DETAILED ACTION
Summary
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Applicant’s arguments and claim amendments submitted on June 6, 2025 have been entered into the file. Currently claims 2, 4, and 2 are amended and claims 1, 3, 5-9, 11, and 14-17 are cancelled, resulting in claims 2, 4, 10, and 12-13 pending for examination.
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.
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.
Claim(s) 2 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 5707905)1,2 in view of Farahati (US 2018/0149222)2.
With respect to claim 1, Lam ‘905 teaches a fibrous base material useful in brakes and in clutch applications (col. 3, lines 53-60) comprising about 10 to about 35% by weight of a synthetic graphite (col. 9, lines 30-45). The synthetic graphite has a particle size of about 20 to about 50 micron and provides the friction material with the ability to dissipate heat more rapidly than other types of graphite (col. 9, lines 7-16). Example formulations of the fibrous base material comprise about 15 to about 25% synthetic graphite and optionally about 0 to about 40% cotton fibers (cellulose fibers) (col. 9, lines 30-45), such as about 20% synthetic graphite and about 30% cotton fibers (cellulose fibers) (col. 9, line 66 – col. 10, line 14). The fibrous base material can be impregnated using different resin systems (col. 3, lines 54-60) and the impregnating material preferably comprises about 45 to about 65 parts by weight, per 100 parts by weight, of the friction material (col. 7, lines 51-56). The friction material is used as a wet friction material (col. 3, lines 34-52).
Lam ‘905 is silent as to the friction material including 20-45 wt% calcined kaolin clay.
Farahati teaches a friction material including a fiber material, a filler material including aluminum silicate, and a binder such as phenolic resin or latex (paragraph [0016]). The filler material may include a silica-containing material other than aluminum silicate, such as a diatomaceous earth (paragraph [0017]). The friction material includes 3-60 weight percent, preferably 20-50 weight percent of calcined clay (paragraphs [0025], [0027]). The inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (paragraphs [0002], [0033]-[0034]).
Since both Lam ‘905 and Farahati teach friction materials for clutches comprising fillers such as diatomaceous earth, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of Lam ‘905 to include 3-60, preferably 20-50, weight percent of calcined kaolin clay in order to increase the static and dynamic friction coefficients of the material.
The graphite mean particle size, wt% graphite, and the wt% of calcined kaolin clay ranges of Lam ‘905 in view of Farahati substantially overlaps the claimed range in the instant claim 3. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Lam ‘905 in view of Farahati, because overlapping ranges have been held to establish prima facie obviousness.
With respect to the weight percentage of cotton fibers (cellulose fibers), it has been held that obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05(I). In the instant case Lam ‘905 teaches the cotton fibers (cellulose fibers) in a range with an upper limit of about 40 wt%. Both the prior art and the claimed invention are suitable for use as friction materials, and a 40 wt% of cellulose fibers appears to be a suitable cellulose fiber amount for the claimed invention (see e.g., claims 1-2). Therefore one skilled in the art would expect the prior art friction material to have the same properties as the claimed clutch assembly.
With respect to the weight percentage of binder, it has been held that obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05(I). In the instant case Lam ‘905 teaches the impregnated resin material is preferably about 45-65 wt% of the friction material. Both the prior art and the claimed invention are suitable for use as friction materials, and the binder is presented in an amount suitable to provide a cohesive material. Therefore one skilled in the art would expect the prior art friction material to have the same properties as the claimed clutch assembly.
Lam ‘905 in view of Farahati teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient staying within the range of 0.16 to 0.19 for applied pressures of 1.0 MPa, 1.5 MPa, 2.0 MPa and 2.5MPa and rotational speeds of 5 PRM, 10 RPM, 30 RPM, 40 RPM and 50 RPM for each applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lam ‘905 in view of Farahati.
Support for said presumption is found in that paragraphs [0021]-[0026] of the instant specification discuss how substituting graphite and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lam ‘905 in view of Farahati teaches the same base material composition as the claimed invention, including the diatomaceous earth. Lam ‘905 also acknowledges the significance using the graphite to improve the friction material’s ability to withstand high temperatures (Lam ‘905; col. 8, lines 5-9). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lam ‘905 in view of Farahati teaches that the graphite and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lam ‘905 in view of Farahati is expected to have the same properties as the claimed invention.
