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 .
Status of Claims
This office action is in response to the amendments/remarks filed on 04/17/2026. Claims 1, 4-7, 10-11, 14-17, 20-24 are pending; claims 1, 4, 11, 20 have been amended.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 04/17/2026 has been entered.
Specification
The disclosure is objected to because of the following informalities:
Paragraph 23, second sentence “the uneven friction surfaces 23,24; 33, 34, 43, 44.” is inconsistence with first sentence “Figs. 2 to 4 show different sectional views according to three embodiments of the claimed friction part 1 with entire friction surfaces 23, 24; 33, 34; 43, 44.”
Appropriate correction is required.
Claim Rejections - 35 USC § 112
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, 4-7, 10-11, 14-17 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 “wherein an entire surface is a conical, such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”, does not reasonably provide enablement for “wherein an entire surface is double-conical, such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claim 1 recites “wherein an entire surface is conical or double-conical, such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”. The recited limitation lacks corresponding enabling disclosure in view of Wands factors: (1) amount of directions provided by the inventors: Amount of direction provided by the inventor: the specification describes double conical surface having three axial height- not two (see ¶[0032]) . The specification does not provide on how to construct double conical surface with only two axial height. (2) Existence of working examples: The working examples of double conical with continuous radial taper from a first axial height to a second axial height. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
Claim 11 recites “wherein an entirety of the annular-disc-like friction surface is conical or double-conical such that the entire friction surface tapers continuously in the radial direction from a first axial height to a second axial height.” The recited limitation lacks corresponding enabling disclosure in view of Wands factors: (1) amount of directions provided by the inventors: Amount of direction provided by the inventor: the specification describes double conical surface having three axial height- not two (see ¶[0032]) . The specification does not provide on how to construct double conical surface with only two axial height. (2) Existence of working examples: The working examples of double conical with continuous radial taper from a first axial height to a second axial height. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
Claims 20-24 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 “an entirety of the friction surface has a sloped, such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”, does not reasonably provide enablement for “an entirety of the friction surface has a double-sloped shape such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the invention commensurate in scope with these claims.
Claim 20 recites “an entirety of the friction surface has a sloped or double-sloped shape such that the entire friction surface tapers continuously in the radial direction from a first axial height to a second axial height”. The recited limitation lacks corresponding enabling disclosure in view of Wands factors: (1) amount of directions provided by the inventors: Amount of direction provided by the inventor: the specification describes double conical surface having three axial height- not two (see ¶[0032]) . The specification does not provide on how to construct double conical surface with only two axial height. (2) Existence of working examples: The working examples of double conical with continuous radial taper from a first axial height to a second axial height. Taking these Wands factor into account, one of ordinary skill in the art could not make and use the claimed invention without exercising undue experiment.
The dependent claims are also rejected due to their dependency from claims 1, 11 and 20.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 4-7, 10-11, 14-17, 20-24 are rejected 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “wherein an entire surface is conical or double-conical, such that the entire surface tapers continuously in the radial direction from a first axial height to a second axial height”. The specification describes double conical surface having three axial height not just two, see ¶[0032]. Thereof, the claim limitation is inconsistence with the specification and unclear how the double conical surface is only taper from only a first height to second height.
Claim 11 recites “wherein an entirety of the annular-disc-like friction surface is conical or double-conical such that the entire friction surface tapers continuously in the radial direction from a first axial height to a second axial height.” The specification describes double conical surface having three axial height not just two, see ¶[0032]. Thereof, the claim limitation is inconsistence with the specification and unclear how the double conical surface is only taper from only a first height to second height.
Claim 20 recites “an entirety of the friction surface has a sloped or double-sloped shape such that the entire friction surface tapers continuously in the radial direction from a first axial height to a second axial height”. The specification describes double conical surface having three axial height not just two, see ¶[0032]. Thereof, the claim limitation is inconsistence with the specification and unclear how the double conical surface is only taper from only a first height to second height.
The dependent claims are also rejected due to their dependency from claims 1, 11 and 20.
