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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/21/2023. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 are 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 1, the claim recites “at least one material parameter” in line 5 of the claim. It is not clear if the applicant is referring to the same element as the “anisotropic material property” or different material property. Appropriate correction is required.
Regarding claim 4, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 5, the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 8, the phrase "for example" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 13, the claim recites “preferably at least three times” in line 3 of the claim. It is not clear whether “preferably” is a required element of the claim. Appropriate correction is required.
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 1-6 and 19 are rejected under 35 U.S.C. 102(a) (1) as being anticipated by McCaffrey (US 2013/0240304 A1).
Regarding claim 1, McCaffrey discloses a brake pad (note the brake pad shown in figs. 2-3) for a vehicle brake, comprising a back plate (28), an underlayer (42), and a friction material (40), stacked in this order, in a z-direction (note [0022]), wherein the brake pad is configured to be moved in the z-direction to be pressed against a rotating body (24) for braking, the underlayer formed with matrix (50) and fibers (52) with anisotropic thermal conductivities (note [025]), at least one material parameter having a value in the z-direction that is different from its value in a direction orthogonal to the z-direction (note McCaffrey discloses that that “The thermal conductivity in a longitudinal direction toward piston 32 and cylinder 34 is lower than the thermal conductivity in a lateral direction towards the sides of the brake pad assembly” (see 0018; see also FIG. 3)).
Re-claim 2, McCaffrey discloses the anisotropic material property is provided by
- an anisotropic modulus of elasticity, and/or
- an anisotropic shear modulus, and/or
- an anisotropic Poisson's ratio, and/or
- an anisotropic thermal conductivity (note the abstract and [0018] and [0022]-[0027]), and/or
- an anisotropic thermal expansion, and/or
- an anisotropic compressibility, and/or
- an anisotropic storage modulus, and/or
- an anisotropic loss modulus.
Re-claim 3, McCaffrey discloses the underlayer (42) comprises a base material (50) and inlay elements (52) disposed in the base material (note [0023]).
Re-claim 4, McCaffrey discloses the inlay elements comprise rubber and/or minerals, such as stone, and/or glass and/or metal, such as steel, and/or phenol (note [0027], [0043] and [0050]).
Re-claim 5, McCaffrey discloses at least some of the inlay elements are elongated elements, such as fibers or sticks (note [0014]-[0017]).
Re-claim 6, McCaffrey discloses the elongated elements are oriented in a principal direction (note [0018] and fibers 52 shown in fig. 3).
Re-claim 19, McCaffrey discloses the underlayer, in particular the base material of the underlayer (note [0017], [0021], [0024] and [0026]), comprises at least one of:
- rubber,
- adhesive,
- phenol,
- metal particles,
- glass particles,
- sand particles,
- organic particles,
- plastic particles.
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.
Claims 7-8 are rejected under 35 U.S.C. 103 as being unpatentable over McCaffrey (US 2013/0240304 A1) in view of Gilboy et al. (US 2010/0065389 A1).
Re-claim 7, McCaffrey discloses all claimed limitations as forth above including the fibers 52 elongated in direction parallel to the plane of layer 42 (note fig. 3), wherein the majority of the fibers are oriented parallel to the plane of layer 42 (note [0024]), but fails to disclose the elongated elements extend in the z-direction as recited in the claim. However, Gilboy et al. discloses a brake pad assembly comprising a back plate 34 having some degree of three-dimensional orientation such that a percentage of fibers are oriented in the through-plane 42 (z-direction) in [0060]). 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 extend the elongated elements in the z-direction as taught by Gilboy et al. in order to improve thermal management of the braking system.
Re-claim 8, McCaffrey discloses all claimed limitations as forth above including the fiber having a length that is a significant fraction of the thickness of layer 42 (note [0024]) but fails to disclose at least some of the inlay elements, for example the elongated elements, have a diameter of 40pm to 110 pm and/or a length of 0.4 mm to 3 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 claimed ranges of the length of the fibers, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Claims 9 and 13-18 are rejected under 35 U.S.C. 103 as being unpatentable over McCaffrey (US 2013/0240304 A1).
