DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 11, 2026 has been entered.
Priority
Regarding applicant’s claim for foreign priority based on German application number DE102021214642, the examiner acknowledges receipt of the corrected ADS filed July 15, 2025 as well as an additional copy of the priority document filed concurrently with this RCE on February 11, 2026. However, applicant’s petition filed under 37 CFR 1.55(e) on September 24, 2025, requesting acceptance of an unintentionally delayed claim under 35 U.S.C. 119(a)-(d) or (f), or 35 U.S.C. 365(a) or (b), for priority to DE 102021214642.2 filed December 17, 2021, as set forth in the application data sheet (ADS) filed July 15, 2025 has been dismissed as of October 3, 2025. The examiner can not grant the claim for foreign priority until the Petitions Office approves applicant’s petition request.
As the petition decision rendered on October 3, 2025 outlines the petition lacks a statement that the entire delay between the date the claim was due under 37 CFR 1.55(d) and the date the claim was filed was unintentional (the Director may require additional information where there is a question whether the delay was unintentional).
As the petition decision further outlines, although applicant provided an appropriate statement that the entire delay between the date the claim was due under 37 CFR 1.55(d) and the date the claim was filed was unintentional, the Office is requiring additional information regarding the extended period of delay. The USPTO requires additional information concerning whether a delay in seeking acceptance of a delayed priority claim was unintentional where the petition under 37 CFR 1.55(e) to accept such priority claim was filed more than two years after the date the priority claim was due.
See Clarification of the Practice for Requiring Additional Information in Petitions Filed in Patent Applications and Patents Based on Unintentional Delay, 85 FR 12222 (March 2, 2020).
This requirement is in addition to the requirement to provide the statement that the entire delay between the date the priority claim was due under 37 CFR 1.55(d) and the date the priority claim was filed was unintentional.
This petition under 37 CFR 1.55(e) was filed more than two years after the date the foreign priority claim was due. The petition does not include a sufficient explanation of the facts and circumstances surrounding the delay to support a conclusion that the entire delay was unintentional.
Details of particular importance in determining unintentional delay are as follows: 1) the identity of the party responsible for making a timely priority claim; 2) the cause of petitioner's failure to file the priority claim timely; 3) when (approximate date - month/year) and how the failure to file the priority claim timely was discovered; and, 4) the delay (including steps taken) between the discovery of the failure to file the priority claim timely and the filing of the petition under 37 CFR 1.55(e).
Applicant must provide relevant dates and identify the responsible parties (i.e., parties having the authority or right to make a foreign priority claim in this application). Applicant must file a renewed petition under 37 CFR 1.55(e) with an explanation of each of the details of particular importance listed. No further fee is due in connection with the subject petition.
At this point, the examiner suggests applicant contact the Petitions Office directly to get this matter rectified.
Specification
The substitute specification filed July 14, 2025 has been entered.
Claim Rejections - 35 USC § 102
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, 2, 13, and 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Patent No. 7,784,591 to Franz et al.
Regarding Claim 1, Franz et al disclose a brake pad 20 for a disk brake system (see Figures 2 and 4A) having all the features of the instant invention including: a back plate 21 having a front side for facing a brake disk of the disk brake system (see Figure 2), a friction layer (see Figure 2 and the friction layer of pad 20) arranged on the front side of the back plate 21 for contacting a friction surface of the brake disk, wherein the back plate 21 comprises a guiding protrusion 28 configured to be slidably received within a guiding recess 30 of a carrier 11 of the disk brake system (see Figure 4A), wherein the guiding protrusion 28 of the back plate 21 is a flattened sphere (see Figure 4A and the top surface of element 28, which is curved, flattened, and spherical), wherein a portion of the flattened sphere extends into the guiding recess 30 of the carrier 11 toward a guiding surface of the guiding recess 30 of the carrier 11 (see Figure 4A and column 4 lines 44 et al), and wherein a centerline of the flattened sphere is aligned with a centerline of the guiding recess 30 of the carrier (see Figure 4A).
Regarding Claim 2, Franz et al further disclose that the back plate 21 comprises a back plate body 27, wherein the guiding protrusion 28 of the back plate 21 protrudes in a tangential direction from the back plate body 27 (see Figure 3).
Regarding Claim 13, Franz et al further disclose a disk brake system comprising a brake pad 20 according to Claim 1 and the carrier 11, wherein the brake pad 20 is configured to slide with respect to the carrier 11 in an axial direction upon brake application.