Claim(s) 4 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 5989390)3,4 in view of Farahati (US 2018/0149222)2 and Lam (US 2006/0241207)2.
With respect to claim 4, Lee teaches a paper based friction material (col. 1, lines 5-8). The material is in the form of a porous, flexible, fibrous sheet comprising a mixture of cellulose fibers, carbon fibers and activated carbon powder, and includes a thermosetting resin (col. 2, lines 41-48). The material may also include other components such as diatomaceous earth (col. 2, lines 41-18).
Specifically the composition may comprise 10-65%, preferably 30-50%, specifically 37% cellulose fibers; 0-65%, preferably 15-50%, specifically 23% amorphous diatomaceous earth; and 1-25%, preferably 3-10%, specifically 5% novoloid fibers (col. 3, lines 12-30). The above composition is then saturated with 5-50 %, preferably 5-30%, most preferably about 29% phenolic resin (binder embedded in the base material) (col. 3, lines 31-40). It is noted the percentages are weight percent (col. 3, lines 6-8).
The material may be used as a transmission clutch facing a torque convertor clutch facing plate (a clutch assembly for a motor vehicle drive train comprising a rigid support) (col. 2, lines 5-8; col. 4, line 45). The material is suitable for wet friction applications (claim 8).
Lee is silent as to the material comprising 35-40% calcined kaolin clay.
Farahati teaches a friction material including a fiber material, a filler material including aluminum silicate, and a binder such as phenolic resin or latex (paragraph [0016]). The filler material may include a silica-containing material other than aluminum silicate, such as a diatomaceous earth (paragraph [0017]). The friction material includes 3-60 weight percent, preferably 20-50 weight percent of calcined clay (paragraphs [0025], [0027]). The inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (paragraphs [0002], [0033]-[0034]).
Since both Lee and Farahati teach friction materials for clutches comprising fillers such as diatomaceous earth, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of Lee to include 3-60, preferably 20-50, weight percent of calcined kaolin clay in order to increase the static and dynamic friction coefficients of the material.
Lee further teaches the resin is a phenolic resin (col. 3, lines 30-40), but is silent as to the phenolic resin being a tung modified phenolic resin.
Lam teaches a wet friction material comprising a fibrous base material, friction modifying particles, and a binder (paragraphs [0010]-[0011]). The friction modifying particles include inorganic fillers such as diatomaceous earth and clay (paragraph [0032]). The binder may be a phenolic or modified phenolic resin (paragraph [0033]) such as a phenolic-based resin modified by tung oil (paragraph [0059]).
Since both Lee in view of Farahati and Lam teach friction materials for clutches comprising fibers, inorganic fillers such as diatomaceous earth and clay, and a phenolic binder, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the phenolic resin of Lee in view of Farahati to be the tung oil modified phenolic resin disclosed by Lam because both resins are known in the art as suitable as a binding resin for friction materials and would yield the predictable result of a friction material comprising consolidated fibers and fillers. The simple substitution of one known element for another is likely to be obvious when predictable results are achieved. See MPEP 2143(I)(B).
Lee in view of Farahati and Lam teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient of above 0.22 for applied in a speed range of 30 RPM to 50 RPM for 1.0 MPa applied pressure and above 0.21 in a speed range of 30 RPM to 50 RPM for 1.5 MPa applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lee in view of Farahati and Lam.
Support for said presumption is found in that paragraphs [0027]-[0031] of the instant specification discuss how substituting diatomaceous earth and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lee in view of Farahati and Lam teaches the same base material composition as the claimed invention, including the diatomaceous earth. Lee also acknowledges the significance of the novoloid fibers used to the frictional properties of the formulation over a broad range of operating temperatures (Lee; col. 3, lines 62-65). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lee in view of Farahati and Lam teaches that the novoloid fibers and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lee in view of Farahati and Lam is expected to have the same properties as the claimed invention.
Claim(s) 10 and 12-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee (US 5989390)5,6 in view of Farahati (US 2018/0149222)2.
With respect to claim 10, Lee teaches a paper based friction material (col. 1, lines 5-8). The material is in the form of a porous, flexible, fibrous sheet comprising a mixture of cellulose fibers, carbon fibers and activated carbon powder, and includes a thermosetting resin (col. 2, lines 41-48). The material may also include other components such as diatomaceous earth (col. 2, lines 41-18).
