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 .
Election/Restrictions
Newly submitted claims 14 and 15 are directed to a species that is independent or distinct from the invention originally claimed for the following reasons:
Original claim 4 recites that “the friction layer comprises an increased thickness in the pressure region as compared with the region of the back plate that is not configured to be pushed on by the brake piston.”
Claim 14 now recites that “a thickness portion of the friction layer corresponding to the pressure region of the back plate is same as a thickness of a portion of the friction layer corresponding to the region of the back plate that is not configured to be pushed on by the brake piston.” Thus, claim 14 is directed toward a mutually exclusive species and would require a new search.
Similarly, claim 15 now recites that the front side of the back plate provides a recess which has the reduced thickness, and the recess is filled with at least one of the underlayer and the adhesive layer. If the recess is filled with the underlayer and the adhesive layer, this would render the thickness of the friction material to be the same in both the pressure and non-pressure regions. Claim 15 is therefore directed toward a mutually exclusive embodiment that would require a new search.
Since applicant has received an action on the merits for the originally presented invention, this invention has been constructively elected by original presentation for prosecution on the merits. Accordingly, claims 14 and 15 are withdrawn from consideration as being directed to a non-elected invention. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
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.
Claim 16 is 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.
Regarding claim 16, the phrase “wherein the front side of the back plate provides a recess which has a reduced thickness” is indefinite because it is unclear whether this is the same element as the previously recited “wherein the back plate has a reduced thickness in the pressure region.” For purposes of examination, these elements will be interpreted as being the same elements.
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.
Claims 1, 6, 7, 9-11, 13 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (JP 06-323351) (Applicant cited) in view of Lee et al. (US 2017/0152904).
Regarding claim 1, Sumitomo discloses a brake pad (10) for a disk brake system (see FIGS. 1a, 1b; ¶¶ 0017, 0018), comprising: a back plate (1) having a front side (see FIG. 1b, left side of plate (1)) for facing a brake disk of the disk brake system (see FIG. 1b); a friction layer (2) arranged on the front side of the back plate for contacting a friction surface of the brake disk (see FIG. 1b); an adhesive layer (3) (see FIG. 1b; ¶ 0018); wherein the brake pad comprises a pressure region (see FIG. 1a, area delimited by (6)) that is configured to be pushed on by a brake piston or by a caliper finger of the disk brake system (see FIG. 1a), wherein the back plate and the friction layer each extend into the pressure region (see FIG. 1a), wherein the back plate has a reduced thickness in the pressure region as compared with a region of the back plate that is not configured to be pushed on by the brake piston or caliper finger (see FIG. 1b, area (6) has a reduced thickness).
Sumitomo does not disclose an underlayer arranged between the back plate and the friction layer; or that the adhesive layer is arranged between the underlayer and the front side of the back plate.
Lee teaches a brake pad (see Abstract, FIG. 1) comprising a back plate (40), a friction layer (10), an underlayer (20) arranged between the back plate and the friction layer (see FIG. 1), and an adhesive layer (30) is arranged between the underlayer and the front side of the back plate (see FIG. 1).
It would have been obvious to combine the underlayer of Lee with the brake pad of Sumitomo to ensure noise damping and improve a noise damping capacity, while eliminating the need for a shim to provide noise damping thereby reducing production costs (see Lee, ¶¶ 0023, 0024).
Regarding claim 6, Sumitomo discloses that a total thickness of the back plate and the friction layer in the pressure region is the same as a total thickness of the back plate and the friction layer in the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger (see FIG. 1b).
Regarding claim 13, Sumitomo discloses that the back plate has a uniform thickness in the region of the back plate that is not configured to be pushed on by the brake piston or caliper finger (see FIG. 1(b), area outside of (6) is uniform).
Regarding claim 16, Sumitomo discloses that the front side of the back plate provides a recess (6) which has the reduced thickness (see FIGS. 1(a), 1(b)), and at least a part of the recess is filled with the friction layer (see FIG. 1(b)).
Regarding claim 7, Sumitomo discloses that the back plate is formed by a non-joined part (see ¶¶ 0019, 0020; FIGS. 2(a)-2(c)).
Regarding claim 9, Sumitomo discloses that the back plate is made of a metal (see ¶ 0003).
Regarding claim 10, Sumitomo discloses that the back plate has a uniform thickness in the pressure region (see FIG. 1b; “pressure region” is interpreted as being the annular space between outer wall of (6) element (9)).
Regarding claim 11, Sumitomo discloses that a shape of a surface of the front side of the back plate may result in the thickness of the back plate being reduced in the pressure region (see FIG. 1b).
Claims 2-5 are rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (JP 06-323351) (Applicant cited) in view of Lee et al. (US 2017/0152904), as applied to claim 1, above, and further in view of Lang (GB 2115507).
Regarding claim 2, Sumitomo does not disclose that a thickness of the back plate in the pressure region is at least 0.4 mm smaller than in the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger.
Lang teaches a brake pad (3) for a disk brake system (see FIG. 4), comprising a back plate (6) and a friction layer (7), wherein a thickness of the back plate in a pressure region (14) is at least 0.4 mm smaller than in the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger (see page 5, lines 1-12).
It would have been obvious to configure the thickness of the back plate in the pressure region of Sumitomo to be at least 0.4 mm smaller than other regions to provide the additional benefit of eliminating squeal in the brake pad (see e.g. page 5, lines 1-12).
Regarding claim 3, Lang teaches that a thickness of the back plate in the pressure region is at most 1.2 mm smaller than in the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger (see page 5, lines 1-12).
Regarding claim 4, Sumitomo discloses that the friction layer comprises an increased thickness in the pressure region as compared with the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger (see FIG. 1b).
Regarding claim 5, the combination of the teachings of Lang with Sumitomo would result in a thickness of the friction layer in the pressure region is at least 0.4 mm larger than in the region of the brake pad that is not configured to be pushed on by the brake piston or caliper finger (see e.g. Lang, page 5, liens 1-12).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Sumitomo (JP 06-323351) (Applicant cited) in view of Lee et al. (US 2017/0152904), as applied to claim 1, above, and further in view of Osada et al. (US 2018/0195568).
Regarding claim 12, Sumitomo discloses that a disk brake system comprising a brake pad according to claim 1 (see claim 1, above) and further comprising a caliper (see e.g. ¶ 0005).
Sumitomo does not disclose a carrier, wherein the brake pad is configured to slide with respect to the carrier in an axial direction upon brake application.
Osada teaches a disk brake system (see Abstract, FIGS. 1-14) comprising a brake pad (11) and a carrier (2), wherein the brake pad is configured to slide with respect to the carrier in an axial direction upon brake application (see ¶¶ 0025-0027).
It would have been obvious to combine the carrier with the brake system of Sumitomo to implement the well-known configuration of a floating caliper brake system that allows for a single piston to actuate both brake pads to engage opposite sides of a brake rotor.
Response to Arguments
Applicant’s arguments with respect to claim 1 have been considered but are moot in view of the new grounds of rejection noted above.
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 NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi can be reached at (571)272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
April 3, 2026
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