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 .
Response to Arguments
Applicant’s arguments filed 20th April 2026 with respect to claims 1-3, 5-10, and 13-14 contends that Bennett (US 3,893,549) does not teach or suggest the amended claim 1 arrangement. Although applicant’s argument regarding Bennett is persuasive, the rejection was made in combination with Asano (WO 2008/035802) and does not rely upon the “electrical sensing system” of Bennett, as written in the Non-Final Rejection filed 21st January 2026. In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). New ground of rejection is made as appears below.
Applicant’s arguments filed 20th April 2026 with respect to claims 1-3, 5-10, and 13-14 contends that Asano (WO 2008/035802) teaches “a separate covering 31 formed on the spring side of the second piston 27” and thus does not teach the “piston itself serving as the claimed indicator” (see Applicant’s arguments filed 20th April 2026). This argument is not persuasive. MPEP § 2111 discusses proper claim interpretation under Broadest Reasonable Interpretation. Under broadest reasonable interpretation, the words of a claim must be given their plain meaning unless such meaning is inconsistent with the specification, and it is improper to import claim limitations from the specification into the claim. Under BRI interpretation the covering 31 formed on the spring side of second piston 27, is a part of the piston 27. Therefore, Asano teaches a piston that moves and serves as an indicator of the parking brake.
Applicant’s arguments filed 20th April 2026 with respect to claims 1-3, 5-10, and 13-14 contends that Asano (WO 2008/035802) does not teach “the claimed flush/protruding relationship with a caliper cover plate opening as now required”. This argument is persuasive but a new ground of rejection, as necessitated by amendment, is made as appears below.
Applicant’s arguments filed 20th April 2026 with respect to claims 1-3, 5-10, and 13-14 contends that Asano (WO 2008/035802) teaches “Asano’s visible position is influenced by normal-brake actuation” and that this is the “opposite of amended claim 1’s requirement…. actuation” (see Applicant Arguments). This argument is not persuasive. MPEP § 2111 discusses proper claim interpretation under Broadest Reasonable Interpretation. Under broadest reasonable interpretation, the words of a claim must be given their plain meaning unless such meaning is inconsistent with the specification, and it is improper to import claim limitations from the specification into the claim. Under BRI interpretation, even if Asano teaches “visible position is influenced by normal-brake actuation” amended Claim 1 does not claim “the opposite” (see Applicant Arguments). Amended Claim 1 merely claims “wherein the parking brake indicator is a parking brake piston wherein irrespective of actuation of the service brake…. away from the service brake arrangement” (see Amended Claims filed 20th April 2026). There is no mention or further definition of “normal-brake actuation” or what would be classified as “the opposite” in amended Claim 1 (see Applicant Arguments, Amended Claims). It should be noted Asano does teach the parking brake piston functioning irrespective of the actuation of the service brake. In Fig. 2 the service brake assembly 11 is seen actuated, while the parking brake assembly 12 stays at rest, the same position as in Fig. 1 (see WO 2008035802 A1 [Asano]; Fig. 1, Fig. 2), as amended Claim 1 is a structural claim this is enough disclosure to teach the parking brake assembly moves “irrespective of the actuation of the service brake” in at least in one instance of Asano (see Amended Claims). Additionally, In Fig. 3 the service brake assembly 11 and parking brake assembly 12 are seen actuated, the projection (or retraction thereof) of the piston 27 is respective of the parking brake assembly 12, not the actuation of the service brake assembly. It should be noted, under the amended Claim 1, Asano teaches the parking brake piston is “irrespective of the actuation of the service brake” even if the parking brake and service brake are actuated at the same time because under BRI interpretation the parking brake piston 27 is respective of the parking brake assembly 12 actuation, not the service brake actuation (see Amended Claims, WO 2008035802 A1 [Asano]; Fig. 1, Fig. 2). New grounds for rejections are made as appears below.
Applicant’s arguments filed 20th April 2026 with respect to claims 1-3, 5-10, and 13-14 contends that the Office Action “does not provide the articulated reason required by KSR for modifying Bennett’s electrical indicator arrangement…”. This argument is not persuasive because examiner does not rely upon Bennett’s electrical indicator arrangement for rejection. New grounds for rejection are made as appears below.