Specifically the composition may comprise 10-65%, preferably 30-50%, specifically 37% cellulose fibers; 0-65%, preferably 15-50%, specifically 23% amorphous diatomaceous earth; and 1-25%, preferably 3-10%, specifically 5% novoloid fibers (col. 3, lines 12-30). The above composition is then saturated with 5-50 %, preferably 5-30%, most preferably about 29% phenolic resin (binder embedded in the base material) (col. 3, lines 31-40). It is noted the percentages are weight percent (col. 3, lines 6-8).
The material may be used as a transmission clutch facing a torque convertor clutch facing plate (a clutch assembly for a motor vehicle drive train comprising a rigid support) (col. 2, lines 5-8; col. 4, line 45). The material is suitable for wet friction applications (claim 8).
Lee is silent as to the material comprising 35-45% calcined kaolin clay.
Farahati teaches a friction material including a fiber material, a filler material including aluminum silicate, and a binder such as phenolic resin or latex (paragraph [0016]). The filler material may include a silica-containing material other than aluminum silicate, such as a diatomaceous earth (paragraph [0017]). The friction material includes 3-60 weight percent, preferably 20-50 weight percent of calcined clay (paragraphs [0025], [0027]). The inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (paragraphs [0002], [0033]-[0034]).
Since both Lee and Farahati teach friction materials for clutches comprising fillers such as diatomaceous earth, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the material of Lee to include 3-60, preferably 20-50, weight percent of calcined kaolin clay in order to increase the static and dynamic friction coefficients of the material.
The weight percent of cellulose fibers and calcined kaolin clay ranges of Lee in view of Farahati substantially overlap the claimed range in the instant claim 10. It has been held that obviousness exists where the claimed ranges overlap or lie inside ranges disclosed by the prior art. See MPEP 2144.05 (I). Therefore, it would have been obvious to one of ordinary skill in the art at the time of the invention to have selected from the overlapping portion of the range taught by Lee in view of Farahati, because overlapping ranges have been held to establish prima facie obviousness.
Lee in view of Farahati teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient staying within the range of 0.16 to 0.19 for applied pressures of 1.0 MPa, 1.5 MPa, 2.0 MPa and 2.5 MPa and rotational speeds of 5 RPM, 10 RPM, 30 RPM, 40 PRM and 50 RPM for each applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lee in view of Farahati.
Support for said presumption is found in that paragraphs [0038]-[0043] of the instant specification discuss how substituting chopped novoloid fibers for some of the cellulose gibers and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lee in view of Farahati teaches the same base material composition as the claimed invention, including the novoloid fibers. Lee also acknowledges the significance of the novoloid fibers to the frictional properties of the formulation over a broad range of operating temperatures (Lee; col. 3, lines 62-65). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lee in view of Farahati teaches that the novoloid fibers and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lee in view of Farahati is expected to have the same properties as the claimed invention.
With respect to claim 12, Lee teaches all the limitations of claim 10 above. Lee further teaches the novoloid fibers have a length of 0.3 mm (col. 3, lines 27-28).
With respect to claim 13, Lee teaches all the limitations of claim 10 above. Lee further teaches the novoloid fibers have a diameter of 33 microns (col. 3, lines 27-28).
Response to Arguments
Response – Drawings
The objections to the drawings have been overcome by Applicant’s amendments to the drawings in the response received on June 6, 2025.
Response – Claim Rejections 35 USC §103
The rejections of:
claim(s) 1 and 6-9 under 35 U.S.C. 103 as being unpatentable over Lee (US 5989390) in view of Farahati (US 2018/0149222) and Shibata (US 5004497) and
claim(s) 9 under 35 U.S.C. 103 as being unpatentable over Lee (US 5989390) in view of Farahati (US 2018/0149222) and Shibata (US 5004497) and further in view of Kaminski (US 5520866)
have been withdrawn in light of the amendments to the claims filed June 6, 2025.
Applicant’s arguments submitted in the response filed June 6, 2025 have been fully considered and are not persuasive.
