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 July 22, 2025 have been entered into the file. Currently claims 1, 4, and 6-9 are amended and claims 12-19 are withdrawn, resulting in claims 1-11 pending for examination.
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 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 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(s) 1 and 11 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lam (US 2006/0241207)1.
With respect to claim 1, Lam teaches a wet friction material for use in a fluid environment comprising a fibrous base material of small diameter fibers, friction modifying particles, inorganic fillers, and a binder (paragraphs [0010]-[0011]). Silica particles are inexpensive inorganic materials which bond strongly to the base material and provide high coefficients of friction suitable for use as the friction material (paragraph [0056]). The friction modifying particles are preferably deposited on an outer surface of the base material (paragraphs [0023], [0032]). Lam is silent as to other materials being used with the friction modifying particles on the surface, therefore Lam teaches 100% silica on the surface. The friction material is adhered to a desired substrate (paragraph [0058]) and may be used with clutch plates (paragraph [0071]).
The silica being colloidal silica is a method limitation and does not determine the patentability of the product, unless the method produces a structural feature of the product. The method of forming the product is note germane to the issue of patentability of the product itself, unless Applicant presents evidence from which the Examiner could reasonably conclude that the claimed product differs in kind from those of the prior art. See MPEP 2113.
Furthermore, there does not appear to be a difference between the prior art structure and the structure resulting from the claimed invention because the prior art teaches a friction material coated with a silica containing material. Paragraph [0024] of the specification as filed discusses the colloidal silica being silica suspended in an aqueous solution, and paragraph [0027] describes how after the colloidal silica solution is applied to the base material the water is removed. Therefore, what remains for the coating in the final product is silica. As discussed above, Lam teaches a silica coating.
With respect to claim 11, Lam teaches all the limitations of claim 1 above. Lam teaches the claimed invention above but does not expressly teach the wet friction material has a dynamic friction material has a dynamic friction coefficient in a range of 0.17 to 0.18 in automatic transmission fluid having a temperature of 40oC in a rotational speed range of 5 RPM to 50 RPM and an applied pressure range of 1.0 MPa to 2.5 MPa. It is reasonable to presume that the dynamic friction coefficient is inherent to Lam. Support for said presumption is found in that Lam teaches all the structural limitations of claim 1. Particularly, Lam teaches a coating of silica as described above which is acknowledged by paragraph [0037] of the instant specification as providing the greater dynamic friction coefficient. Therefore, the coated friction material of Lam is expected to have the same properties as the claimed invention.
Claim Rejections - 35 USC § 103
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) 1 and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Nishiguchi (JP 2005-299840)2,3,4 as applied to claim 1 above.
With respect to claim 1, Nishiguchi teaches a coated friction material characterized in that a coating containing rubber and/or resin and fine silica particles is formed on the surface of a friction material substrate (paragraph [0015]). The silica is applied as a colloidal silica (paragraph [0016]). The friction material substrate can include a fibrous substance, a binder, a friction modifier, and various fillers (paragraph [0024]). The coated friction material can be attached to a clutch disc dampening mechanism (rigid support) (paragraph [0019]). The colloidal silica preferably has a solid content of 5 to 60% by weight in the latex (paragraph [0032]).
The amount of colloidal silica range of Nishiguchi substantially overlaps the claimed range in the instant claim 1. 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 Nishiguchi, because overlapping ranges have been held to establish prima facie obviousness.
Nishiguchi does not explicitly teaches that the friction material is a wet friction material, however since Nishiguchi teaches the same structure as the claimed invention as described above it is reasonable to presume that the friction material of Nishiguchi is suitable for use as a wet friction material.
With respect to claim 10, Nishiguchi teaches all the limitations of claim 1 above. Nishiguchi further teaches the silica fine particles have an average particle size of 1 to 300 nm, preferably 10 to 100 nm, particularly preferably 10 to 30 nm (paragraph [0021]).
The silica fine particle size range of Nishiguchi substantially overlaps 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 Nishiguchi, because overlapping ranges have been held to establish prima facie obviousness.