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, 10-11, 20-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by IKEGUCHI (JP 2004278609 A cited from IDS filed on 5/13/2025)
IKEGUCHI discloses:
Claim 1: A friction part for a frictionally operating device(¶[0001]: “The present invention relates to friction plates used in wet multi-plate clutches”), comprising at least one annular-disc-like friction paper (ring shaped paper lining ¶[0015]) comprising a friction surface (surface of 15) which is rotated about a rotational axis (axis in axial direction, see Fig.1) in a wet-running manner relative to a mating surface (surface of core plate 1; Fig.1) and is formed from a paper material (¶[0020]), wherein the friction surface (surface of 15) has an uneven portion (inclined portion; or claim 1 “in that both sides are formed as inclined surfaces such that the thickness continuously decreases from the inner circumference end to the outer circumference end.”) in order to create, in the friction surface (surface of 15), at least one axially low friction region (e.g. radial outward portion of 15) and at least one axially high friction region (e.g. radial inward portion of 15) which is preloaded with a higher force than the axially low friction region when the friction surface (surface of 15) and the mating surface (surface of plate 1) are axially pressed together (¶[0016]: “as a result the inner circumference of the pressure plate 3 opens outward, the inner circumference of the friction plate is formed to be thicker, so the outer circumference of the friction plate does not receive strong pressure and burn out at low loads, the pressure distribution becomes uniform, heat generation due to friction is reduced, seizure is prevented and friction characteristics do not deteriorate”), wherein the an entire surface of the friction paper (surface of 15) facing the mating surface (surface of plate 1) is conical (as shown in Fig.4 the surface of 15 is conical) 1 such that the entire surface (entire surface of 15) tapers continuously in the radial direction from a first axial height (thickness of the radial inward portion) to a second axial height (thickness of the radial outward portion) without an intervening flat surface perpendicular to the rotational axis (axis in axial direction) (see ¶[0015]).
Claim 10: A wet-running multi-plate clutch (Fig.1, ¶[0003]) or multiple-disc brake having at least one friction part (10) according to claim 1.
Claim 11: A friction part for a frictionally operating device(¶[0001]: “The present invention relates to friction plates used in wet multi-plate clutches”), comprising an annular-disc-like friction surface (ring shaped paper lining, ¶[0015]) rotatable about a rotational axis (axis in axial direction) in a wet-running manner relative to a mating surface (surface of core plate 1; Fig.1), the annular-disc-like friction surface (ring shaped paper lining) being formed from a paper material (¶[0015]) and comprising an uneven portion (inclined portion; claim 1: “in that both sides are formed as inclined surfaces such that the thickness continuously decreases from the inner circumference end to the outer circumference end.”) in order to create an axially low friction region (e.g. radial outward portion of 15) and an axially high friction region (e.g. radial inward portion of 15) in the annular-disc-like friction surface (ring shaped paper lining), wherein the axially high friction region (e.g. radial inward portion of 15) is preloaded with a higher force than the axially low friction region (e.g. radial outward portion of 15) when the annular-disc-like friction surface (ring shaped paper lining) and the mating surface (surface of 1) are axially pressed together (¶[0016]: “as a result the inner circumference of the pressure plate 3 opens outward, the inner circumference of the friction plate is formed to be thicker, so the outer circumference of the friction plate does not receive strong pressure and burn out at low loads, the pressure distribution becomes uniform, heat generation due to friction is reduced, seizure is prevented and friction characteristics do not deteriorate”), wherein an entirety of the annular-disc-like friction surface (ring shaped paper lining) is conical (as shown in Fig.4 the surface of 15 is conical) 1 such that the entire friction surface (entire surface of 15) tapers continuously in the radial direction from a first axial height (thickness of the radial inward portion) to a second axial height (thickness of the radial outward portion) without an intervening flat surface perpendicular to the rotational axis (axis in axial direction) (see ¶[0015]).
Claim 20: A friction part for a frictionally operating device, comprising a friction surface (surface of 15), formed from a piece of friction paper (¶[0015]), and rotatable about a rotational axis (axis in axial direction) in a wet-running manner relative to a mating surface (surface of core plate 1; Fig.1), the friction surface (surface of 15) comprising: an axially low friction region (e.g. radial outward portion of 15); and an axially high friction region (e.g. radial inward portion of 15) such that an entirety of the friction surface (entire surface of 15) has a sloped 1 such that the entire friction surface (entire surface of 15) tapers continuously in the radial direction from a first axial height (thickness of the radial inward portion) to a second axial height (thickness of radial outward portion) without an intervening flat surface perpendicular to the rotational axis (axis in axial direction).
