DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. 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
2. Applicants’ election of Group I (claims 1-3; “an underlayer material”) in the reply filed on 07/31/2026 is acknowledged. Because applicants did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
3. Claims 4-7 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/31/2026.
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.
4. Claims 1-3 are rejected under 35 U.S.C. 103 as being unpatentable over EP 2 631 276 (hereinafter referred to as “EP ‘276”) in view of English Translation of JP 01-0497251 (hereinafter referred to as “JP ‘725”).
As to Claims 1 and 2: EP ‘276 teaches a resin composition for a friction material used in brake pads and brake linings for automobiles (Paragraphs [0002] and [0009]), corresponding to the claimed friction member, wherein the composition comprises a plant-derived material, e.g., lignin-modified phenol resin (Paragraphs [0010]-[0015]). EP ‘276 also teaches that in addition to the friction material, the friction member, e.g. brake pad, comprises a pressure plate (Paragraph [0030]). EP ‘276 further teaches that the friction material used in the friction member comprises a fibrous base material (corresponding to the claimed fiber base material), a friction adjusting material (corresponding to the claimed friction modifier) and a binder (Paragraph [0024]).
However, EP ‘276 does not specify its composition as an underlayer material as required by the claims of the present application.
Nevertheless, JP ‘725 teaches the use of a composition as a lower layer material (corresponding to the claimed underlayer material) which carries out direct contact of a friction material suitable for brake pads of automobiles and also suppress the generation of noise at the time of braking without increasing its wear amount of the friction material (Pages 1-3).
Given the above teachings, it would have been obvious to one of ordinary skill in the art to use the composition of EP ‘276 as the lower layer material (underlayer material), as taught by JP ‘725, with a reasonable expectation of successfully carrying out direct contact of a friction material suitable for brake pads of automobiles and also suppressing the generation of noise at the time of braking without increasing its wear amount of the friction material.
As to Claim 3: EP ‘276 teaches using the plant-derived material, e.g., lignin modified phenol resin, in an amount of 2-8 % by weight for the purposes of preparing friction material having desired friction performance (Paragraphs [0021] and [0022]). The amount of the plant-derived material taught by EP ‘276 overlaps with that claimed, i.e., 5-15 mass%. Thus, it would have been obvious to one of ordinary skill in the art to employ an optimum or workable amount of the plant-derived resin, inclusive of those claimed, for the purposes of preparing friction material having desired friction performance as suggested by EP ‘276. See also MPEP section 2144.05 (The subject matter as a whole would have been obvious to one having ordinary skill in the art at the time the invention was made, since it has been held that choosing the over lapping portion, of the range taught in the prior art and the range claimed by the applicant, has been held to be a prima facie case of obviousness.).
Correspondence
5. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANNAH J PAK whose telephone number is (571)270-5456. The examiner can normally be reached 8-5 PM; M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Arrie Lanee Reuther, can be reached at (571)-270-7026. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANNAH J PAK/Primary Examiner, Art Unit 1764
1 Cited in the IDS submitted by applicants on 01/29/2024.
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