DETAILED ACTION
The Final Office Action mailed 4/15/26 has been withdrawn.
Drawings
As previously explained the drawings added in the amendments filed 1/28/26 and 6/15/26 are considered to be new matter. Therefore they will not be entered in the application. No drawings were filed with the application as originally filed. Therefore it was not possible for the examiner to tell what applicant's intended to claim by 'the friction surface', as originally claimed in claim 1. For instance original claim 1 claims:
A method of producing a braking element having at least one metallic main body 1 having at least one surface region for forming a friction surface, in which at least one layer of a metallic semifinished product is positioned at least partly on the surface region intended for forming of the friction surface and is subsequently cohesively bonded to the metallic main body by joining methods.
The examiner presumed from this claim language (absent of any drawings) that the 'friction surface' was the exterior surface of the metallic semifinished product' that comes into contact with the brake pads (i.e. a 'friction surface'). For a reference to the well known interpretation in the art for a 'friction surface' on a brake disc see Hampton U.S. 2009/0026025 identifying the friction surface at 18,20.
However as now indicated in figure 1 an exterior AL-Based alloy layer 7 (see claim 9) appears to be the aforementioned 'friction surface' [now identified as being at 2,3 in fig 1] and since this is the layer that would come into contact with the brake pads. While there appears to be antecedent basis in the specification, as originally filed, in para 0025 for element 7 (see U.S. Pub 2024/0084865") this adds to the confusion since original claim 1 appears to claim the layer of the metallic semi-finished product (now identified as segments 4-6 and 7 in figure 1) as the 'friction surface'.
Also there is now seen a relative distinction between the thicknesses of the relative components 1 and 4,5,6 and 7. This was not disclosed in the specification as originally filed. Further, applicants now imply that there are three segments 4,5,6 where presumably there could have been more or less, as at 8 in figure 3.
Also pursuant to 37 CFR 1.83 applicants have not shown two or more layers of the semi-finished production (claim 3) or that the metallic semifinished product comprises multiple layers having a same or different thickness (claim 4).
Lastly it is unclear what the structural relationship is between figures 1 and 3 and the layers at 8 to the layers 4,5,6.
Therefore the drawings remain objected to pursuant to 35 U.S.C. 132 for introducing new matter into the application and must be removed.
Specification
The amendments filed 1/28/26 and 6/15/26 are objected to under 35 U.S.C. 132(a) because they introduce new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the added figures 1-3 and all references to these figures in the specification must be removed.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
Claims 1-21 rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claims 1-21 it remains unclear from the specification (and claims) what applicants consider to be the 'friction surface'. For instance applicants state in the amendment to the specification filed 1/28/26 (see first para of page 2) by the applying of a layer of a metallic semifinished product 4,5,6 on the metallic main body 1, wherein the friction surface is formed by at least one layer of the metallic semifinished product 4, 5. 6 and this has been cohesively bonded to the metallic main body 1 by a joining method. The improved antiwear and anticorrosion properties are achieved at least in the region of the friction surfaces of the braking element... "
Contrarily applicants also state in para 0025 of the corresponding U.S. Publication 2024/0084685 that an Al-based alloy (7) is positioned atop the metallic semi finished product layer 4,5,6. As now stated in the amendment to the specification at page 3: " The arrangement of individual segments 4, 5, 6 makes it possible, for example, to create a surface- structured friction surface by, for example, spacing apart the segments 4, 5, 6 to form gaps, into which an Al-based alloy 7 can subsequently be introduced in an advantageous manner. Such surface structures may, for example, be gap-like depressions that extend up to the metallic main body 1, which lead to improved discharge of heat and abraded material from the friction surface 2,3 and hence improve the performance of the braking element.. "
In light of the drawings it would appear the 'friction surface' is provided by the outermost part of layer 7, not the layer of the metallic semifinished product 4,5,6, as claimed. Note the aforementioned reference to Hamilton U.S. 2009/0026025 provides the most commonly understood meaning in the art of a 'friction surface' at 18,20 on a layered brake rotor.
The amendment filed 6/15/26 to the specification now adds to the confusion by stating/indicating that the layer of the metallic semifinished product 4,5,6 now includes layer 7.
However as claimed in claim 9 element 7 would appear to be the ‘Al-based alloy’ positioned atop the at least one layer of the metallic semifinished product comprising two or more segments 4,5,6.
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 10 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.
Claim 10 the limitation of “or modifications thereof” is unclear. What exactly are the metes and bounds of this limitation?
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.
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(s) 1,2,10-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rau et al. U.S. 2005/0183909 in view of QI et al. U.S. 2021/0207670 A1.
