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, 25-26, 28-29, 42 canceled
Claim 47 new
Claims 24, 27, 43 amended
Claims 24, 27, 30-41, 43-47 pending
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, 39-41 are rejected under 35 U.S.C. 103 as being unpatentable over Peters (PG Pub 2013/0244039 A1).
Consider Claims 24, 27 and 30-31, 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 teach the detailed of dissolving/solvating the acrylic polymer in toluene as a first solvent, and dissolving/solvating a silicone polymer in toluene in second solvents, then the blending/mixing both materials.
However, it would be obvious for an ordinary skilled person in the art to dissolve/solvate the acrylic polymer in a first solvent/toluene, and dissolve/solvate a silicone polymer in second solvent/toluene, separately, and then blending both solvated acrylic polymer with solvated silicone polymer, where the changing in sequence of adding ingredients is obvious for ordinary skilled person in the art, Ex parte Rubin, 128 USPQ 440 (Bd. App. 1959) (Prior art reference disclosing a process of making a laminated sheet wherein a base sheet is first coated with a metallic film and thereafter impregnated with a thermosetting material was held to render prima facie obvious claims directed to a process of making a laminated sheet by reversing the order of the prior art process steps.). See also In re Burhans, 154 F.2d 690, 69 USPQ 330 (CCPA 1946) (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious. MPEP 2144.04 (VI).
Peters teaches the solvated acrylic polymer with first toluene/solvent, and solvated silicone polymer with second toluene/solvent. 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).
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 apparatus having an adhesive layer on a substrate.
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 claim 24. 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].
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).
Claim(s) 43-47 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 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.
Consider Claims 47, 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].
Response to Arguments
Applicant’s arguments, filed 07/17/2026, with respect to the rejection(s) of claim(s) 24, 27, 30-41, 43-47 under 103a have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Peters.
The previously applied 112 claims rejection, in light of the amended claim are now withdrawn.
The applicant argued against the prior art of Peters, on the ground that Peters does not disclose the claimed “acrylic polymer or an acrylic-urethane polymer solvated in a first solvent at a first solids concentration”, separated from “a silicone polymer solvated in a second solvent at a second solids concentration”, nor disclose “wherein the first and second solids concentration are within 15% of each other”, and where the “blending the acrylic and silicone polymers”, per claims 24 and 34.
However, Peters disclose the solvating of acrylic polymer and a silicone polymer by dissolving the two polymers in toluene-ethanol solvent [0041]. Although, as argued, the claims require each polymer to be dissolved/solvated separately, and then adding both polymers together as final blend, this order of adding materials of materials would be obvious to an ordinary skilled person in the art, as shown in MPEP (2144.04 VI). Unless the mixing of each polymer with solvent then mixing/blending of both polymers would result in critical element, properties, chemical reaction, that is different from mixing of both polymers directly into the solvent, then at that point an affidavit is required to show such data indicating this critical difference between both mixing processes (a comparison data shown the critical difference between the instant dissolving process vs. dissolving process of Peters), to overcome the prior art of Peters.
Moreover, regarding the “wherein the first and second solids concentration are within 15% of each other” limitation, Peters disclose 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, where for example, this includes that the solvated first polymer with 50% by Vol, and the solvated second polymer with 50% by Vol, with 0.0% variation, that is within the 15% of each other.
The applicant argued against the “hybrid acoustic damping” materials, on the ground that Peters’ disclosure of vibration damping on [0017] is to overcome the problem of associated with excess grease of lubricant being transferred to unintended surfaces, but not the claimed “hybrid acoustic damping”.
However, Peters state “The teachings further provide for a microencapsulated grease, lubricant, adhesive, or a combination thereof that is added to the brake components during the manufacturing process so that during an initial installation of the brake component and/or during changing of the brake pads, brake shoes, or both separate grease, lubricant, adhesive, or a combination thereof does not need to be added to new brake pads, brake shoes, brake components, or a combination thereof to prevent noise, vibration, or harshness. The teachings herein surprisingly solve one or more of these problems by providing a method of applying the grease, lubricant, adhesive, or a combination thereof to each brake component so that the grease, lubricant, adhesive, or a combination thereof are precisely deployed in a contact region of the brake component, are dry to the touch, reduce noise, vibration, harshness, or a combination thereof, are free of excess grease, are free of excess lubricant, are free of excess adhesive, or a combination thereof” [0017].
Therefore, Peters does not only disclose that “grease” only is used to prevent/reduce noise (as hybrid acoustic damping) or vibration, but also the adhesive materials, without the needed of additional components or excess adhesive.
All other applicant arguments not specifically addressed above are deemed unpersuasive as either not commensurate in scope with the broadly drafted claims or are unsupported by factual evidence and are deemed mere attorney speculation.
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.
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, 11:00AM-7:00PM EST.
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/Mohammad Mayy/
Art Unit 1718
/GORDON BALDWIN/Supervisory Patent Examiner, Art Unit 1718
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