With respect to claim 11, Nishiguchi teaches all the limitations of claim 1 above. Nishiguchi teaches the claimed invention above but does not expressly teach the wet friction material has a dynamic friction material has a dynamic friction coefficient in a range of 0.17 to 0.18 in automatic transmission fluid having a temperature of 40oC in a rotational speed range of 5 RPM to 50 RPM and an applied pressure range of 1.0 MPa to 2.5 MPa. It is reasonable to presume that the dynamic friction coefficient is inherent to Nishiguchi. Support for said presumption is found in that Nishiguchi teaches all the structural limitations of claim 1. Particularly, Nishiguchi teaches a coating of colloidal silica as described above which is acknowledged by paragraph [0037] of the instant specification as providing the greater dynamic friction coefficient. Additionally Nishiguchi teaches that the coated friction material has a large initial coefficient of friction which is maintained over time (paragraph [0001]). Therefore, the coated friction material of Nishiguchi is expected to have the same properties as the claimed invention.
Claim(s) 2 and 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)5 as applied to claim 1 above.
With respect to claims 2 and 5, Lam teaches all the limitations of claim 1 above. Lam further teaches the wet friction material comprises 10-70 weight percent fibers, 10 -70 weight percent inorganic filler, and 20-60 weight percent binder (paragraph [0033]).
The fiber, filler, and binder weight percent ranges of Lam substantially overlap the claimed ranges in the instant claims 2 and 5. 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, because overlapping ranges have been held to establish prima facie obviousness.
Claim(s) 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)6 as applied to claim 1 above, and further in view of Nishiguchi (JP 2005-299840)1,7,8.
With respect to claim 10, Lam teaches all the limitations of claim 1 above.
While Lam teaches a layer of silica friction material on the fibrous base material, Lam is silent as to the silica having comprising particles having a mean diameter of 20 to 25 nm.
Nishiguchi teaches a coated friction material characterized in that a coating containing rubber and/or resin and fine silica particles is formed on the surface of a friction material substrate (paragraph [0015]). The silica is applied as a colloidal silica (paragraph [0016]). The friction material substrate can include a fibrous substance, a binder, a friction modifier, and various fillers (paragraph [0024]). The coated friction material can be attached to a clutch disc dampening mechanism (paragraph [0019]). Additionally Nishiguchi teaches that the coated friction material has a large initial coefficient of friction which is maintained over time (paragraph [0001]). Nishiguchi further teaches the silica fine particles have an average particle size of 1 to 300 nm, preferably 10 to 100 nm, particularly preferably 10 to 30 nm (paragraph [0021]).
The silica fine particle size range of Nishiguchi substantially overlaps 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 Nishiguchi, because overlapping ranges have been held to establish prima facie obviousness.
Since both Lam and Nishiguchi teach friction materials comprising a fibrous base material coated with a silica friction modifying agent, 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 silica of Lam to be colloidal silica with a particle size of 1-300 nm, preferably 10-100 nm, particularly preferably 10-30nm, because colloidal silica is known in the art as a suitable silica for coating friction materials and in order to provide a friction material that has a large coefficient of friction which is maintained over time.
Claim(s) 1-2, 5, and 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)9 in view of Nishiguchi (JP 2005-299840)1,10,11.
In the event it is determined that colloidal silica provides structure to the final product, claim 1 is rejected as follows:
With respect to claim 1, Lam teaches a wet friction material for use in a fluid environment comprising a fibrous base material of small diameter fibers, friction modifying particles, inorganic fillers, and a binder (paragraphs [0010]-[0011]). Silica particles are inexpensive inorganic materials which bond strongly to the base material and provide high coefficients of friction suitable for use as the friction material (paragraph [0056]). The friction modifying particles are preferably deposited on an outer surface of the base material (paragraphs [0023], [0032]). Lam is silent as to other materials being used with the friction modifying particles on the surface, therefore Lam teaches 100% silica. The friction material provided with a layer of friction modifying particles on a top surface of the fibrous base material provides a friction material with food anti-shudder characteristics, high resistance, high coefficient of friction, high durability, good wear resistance, and improved break-in characteristics (paragraph [0066]). The friction material is adhered to a desired substrate (paragraph [0058]) and may be used with clutch plates (paragraph [0071]).
While Lam teaches a layer of silica friction material on the fibrous base material, Lam is silent as to the silica being colloidal silica.
Nishiguchi teaches a coated friction material characterized in that a coating containing rubber and/or resin and fine silica particles is formed on the surface of a friction material substrate (paragraph [0015]). The silica is applied as a colloidal silica (paragraph [0016]). The friction material substrate can include a fibrous substance, a binder, a friction modifier, and various fillers (paragraph [0024]). The coated friction material can be attached to a clutch disc dampening mechanism (paragraph [0019]). Additionally Nishiguchi teaches that the coated friction material has a large initial coefficient of friction which is maintained over time (paragraph [0001]).