Applicant’s arguments filed 20th April 2026 with respect to claims 4, 11, and 12 contends that “Angerfors does not cure the defect”, the defect being discussed above. This argument is not persuasive because examiner does not rely upon Bennetts “switch-and-lamp system” for rejection (see Non-Final Rejection). Applicant’s arguments also contend Angerfors “does not disclose the parking brake piston… by amended claim 11”. This argument is persuasive, but new grounds for rejection are made as appears below.
Applicant’s arguments filed 20th April 2026 with respect to claims 5-18 contends that they “depend from claim 1” and are “patentable at least for the reasons provided above”. This argument is persuasive because at least one argument regarding Claim 1 is persuasive (see Paragraph 4 above), but new grounds for rejection are made as appears below.
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 1-2, 6-14 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US 3893549 A) in view of Asano (WO 2008035802 A1) and further in view of Angerfors (US 5943940 A).
Regarding Claim 1, Bennett discloses a hydraulic disc brake for a vehicle, the disc brake
comprising: a service brake arrangement (50) configured to actuate under hydraulic pressure to urge a
brake pad (44) towards a rotor (30) to apply the disc brake during a braking operation; a parking brake
arrangement (66) configured to urge the brake pad (44) towards the rotor (30) to apply the disc brake
during a parking operation, wherein the parking brake arrangement (66) has an applied condition and a released condition and a caliper housing (34) for locating the service brake arrangement (50) and the parking brake arrangement (66), the caliper housing (34) including a cover plate (60), the cover plate (60) defining an opening (62) (see Fig. 2, abstract).
Bennett does not disclose a parking brake indicator configured to indicate whether the parking brake arrangement is in the applied condition or the released condition, wherein the parking brake indicator is a parking brake piston wherein irrespective of the actuation of the service brake, the parking brake piston is substantially flush with the cover plate when it is in the applied condition and in the released condition the parking brake piston projects from the opening in a direction facing away from the service brake arrangement.
Asano teaches a parking brake indicator (31) configured to indicate whether the parking brake arrangement (12) is in the applied condition or the released condition (see 56: 14-24), wherein the parking brake indicator (31) is a parking brake piston (27) wherein irrespective of the actuation of the service brake (11), the parking brake piston (27) is retracted with respect to the cover plate when it is in the applied condition and in the released condition the parking brake piston projects (27) from the opening in a direction facing away from the service brake arrangement (11) (see Fig. 1, Fig. 2, 55: 16-25, 56: 1-24).
It would have been obvious to combine the parking brake indicator of Asano with the hydraulic disk brake for a vehicle of Bennett in order to “easily recognize visually an operation state of the spring brake from outside the cylinder main body”, which improves safety by providing a reliable method for vehicle user to identify if the brake is actuated (see WO 2008035802 A1 [Asano]; 56:14-24). It should be noted this combination still would have been obvious when regarding the existing electrical indicator of Bennett because the indicator of Asano does not require an electrical circuit and is present in a separate part of the vehicle system (the two features do not conflict), the Indicator of Asano would provide safety redundancies that decrease risk associated with indicator or electrical failures and provide a parking brake system indicator in a different part of the vehicle such that the parking brake actuation state can be identified more easily.
Bennett modified by Asano does not explicitly teach wherein the parking brake piston is substantially flush with the cover plate when it is in the applied condition.
Angerfors teaches wherein in the applied condition the parking brake indicator (12) is substantially flush (see Fig. 1).
