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 .
Response to Amendment
This office action is in response to the amendment submitted on 11 May 2025. After entry of the amendment claims 1-4 and 9-12 are currently pending in the application.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-4 and 9-12 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for calcium carbonate as the first substance and fluoropolymer as the second substance, does not reasonably provide enablement for the use of any and all types of materials as the first and second substance. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to practice the invention commensurate in scope with these claims.
There are eight factors considered by the Federal Circuit in the determination of undue experimentation, In re Wands, 8 USPQ2d 1400 (1988). These factors are: (1) the breadth of the claims, (2) the nature of the invention, (3) the state of the prior art, (4) the level of one of ordinary skill, (5) the predictability or unpredictability of the art, (6) the amount of direction or guidance presented, (7) the presence of working examples, and (8) the quantity of experimentation necessary. The examiner will discuss these factors as they apply to the instant invention.
(1) The Breadth of the claims: The independent claim is broad in that it fails to recite the types of materials that may be utilized as the first and second substance used to produce the friction material composition.
(2) The Nature of the invention: The claimed invention is directed to a non-asbestos-organic friction material composition comprising a binder, a fiber base, an inorganic filler and an organic filler including a first and second substance.
(3) The State of the prior art: In the prior art many different types of non-asbestos-organic friction material composition materials are known as well as many types of first and second substances that may be used in the friction material composition.
(4) The level of one of ordinary skill: Although a person of ordinary skill in the art would recognize that there are various types of materials that may be used as the first substance and second substance, absent more information with respect to the types that may be used in the instant invention even a highly skilled artisan would not immediately be expected to recognize exactly the scope of the instant independent claim. That is, whether or not a first substance is a material that is capable of becoming a sintered powder during braking and is a precursor of said sintered body which keeps powder generated from a disc rotor and a second substance is a material that is a sintering additive which aids sintering of the first substance.
(5) The level of predictability in the art: Although there is some inherent predictability in the preparation of friction materials comprising various substances used to produce desired properties or effects in the resulting materials, the use of different types of materials to produce the frictional materials results in friction materials that are only suitable for the manufacturing of certain products, such as brake pads, clutches, etc.
(6) The amount of direction or guidance presented: The specification only provides guidance as to the use of calcium carbonate as the first substance and a fluoropolymer as the second substance. It does not provide guidance as to what other types of materials may be used as these first and second substances. Accordingly the independent claim should be limited to the specific type of first and second substance recited in the specification.
(7) The presence of working examples: The specification provides numerous examples which recite a friction material comprising calcium carbonate as a first substance and inorganic filler and fluoropolymer as a second substance and organic filler. The use of other inorganic fillers and organic fillers in addition to the calcium carbonate and the fluoropolymer is also taught.
(8) The quantity of experimentation needed to make or use the claimed subject matter based on the content of the disclosure: Although a person of ordinary skill in the art would recognize the types and materials that may be utilized to produce a friction material, absent more information with respect to the type of material that may be used as first substance that is capable of becoming a sintered powder during braking and is a precursor of said sintered body which keeps powder generated from a disc rotor and a second substance that is a sintering additive which aids sintering of the first substance, the artisan would be presented with a myriad of different types of materials that may be or not be capable of (1) becoming a sintered body during braking and (2) being used as a sintering additive which aids sintering of the first substance and this would result in an excessive amount of experimentation to determine the scope of the instantly claimed invention.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 (or as subject to pre-AIA 35 U.S.C. 102) 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by China Patent Specification No. CN 106763362 A.
The reference teaches, in Table 1, example 1; Table 4, example 4; and the claims; a friction material composition comprising at least potassium hexatitanate crystal whisker, 2-25 wt% of carbon fibre, 0-20 wt% of phenolic resin, 3-30 wt%, fluorine rubber, 1-30 wt% parts of calcined petroleum coke, 2-25 wt% 1-25 wt% of graphite, flaky graphite 2-30 wt%; fineness is 16-20 meshes graphite 0-30 wt%; fineness is 30-40 meshes graphite 0-30 wt%, filler 5-50 wt%. The filler comprises the following components: calcium carbonate 5-40 wt %; white vermiculite 5-40 wt % of potassium feldspar, 0.5-20 wt % of aluminium silicate hollow ball 0-30 wt%, 0.5-20 wt % of alumina, 0.5-20 wt % of mica, 0-30 wt%; 0-10 wt% of antimony sulfide, molybdenum 0-20 wt %.
