear whether the first tribological surface is itself configured to be in contact with the second tribological surface, or whether it is the surface of the second coating layer that is configured to be in contact with the second tribological surface.
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.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], 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 16 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, 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. Claim 16 depends on claim 2, but recites the same limitation as claim 2. Claim 16 therefore fails to further limit claim 2.
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.
Claims 1-5, 7-11, 13, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (WO 2019/202772 A1) in view of Bookbinder (U.S. PG Pub. No. 2017/0320773).
An English-language machine translation of Hayashi, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the rejection.
In paragraph 8 Hayashi discloses a sliding member comprising a base material and a sliding layer. In paragraph 59 Hayashi discloses that it is possible to perform a degreasing process on the base material, followed by forming a base layer, in order to enhance the adhesion between the base material and the sliding layer. Hayashi discloses that the base layer can consist of manganese phosphate, meeting the limitations of the inorganic protective coating composition of the first coating layer of claims 1, 7, 13, and 20. In paragraph 11 Hayashi discloses that the sliding layer, which corresponds to the second coating layer of claim 1, comprises a silane coupling agent. The overall sliding member of Hayashi corresponds to the machine component of claim 1 and the surface of the base material corresponds to the first tribological surface of claim 1.
The disclosure in paragraph 59 of Hayashi meets the limitations of step (a) of claim 8 regarding applying a coating later comprising manganese phosphate. In paragraphs 29 and 40 Hayashi discloses applying the sliding layer composition, as recited step (b) of claim 29, and firing the material at elevated temperature, meeting the limitations of the curing step (c) of claim 8.
The differences between Hayashi and the currently presented claims are:
i) Hayashi does not disclose specific suitable silane coupling agents.
ii) Hayashi does not specifically disclose supplying the silane coupling agent as an aqueous solution. This relates to claim 9.
iii) Hayashi does not specifically disclose a sliding layer having a thickness in the range recited in claim 19.
With respect to i), in paragraph 221 Bookbinder discloses a lubricious coating comprising a homogeneous layer containing a polymer and a coupling agent. In paragraph 241 Bookbinder discloses that the polymer can be polyimides, as disclosed in paragraph 22 of Hayashi. In paragraph 225 Bookbinder discloses that the coupling agent can be a silane, and in paragraphs 229-231 discloses that the silane can be various amine-containing silane, meeting the limitations of the organically modified silanes of claims 1 and 8, and the water-soluble silanes of claims 2 and 16. In paragraph 231 Bookbinder specifically discloses that N-(2-aminoethyl)-3-aminopropyl-silanetriol, as recited in claims 3-4, 10-11, and 17-18, is a suitable coupling agent. The inclusion of the N-(2-aminoethyl)-3-aminopropyl-silanetriol of Bookbinder as the silane coupling agent in the sliding layer of Hayashi leads to a machine part and method meeting the limitations of claims 1-4, 7-8, 10-11, 13, and 16-18.
With respect to ii), Bookbinder teaches in paragraph 237 that the silane can be added as a solution in a solvent which can be water, meeting the limitations of claim 9 where the silane is in the form of an aqueous solution. Providing the silane coupling agent of Hayashi to the sliding layer of Hayashi as an aqueous solution therefore meets the limitations of claim 9.
It would have been obvious to one of ordinary skill in the art to include use the amine-containing silane of Bookbinder, such as N-(2-aminoethyl)-3-aminopropyl-silanetriol, as the silane coupling agent in the sliding layer of Hayashi, since Bookbinder teaches that it is a suitable silane coupling agent for use in a polymer-based lubricious layer. It would have further been obvious to one of ordinary skill in the art to supply the silane coupling agent as an aqueous solution as Bookbinder teaches that it is a suitable method of supplying a silane to a coating.
With respect to iii), in paragraph 222 Bookbinder discloses that the lubricious coating can have a thickness of less than or equal to about 100 nm thick, overlapping the ranges recited in claims 5 and 19. See MPEP 2144.05(I): “In the case where the claimed ranges “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);” Forming the sliding layer of Hayashi to have the thickness of Bookbinder therefore meets the limitations of claims 5 and 19, as well as claim 20 since Hayashi discloses that the first coating layer can be manganese phosphate.
Claims 1-2, 7-8, 13, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hayashi (WO 2019/202772 A1) in view of Leonardelli (U.S. PG Pub. No. 2021/0277255).
An English-language machine translation of Hayashi, which is attached, has been used in setting forth this rejection, and the paragraph numbers referred to herein are those of the rejection.
In paragraph 8 Hayashi discloses a sliding member comprising a base material and a sliding layer. In paragraph 59 Hayashi discloses that it is possible to perform a degreasing process on the base material, followed by forming a base layer, in order to enhance the adhesion between the base material and the sliding layer. Hayashi discloses that the base layer can consist of manganese phosphate, meeting the limitations of the inorganic protective coating composition of the first coating layer of claims 1, 7, and 13. In paragraph 11 Hayashi discloses that the sliding layer, which corresponds to the second coating layer of claim 1, comprises a silane coupling agent. The overall sliding member of Hayashi corresponds to the machine component of claim 1 and the surface of the base material corresponds to the first tribological surface of claim 1.
The disclosure in paragraph 59 of Hayashi meets the limitations of step (a) of claim 8 regarding applying a coating later comprising manganese phosphate. In paragraphs 29 and 40 Hayashi discloses applying the sliding layer composition, as recited step (b) of claim 29, and firing the material at elevated temperature, meeting the limitations of the curing step (c) of claim 8.
Hayashi does not disclose specific suitable silane coupling agents.
In paragraph 2 Leonardelli discloses an anti-friction varnish comprising an organic binding agent, a solid lubricant, and a bonding agent, similar to the sliding layer disclosed in paragraph 8 of Hayashi. In paragraph 46 Leonardelli discloses that the binding agent can be various polymers also disclosed in paragraph 22 of Hayashi. In paragraph 74 Leonardelli discloses that the bonding agent can be 3-aminopropyltriethoxysilane, meeting the limitation of an organically modified silane composition containing one or more amine groups recited in claims 1 and 8. Aminopropyltriethoxysilane is water-soluble, as recited in claims 2 and 16.
The use of the aminopropyltriethoxysilane of Leonardelli as the silane coupling agent in the sliding layer of Hayashi leads to a machine part and method meeting the limitations of claims 1-2, 7-8, 13, and 16.
It would have been obvious to one of ordinary skill in the art to use the aminopropyltriethoxysilane of Leonardelli as the silane coupling agent in the sliding layer of Hayashi, since Leonardelli teaches that it is suitable for use for a similar purpose in a similar coating layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAMES C GOLOBOY whose telephone number is (571)272-2476. The examiner can normally be reached M-F, usually about 10:00-6:30.
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/JAMES C GOLOBOY/ Primary Examiner, Art Unit 1771
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