DETAILED ACTION
As of the Response to Election/Restriction Requirement filed on June 1, 2026, claims 1 – 20 are pending. Claims 1, 5 have been amended. Claims 1 – 4 have been withdrawn from consideration.
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
Applicant’s election without traverse of Group II in the reply filed on June 1, 2026 is acknowledged.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.
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 5 – 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.
Regarding claims 5, 6, 9, 20:
The claims as a whole have many limitations expressed in the passive voice, especially what may be steps of the claimed method (e.g. claim 5: “performing gas atomization and sieving [does that include the earlier recited mixing?], to obtain …”; “performing …spraying on a surface of a brake disc base using …”; claim 6: “wherein … includes … performing repeated melting on the … powder [melting powder? melting an unrecited compound on the powder?], then performing high-pressure atomization [of what?] … performing high-pressure atomization [of what?]”layer is deposited on a substrate”; claim 9: “sequentially performing sandblasting …drying [of what?] on the surface of the brake disc base …”; ect.
It then becomes unclear whether the various claim limitations in the passive voice are directed to a functionality or intention of the method as a whole, a functionality, intention or end result of a particular and unrecited manipulative act or details of such an act, or a required manipulative act of the method. The deficiencies can be cured by actively and particularly pointing out the manipulative acts of the method as well as to actively and particularly point out whether the recited objects are the direct object of an action or a location or coincidental object that is involved in said action. The Examiner further notes that an embodiment of gas atomization is detailed in paragraphs [0042] – [0043] of the originally filed disclosure. Adopting the actively voiced steps of the gas atomization process can overcome the rejection of the claims under the present ground.
Examiner notes that should the Applicant adopt the Examiner’s recommendation, that dependent claims may need to be amended to comport with amendments to the parent claims, e.g. claim 7: “the melting of the … is repeated in a range of 3 – 5 times …” may require amendment, e.g. claim 8: “wherein the high-entropy powder is preheated at a preheating temperature in a range of 180[°C] – 230°C , for a preheating time in a range of 150 [minutes] – 200 minutes.”
Additionally, regarding claim 5:
Claim 5 recites the limitation "after pre-treatment" within the broader phrase “surface of a brake disc base after pre-treatment”. There is insufficient antecedent basis for this limitation in the claim. In view of the lack of clarity due to limitations in the passive voice, it is unclear whether the limitation “after pre-treatment” is a required manipulative act of the method or a description of the recited surface of a brake disc base.
Additionally, regarding claims 5, 8, 9, 16, 17, 18, 19, 20:
As a preliminary matter, the Examiner notes that claim 5 and claims dependent on claim 5 recite a list of steps with marked numerical ordinals. However, the mere presence of numerical ordinals does not require that the ordinated steps are performed in a particular order under the broadest reasonable interpretation of the claims as ordering is required either by antecedent basis or other express language establishing timing and/or order.
With regards to the enumerated claims, the claims generally recite the term “operation” followed by an ordinal. ”. There is insufficient antecedent basis for these limitations in the claims. While ordinals are listed in parent claim 5, the ordinals are not recited as operations and are not necessarily operations, especially for (potentially) nested ordinals as recited in dependent claim 20. Among other potential amendments, the deficiency may be cured by adding the word “operation” before each ordinal to positively label an ordinated manipulative act as a labeled operation.
Regarding claim 11:
The term “particle size …two of 16#, 18#, 20#, 22#, 24#” in claim 11 are relative terms which renders the claim indefinite. The term “particle size …two of 16#, 18#, 20#, 22#, 24#” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. In particular while it is clear that the values 16#, 18#, 20#, 22#, or 24# are referring to sieved particle sizes/ sandblasting grit sizes, the claims and the specification does not render clear which grit/grid size standard is to be applied.
Regarding claim 16:
There is insufficient antecedent basis for “repeated passes …”. While the limitation implies a manipulative act of repeating a path of spraying, it does not render clear whether the repetition is e.g. an entire surface or a portion thereof. This in contrast to the other recited limitations which indicate conditions of the general atmospheric plasma spraying process as recited.
Regarding claim 20:
Claim 20 as presented is a dependent claim importing the limitations of parent claim 1. Claim 20 recites that the method “comprises: ” and then sets forth a new ordinal (1) with a step. It is unclear A.) whether the additional limitations override the claim limitations provided in parent claim 5, B.) whether instead the presented ordinal (1) overrides what is described under ordinal (1) in the parent claim, C.) or instead indicate additional manipulative acts that are to be included alongside the limitations recited in parent claim 1. The Examiner notes that claim 20 contains many claim limitations that are found in other independent claims. If the intention is for claim 20 to define a narrowest embodiment of the alleged invention, the Examiner recommends that claim 20 be amended to a new independent claim including the necessary preamble and connecting language that is currently present in present claim 1.
Claim Objections
Claim 7 is objected to because of the following informalities: for values in scientific notation, the exponents should be superscripts, especially when a dash is being used to delineate a range and such dashes can be confused as the negative sign. Appropriate correction is required.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Billiere US 20100132409 A1
Schnatterer et al. DE 102019213461 B3 (formatted machine translation provided)
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE I HERNANDEZ-KENNEY whose telephone number is (571)270-5979. The examiner can normally be reached M-F 6:30-3:30.
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/JOSE I HERNANDEZ-KENNEY/
Primary Examiner
Art Unit 1717
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