On page 10 of the response, with respect to claim 10, Applicant submits that Lee and Farahati do not render obvious the amended friction coefficient which as evidenced and alleges the claimed combination results in a significant improvement in stability and durability.
These arguments are not persuasive. As discussed above, Lee in view of Farahati teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient staying within the range of 0.16 to 0.19 for applied pressures of 1.0 MPa, 1.5 MPa, 2.0 MPa and 2.5 MPa and rotational speeds of 5 RPM, 10 RPM, 30 RPM, 40 PRM and 50 RPM for each applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lee in view of Farahati.
Support for said presumption is found in that paragraphs [0038]-[0043] of the instant specification discuss how substituting chopped novoloid fibers for some of the cellulose gibers and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lee in view of Farahati teaches the same base material composition as the claimed invention, including the novoloid fibers. Lee also acknowledges the significance of the novoloid fibers to the frictional properties of the formulation over a broad range of operating temperatures (Lee; col. 3, lines 62-65). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lee in view of Farahati teaches that the novoloid fibers and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lee in view of Farahati is expected to have the same properties as the claimed invention.
Additionally, with respect to the improved stability and durability, it is noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On page 11 of the response, with respect to claim 4, Applicant submits that Lee and Farahati do not render obvious the amended friction coefficient which as evidenced and alleges the claimed combination results in a significant improvement in stability and durability.
These arguments are not persuasive. As discussed above, Lee in view of Farahati and Lam teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient of above 0.22 for applied in a speed range of 30 RPM to 50 RPM for 1.0 MPa applied pressure and above 0.21 in a speed range of 30 RPM to 50 RPM for 1.5 MPa applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lee in view of Farahati and Lam.
Support for said presumption is found in that paragraphs [0027]-[0031] of the instant specification discuss how substituting diatomaceous earth and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lee in view of Farahati and Lam teaches the same base material composition as the claimed invention, including the diatomaceous earth. Lee also acknowledges the significance of the novoloid fibers used to the frictional properties of the formulation over a broad range of operating temperatures (Lee; col. 3, lines 62-65). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lee in view of Farahati and Lam teaches that the novoloid fibers and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lee in view of Farahati and Lam is expected to have the same properties as the claimed invention.
Additionally, with respect to the improved stability and durability, it is noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
On pages 12-13 of the response, with respect to claim 2, Applicant submits that Lam ‘905 and Farahati do not render obvious the amended friction coefficient which as evidenced and alleges the claimed combination results in a significant improvement in stability and durability.
These arguments are not persuasive. As discussed above, Lam ‘905 in view of Farahati teaches the claimed invention above but does not expressly teach the wet friction material having a friction coefficient staying within the range of 0.16 to 0.19 for applied pressures of 1.0 MPa, 1.5 MPa, 2.0 MPa and 2.5MPa and rotational speeds of 5 PRM, 10 RPM, 30 RPM, 40 RPM and 50 RPM for each applied pressure. It is reasonable to presume that the friction coefficient is inherent to Lam ‘905 in view of Farahati.
Support for said presumption is found in that paragraphs [0021]-[0026] of the instant specification discuss how substituting graphite and using 31-35% of the weight of the binder results in a significant improvement in stability and durability. As discussed above, Lam ‘905 in view of Farahati teaches the same base material composition as the claimed invention, including the diatomaceous earth. Lam ‘905 also acknowledges the significance using the graphite to improve the friction material’s ability to withstand high temperatures (Lam ‘905; col. 8, lines 5-9). Farahati also teaches the inclusion of calcined kaolin clay increases the static and dynamic friction coefficients, which is desirable for friction materials for clutches (Farahati; paragraphs [0002], [0033]-[0034]). Since Lam ‘905 in view of Farahati teaches that the graphite and the calcined kaolin clay improve friction properties of friction materials and teach a base material comprising the same material in similar proportions, the friction material of Lam ‘905 in view of Farahati is expected to have the same properties as the claimed invention.
Additionally, with respect to the improved stability and durability, it is noted that the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
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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LARISSA ROWE EMRICH
Examiner
Art Unit 1789
/LARISSA ROWE EMRICH/Examiner, Art Unit 1789
1 Hereinafter referred to as Lam ‘905
2 Previously presented
3 Cited in IDS
4 Previously presented
5 Cited in IDS
6 Previously presented