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 .
Response to Amendment
The amendment filed 22 July 2026 has been entered.
Claims 1-8 and 14-20 remain pending in the application, wherein claims 1-8 have been amended and claims 9-13 have been newly canceled.
Support for the amendments are found in the instant specification as follows:
Regarding first and second layer with second layer being alloy layer: para. 015
Regarding first layer being nickel alloy (claim 2) or cobalt alloy (claim 3): para. 015 (“first layer comprises transition metals and their compounds” in view of paras. 010-014)
Thickness of layers: para. 018
Accordingly, no new matter has been introduced by these amendments.
Response to Arguments
The cancellation of claim 12 has rendered the objection to claim 12 as being moot.
Applicant's arguments, filed 22 July 2026, have been fully considered but they are not persuasive. Applicant argues, see p. 5-6, that the prior art does not teach all of the instantly claimed features as amended. However, as outlined below, each of the instantly claimed features are taught or obvious over the prior art.
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 4 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.
Claim 4 recites wherein the second layer is an electrodeposited nickel layer, but claim 1 recites the second layer is the alloy layer. It is not clear whether the second layer as recited in claim 4 is a different feature (i.e. due to the use of the indefinite article “an” indicating a new feature) and is composed substantially entire of nickel (i.e. “a nickel layer”) or merely narrows the selection of group ii to positively requiring nickel as one of the metals in the alloy layer. In the interest of advancing prosecution, the disputed limitation will be considered to be such that the second layer is a nickel alloy layer (i.e. narrows the selection of group II to positively require nickel as one of the metals in the alloy layer).
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 1-8 and 14-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cahalen et al. (US 2011/0008646, previously cited).
Claim 1: Cahalen teaches an article coated using an electrodeposition process (paragraph 0001) wherein the article may include a base material and a coating formed thereon (i.e. the coating is on a surface of the article) and wherein the coating can exhibit desirable properties and characteristics such as durability, corrosion resistance, and high conductivity (paragraph 0016) (i.e. an electrodeposited anti-corrosion coating). The first layer comprises one or more metals or a metal alloy, wherein alloys that comprise nickel are preferred and may also comprise tungsten and/or molybdenum (paragraph 0018). The coating includes a second layer that comprises one or more precious metals and at least one other metal such as Mo, W, Cr, (i.e. at least one metal from group i), Co, Ni, Cu, Zn, etc., (i.e. at least one metal from group ii) (i.e. the teaching of “at least” is considered to teach where combinations of these metals may be used) (paragraph 0022). Cahalen teaches the coated article to be capable of resisting corrosion, including a corrosive environment of acid solutions (i.e. the anti-corrosion coating resists degradation after exposure to an acid) (paragraphs 0042 and 0052). The limitation of “an acid with a negative pH” is noted; however, the teaching of corrosion resistance in an acid environment is considered to teach corrosion in any acid absent an objective showing. Cahalen does not specify the claimed corrosion rate; however, this limitation is considered to be a material property. The coating taught by Cahalen is considered to have the instantly claimed corrosion rate because it is made of substantially identical materials as the instantly claimed coating as outlined above, and substantially identical materials are considered to have substantially identical properties and functions absent an objective showing. See MPEP § 2112.01. Cahalen does not specify the hardness of the first layer; however, material hardness is considered to be a material property. Since Cahalen teaches the second layer (i.e. the alloy layer) to be made of substantially identical materials as the instantly claimed alloy layer, the coating taught by Cahalen is considered to have the instantly claimed hardness because substantially identical materials have substantially identical properties and functions absent an objective showing. See MPEP § 2112.01. Cahalen does not teach the coated article to be a rod; however, a rod shape is considered to be obvious as a change in shape absent persuasive evidence that the particular configuration of the claimed rod (i.e. as opposed to any other shape) was significant. See MPEP § 2144.04(IV)(B).