Re-claim 9, McCaffrey discloses all claimed limitations as forth above including the fiber having a length that is a significant fraction of the thickness of layer 42 (note [0024]) but fails to disclose at least some of the inlay elements have a diameter of at most 50 pm and/or a length of at most 0.1mm not oriented in a principal direction 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 claimed ranges of the length of the fibers, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 13, McCaffrey discloses all claimed limitations as forth above including the thermal insulating layers of the invention comprise, in general, fiber reinforced ceramic matrix composites, wherein, the matrix thermal conductivity of thermal insulating layer 42 is suggested to be less than conventional ceramic materials such as oxide, nitride, and carbide ceramics (note [0024]), but fails to disclose the thermal expansion coefficient of the inlay elements is at least twice the thermal expansion coefficient of the base material, preferably at least three times the thermal expansion coefficient of the base material 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 claimed ranges of the thermal conductivities of the materials, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 14, McCaffrey discloses all claimed limitations as forth above including the thermal insulating layers of the invention comprise, in general, fiber reinforced ceramic matrix composites, wherein, the matrix thermal conductivity of thermal insulating layer 42 is suggested to be less than conventional ceramic materials such as oxide, nitride, and carbide ceramics (note [0024]), but fails to disclose upon heating, a material of the inlay elements has a thermal expansion of 1.0 E- 1/K to 1.4 E- 5 1/K and/or the base material has a thermal expansion of 0.2 E-5 1/K to 0.4 E-5 1/K and/or upon cooling, the material of the inlay elements has a thermal contraction of -3 E-6 1/K to -5 E-6 1/K and/or the base material has a thermal contraction of -1.2 E-6 to -1.6 E-6 1/K. 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 upon heating, a material of the inlay elements has a thermal expansion of 1.0 E- 1/K to 1.4 E- 5 1/K and/or the base material has a thermal expansion of 0.2 E-5 1/K to 0.4 E-5 1/K and/or upon cooling, the material of the inlay elements has a thermal contraction of -3 E-6 1/K to -5 E-6 1/K and/or the base material has a thermal contraction of -1.2 E-6 to -1.6 E-6 1/K as recited in the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 15, McCaffrey discloses all claimed limitations as forth above including the fibers may be ceramic fibers with thermal conductivities exceeding that of the matrix. As a result, the anisotropic thermal conductivity of thermal insulating layer 42 may be controlled, if necessary, by the geometrical distribution of the fiber load in the matrix in thermal insulating layer 42; for example, if the thermal conductivity in the plane of layer 42 is designed to be greater than that in the short transverse direction perpendicular to the plane, it is advantageous that the fibers have a length that is a significant fraction of the thickness of layer 42 and that the majority of the fibers are oriented parallel to the plane of layer 42 (note [0024]), but fails to disclose a density of inlay elements in the form of mineral fibers, in the underlayer is 10 % to 40 %. 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 density of inlay elements in the form of mineral fibers, in the underlayer is 10 % to 40 % as recited in the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 16, McCaffrey discloses all claimed limitations as forth above including the matrix materials included borosilicate glass, high silicon content glass, aluminosilicate glass, and lithium aluminosilicate glass-ceramic, wherein, thermal stability to temperatures greater than 1800.degree. F. (982.degree. C.) and flexural strengths to values greater than 300 MPa were achieved (note [0024] and [0027]) and the examiner notes that it well known in the art that glass expands when heated, but fails to disclose the underlayer is configured to expand in the z-direction by at least 0.1 mm or at least 0.2mm when heated from 20*C to 150*C, the expansion counteracting a pressure of at least 5 bars, a thickness of the underlayer being 1.5 mm to 3.5 mm. 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 underlayer is configured to expand in the z-direction by at least 0.1 mm or at least 0.2mm when heated from 20*C to 150*C, the expansion counteracting a pressure of at least 5 bars, a thickness of the underlayer being 1.5 mm to 3.5 mm as recited in the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 17, McCaffrey discloses all claimed limitations as forth above including the matrix materials included borosilicate glass, high silicon content glass, aluminosilicate glass, and lithium aluminosilicate glass-ceramic, wherein, thermal stability to temperatures greater than 1800.degree. F. (982.degree. C.) and flexural strengths to values greater than 300 MPa were achieved (note [0024] and [0027]) and the examiner notes that it well known in the art that glass expands when heated, but fails to disclose the underlayer is configured to expand by 0.03 mm to 0.05 mm in the x-direction and/or in the y-direction, when heated from 20*C to 150*C. 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 underlayer is configured to expand by 0.03 mm to 0.05 mm in the x-direction and/or in the y-direction, when heated from 20*C to 150*C as recited in the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Regarding claim 18, McCaffrey discloses all claimed limitations as forth above including the matrix materials included borosilicate glass, high silicon content glass, aluminosilicate glass, and lithium aluminosilicate glass-ceramic, wherein, thermal stability to temperatures greater than 1800.degree. F. (982.degree. C.) and flexural strengths to values greater than 300 MPa were achieved (note [0024] and [0027]), but fails to disclose a resistance against compressibility of the underlayer is 0.0008 mm3/bar to 0.0012mm3/bar 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 resistance against compressibility of the underlayer is 0.0008 mm3/bar to 0.0012mm3/bar as recited in the claim, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, in order to provide efficient operation of the device.
Allowable Subject Matter
Claims 10-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
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
/NICHOLAS J LANE/Primary Examiner, Art Unit 3616