Since both Lam and Nishiguchi teach friction materials comprising a fibrous base material coated with a silica friction modifying agent, 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 silica of Lam to be colloidal silica because colloidal silica is known in the art as a suitable silica for coating friction materials and in order to provide a friction material that has a large coefficient of friction which is maintained over time.
With respect to claims 2 and 5, Lam in view of Nishiguchi teaches all the limitations of claim 1 above. Lam further teaches the wet friction material comprises 10-70 weight percent fibers, 10 -70 weight percent inorganic filler, and 20-60 weight percent binder (paragraph [0033]).
The fiber, filler, and binder weight percent ranges of Lam substantially overlap the claimed ranges in the instant claims 2 and 5. 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, because overlapping ranges have been held to establish prima facie obviousness.
With respect to claim 10, Lam in view of Nishiguchi teaches all the limitations of claim 1 above. Nishiguchi further teaches the silica fine particles have an average particle size of 1 to 300 nm, preferably 10 to 100 nm, particularly preferably 10 to 30 nm (paragraph [0021]).
The silica fine particle size range of Nishiguchi substantially overlaps 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 Nishiguchi, because overlapping ranges have been held to establish prima facie obviousness.
With respect to claim 11, Lam in view of Nishiguchi teaches all the limitations of claim 1 above. Lam in view of Nishiguchi teaches the claimed invention above but does not expressly teach the wet friction material has a dynamic friction material has a dynamic friction coefficient in a range of 0.17 to 0.18 in automatic transmission fluid having a temperature of 40oC in a rotational speed range of 5 RPM to 50 RPM and an applied pressure range of 1.0 MPa to 2.5 MPa. It is reasonable to presume that the dynamic friction coefficient is inherent to Lam in view of Nishiguchi. Support for said presumption is found in that Lam teaches all the structural limitations of claim 1. Particularly, Lam in view of Nishiguchi teaches a coating of colloidal silica as described above which is acknowledged by paragraph [0037] of the instant specification as providing the greater dynamic friction coefficient. Additionally Nishiguchi teaches that the coated friction material has a large initial coefficient of friction which is maintained over time (paragraph [0001]). Therefore, the coated friction material of Lam in view of Nishiguchi is expected to have the same properties as the claimed invention.
Claim(s) 3-4 and 6-7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)12 and Lam (US 2006/0241207)1 in view of Nishiguchi (JP 2005-299840)1,13,14 as applied to claims 2 and 5 above, and further in view of Farahati (US 2018/0149222)1,15.
With respect to claim 3, Lam and Lam in view of Nishiguchi teaches all the limitations of claim 2 above. Lam further teaches the inorganic filler may include clay, but is silent as to the clay being calcined kaolin clay.
Farahati ‘222 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 diatomaceous earth (paragraph [0017]). The aluminum silicate is preferably a calcined kaolin clay (paragraph [0019]). The friction material includes 3-60 weight percent, preferably 20-50 weight percent of calcined clay, with an example filler being 25 weight percent calcined clay and 25 weight percent diatomaceous earth (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 and Lam in view of Nishiguchi and Farahati ‘222 teach friction material comprising fibers, inorganic fillers, and a 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 inorganic filler friction modifying particles of the friction material of Lam of Lam in view of Nishiguchi to include calcined kaolin clay in order to increase the static and dynamic friction coefficients of the friction material.
With respect to claims 4 and 6-7, Lam and Lam in view of Nishiguchi teaches all the limitations of claims 3 and 5 above. As discussed above, Lam further teaches the wet friction material comprises 10-70 weight percent fibers, 10-70 weight percent inorganic filler, and 20-60 weight percent binder (paragraph [0033]). The inorganic filler may be diatomaceous earth (paragraph [0032]). The binder may be a modified phenolic resin (paragraphs [0025], [0033]) and options for modifying phenolic resins include a phenolic resin modified with tung oil (paragraph [0059]). To one of ordinary skill in the art it would have been obvious to try the binders taught by Lam in order to determine which provides the desired consolidation for the friction material. See MPEP 2143.
Lam and Lam in view of Nishiguchi is silent as to the filler including 15-30 wt% calcined kaolin clay and 10-20 wt% diatomaceous earth.