While not reciting a singular example of the instantly claimed rod, it would have been obvious to one of ordinary skill in the art before the effective filing date to modify the shape of the article taught by Cahalen to be a rod (i.e. a rod shape as opposed to any other shape) as the courts have held a change in shape to be obvious and to use a combination of the disclosed metals, and one would have had a reasonable expectation of success.
Claim 2: Cahalen teaches the coating as including a first layer made of alloys that preferably comprise nickel and may also comprise tungsten and/or molybdenum (paragraph 0018).
Claim 3: Cahalen teaches that the coating may include a layer that comprises one or more precious metals and at least one other metal such as Co, etc., and the precious metals may include Ru, Rh, Os, Ir, etc. (paragraph 0022) (i.e. a cobalt alloy comprising cobalt and at least one metal from the instantly claimed choices). However, this layer is taught for the second layer instead of the first layer. However, adding an additional layer of materials suitable for the second layer is considered to be an obvious design choice as a duplication of parts, absent a showing of significance. See MPEP § 2144.04(VI)(B). Doing so would reasonably interpret the previously described second layer to correspond to instantly claimed first layer (i.e. a first layer that comprises Co and one or more precious metals) and the additional layer to correspond to the instantly claimed second layer (i.e. a second layer that comprises one or more precious metals and at least one other metal such as Mo, W, Cr, (i.e. at least one metal from group i), Co, Ni, Cu, Zn, etc., (i.e. at least one metal from group ii) wherein the teaching of “at least” is considered to teach where combinations of these metals may be used; paragraph 0022).
Claim 4: Cahalen teaches that the second layer comprises at least one other metal such as Mo, W, Cr, (i.e. at least one metal from group i), Co, Ni, Cu, Zn, etc., (i.e. at least one metal from group ii) (i.e. the teaching of “at least” is considered to teach where combinations of these metals may be used; e.g. a Ni alloy having Ni and at least one other of the listed elements) (paragraph 0022).
Claim 5: Cahalen teaches that the second layer may have any suitable thickness, although a thin layer such as less than 30 microinches (i.e. about 0.76 µm) may be advantageous to save on material costs (paragraph 0023). Although the example thickness of less than 30 microinches (i.e. about 0.76 µm) does not specifically overlap the instantly claimed range, the teaching of any suitable thickness and being thin is taught as being for cost considerations renders as obvious to one of ordinary skill in the art that the thickness is a matter of size or proportion and is not limited only to the exemplary size absent a showing of significance. See MPEP § 214404(IV)(A). Further regarding the feasibility of a thicker layer, Cahalen teaches that the first layer may have any thickness such as between about 1 microinch and 100 microinches (i.e. about 2.5 µm) (paragraph 0020), and both first and second layers may be applied by electrodeposition (paragraph 0033), which renders as obvious that layers thicker than 30 microinches is feasible.
Claim 6: Cahalen teaches that the second layer that comprises one or more precious metals and at least one other metal such as Mo, W, Cr, (i.e. at least one metal from group i), Co, Ni, Cu, Zn, etc., (i.e. at least one metal from group ii) (i.e. the teaching of “at least” is considered to teach where combinations of these metals may be used) (paragraph 0022) (i.e. the first layer may comprise molybdenum and nickel).
Claim 7: Cahalen teaches that the first layer may have any thickness such as between about 1 microinch and 100 microinches (i.e. about 2.5 µm) (paragraph 0020), which overlaps the instantly claimed range and the courts have held that a prima facie case of obviousness exists where claimed ranges overlap, lie inside of, or are close to ranges in the prior art. See MPEP § 2144.05. It is noted that as of the writing of this Office Action, no demonstration of a criticality to the claimed ranges has been presented.
