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 § 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.
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.
Claims 1-2 and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Maruyama (JP 2006125618 A) in view of Hattori et al. (CN 102235453 A1) (Hattori), Unno (US 2010/0233464 A1), and Onda et al. (US 2015/0369320 Al) (Onda).
Regarding claims 1-2 and 5-8, Maruyama teaches a friction material for brakes (Maruyama, Abstract) comprising carnauba wax in an amount of 0.5 to 3 wt% (Maruyama, p. 2, Paragraph 5), which overlaps with the range of the presently claimed; and the carnauba wax has a melting point of from 82 to 85.5°C (Maruyama, p. 2, Last Paragraph; p. 3, Paragraph 1), which falls within the claimed range (i.e., claim 2, the wax has a melting point of 65°C to 105°C), and comprising CH3(CH2)24COO(CH2)29CH3 as a main component (Maruyama, p. 2, Last Paragraph; p. 3, Paragraph 1) (i.e., a wax containing, as a main component, an ester of a higher fatty acid and a higher alcohol).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Further, as carnauba wax is taught to be a suitable wax in the present disclosure (Specification, p. 14, Table 2), it is clear the carnauba wax of Maruyama would inherently have as a main component, an ester of a higher fatty acid and a higher alcohol.
Where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). See MPEP 2112.01 (I).
Maruyama further teaches the friction material is formed of an inorganic material and an organic material, wherein the inorganic material includes rock wool (Maruyama, p. 2, Paragraph 9 and 10).
However, Maruyama does not explicitly teach (a) 5.0 to 30.0 mass% of a titanate; (b) the ceramic fibers or rock wool are biosoluble and is included in an amount of 4.0 to 12.0 mass%; or (c) at least one abrasive selected from the group consisting of silica chromium oxide, triiron tetroxide, and chromate.
With respect to the difference (a), Hattori teaches a disc brake pad for disk break with metal break plate equipped which has a friction material (i.e., a friction material for disc brake) (Hattori, Abstract), wherein the friction material comprises a fibrous matrix material, adhesive, grinding material, and abrasion improver; and further comprises 20 to 30% by weight of alkali metal titanate and/or alkaline earth metal titanate (Hattori, Abstract), wherein the titanate includes potassium titanate (Hattori, [0032]).
As Hattori expressly teaches, the friction material preferably comprises 20 to 30% by weight of alkali metal titanate and/or alkaline earth metal titanate in order to form a transfer film on the surface of the brake plate which minimizes the friction on the surface thereby reducing adhesion problems by reducing abrasion resistance (Hattori, [0031]).
Hattori is analogous art as it is drawn to a friction material for disc brake pads (Hattori, Abstract).
In light of the motivation of 20 to 30% by weight of a titanate to the friction material as disclosed by Hattori, it therefore would have been obvious to one of ordinary skill in the art to modify the friction material of Maruyama by adding 20 to 30% by weight of titanate in order to minimize the friction on the surface thereby reducing adhesion problems by reducing abrasion resistance, and thereby arrive at the claimed invention.
With respect to the difference (b), Unno teaches a friction material suitable for the production of friction materials such as disc brake pads, wherein the composition comprises a fibrous substrate, a binder, and a filler, wherein the fibrous substrate comprises at least two types of biosoluble ceramic fibers having different fiber lengths (Unno, Abstract). Unno teaches the two types of fibers are long ceramic fiber such as the commercial product Super wool, composition SiO2:MgO:CaO (i.e., claim 5, an SiO2-CaO-MgO-based fiber) in a range of 1 to 3% by weight of the material composition; and short ceramic fibers such as the product Fineflex-E Bulk Fiber T, composition SiO2:MgO+CaO:Al2O3 (i.e., claim 5, a SiO2-CaO-MgO-Al2O3-based fiber) in a range of 4 to 10% by weight (Unno, [0029]-[0032]). Therefore, the total amount of biosoluble ceramic fibers is between 5% and 13% by weight of the material composition, which overlaps with the range of the presently claimed.
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As Unno expressly teaches, the weight percentage range for long ceramic fibers and short ceramic fibers achieves a satisfactory reinforcing effect and dispersibility within the friction material (Unno, [0030]; [0032]).
Unno is analogous art as it is drawn to a friction material for disc brake pads (Unno, Abstract).
