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 Objections
Claim 12 is objected to because of the following informalities:
Claim 12 appears to have a typo (“the rod n of claim 9”).
Appropriate correction is required.
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.
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.
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.
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 1-18 are rejected under 35 U.S.C. 103 as being unpatentable over Cahalen et al. (US 2011/0008646).
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 (i.e. at least one metal from group ii of instant claim 1) are preferred and may also comprise tungsten and/or molybdenum (i.e. at least one metal from group i of instant claim 1) (paragraph 0018). The coating includes a second layer that comprises one or more precious metals and at least one other metal such as Ni, Fe, Co, Mo, etc., (i.e. at least one metal from group ii) and the precious metals may include Ru, Rh, Os, Ir, etc. (i.e. at least one metal from group i) or may include W, Cr, Mo, etc. (i.e. at least one metal from group i) and Pd, Pt, Ag, Au, etc. (i.e. at least one metal from group ii) (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 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 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 one would have had a reasonable expectation of success.
Claim 2: Cahalen teaches the coating as including a 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).
Claim 4: Cahalen teaches the coating may comprise a first layer formed on the base material and a second layer formed on the first layer (i.e. the first layer is between the surface of the base and the second layer) (paragraph 0017).
Claim 5: Cahalen teaches that 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) (i.e. the first layer is the alloy layer outlined above).
Claim 6: Cahalen teaches that 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) (i.e. the first layer may comprise molybdenum and nickel).
Claim 7: Cahalen teaches the second layer may comprise an alloy that includes at least one precious metal and at least one other metal selected from nickel etc.
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, which overlaps the instantly claimed range. 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 9: Cahalen teaches the second layer comprises one or more precious metal and at least one other metal such as Ni, Fe, Co, Mo, etc., (i.e. at least one metal from group ii) and the precious metals may include Ru, Rh, Os, Ir, etc. (i.e. at least one metal from group i) or may include W, Cr, Mo, etc. (i.e. at least one metal from group i) and Pd, Pt, Ag, Au, etc. (i.e. at least one metal from group ii) (paragraph 0022) (i.e. the second layer is the alloy layer).
Claim 10: Cahalen teaches the second layer comprises one or more precious metal and at least one other metal such as Ni, Fe, Co, Mo, etc. (paragraph 0022). Teaching at least one other metal from the selection renders as obvious that the second layer may comprise both molybdenum and nickel.
Claim 11: Cahalen teaches that the first layer comprises one or more metals or a metal alloy, wherein alloys that comprise nickel are preferred (paragraph 0018) (i.e. the first layer comprises nickel).
Claim 12: Cahalen teaches the second layer comprises one or more precious metal and at least one other metal such as Ni, Fe, Co, Mo, etc. (paragraph 0022) (i.e. having both molybdenum and nickel with a precious metal would have been obvious). Cahalen does not teach the proportion of these metals for the second layer, but it would have been obvious to try proportions used for the first layer. In this regard, 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). Since the second layer also includes a precious metal, the remainder equates to less than about 25-75 weight percent being molybdenum, which overlaps the instantly claimed range. See MPEP § 2144.05.
Claim 13: Cahalen teaches that the coating (i.e. the first layer and second layer) can be applied using an electrodeposition process (paragraphs 0016 and 0033) (i.e. each of the first layer and second layer is an electrodeposited alloy layer).
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 2011/0008646) as applied to claim 1 above, and further in view of Kondo et al. (US 2009/0200126).
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
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Battacharya et al. (US 4,863,810) teaches a corrosion resistant metallic coating on a substrate, where the metals with substantially improved corrosion resistance in a range of acidic pH aqueous environments include Ni-Nb alloys, Ni-Ti alloys, Ni-Nb-Cr alloys, Ni-Cr-Ti alloys.
Dadvand et al. (US 2013/0260176, US 2011/0223442, US 8,936,857, and US 8,445,116) teaches a multilayer metal coating with properties of durability, hardness, corrosion resistance, etc.
Cahalen et al. (US 2015/0010778, US 2014/0234663, US 9,765,438, and US 8,652,649) discloses a coated article similar to US 2011/0008646 cited above.
Goodrich et al. (US 2015/0004434) teaches a coated article having a base material and a multilayer coating formed thereon.
Sebe (US 2016/0102415) teaches a metal coating on a substrate and an organometallic adhesion promoter layer.
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