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 .
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.
Claim(s) 1, 2, 5-7, 10 and 11 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and US 8637592 to Jobmann et al.
Re: claims 1 and 2. Niwa et al. shows in figure 1 a disc brake shim 10, 11 comprising a base material layer 10 formed of a metal sheet, and a rubber layer 11 that is disposed on at least a part of a main surface on one or top side of the base material layer, but is silent with regard to the rubber layer being laminated and is silent with regard to the rubber layer containing pores derived from a plurality of hollow microcapsules inside.
JP’468 teaches in the paragraph under Background Art beginning “Conventionally, as a joining structure” the use of a rubber being laminated.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al. to have been laminated, in view of the teachings of JP’468, in order to provide a means of improving the strength and durability of the rubber material and provide a barrier that makes it less permeable to gases and/or liquids that can affect the life of the material.
Jobmann et al. teach in col. 1 lines 43-44 the use of a rubber composition containing hollow microcapsules.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have contained pores derived from a plurality of hollow microcapsules inside, in view of the teachings of Jobmann et al., in order to provide thermal and acoustic insulating properties which can improve thermal and mechanical stability.
Re: claim 5. Niwa et al., as modified, show in figure 1 of Niwa et al. the limitation wherein the rubber layer 11 is oriented to face a pad material or a pressing member at a time of arrangement or particularly a pressing member 7 as shown in figure 6.
Re: claims 6 and 10. Niwa et al., as modified, show in figure 1 of Niwa et al. the limitation wherein the disc brake shim 10, 11 is a base shim that is at the base of the backing plate as broadly recited.
Re: claim 7. Niwa et al., as modified, show in an alternate interpretation in figure 2 of Niwa et al. comprising a laminated structure with three or more layers 11, 10, 11, 12 including at least a base material layer 10 formed of a metal sheet, and the rubber layer 11 laminated and disposed on a main surface on one side of the base material layer, the rubber layer or bottom element 11 being disposed as an intermediate layer of the laminated structure as shown.
Re: claim 11. Niwa et al., as modified, show in figure 6 of Niwa et al. a disc brake including pad materials 3 on both sides in an axial direction of a disc rotor 6, and shims A on opposite sides from the disc rotor of the pad materials adjacently wherein each of the shims is the disc brake shim as shown.
Claim(s) 3 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of JP-H02308880 (JP’880).
Niwa et al., as modified, show the rubber layer with a thickness but are silent with regard to the thickness being within the recited range.
JP’880 teaches in the detailed description section the use of a rubber layer being 120 micrometers.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have had a thickness within the range of 30 to 200 micrometers, in view of the teachings of JP’880, in order to provide a thickness that is thin enough to offer flexibility but thick enough to offer controlled barrier function.
Claim(s) 4 and 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of JP-4773120 (JP’120) and CN-104201321 (CN’321).
Niwa et al., as modified, are silent with regard to the rubber layer being a heat-treated product of a rubber composition layer containing 40 to 70% by mass of polymer with a Mooney value of 10 to 70 and 5 to 50% by mass of hollow microcapsules in solid content conversion.
JP’120 teaches in the paragraph under claims that use of a rubber layer that is a heat-treated product or contains a heat decomposable chemical agent containing 40 to 70% by mass of a polymer having a Mooney value of 20 to 60% which is within the claimed recited range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have been heat-treated, in view of the teachings of JP’120, in order to provide a means of creating a more heat-resistant shim.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have contained 40 to 70% by mass of a polymer having a Mooney value of 20 to 60%, in view of the teachings of JP’120, in order to provide an improved mechanical property after cure and reduced tackiness.
CN’321 teaches in claim 5 the use of a material having a mass percentage of microcapsules in the range of 10 to 60% which encompasses part of the claimed range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have contained 5 to 50% by mass hollow microcapsules, in view of the teachings of CN’321, in order to provide a desired level of thermal and acoustic insulating properties which can improve heat resistance and sound absorption depending on the particular application.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of JP-5967252 (JP’252).
Niwa, as modified, is silent with regard to the rubber layer containing between 10-50% by mass of microcapsules.
JP’252 teaches in the two lines below the claims section the use of a rubber layer containing up to 25% by mass of the rubber layer including microcapsules.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have contained 10-50% by mass of microcapsules, in view of the teachings of JP’252, in order to provide a material with a balance of between functional performance and structural strength and for enhanced thermal and friction behavior.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of RU-180704 (RU’704).
Niwa, as modified, is silent with regard to the rubber porosity having the recited percentage.
RU’704 teaches in claim 1 the use of a rubber layer porosity being 16-20% which is within the recited range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have had a porosity in the range of 10%-85%, in view of the teachings of RU’704, in order to provide a material that is more easily compressible enabling the material to better convert mechanical energy into heat.
Claim(s) 14 and 15 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of JP-2019065104 (JP’104).
Niwa, as modified, is silent with regard to the closed cell rate of the rubber layer being 80-100% which is included in the recited range.
JP’104 teaches in claim 7 the closed cell rate of the rubber layer being 80%-100% which is included in the recited range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the rubber layer of Niwa et al., as modified, to have had a closed cell rate at least 50%, in view of the teachings of JP104, in order to provide a material that prevents unwanted fluids from penetrating the layer to help maintain material durability.
Claim(s) 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over unpatentable over US Patent 2004/0188190 to Niwa et al. in view of JP-2017115468 (JP’468) and Jobmann et al. as applied above, and further in view of JP-H09249872 (JP’872).
Niwa, as modified, is silent with regard to the diameter of the microcapsules in the rubber layer being in the recited range.
JP’872 teaches in claim 4 the diameter of microcapsules of a sealing composition being 20-100 micrometers which is included in the recited range.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to have modified the microcapsules of the rubber layer of Niwa et al., as modified, to have had a diameter between 1-100 micrometers, in view of the teachings of JP’872, in order to provide a microcapsule size that is in a size range that provides stable friction characteristics that result in better contact behavior between surfaces.
Response to Amendment
Applicant's request for reconsideration of the finality of the rejection of the last Office action is persuasive and, therefore, the finality of that action is withdrawn.
Response to Arguments
Applicant’s arguments, see the remarks on pages 2-3, filed 5/8/26, with respect to the rejection(s) of claim(s) with respect to the JP’894 reference have been fully considered and are persuasive. Therefore, the rejections have been withdrawn. However, upon further consideration, new ground(s) of rejection have been made in view of the Jobmann et al. reference.
Conclusion
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mmb
September 2, 2026
/MELODY M BURCH/Primary Examiner, Art Unit 3616
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