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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 9/15/2025, has been entered.
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, 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 Ulmann (US20190207206, herein Ulmann).
Regarding Claims 1, 3, 4, 5, 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] fall into the groups consisting of resin or cement binders; Hattori teaches “binders such as a straight phenolic resin” [0027] 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, Ulmann teaches the first carbonaceous particulate, the surface-modified synthetic graphite [0119] having: a c/2 (as measured by XRD) of less than about 0.336 nm [0120] overlaps the claimed range; spring back of 45 to 55% [0112] which lies in the claimed range; xylene density from 2.24 to 2.27 g/cm3 [0122] lies in the claimed range; crystallite size Lc (as measured by XRD) of from 100 nm to about 175 nm [0121] overlaps the claimed range. Ulmann further teaches surface-modified synthetic graphite, for example synthetic graphite which has been surface modified by controlled oxidation at elevated temperatures [0114], which reads on the surface treatment by heat treatment; and synthetic graphite which has been surface modified by either chemical vapour deposition (“CVD coating”) [0114]. Hattori and Ulmann are considered to be analogous art relevant to the claimed invention because they are from the same field of endeavor, that of graphite-based friction materials development. 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 first carbonaceous particulate, the surface-modified synthetic graphite [0119], which having the features of: a c/2 (as measured by XRD) of less than about 0.336 nm [0120] overlaps the claimed range; spring back of 45 to 55% [0112], lies in the claimed range; xylene density from 2.24 to 2.27 g/cm3 [0122] lies in the claimed range; crystallite size Lc (as measured by XRD) of from 100 nm to about 175 nm [0121] overlaps the claimed range; and the surface-modified synthetic graphite, for example synthetic graphite which has been surface modified by controlled oxidation at elevated temperatures [0114]; and synthetic graphite which has been surface modified by either chemical vapour deposition (“CVD coating”) [0114], which can collectively lead to the desired product via “the precursor composition comprises carbonaceous particulate material” [0099], which can lead to the desired application of the carbon matrix is incorporated in a carbon brush or friction pad [0196] as taught by Ulmann.
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 Ulmann 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 heat press forming step, and the heat treatment step [0059]. The original specification does not provide any disclosure on how to obtain the claimed properties outside the components of the composition itself. 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 Ulmann (US20190207206, herein Ulmann) 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 Ulmann 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], and further lead to the excellent materials stability [0154], toward energy materials application sustainability and safety..
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Hattori (US20160069408, herein Hattori), and Ulmann (US20190207206, herein Ulmann) as applied in claim 1 above, in the further view of Spahr (US20160156014, herein Spahr).
Regarding Claim 6, Hattori and Ulmann teach the friction material of claim 1 as shown above. Hattori teaches flake graphite particle [0032], but is silent on the graphite has a BET surface area of 9 m2/g or less. However, Spahr teaches BET surface areas of 1 to 20 m2/g. [0155] which overlaps the claimed range. Hattori and Spahr are considered to be analogous art pertinent to the problem faced by the inventor, that of graphite-based materials with low friction coefficients. 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 graphite has “BET surface areas 1 m2/g.” [0155], which can lead to the desired property of high mechanical stability [0071] toward energy materials application sustainability and safety.
Response to Arguments
In response to applicant's argument that Ulmann, Yamada, Spahr are nonanalogous arts, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992).
In this case, as analogous arts, the Hattori and Ulmann collectively teach all of the claimed ingredients, in the claimed amounts, as set forth in the new rejection above, which can collectively lead to the desired product via “the precursor composition comprises carbonaceous particulate material” [0099] upon the selection of the specific graphite taught by Ulmann which applied to the composition formation of Hattori, which can further lead to the desired application of the carbon matrix is incorporated in a carbon brush or friction pad [0196] as taught by Ulmann, wherein, such property also line up the desired property of friction material composition, can secure the fade resistance and the wear resistance [0030] as taught by Hattori, which lead to the high performance graphite based energy materials application toward stability, sustainability and safety.
Similarly to Ulmann, the specific graphite with the features of natural graphite is classified into flake graphite. the degree of graphitization flake graphite at 99.9% [0018] as taught by Yamada and the graphite with BET surface areas of 1 to 20 m2/g [0155] as taught by Spahr can be further substitute into the composition of Hattori, and further lead to the excellent materials stability [0154], as taught by Yamada; and high mechanical stability [0071] as taught by Spahr, both collectively lead to the high performance of the graphite-based energy materials toward materials stability, sustainability and safety.
In response to the “Ulmann refers to a "flake graphite" only as a "second carbonaceous particulate material" and does not disclose modifying the surface of the flake graphite by heat and/or surface coating treatment. See Ulmann at paragraph [0146]. Indeed, Ulmann further states that the second carbonaceous particulate material "has not undergone any surface modification, such as coating with non-graphitic carbon or surface oxidation. Id at paragraph [0139]”, is not persuasive.
In fact, Ulmann teaches the first carbonaceous particulate, the surface-modified synthetic graphite [0119] having: a c/2 (as measured by XRD) of less than about 0.336 nm [0120] overlaps the claimed range; spring back of 45 to 55% [0112] which lies in the claimed range; xylene density from 2.24 to 2.27 g/cm3 [0122] lies in the claimed range; crystallite size Lc (as measured by XRD) of from 100 nm to about 175 nm [0121] overlaps the claimed range. Ulmann further teaches surface-modified synthetic graphite, for example synthetic graphite which has been surface modified by controlled oxidation at elevated temperatures [0114], which reads on the surface treatment by heat treatment; and synthetic graphite which has been surface modified by either chemical vapour deposition (“CVD coating”) [0114], all these features applied to the first carbonaceous particulate as taught by Ulmann. Hence, Ulmass does not teach away the instant application.
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.
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/Z.L./
Examiner, Art Unit 1767
/MARK EASHOO/Supervisory Patent Examiner, Art Unit 1767
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