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 .
DETAILED ACTION
Claims 1-23 canceled
Claims 24-46 pending and new
Claim Rejections - 35 USC § 112
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 24-33, and 42-46 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.
Claims 24 and 42 states “A method of forming an apparatus, comprising” to “form an adhesive layer”, as it is unclear how the process of forming “an apparatus” ends in forming “an adhesive”, where the “adhesive” is a product, not an apparatus.
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.
Claim(s) 24-27, 30-36, 39-42 are rejected under 35 U.S.C. 103 as being unpatentable over Peters (PG Pub 2013/0244039 A1).
Consider Claims 24-25, Peters teaches the process of forming a brake component (as a substrate) comprising a carrier and encapsulant (abstract), where the carrier is an adhesive [0038] and the encapsulant is also an adhesive (claims 6-7), where the adhesive is a thermoset, and the thermoset is a combination of an acrylic polymer and a silicone polymer [0046] as blend of acrylic polymer and a silicone polymer, and where the encapsulant (which comprises acrylic polymer and a silicone polymer) dissolved in toluene-ethanol solvent [0041].
Peters does not teaches the detailed of dissolving the acrylic polymer and a silicone polymer in toluene as a first/second solvents.
However, it would be obvious for an ordinary skilled person in the art to mix the acrylic polymer in a first solvent/toluene, and a silicone polymer in second solvent/toluene, separately, and then blending both solvated acrylic polymer with solvated silicone polymer, with reasonable and predictable expectation of success.
Peters teaches the encapsulant (blending of both solvated acrylic polymer with silicone polymer) is applied on the brake component/substrate [0049], followed by curing the encapsulate (blending of both solvated acrylic polymer with silicone polymer) [0050], thus forming an adhesive layer.
Consider Claims 26-27 and 30-31, Peters teaches the solvated acrylic polymer with first toluene/solvent, and solvated silicone polymer with second toluene/solvent, per claim 24. Peters teaches the adhesive include other components such as crosslinking agent with 5% or more by wt. [0046]. Leading to having the thermoset (blend of acrylic and silicone polymers) with amounts 95% wt. or less. Where it would be obvious to ordinary skilled person in the art to blend the acrylic and silicone polymers with ratio ranging from 94.9%:0.1% to 0.1%:94.9% by weight, using known engineering principles to achieve solid concentrations of the first and second solvated polymers within 0.1%-50% of each other, and silicone polymer with volumetric proportion ranging from 0.1% to 94.9% by Vol to the acrylic polymer volumetric proportion. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Consider Claim 32, Peters teaches the acrylic polymer and a silicone polymer both dissolved in toluene solvent [0041].
Consider Claim 33, Peters teaches the curing of the adhesive at an elevated temperature [0046].
Consider Claim 34, Peters teaches the previously taught in claims 24 and 26. Additionally, Peters teaches the process of forming an adhesive having noise/acoustic and vibration damping characteristics [0017].
Consider Claim 35, Peters teaches the curing of the adhesive at an elevated temperature [0046], where it would be obvious that the solvent would dry out/remove at the initial cure time, prior to the full curing process, with reasonable and predictable expectation of success.
Consider Claim 36, Peters teaches the solvated acrylic polymer combined with urethane polymer (polyurethane) [0046].
Consider Claims 39-40, Peters teaches the solvated acrylic polymer with first toluene/solvent, and solvated silicone polymer with second toluene/solvent, per claim 24. Peters teaches the adhesive include other components such as crosslinking agent with 5% or more by wt. [0046]. Leading to having the thermoset (blend of acrylic and silicone polymers) with amounts 95% wt. or less. Where it would be obvious to ordinary skilled person in the art to blend the acrylic and silicone polymers with ratio ranging from 94.9%:0.1% to 0.1%:94.9% by weight, using known engineering principles to achieve solid concentrations of the first and second solvated polymers within 0.1%-50% of each other, and silicone polymer with volumetric proportion ranging from 0.1% to 94.9% by Vol to the acrylic polymer volumetric proportion. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Consider Claim 41, Peters teaches the acrylic polymer and a silicone polymer both dissolved in toluene solvent [0041].
Consider Claim 42, Peters teaches the process of forming a brake component (as a substrate) comprising a carrier and encapsulant (abstract), where the carrier is an adhesive [0038] and the encapsulant is also an adhesive (claims 6-7), where the adhesive is a thermoset, and the thermoset is a combination of an acrylic polymer and a silicone polymer [0046] as blend of acrylic polymer and a silicone polymer, and where the encapsulant (which comprises acrylic polymer and a silicone polymer) dissolved in toluene-ethanol solvent [0041].