Regarding Claim 15, Franz et al further disclose that a majority of the flattened sphere is positioned in the guiding recess 30 of the carrier 11 (see Figure 4A, wherein a majority of the curved surface of element 28 is within the guiding recess 30), and a minority of the flattened sphere is positioned outside the guiding recess 30 of the carrier 11 (see Figure 4A and the end of element 28 nearest element numeral 45).
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.
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) 4 and 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 7,784,591 to Franz et al.
Regarding Claim 4, Franz et al disclose most all the features of the instant invention as applied above, and further including that the bulging portion 34 defines a tip portion (see Figure 4A and the top tip portion of element 34).
However, Franz et al do not disclose that the tip portion has a radius of curvature of at most 5 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have designed the tip portion of the bulging portion of Franz et al to have a radius of curvature of at most 5 mm as a matter of design preference dependent upon the desired degree of engagement between the bulging portion and the recess of the carrier. As long as the bulging portion fits within the carrier recess, its exact radius of curvature is arbitrary.
Regarding Claim 14, Franz et al further disclose that the gap width between the guiding protrusion 28 of the back plate 21 in the region of the bulging portion 34 and the adjacent part of the disk brake system is present.
However, Franz et al do not disclose the gap width is at most 0.8 mm.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have designed the gap width between the guiding protrusion of the back plate in the region of the bulging portion and the adjacent part of the disk brake system of Franz et al to be 0.8 mm as a matter of design preference dependent upon the desired degree of engagement between the guiding protrusion and the carrier recess thereof. As long as the guiding protrusion/bulging portion fit within the carrier recess, the gap width between the parts is arbitrary.
Claim(s) 10 and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 7,784,591 to Franz et al in view of German Patent No. DE 19954309 to Ammon et al.
Regarding Claim 10, Franz et al disclose most all the features of the instant invention as applied above, except for at least a part of a surface area of the bulging portion being formed by or covered with a non-stick material.
Ammon et al are relied upon merely for their teachings of a brake pad 4 with a back plate 3, wherein at least a part of a surface area of a bulging portion 9/7 of the back plate 3 is formed by or covered with a non-stick material (see page 3 of the examiner provided translation, second full paragraph).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided a surface area of the bulging portion of Franz et al to be formed by or covered with a non-stick material as taught by Ammon et al in order to allow the bulging portion to move slightly within the carrier recess but only with low frictional forces therebetween.
Regarding Claim 12, Franz et al do not disclose that the back plate comprises a back plate body, wherein the guiding protrusion and the back plate body are formed as joined parts.
Ammon et al are relied upon merely for their teachings of a brake pad 4 with a back plate 3 comprising a back plate body, wherein a guiding protrusion 7 and the back plate body are formed as joined parts (see Figure 1 and the abstract).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have designed the guiding protrusion of Franz et al to be formed as a joined part with the back plate body as taught by Ammon et al as an alternate way of forming the back plate structure. Designing the guiding protrusion and the back plate body to be joined parts allows for easier assembly or disassembly of the back plate with respect to the carrier.
Response to Arguments
Applicant's arguments filed February 11, 2026 have been fully considered but they are not persuasive.
Regarding applicant’s arguments regarding the claim of foreign priority to this case, see the examiner’s remarks in paragraph 2 of the office action.
Regarding applicant’s query as to the substitute specification (filed July 14, 2025), this substitute specification has been entered.
And lastly applicant argues the rejection of independent Claim 1 and the Franz et al reference. In particular, applicant argues that Franz et al disclose a guiding protrusion 28 that is essentially a rectangular parallelepiped. Applicant contends that, even assuming the top surface of Franz’s guiding protrusion 28 is curved, it would resemble a cylindrical form, which is distinguishable from applicant’s claimed “spherical shape”.
In response to this, the examiner respectfully disagrees. As stated previously, at least the top surface of the protrusion 28 of Franz et al is curved and forms a spherical shape, at least at that top end in between portions 34, as shown in Figure 4A. While applicant argues that this surface “resembles a cylindrical form”, the examiner contends that this curved surface also resembles a spherical form, as the terms “cylindrical” and “spherical” would both imply a curved rounded element, which the curved top end of element 28 certainly is.
It is for these reasons that the rejection of Claim 1 (and its corresponding dependent claims) has been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PAMELA RODRIGUEZ whose telephone number is (571)272-7122. The examiner can normally be reached Monday - Thursday 7 AM - 5 PM.
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PAMELA RODRIGUEZ
Primary Examiner
Art Unit 3616
/PAMELA RODRIGUEZ/ Primary Examiner, Art Unit 3616 03/16/26