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 1-6, 11-13, 20-22 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.
Where applicant acts as his or her own lexicographer to specifically define a term of a claim contrary to its ordinary meaning, the written description must clearly redefine the claim term and set forth the uncommon definition so as to put one reasonably skilled in the art on notice that the applicant intended to so redefine that claim term. Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 1357, 52 USPQ2d 1029, 1033 (Fed. Cir. 1999). The term “crystallinity” in claim 1 appears to be used to mean “crystallite size”, while the accepted meaning is ‘crystallinity’ itself is usually a percentage (dimensionless). It is noted that the instant application specification discloses “crystallinity Lc “ designates the average crystallite size of graphite [Instant App. US20220090644; 0039], indicates crystallinity refers to crystallite size. However, the term is indefinite because crystallinity and crystallite size are distinct material characteristics, hence, neither the claim 1 nor specification clearly redefine the term “crystallinity”.
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.
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, 3, 4, 5, 6, 11, 12, 13, 20, 21, 22 are rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20160069408, herein Hattori), in the view of Gulas (WO2017125592, herein Gulas).
Regarding Claims 1, 3, 4, 5, 6, 22, Hattori teaches friction material [0025], comprising the friction material composition contains 0.3-5 weight % of the flake graphite [0027] lies in the claimed range; coke [0054]; Hattori teaches “binders such as phenolic resin” [0049] reads on the resin; “copper component is preferably less than 5 weight %” [0052] lies in the claimed range.
Hattori teaches flake graphite particle [0032], but does not teach the specific features of the graphite, however, Gulas teaches carbon brush or a friction pad based composition [0061] including the specific graphite, wherein, the coating graphite via CVD (chemical vapor deposition), using natural or synthetic graphite as starting material [0028-29], wherein, the surface modified graphite has a c/2 distance of < 0.3358nm [0045]; the spring- back of carbonaceous particulate material may range from about 45% to about 55% [0047], xylene density from 2.24 to 2.27 g/cm3 [0043], carbonaceous particulate material BET SSA of between 1 and 6 m2/g [0022], lie in the claimed ranges; crystallite size Lc (as measured by XRD) from 30 to 400 nm [0043], overlaps the claimed range.
Hattori and Gulas are considered to be analogous art relevant to the claimed invention because they are reasonably pertinent to the problem faced by the inventor, that of the graphite-polymeric based friction composite toward friction pad manufacturing. Therefore, It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori and substitute the specific graphite materials, with the feature of coating graphite via CVD (chemical vapor deposition) [0028-29], wherein, the graphite has a c/2 distance of < 0.3358nm [0045]; the spring- back of carbonaceous particulate material may range from about 45% to about 55% [0047], xylene density from 2.24 to 2.27 g/cm3 [0043], carbonaceous particulate material BET SSA of between 1 and 6 m2/g [0022], and further utilize the graphite with crystallite size Lc (as measured by XRD) from 30 to 400 nm [0043], which can collectively lead to the product of friction pad [0061] with the inclusion of the desired resilience of compacted graphite powder [0096], as taught by Gulas, which further lead to the product with sustainability and safety.
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). See MPEP § 2144.05.
Regarding Claims 11, 12, The Office realizes that all of the claimed effects or physical properties are not positively stated by the reference(s). However, Hattori and Gulas teach all of the claimed ingredients, in the claimed amounts, and Hattori teaches the composition as being made by a substantially similar process, namely, the mixing and the heat treatment [0059]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself, as instant application discloses: heat treatment and the mixing [Instant App. US20220090644; 0063]. Therefore, the claimed effects and physical properties, i.e. in-plane thermal conductivity; friction coefficient would necessarily arise from a composition with all the claimed ingredients. "Products of identical chemical composition can not have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. If it is the applicant’s position that this would not be the case: (1) evidence would need to be provided to support the applicant’s position; and (2) it would be the Office’s position that the application contains inadequate disclosure that there is no teaching enabling a person of ordinary skill in the art to obtain the claimed properties with only the claimed ingredients, absent undue experimentation.
Regarding Claim 13, Hattori teaches “expanded graphite” [0036].
Regarding Claims 20, 21, Hattori teaches “the friction material for the disc brake pad” [0043].
Claims 2 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20160069408, herein Hattori) and Gulas (WO2017125592, herein Gulas) as applied in claim 1 above, in the further view of Yamada (JP2016111021, herein Yamada, a machine translation is being used for citation purpose).
Regarding Claim 2, Hattori and Gulas teach the friction material of claim 1 as shown above. Hattori teaches flake graphite particle [0032], but is silent on graphite has a degree of graphitisation of 95.3% or more. However, Yamada teaches “natural graphite is classified into flake graphite. The degree of graphitization flake graphite at 99.9%” [0018] which lies in the claimed range. Hattori and Yamada are considered to be analogous art relevant to the claimed invention because they are pertinent to the problem faced by the inventor, that of graphitization method development for high crystallinity carbon materials with high particle packing property. Therefore, It would have been obvious to someone of ordinary skill in the art before the effective filing date of the claimed invention to have modified Hattori and substitute the “natural graphite is classified into flake graphite; The degree of graphitization flake graphite at 99.9%” [0018], which can lead to the desired mechanical property owing to ideal particle packing property development as of “being able to form suitable dense pores inside the carbon material and exhibiting excellent particle packing properties” [0019], which lead to high performance toward repeated friction [0055], and further lead to the excellent materials stability [0154], toward high performance carbon based energy materials application with sustainability and safety.
Response to Arguments
Applicant’s arguments, filed 2/11/2026, with respect to the rejection(s) of claim(s) 1 under 35 USC § 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Hattori (US20160069408, herein Hattori) and Gulas (WO2017125592, herein Gulas).
In this case, the applicant’s arguments are directed toward the amendment of the claims, which has been addressed by the rejection set forth above.
In response to the applicant’s argument that “unexpected results”, the argument is not persuasive.
In this case, when Brake Pad 1-4 are considered as a whole, they establish results associated with the ranges, respect to the claimed ranges provided for comparison. Claim 1 is open to the content of graphite having a c/2 of 0.3358 nm or less. Two inventive examples BP3 comprises “GRAPHITE SG HSB A” as the graphite type, and BP4 comprises “GRAPHITE SG HSB B” as the graphite type. The comparative example BP2 comprises “GRAPHITE SGA” as the graphite type. [Instant App. US20220090644; 0101]. However, the SGA and SG HSB A both have one single value of the c/2 of 0.3358 nm; SG HSB B failed to provide the value of the c/2. [Instant App. US20220090644; P6; Table 1]. Hence, these examples BP2, BP3 and BP4 are not reasonably commensurate in scope with the claimed range. Examples BP2-BP4 are therefore insufficient to establish non-obviousness.
Whether unexpected results are the result of unexpectedly improved results or a property not taught by the prior art, the objective evidence of nonobviousness must be commensurate in scope with the claims which the evidence is offered to support. In other words, the showing of unexpected results must be reviewed to see if the results occur over the entire claimed range. See MPEP 716.02(d).
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 extension fee 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.
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Zhen Liu whose telephone number is (703)756-4782. The examiner can normally be reached Monday-Friday 9:00 am - 5:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner' s supervisor, Mark Eashoo can be reached on (571)272-1197. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/ Supervisory Patent Examiner, Art Unit 1767
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