Claim 21: The friction part according to claim 20, wherein the piece of friction paper (ring shaped paper lining) is sloped (e.g. inclined surface 15 varies continuously along radial direction) in relation to a radial.
Claim 22: The friction part according to claim 20, wherein the piece of friction paper (ring shaped paper lining) is sloped (e.g. inclined surface 15 varies continuously along the circumference direction) in relation to a tangential.
Claim 23: The friction part according to claim 20, wherein the piece of friction paper is a full ring (see ¶[0015])
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.
Claim(s) 4-6, 14-16, 24 is/are rejected under 35 U.S.C. 103 as being unpatentable over IKEGUCHI (JP 2004278609 A) in view of Hasegawa (US 20080199641)
Claim 4: IKEGUCHI discloses the friction part according to claim 1, wherein the friction surface ( surface of 15) having respective uneven portions (inclined portion) that create respective axially low friction regions (e.g. radial outward portion of 15) and axially high friction regions (e.g. radial inward portion of 15) which are preloaded with a higher force than the axially low friction regions (e.g. radial outward portion of 15) when the friction surface and the mating surface (surface of plate 1) are axially pressed together (¶[0016]).
IKEGUCHI does not disclose wherein the friction surface is formed from pieces of friction paper.
Hasegawa teaches a friction plate (3; Fig.2) wherein the friction plate (surface of 3; Fig.1) consists of a plurality of segmented friction material substrates (see ¶[0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the friction surface of IKEGUCHI to be composed of a plurality of segmented friction material substrates as taught by Hasegawa in order to reduce material waste, easier replace, assemble and control friction characteristic of each segment.
Claim 5: IKEGUCHI as modified by Hasegawa discloses the friction part according to claim 4, wherein the piece of friction paper is conical (e.g. inclined surface 15 varies continuously along radial direction) in relation to a radial.
Claim 6: IKEGUCHI as modified by Hasegawa discloses wherein the piece of friction paper is conical (e.g. inclined surface 15 varies continuously along circumference direction) in relation to a tangential.
Claim 14: IKEGUCHI discloses the friction part of claim 11, the friction paper (surface of 15) includes the uneven portion (e.g. inclined portion) that creates the axially low friction region (e.g. radial outward portion of 15) and the axially high friction region (e.g. radial inward portion of 15).
IKEGUCHI does not disclose wherein: the annular-disc-like friction is formed from individual pieces of friction paper.
Hasegawa teaches a friction plate (3; Fig.2) wherein the friction plate (surface of 3; Fig.1) consists of a plurality of segmented friction material substrates (see ¶[0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the friction surface of IKEGUCHI to from individual pieces of friction paper as taught by Hasegawa in order to reduce material waste, easier replace, assemble and control friction characteristic of each segment.
Claim 15: IKEGUCHI as modified by Hasegawa discloses the friction part of claim 14, wherein the one of the individual pieces of friction paper is conical (e.g. inclined surface 15 varies continuously along radial direction) in a radial direction relative to the rotational axis.
Claim 16: IKEGUCHI as modified by Hasegawa discloses The friction part of claim 14, wherein the one of the individual pieces of friction paper is conical (e.g. inclined surface 15 varies continuously along circumference direction) in a tangential direction relative to the rotational axis.
Claim 24: IKEGUCHI does not disclose a plurality of pieces of friction paper arranged to form a full ring.
Hasegawa teaches a friction plate (3; Fig.2) wherein the friction plate (surface of 3; Fig.1) consists of a plurality of segmented friction material substrates (see ¶[0011]).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to form the friction surface of IKEGUCHI to be composed of a plurality of segmented friction material substrates as taught by Hasegawa to reduce material waste, easier replace and assemble or control friction characteristic of each segment.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
DAU (DE 19901052 A1) discloses double cone clutch.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lillian T Nguyen whose telephone number is (571)270-5404. The examiner can normally be reached Monday-Friday, 8:30am-5pm.
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/LILLIAN T NGUYEN/ Examiner, Art Unit 3655a
1 The strikeout limitation is “or” limitation; thus the prior art does not require to satisfy the strikeout limitation to be applicable.
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