It would have been obvious to combine the teaching of a parking brake indicator being substantially flush of Angerfors with the hydraulic disc brake for a vehicle of Bennett modified by Asano because, in part, Asano teaches wherein the distance the parking brake piston projects when the parking brake is not actuated is X2 and the distance the parking brake piston projects when the parling brake is actuated is X1, and wherein X2 > X1 such that it is “possible to easily recognize visually an operation state” (see WO 2008035802 A1 [Asano]; 55:16-25, 56:1-24) From this teaching one of ordinary skill in the art at the time of invention would recognize that increasing the difference between X2 and X1 would make it easier to recognize the braking state and as taught in Angerfors one way of increasing this difference is by reducing X1 to Zero, essentially making the parking brake piston substantially flush in the applied condition. Additionally, this combination would have been obvious to make in order to reduce the amount of size the brake caliper takes up within a vehicle system because when X1 is smaller X2 does not have to be as large to make it “possible to easily recognize visually an operation state” (see WO 2008035802 A1 [Asano]; 55:16-25, 56:1-24). Thus, when the parking brake piston does not project as far out (X2 is smaller) the system has more available vehicle space.
Regarding Claim 2, Bennett modified by Asano and Angerfors teach wherein the parking brake indicator (31) (see WO 2008035802 A1 [Asano]; Fig. 1) is located on a rear side (60) of the caliper housing (34), opposite to a front side of the caliper housing that faces the rotor (30) (see US 3893549 A [Bennett]; Fig. 2).
Regarding Claim 6, Bennett discloses wherein the service brake arrangement (50) comprises a service piston (50) having a central longitudinal axis and the parking brake piston (66) is co-axial with the service piston (50) (see Fig. 2).
Regarding Claim 7, Bennett discloses the parking brake arrangement (66) further comprises a biasing arrangement (70) configured to bias the parking brake piston (66) in a direction of the brake pad (44) when the parking brake arrangement (66) is in the applied condition (see Fig. 2)
Regarding Claim 8, Bennett discloses the parking brake arrangement is configured to be moved to the released condition by hydraulic pressure (see Fig. 2, Abstract).
Regarding Claim 9, Bennett discloses wherein the caliper housing (34) further comprises a bore (48), and the bore (48) further comprises a hydraulic fluid chamber (68), wherein in the applied condition of the parking brake arrangement the hydraulic fluid chamber (68) is substantially empty and in the released condition of the parking brake arrangement (66) then hydraulic fluid chamber (68) is substantially filled with hydraulic fluid (see Fig. 2, Abstract).
Regarding Claim 10, Bennett discloses the parking brake piston (66) comprises a circumferential collar portion (see Fig. 2), wherein a radial rotor-facing surface of the circumferential collar portion partially defines the hydraulic fluid chamber (68) and is configured to be acted on by the hydraulic fluid and an opposite radial surface of the circumferential collar portion faces away from the rotor (30) and is configured to be in contact with the biasing arrangement (70) (see Fig. 2).
Regarding Claim 11, Bennett discloses wherein the caliper housing (34) defines a bore (48), wherein the bore (48) is substantially aligned with the opening (62) defined by the cover plate (60) (see Fig. 2).
Regarding Claim 12, Bennett modified by Asano and Angerfors teach wherein the cover plate (60) has a substantially planar surface portion (see US 3893549 A [Bennett]; Fig. 2) and the bore passes through this portion (see WO 2008035802 A1 [Asano]; Fig. 1).
Regarding Claim 13, Bennett discloses wherein the parking brake piston (66) is at least partially surrounded by the biasing arrangement (70) (see Fig. 2).
Regarding Claim 14, Bennett discloses wherein the parking brake piston (66) comprises a collar portion engaged by the biasing arrangement (70) (see Fig. 2).
Claims 15-17 are rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US 3893549 A) modified by Asano (WO 2008035802 A1) and Angerfors (US 5943940 A) as applied to Claim 1 and Claim 13 above, further in view of Lee (US 4192405 A).
Regarding Claim 15, Bennett modified by Asano and Angerfors teaches the hydraulic disc brake of claim 13.
Bennett modified by Asano and Angerfors does not explicitly teach wherein the biasing arrangement comprises a housing having a plurality of biasing elements.
Lee teaches the biasing arrangement (250) comprises a housing (234) having a plurality of biasing elements (250) (see Fig. 4).
It would have been obvious to combine the biasing arrangement of Lee with the hydraulic brake of Bennett modified by Asano and Angerfors in order to control the spring constant of the biasing arrangement without replacing the whole biasing arrangement.
