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 1-4 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 recites: “a base material including a sliding surface that slides with another member, and a plating layer disposed at least on the sliding surface”. This limitation is indefinite. The claim requires a sliding surface that slides with another member, but simultaneously requires a plating layer disposed on the sliding surface. If the sliding surface has a plating layer disposed on it, it cannot slide with another member as it is no longer the outermost surface. For purposes of examination, it is presumed that the base material includes a plating layer formed on its surface, and the outermost surface of the plating layer is a sliding surface that slides with another member. Dependent claims 2-4 depend from claim 1 and are indefinite for the same reasons.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Tressarieu et al. (EP 1365046).
Regarding claim 1, Tressarieu discloses a coating formed on a substrate that has excellent tribological properties (¶ 5), thus it is considered a sliding member. The coating comprises a Zn-Ni alloy matrix and particles disposed in the matrix (¶ 7). The Zn-Ni alloy contains between 12%-20% nickel, preferably between 14%-17% (¶ 13). The particles in the matrix comprise organic particles of polytetrafluoroethylene (¶ 8) and represent 1%-20% by volume of the coating (¶ 14), preferably 10%-20% (¶ 15). Given a density of about 2.16 g/cm3 for PTFE, and a density of the Zn-Ni alloy of about 7.3 g/cm3, this corresponds to a PTFE weight ratio of about 0.003%-6.8%, preferably 3.1%-6.8%. Tressarieu further teaches the amount of PTFE is adjusted to account for tribological and corrosion resistance effects (¶ 14). Thus, the prior art recognizes the amount of PTFE as a result effective variable and it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to determine, through routine optimization, an ideal amount of PTFE to include in the coating. See MPEP 2144.05 II. The prior art ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I.
Regarding claim 3, Tressarieu does not expressly disclose the claimed blackened area ratio. The present specification discloses the claimed blackened area ratio is present when PTFE content exceeds 6.5% (see Spec., [0049]-[0050]). Accordingly, one of ordinary skill in the art would expect the prior art sliding member to exhibit the claimed blackened area ratio when the PTFE content is between 6.5% and 6.8% (as Tressarieu suggests a PTFE weight ratio of about 0.003%-6.8%), absent objective evidence to the contrary. See MPEP 2144.05 I.
Claims 1-2 are rejected under 35 U.S.C. 103 as being unpatentable over Kreibich et al (CZ 302 895).
Regarding claims 1-2, Kreibich discloses a zinc-based composite coating having a low coefficient of friction (p. 1, ¶ 1); thus, it is considered a sliding member. The zinc coating is obtained from a galvanizing bath containing 8-15 g/L Zn (p. 2, 8-9), with 0.8-3 g/L Ni (p. 3, ¶ 10). No other metals are included. The composite coating further includes 0.01%-40% wt of polytetrafluoroethylene (p. 3, ¶ 7). Based on the amounts of Zn and Ni in the bath, one of ordinary skill in the art would expect these proportions to correspond to the proportions of the obtained coating, which indicates a Ni content of 5.3%-37.5% by weight. Krebich also teaches a preferred embodiment comprising 11-12 g/L Zn and 1.8-2.5 g/L Ni (p. 4, ¶ 2), which indicates a Ni content of 15%-23% by weight. The PTFE to Ni weight ratio in Kreibich is expected to cover a range from 0.0003 to 7.5. These ranges overlap the claimed ranges, creating a prima facie case of obviousness. See MPEP 2144.05 I. Furthermore, Kreibich teaches adding Ni improves the tribological effects of the coating (p. 3, ¶ 17). Therefore, the prior art recognizes Ni as a result effective variable and it would have been obvious at the effective time of filing for the claimed invention for one of ordinary skill in the art to determine, through routine optimization, the optimal amounts of Ni in the Zn-based composite coating.
Allowable Subject Matter
Claim 4 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for allowance: The prior art of record does not teach or suggest the claimed PTFE to Ni weight percentage ratio and the claimed blackened area ratio. Tressarieu suggests a maximum ratio of about 0.57. Kreibich discloses the coating is black, suggests a blackened area ratio close to 100% and is contradictory to a blackened area ratio of 30% or less. Matsuyoshi (JP 2002-348699) discloses a sliding member comprising a composite coating that contains PTFE in an amount under the claimed range, and does not disclose a blackened area ratio. Eastham (US 5,925,471) discloses a sliding layer comprising a Zn-Ni coating that contains 5%-15% Ni and PTFE, but does not disclose the amount of PTFE to include or the blackened area ratio.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOBEI WANG whose telephone number is (571)270-5705. The examiner can normally be reached M-F 8AM-5PM EST.
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/XIAOBEI WANG/Primary Examiner, Art Unit 1784
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