Regarding claims 1,12 subject to the drawing and 112 rejections above (and as best understood) Rau shows in figures 1-5:
A method of producing a braking element having at least one metallic main body 124 and having at least one surface region 126 for forming a friction surface and positioning at least one layer of a metallic ‘semifinished product’ 140 (as broadly claimed) on the at least one surface region 126 for forming the friction surface and bonding the at least one layer of the metallic semifinished product 140 to the metallic main body 124 by joining methods (i.e. welding – para 0054).
Lacking in Rau is the specific statement that elements 140 are ‘semi-finished’ or ‘prefabricated’.
However as stated above, and as broadly claimed, Rau is believed to meet the claimed limitation since the plates 140 are described as ‘metal alloy bonding layers’ (para 0030) and are obviously prefabricated or premanufactured before being joined to the brake rotor.
Nevertheless the reference to QI shows a similar type of layered brake rotor and indicates that the wear resistant layers 2 are ‘preforms’. Also, corresponding publication WO 2019090444 A1 to QI describes the wear resistant layers as ‘prefabricated’.
One having ordinary skill in the art before the effective filing date of the invention would realize that the metallic semi-finished product 140 of Rau is a ‘semifinished product’, or prefabricated, as broadly claimed since they must be pre made before final assembly and finishing into the brake rotor final assembly as shown in figures 3 and 5.
Regarding claim 2, as explained above, and as readily apparent from the drawings, these limitations are met.
Regarding claim 10 as discussed above these limitations are met.
Regarding claim 11 the final mechanical processing of the friction surface, as broadly claimed, would involve the steps of applying the layers 134.
Regarding claim 13 see at least paras 0011-0013 of Rau.
Claim(s) 3-5,16,17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rau/QI as applied to claim 1 above, and further in view of Carminati U.S. 2024/0044384 A1.
Regarding claims 3-5, as broadly claimed, it is believed that Rau meets the claimed limitations of ‘two or more, or multiple layers’ of the metallic semifinished product at 138.
Nevertheless the reference to Carminati indicates in figures 7-9 that multiple layers of a metallic layer 30,300 may be used in certain applications.
It would have been obvious to have used multiple layers of the metallic semi-finished product 140 in Rau in specific vehicle applications where extra abrasion/corrosion resistance is necessary, or simply to save on expenses in place of the layers 134.
Regarding claims 16,17 Rau, as modified above, meets the claimed requirements.
Claim(s) 6-9,18,19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rau/QI as applied to claim 1 above, and further in view of Bean et al. 12,270,443.
Regarding claim 6 Rau, as modified above, lacks specifically showing the at least one layer consisting of segments.
The reference to Bean shows a rotor with similar construction to that of Rau but shows in figures 2 and 3 the layer 204 can alternative be formed in segments.
It would have been obvious to have formed the layer 134 in Rau from segments, as taught by Bean in fig 3, which may make assembly or mass production of component parts easier.
Regarding claims 7-9 as discussed in Bean in col 4 lines 1-23 (and as best understood) these limitations are capable of being met.
Regarding claims 18,19 these limitations are met by Rau, as modified.
Claim(s) 14,15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rau/QI as applied to claim 1 above, and further in view of Rettig 11,725,704.
Regarding claims 14,15 Rau, as modified, lacks stating what the thickness of the ‘friction layer’ is.
However this would likely depend upon the specific application and/or vehicle in which the brake rotor of Rau is intended to be used.
Retting discloses in col 3 that With high-speed laser deposition welding, layers with a thickness of 100 µm to 300 µm can be produced with a single coat or, alternatively, multiple coats, and it is furthermore even possible to achieve standard deviations of less than 20 µm.
Therefore it would have been obvious to have made the layers 140 and/or 134 in the claimed thickness range for the reason above.
Regarding claim 15 it would have been obvious to have used a 'joining zone' simply as a bonding zone of some type for adhesion of the coatings/layers to the surface 134 of Rau.
Claim(s) 20,21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Rau/QI as applied to claim 1 above, and further in view of DE 102019122613A1.
Regarding claims 20,21 it would have been obvious to have added a wear recognition feature(s) to the wear surface 134 of Rau, as modified, for just that reason as taught by DE '613 via the inserts at 30.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-21 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.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER P SCHWARTZ whose telephone number is (571)272-7123. The examiner can normally be reached 10:00 A.M.-7:00P.M..
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/CHRISTOPHER P SCHWARTZ/Primary Examiner, Art Unit 3616
6/19/26
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