In light of the motivation of including 5 to 13% by weight of long and short biosoluble ceramic fibers in a friction material as disclosed by Unno, it therefore would have been obvious to one of ordinary skill in the art to modify the friction material of Maruyama by using 5 to 13% by weight of long and short biosoluble ceramic fibers as the ceramic fibers in Maruyama in order to achieve a satisfactory reinforcing effect and dispersibility within the friction material, and thereby arrive at the claimed invention.
With respect to the difference (c), Onda teaches a friction material used in disc brakes which includes a fiber base material, a friction modifier and a binder (Onda, Abstract; [0002]), wherein the friction modifier includes two or more kinds of titanate compounds (Onda, Abstract). Onda specifically teaches additional friction modifiers including abrasives may be added, such as silica, chromium oxide, and triiron tetraoxide (Onda, [0100]) (i.e., claim 7, the at least one abrasive is triiron tetroxide). Onda further specifically teaches, the abrasive may be used in combination with two or more thereof (i.e., claim 6, comprising at least two abrasives selected from the group consisting of silica, chromium oxide, and triiron tetroxide); and in an amount of 5 to 30% by mass based on the whole friction material (Onda, [0101]), which overlaps with the range of the presently claimed mass percentage of triiron tetroxide (i.e., claim 8).
As set forth in MPEP 2144.05, in the case where the claimed range “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); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
As Onda expressly teaches, friction modifiers are included to impart a friction function and adjust the friction performance (Onda, [0002]).
Onda is analogous art as it is drawn to a friction material for disc brakes (Onda, [0002]).
In light of the motivation of including an abrasive such as silica, chromium oxide, and triiron tetroxide as a friction modifier as disclosed by Onda, it therefore would have been obvious to one of ordinary skill in the art to modify the friction material of Maruyama by including an abrasive such as silica, chromium oxide, and triiron tetroxide as a friction modifier in order to impart a friction function and adjust the friction performance of the friction material, and thereby arrive at the claimed invention.
Response to Arguments
Applicant primarily argues:
“Applicant respectfully submits that none of Maruyama, Hattori, or Unno, as understood, discloses or suggests a friction material including "at least one abrasive selected from the group consisting of silica, chromium oxide, triiron tetroxide, and chromate," as recited in claim 1. Accordingly, Applicant respectfully submits that the cited art, alone or in combination, fails to disclose or render obvious the claimed combination comprising, among other features, "at least one abrasive selected from the group consisting of silica, chromium oxide, triiron tetroxide, and chromate."
Withdrawal of the rejection of claim 1 and the claims that depend therefrom is
respectfully requested.”
Remarks, p. 4-5
The examiner respectfully traverses as follows:
Firstly, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., Inc., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant primarily argues that Maruyama does not expressly teach the claimed “at least one abrasive selected from the group consisting of silica, chromium oxide, triiron tetroxide, and chromate”. This argument merely agrees with the basis for the rejection under 35 U.S.C. 103(a), which admits that Maruyama does not disclose the entire claimed invention. Rather, Onda is relied upon to teach claimed elements missing from Maruyama. See item #12 above.
Further, it is noted that while Hattori does not disclose all the features of the present claimed invention, Hattori is used as a teaching reference, namely to teach including 5.0 to 30.0 mass% of a titanate, in order to minimize the friction on the surface thereby reducing adhesion problems by reducing abrasion resistance (Hattori, [0031]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
Further, it is noted that while Unno does not disclose all the features of the present claimed invention, Unno is used as a teaching reference, namely to teach including 4.0 to 12.0 mass% of a biosoluble inorganic fiber, in order to achieve a satisfactory reinforcing effect and dispersibility within the friction material (Unno, [0030]; [0032]), and therefore, it is not necessary for this secondary reference to contain all the features of the presently claimed invention, In re Nievelt, 482 F.2d 965, 179 USPQ 224, 226 (CCPA 1973), In re Keller 624 F.2d 413, 208 USPQ 871, 881 (CCPA 1981). Rather this reference teaches a certain concept, and in combination with the primary reference, discloses the presently claimed invention.
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.
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/C.M.C./Examiner, Art Unit 1732
/CORIS FUNG/Supervisory Patent Examiner, Art Unit 1732