Peters does not teaches the detailed of dissolving the acrylic polymer and a silicone polymer in toluene as a first/second solvent.
However, it would be obvious to ordinary skilled person in the art to mix the acrylic polymer in a first solvent/toluene and a silicone polymer in second solvent/toluene, separately, and then blending both solvated acrylic polymer with solvated silicone polymer, with reasonable and predictable expectation of success.
Peters teaches the encapsulant (blending of both solvated acrylic polymer with silicone polymer) is applied on the brake component/substrate [0049], followed by curing the encapsulate (blending of both solvated acrylic polymer with silicone polymer) [0050], thus forming an adhesive layer.
Additionally, Peters teaches the solvated acrylic polymer with first toluene/solvent, and solvated silicone polymer with second toluene/solvent, per claim 24. Peters teaches the adhesive include other components such as crosslinking agent with 5% or more by wt. [0046]. Leading to having the thermoset (blend of acrylic and silicone polymers) with amounts 95% wt. or less. Where it would be obvious to ordinary skilled person in the art to blend the acrylic and silicone polymers with ratio ranging from 94.9%:0.1% to 0.1%:94.9% by weight, using known engineering principles to achieve solid concentrations of the first and second solvated polymers within 0.1%-50% of each other, and silicone polymer with volumetric proportion ranging from 0.1% to 94.9% by Vol to the acrylic polymer volumetric proportion. In the case where the claimed ranges, “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). (MPEP 2144.05).
Claim(s) 28-29 and 43-46 are rejected under 35 U.S.C. 103 as being unpatentable over Peters (PG Pub 2013/0244039 A1), in view of Ikeda (PG Pub 2007/0213454).
Consider Claims 28-29, Peters teaches the applying of an adhesive layer between the brake and the shim (claim 11).
Peters does not teach the use of release layer.
However, Ikeda is in the prior art of applying adhesive layer to the brake (abstract), teaches the process of applying adhesive layer to the brake, having release layer/liner and the removal of the release layer/liner after drying of the adhesive layer [0053].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Peters with Ikeda to use the release layer, to provide a way that the releasing surface and the surface adhesive layer are brought into contact with each other to store. Thus, the surface of the pressure-sensitive adhesive layer is protected [0050].
Consider Claims 43-45, Peters teaches the applying of an adhesive layer between the brake and the shim (claim 11).
Peters does not teach the use of release layer, as a transfer film substrate.
However, Ikeda is in the prior art of applying adhesive layer to the brake (abstract), teaches the process of applying adhesive layer to the brake, having release layer/liner and the removal of the release layer/liner after drying of the adhesive layer [0053].
A person having ordinary skill in the art before the effective date of the claimed invention would combine Peters with Ikeda to use the release layer, to provide a way that the releasing surface and the surface adhesive layer are brought into contact with each other to store. Thus, the surface of the pressure-sensitive adhesive layer is protected [0050].
Consider Claim 46, the combined Peters (with Ikeda) teaches the applying of an adhesive layer between the brake and the shim (Peters, claim 11), and where plurality of shims are also used (Peters, [0047]). Therefore, it would be obvious for ordinary skilled person in the art to attached second shim to the first shim using an adhesive layer placed between first and second shim, with reasonable expectation of success.
Claim(s) 37 is rejected under 35 U.S.C. 103 as being unpatentable over Peters (PG Pub 2013/0244039 A1), in view of Bildner (US Pat. 5,823,301).
Consider Claim 37, Peters teaches the use of silicone [0046].
Peters does not teach the type of silicone.
However, Bildner is in the prior art of forming a brake pad (abstract), teaches using silicone adhesive (abstract) where the silicone adhesive contains about 20% to about 60% of a conventional polysiloxane (Col. 3, lines 56-57).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Peters with Bildner to use silicone adhesive comprises polysiloxane, to form a damping layer that have the best possible damping effect, yet can be made at reasonable cost (Col. 1, lines 48-51).
Claim(s) 38 is rejected under 35 U.S.C. 103 as being unpatentable over Peters (PG Pub 2013/0244039 A1), in view of Ouchi (US Pat. 6,262,289 B1).
Consider Claim 38, Peters teaches the use of silicone [0046].
Peters does not teach the type of silicone.
However, Ouchi teaches the use of silicone having oligosiloxane (abstract),and teaches the oligosiloxane for adhesion (Col. 1, lines 45-48).
A person having ordinary skill in the art before the effective date of the claimed invention would combine Peters with Ouchi to use oligosiloxane, to increase the adhesive properties (Col. 1, lines 45-48).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Mohammad Mayy whose telephone number is (571)272-9983. The examiner can normally be reached Monday to Friday, 8:00AM-5:00PM EST.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
Prosecution Insights