Farahati ‘222 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 diatomaceous earth (paragraph [0017]). The aluminum silicate is preferably a calcined kaolin clay (paragraph [0019]). The friction material includes 3-60 weight percent, preferably 20-50 weight percent of calcined clay, with an example filler being 25 weight percent calcined clay and 25 weight percent diatomaceous earth (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 and Lam in view of Nishiguchi and Farahati ‘222 teach friction material comprising fibers, inorganic fillers, and a 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 inorganic filler friction modifying particles of the friction material of Lam and Lam in view of Nishiguchi to include calcined kaolin clay in order to increase the static and dynamic friction coefficients of the friction material. Based on the teachings of Farahati ‘222 the ordinary artisan would be motivated to add 3-60, particularly 20-50 weight percent calcined kaolin clay, with the balance of the 10-70 wt% filler being diatomaceous earth.
The fiber, filler, and binder weight percent ranges of Lam in view of Farahati ‘222 and Lam in view of Nishiguchi and Farahati ‘222 substantially overlap the claimed ranges in the instant claims 4 and 6-7. 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, because overlapping ranges have been held to establish prima facie obviousness.
Claim(s) 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)16 and Lam (US 2006/0241207)1 in view of Nishiguchi (JP 2005-299840)1,17,18 as applied to claim 1 above, and further in view of Lee (US 5989390)1.
With respect to claim 8, Lam and Lam in view of Nishiguchi teaches all the limitations of claim 1 above. Lam further teaches the fibrous base material can comprise 20-60 weight percent fibrillated aramid fibers, 10-30 weight percent silica filler material, 5-20 weight percent carbon fibers, 10-20 weight percent graphite (paragraph [0062]), and 20-60 weight percent binder (paragraph [0033]). The binder is a phenolic or modified phenolic resin (paragraph [0033]). The silica particles include diatomaceous earth (paragraph [0056]). Lam further teaches that cellulose fibers are a preferred fiber (paragraph [0027]).
The fiber, filler, and binder weight percent ranges of Lam substantially overlap the claimed ranges in the instant claim 8. 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, because overlapping ranges have been held to establish prima facie obviousness.
While Lam discloses cellulose fibers as preferred fibers (paragraph [0027]), Lam and Lam in view of Nishiguchi is silent as to the weight percentage of cellulose fibers used.
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 thermosetting resin (col. 2, lines 41-48). The material may also include other components such as diatomaceous earth (col. 2, lines 41-48). Specifically, the composition may comprise 10-65%, preferably 30-50% cellulose fibers and 0-65%, preferably 15-50% amorphous diatomaceous earth (col. 3, lines 12-30). It is noted the percentages are weight percent (col. 3, lines 6-8). The composition is saturated with phenolic resin (col. 3, lines 31-40). The material may be used as a transmission clutch facing a torque convertor clutch facing plate (col. 2, lines 5-8; col. 4, line 45) and is suitable for wet friction applications (claim 8).
The weight percent of cellulose fiber range of Lee substantially overlaps the claimed range in the instant claim 8. 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, because overlapping ranges have been held to establish prima facie obviousness.
Since both Lam and Lam in view of Nishiguchi and Lee teach friction materials for clutches comprising fillers such as diatomaceous earth and cellulose fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the cellulose fibers in an amount of 10-65 wt%, preferably 30-50 wt% in the friction material of Lam or Lam in view of Nishiguchi with the balance of the fiber content disclosed by Lam being the aramid and carbon fibers because it is known in the art that 10-65 wt%, preferably 30-50 wt% is a suitable loading for carbon fibers in a friction material, and would yield the expected result of a friction material suitable for wet friction applications. See MPEP 2143.
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lam (US 2006/0241207)19 in view of Farahati (US 2018/0149222)1,20 and Lam (US 2006/0241207)1 in view of Nishiguchi (JP 2005-299840)1,21,22 and Farahati (US 2018/0149222)1,2 as applied to claim 4 above, and further in view of Lee (US 5989390)1.
With respect to claim 9, Lam in view of Farahati ‘222 and Lam in view of Nishiguchi and Farahati ‘222 teaches all the limitations of claim 4 above. Lam further teaches the fibrous base material can comprise 20-60 weight percent fibrillated aramid fibers, 10-30 weight percent silica filler material, 5-20 weight percent carbon fibers, 10-20 weight percent graphite (paragraph [0062]), and 20-60 weight percent binder (paragraph [0033]). The binder is a phenolic or modified phenolic resin (paragraph [0033]). The silica particles include diatomaceous earth (paragraph [0056]). Lam further teaches that cellulose fibers are a preferred fiber (paragraph [0027]).
The fiber, filler, and binder weight percent ranges of Lam substantially overlap the claimed ranges in the instant claim 9. 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, because overlapping ranges have been held to establish prima facie obviousness.