Claim 8: Cahalen teaches that the weight percent of nickel in the alloy (i.e. of the first layer) may be between 25-75 weight percent and the remainder may be tungsten and/or molybdenum (i.e. the remainder being molybdenum would have been an obvious choice) (paragraph 0019). This equates to about 25-75 weight percent being molybdenum. Although this proportion of molybdenum is taught for a first layer, Cahalen teaches these metals may be included in the second layer (paragraph 0022) and therefore it would have been obvious to one of ordinary skill in the art before the effective filing date to include a similar proportion of molybdenum in the second layer, which overlaps the instantly claimed range. See MPEP § 2144.05.
Claims 14-16: Cahalen does not specify the instantly claimed Vickers Hardness, wear factor, or coefficient of friction; however, these are each a material property. Since Cahalen teaches the first layer (i.e. the alloy layer) to be made of substantially identical materials as the instantly claimed alloy layer, the coating taught by Cahalen is considered to have the instantly claimed hardness, wear factor, and coefficient of friction because substantially identical materials have substantially identical properties and functions absent an objective showing. See MPEP § 2112.01.
Claim 17: Cahalen teaches that the coating may include more than two layers (paragraph 0017). This teaching renders obvious that a surface coating on the electrodeposited anti-corrosion coating may be present because an additional layer (i.e. more than two layers) being placed on top of the coating (i.e. a surface coating), under the coating, or between layers of the coating is a matter of rearrangement of parts, which the courts have held to be an obvious matter of design choice. See MPEP § 2144.04(VI)(C).
Claim 18: Cahalen teaches that one or more layer may be formed between the first layer and the base material (i.e. underneath the electrodeposited anti-corrosion coating) (paragraph 0021). Cahalen does not teach the texture of the one or more layer(s) that may be between the first layer and the base material; however, every material has a texture ranging from very smooth to very rough, and therefore the one or more layer(s) that may be between the first layer and the base material is considered to be a textured layer.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over Cahalen et al. (US 2011/0008646previously cited) as applied to claim 1 above, and further in view of Kondo et al. (US 2009/0200126, previously cited).
Claim 19: Cahalen teaches an article coated using an electrodeposition process (paragraph 0001) wherein the coating can exhibit desirable properties and characteristics such as durability, corrosion resistance, and high conductivity (paragraph 0016). The first layer comprises one or more metals or a metal alloy, wherein alloys that comprise nickel are preferred (paragraph 0018). The coating includes a second layer that comprises one or more precious metals and at least one other metal such as Ni, etc. (paragraph 0022). The coated article is tested for durability by rubbing (i.e. abrasion) (paragraph 0050). However, Cahalen does not teach the article to be a system comprising a rod.
In a related field of endeavor, Kondo teaches a variable damping-force damper (i.e. a system) (paragraph 0003) where a piston partitions an inside of a cylinder tube, the piston is connected with a piston rod that projects out of one end of the cylinder tube, and a rod guide is disposed to close one end of the cylinder tube and slidably supports the piston rod (paragraph 0007) (i.e. a system comprising a rod). The sliding surface has a nickel plating film whose Vickers hardness is 800 VHN or more (paragraph 0027). The sliding surface is an interfacial sliding surface of the inner peripheral surface of the rod guide and the outer peripheral surface of the piston rod, and the Ni plating film is preferably provided on at least the outer peripheral surface of the piston rod (paragraph 0034). The Ni plating film is subjected to a durability test of the abrasion (paragraph 0101).
As Cahalen and Kondo both teach a nickel-containing coating with high durability, they are analogous. It would have been obvious to one of ordinary skill in the art before the effective filing date to modify the coated article of Cahalen to be specifically a piston rod as taught by Kondo as this is considered applying a known technique (i.e. the coating of Cahalen) to a known device (i.e. a piston rod), and one would have had a reasonable expectation of success.
Claim 20: Kondo teaches the Ni plating film is preferably provided on at least the outer peripheral surface of the piston rod (paragraph 0034) (i.e. the rod is present in a piston rod).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIM S HORGER whose telephone number is (571)270-5904. The examiner can normally be reached M-F 9:30 AM - 4:00 PM EST.
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/KIM S. HORGER/Examiner, Art Unit 1784