The instant claims are met by the reference.
As for claim 1, reference teaches a friction material composition. The phenolic resin meets the binder material; the carbon fibre meets the fiber base; the fluorine rubber meets the organic filler and the second substance; the potassium hexatitanate crystal whisker, graphite and petroleum coke as well as the other recited filler components meets the inorganic filler; and the calcium carbonate meets the first substance. No copper is required to be present.
As for claim 5 the reference teaches the formation of a vehicle brake which meets a friction material.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by China Patent Specification No. JP 11-322958 A.
The reference teaches, in the claims, a friction material comprising 20-40% by volume of polytetrafluoroethylene, a fiber component, a filler component, and a binder composition. Examples of the fiber component include asbestos fiber and aromatic aramid fiber. The filler component may be barium sulfate, calcium carbonate, and potassium titanate and the binder component may be phenolic and polyamide resin.
As for claim 1, the reference teaches a friction material composition. The phenolic and polyamide resin meets the binder component; the asbestos and aramid fiber meets the fiber base; the barium sulfate, calcium carbonate and potassium titanate meets the inorganic filler. The calcium carbonate meets the first substance and the polytetrafluoroethylene meets the second substance. No copper is required to be present.
As for claim 5, the reference teaches the manufacture of a friction component such as a brake lining, a clutch facing and a friction plate using the composition.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 103 (or as subject to pre-AIA 35 U.S.C. 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.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues that the 112(a) rejection is overcome based on the amendment to claim 1. To this argument the examiner respectfully disagrees. The specification provides no guidance as to the types of materials other than calcium carbonate that meet the limitation of “other materials that form substance which becomes a sintered body during braking as the inorganic filler and acts as is a precursor of said sintered body which keeps for retaining powder generated from a disc rotor during baking” and fails to teach the types of materials other than a fluoropolymer that is a sintering additive selected from a fluoropolymer or other materials as the organic filler and which aids in the sintering of the first substance. Therefore without proper guidance a person of ordinary skill in the art would not be able to practice the invention without undue experimentation.
With respect to the 102(a) rejection of the claims over China Patent Specification No. CN 106763362 A applicant argues that the reference neither teaches nor suggests limiting the copper content, fails to teach or suggest the use of calcium carbonate, fails to suggest the use of a fluoropolymer as a sintering additive, and fails to recognize the specific functional use of calcium carbonate.
To these arguments the examiner respectfully disagrees. As the reference fails to disclose any copper content it would therefore meet the copper content limitation recited in the claims as it need not be present in the composition. The reference clearly teaches calcium carbonate and as this is the same material as claimed it would therefore meet the specific functional use limitation recited in the instant claim. As for the fluoropolymer the reference teaches fluorine rubber which is a fluoropolymer and therefore as this is an example of a fluoropolymer it would function as a sintering additive. Applicant is reminded that 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.
With respect to the 102(a) rejection of the claims over China Patent Specification No. JP 11-322958 A applicant argues that the reference teaches that an asbestos fiber may be present, the functionality of the first and second substances, and i silent on the copper content.
To these arguments the examiner respectfully disagrees. As the asbestos fiber is an optional component it does not have to be present. As for the functionality argument, the reference teaches calcium carbonate and polytetrafluoroethylene and as these materials meet the first and second substance recited in the claims they would therefore function as recited in the claims as they are the same as claimed. Applicant is reminded that 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. As for the copper limitation as the reference fails to disclose any copper content it would therefore meet the copper content limitation recited in the claims as it need not be present in the composition.
Applicant’s arguments have overcome the 103 rejections of the claims over China Patent Specification No. CN 106763362 A and Europe Patent Specification No. EP 3447103 A1.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANTHONY J GREEN whose telephone number is (571)272-1367. The examiner can normally be reached Monday-Thursday from 6:30-5.
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, Amber R. Orlando can be reached at (571) 270-3149. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANTHONY J GREEN/Primary Examiner, Art Unit 1731
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September 29, 2025
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