While Lam discloses cellulose fibers as preferred fibers (paragraph [0027]), Lam in view of Farahati ‘222 and Lam in view of Nishiguchi and Farahati ‘222 is silent as to the weight percentage of cellulose fibers used.
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 thermosetting resin (col. 2, lines 41-48). The material may also include other components such as diatomaceous earth (col. 2, lines 41-48). Specifically, the composition may comprise 10-65%, preferably 30-50% cellulose fibers and 0-65%, preferably 15-50% amorphous diatomaceous earth (col. 3, lines 12-30). It is noted the percentages are weight percent (col. 3, lines 6-8). The composition is saturated with phenolic resin (col. 3, lines 31-40). The material may be used as a transmission clutch facing a torque convertor clutch facing plate (col. 2, lines 5-8; col. 4, line 45) and is suitable for wet friction applications (claim 8).
The weight percent of cellulose fiber range of Lee substantially overlaps the claimed range in the instant claim 9. 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, because overlapping ranges have been held to establish prima facie obviousness.
Since both Lam in view of Farahati ‘222 and Lam in view of Nishiguchi and Farahati ‘222 and Lee teach friction materials for clutches comprising fillers such as diatomaceous earth and cellulose fibers, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have used the cellulose fibers in an amount of 10-65 wt%, preferably 30-50 wt% in the friction material of Lam in view of Farahati ‘222 or Lam in view of Nishiguchi and Farahati ‘222 with the balance of the fiber content disclosed by Lam being the aramid and carbon fibers because it is known in the art that 10-65 wt%, preferably 30-50 wt% is a suitable loading for carbon fibers in a friction material, and would yield the expected result of a friction material suitable for wet friction applications. See MPEP 2143.
Response to Arguments
Response – Drawings
The objections to the drawings have been overcome by Applicant’s amendments to the specification in the response received on July 22, 2025.
Response – Claim Rejections 35 USC §112
The rejections of claims 4 and 6-9 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 pre-AIA the applicant regards as the invention, are overcome by Applicants amendments to the claims in the response filed July 22, 2025.
Response – Claim Rejections 35 USC §102 and 103
The rejections of:
claim(s) 1 and 11 under 35 U.S.C. 102(a)(1) as being anticipated by Nishiguchi (JP 2005-299840) and
claim(s) 1 and 11 under 35 U.S.C. 102(a)(1) as being anticipated by Farahati (US 2017/0261057)
have been withdrawn in light of the amendments to the claims filed July 22, 2025.
The arguments with respect to Nishiguchi and Lam, filed on July 22, 2025, have been fully considered and are not persuasive.
On pages 10-11 of the response Applicant submits that Nishiguchi discloses a mixture of rubber and latex and/or resin solution and colloidal silica contained in the mixture as a solid in an amount of 10 to 100 parts be weight with respect to 100 parts be weight of rubber solids, concluding that the silica in Nishiguchi is outside the claimed range.
The Examiner respectfully disagrees. Nishiguchi teaches that the colloidal silica preferably has a solid content of 5 to 60% by weight in the latex (paragraph [0032]), which overlaps with the claimed range of 60-100%.
On page 12 of the response Applicant submits that Lam discloses silica as a friction modifier that is within the base material, not a silica coating applied onto an outer surface of the base material where the colloidal silica coating includes 60 to 100% by weight colloidal silica as is claimed.
The Examiner respectfully disagrees. Lam explicitly teaches in paragraph [0023] that a substantially uniform layer of friction modifying materials may be used on a top or outer surface of the fibrous material. In paragraph [0056], Lam identifies silica particles as useful friction modifying particles. Therefore, Lam teaches a silica coating applied onto an outer surface of a base material. With respect to the amount of silica in the coating, Lam is silent as to other materials being used with the friction modifying particles on the surface, therefore Lam teaches 100% silica.
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 Previously presented
2 Machine translation used as reference
3 Cited in IDS
4 Previously presented
5 Previously presented
6 Previously presented
7 Machine translation used as reference
8 Cited in IDS
9 Previously presented
10 Machine translation used as reference
11 Cited in IDS
12 Previously presented
13 Machine translation used as reference
14 Cited in IDS
15 Hereinafter referred to as Farahati ‘222
16 Previously presented
17 Machine translation used as reference
18 Cited in IDS
19 Previously presented
20 Hereinafter referred to as Farahati ‘222
21 Machine translation used as reference
22 Cited in IDS