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 .
Response to Amendment
Amendments submitted on 12/10/2025 have been considered and entered. Claims 1, 12-14 and 17 have been amended and claims 2-7 have been canceled. Claims 1, and 8-17 are pending in the present application.
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.
Claims 1, 9, 10, 12and 13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matoba (JP 2008196684 A).
Regarding claim 1, Matoba discloses a disk brake system (fig. 7) for a vehicle, comprising a brake disk (1) and a shell (3), the shell (3) is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel arch, and covered at the other side to a wheel (note the shell 3 encloses the entire rotor 1 and the caliper assembly 12 including pads 2 as shown in fig. 1, wherein the shell attached at one side to an axle).
Re-claim 9, Matoba discloses the shell (3) comprises magnetic inserts (31) for collecting metallic brake dust.
Re-claim 10, Matoba discloses the shell (3) comprises at least two segments (7, 8) that are connected to each other, preferably by an adhesive and/or by at least one bolt (10) and/or by at least one screw.
Re-claim 12, Matoba discloses the shell (3), at least in a section, comprises at least two layers, preferably of different materials from each other (note the magnet 31 and the section of the shell where the magnet is attached formed as two layers, wherein the magnet is iron and the shell 3 can be stainless steel).
Re-claim 13, Matoba discloses the shell is transparent, at least in a section (note the shell 3 comprising a window hole (22) provided with a net (26); note that you can see through the net).
Claim Rejections - 35 USC § 103
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 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 8 is rejected under 35 U.S.C. 103 as being unpatentable over Matoba (JP 2008196684 A) in view of Krantz (WO 2005091838 A2).
Regarding claim 8, Matoba discloses the shell but fails to disclose the shell comprises a coating layer for adhesion of brake dust. However, Krantz discloses a pollutant trap member comprises a coating layer for adhesion of brake dust and other pollutants (note lines 18-20, page 11). It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to provide the shell of Matoba with a coating layer as taught by Krantz will prevent any circulation or scattering of the brake dust or pollutants during a braking operation.
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Matoba (JP 2008196684 A) in view of Sand (US 2009/0194378 A1).
Regarding claim 11, Matoba fails to disclose the segments are made of a different material from each other as recited in the claim. However, Sand discloses a brake shield comprising a shield portion and a cover portion, wherein different materials are used for each (note [0011]). It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to modify the segments of the shell of Matoba to be formed of different materials as taught by Sand will allow each of the segments to be selectively used for a specific application or an environment.
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Matoba (JP 2008196684 A) in view of another embodiment shown in fig. 8 of Matoba (JP 2008196684 A).
Regarding claim 14, Matoba discloses the shell (3 in fig. 7) but fails to disclose the shell comprises at least one cleaning opening, for rinsing an interior space of the shell and/or for applying suction to the inner space of the shell as recited in the claim. However, another embodiment shown in fig. 8 of Matoba discloses the shell 3 having an opening where a tube 19 connected to a suction mechanism 32 is inserted. It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to provide the shell of Matoba with an opening for the tube connected to the suction mechanism as taught by another embodiment shown in fig. 8 of Matoba will cool the brake members while removing any brake dust.
Claims 15-16 are rejected under 35 U.S.C. 103 as being unpatentable over Matoba (JP 2008196684 A).
Regarding claim 15, Matoba discloses a distance between an inner surface of the shell and the brake disk but fails to disclose the clearance to be at least 10 mm as recited in the claim. It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to provide a distance between an inner surface of the shell and the brake disk to be at least 10 mm as recited in the claim, since it has been held that discovering an optimum value of a result effective variable in this case, the distance between an inner surface of the shell and the brake disk, involves only routine skill in the art as such distance will prevent any potential interference between the shell and the disk.
Re-claim 16, Matoba discloses the shell having a plurality of openings (5, 22) exposing portions of the brake disk, but fails to disclose the exposed portions of the brake disk to be at least 25% of an area of the axially inner side and/or an area of the axially outer side of the brake disk as recited in the claim. It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to provide the exposed portion of the brake disk to be at least 25% of the brake disk as recited in the claim, since it has been held that discovering an optimum value of a result effective variable in this case, the exposed portion of the brake disk, involves only routine skill in the art as such exposed portion of the brake disk will allow outside air to dissipate heat of the brake members while preventing invasion of foreign matter having a certain size.
Claims 1, 9, 10, 12, 13 and 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Tanabe (JP 2012047247 A) in view of Matoba (JP 2008196684 A).
Regarding claims 1, 9, 10, 12, 13 and 15-17, Tanabe discloses a disk brake system (figs. 1-4) for an electric vehicle, comprising a brake disk (5), a caliper (8) and a shell (24), but fails to disclose the shell is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel arch, and covered at the other side to a wheel. However, as set forth above, Matoba discloses a disk brake system (fig. 7) for a vehicle, comprising a brake disk (1) and a shell (3), the shell (3) is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel arch, and covered at the other side to a wheel (note the shell 3 encloses the entire rotor 1 and the caliper assembly 12 including pads 2 as shown in fig. 1, wherein the shell attached at one side to an axle). It would have been obvious to one having ordinary skill in the art at the time before the filing date of the present application was made to modify the shell of Tanabe with the teaching of Matoba will completely protect the entire brake assembly from any foreign objects and prolong the life of the brake assembly.
Response to Arguments
Applicant’s arguments with respect to claims have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Regarding Matoba, the applicant argues that Matoba fails to disclose the shell is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel as recited in the claim. The examiner disagrees. As set forth above, Matoba clearly discloses a disk brake system (fig. 7) for a vehicle, comprising a brake disk (1) and a shell (3), the shell (3) is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel arch, and covered at the other side to a wheel (note the shell 3 encloses the entire rotor 1 and the caliper assembly 12 including pads 2 as shown in fig. 1, wherein the shell attached at one side to an axle). Therefore, it is clear that Matoba discloses all of the limitations as recited in the claim and the rejections are proper and valid.
Regarding Tanabe, the applicant argues that Tanabe fails to disclose the shell is configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel as recited in the claim. Indeed, Tanabe fails to disclose the shell configured to receive the brake assembly. However, Tanabe discloses an electric vehicle brake assembly and relies on Matoba for the teaching of shell configured to receive the brake disk and the caliper, the shell being fixed at one side to an axle or wheel as recited in the claim. Therefore, the rejections by Tanabe in view of Matoba are proper and valid.
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 MAHBUBUR RASHID whose telephone number is (571)272-7218. The examiner can normally be reached Monday - Friday 9am to 10pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, ROBERT SICONOLFI can be reached at 5712727124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAHBUBUR RASHID/Examiner, Art Unit 3616
/Robert A. Siconolfi/Supervisory Patent Examiner, Art Unit 3616