Regarding Claim 16, Lee teaches the biasing elements are Belville washers (see 10: 51-64).
Regarding Claim 17, Lee teaches the parking brake piston (212) has a shaft portion and the biasing elements are located on the shaft portion and at least one of the biasing elements engages a collar portion of the parking brake piston (212) (see Fig. 4).
Claims 18 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US 3893549 A) modified by Asano (WO 2008035802 A1) and Angerfors (US 5943940 A) as applied to Claim 1 and Claim 7 above, further in view of Inagaki (US 20070289823 A1).
Regarding Claim 18, Bennett modified by Asano and Angerfors teaches the hydraulic disc brake of Claim 7.
Bennett modified by Asano and Angerfors does not teach wherein the parking brake arrangement comprises an adjustment mechanism to account for wear of the rotor and the brake pad, wherein the adjustment mechanism comprises an adjuster nut that is configured to contact the service piston, the adjuster nut being extendable relative to an adjuster screw, wherein the parking brake piston is configured to, during the parking operation, engage the adjuster screw when released by the parking brake arrangement, in order to transfer force from the biasing arrangement to the adjuster nut, which transfers force to the service piston to apply the disc brake.
Inagaki teaches an adjustment mechanism (82) to account for wear of the rotor and the brake pad, wherein the adjustment mechanism (82) comprises an adjuster nut (83) that is configured to contact the service piston (78), the adjuster nut (83) being extendable relative to an adjuster screw (84), wherein the parking brake piston (45) is configured to, during the parking operation, engage the adjuster screw (84) when released by the parking brake arrangement, in order to transfer force from the biasing arrangement (30) to the adjuster nut (83), which transfers force to the service piston (78) to apply the disc brake (72) (see Fig. 2).
It would have been obvious to combine the adjustment mechanism located between a parking brake piston and service brake piston of Inagaki with the hydraulic disc brake of Bennett modified by Asano and Angerfors in order to compensate for wear of the friction pads on the disc brake, improving system reliability and safety (see US 20070289823 A1 [Inagaki]; [0060]).
Claims 19 is rejected under 35 U.S.C. 103 as being unpatentable over Bennett (US 3893549 A) in view of Asano (WO 2008035802 A1), in further in view of Angerfors (US 5943940 A), and in further view of Inagaki (US 20070289823 A1).
Regarding Claim 19, Bennett discloses a hydraulic disc brake for a vehicle, the disc brake
comprising: a service brake arrangement (50) configured to actuate under hydraulic pressure to urge a
brake pad (44) towards a rotor (30) to apply the disc brake during a braking operation; a parking brake
arrangement (66) configured to urge the brake pad (44) towards the rotor (30) to apply the disc brake
during a parking operation, wherein the parking brake arrangement (66) has an applied condition and a released condition; and a caliper housing (34) for locating the service brake arrangement (50) and the parking brake arrangement (66), the caliper housing (34) including a cover plate (60), the cover plate (60) defining an opening (62) (see Fig. 2, abstract); wherein the parking brake arrangement (66) further comprises a biasing arrangement (70) configured to bias the parking brake piston (66) in a direction of the brake pad (44) when the parking brake arrangement (66) is in the applied condition; wherein the parking brake arrangement (66) is configured to be moved to the released condition by hydraulic pressure (see Fig. 2, abstract).
Bennett does not disclose a parking brake indicator configured to indicate whether the parking brake arrangement is in the applied condition or the released condition, wherein the parking brake indicator is a parking brake piston wherein irrespective of the actuation of the service brake, the parking brake piston is substantially flush with the cover plate when it is in the applied condition and in the released condition the parking brake piston projects from the opening and wherein the parking brake arrangement comprises an adjustment mechanism to account for wear of the rotor and the brake pad, wherein the adjustment mechanism comprises an adjuster nut that is configured to contact a service piston of the service brake arrangement, the adjuster nut being extendable relative to an adjuster screw, wherein the parking brake piston is configured to, during the parking operation, engage the adjuster screw when released by the parking brake arrangement, in order to transfer force from the biasing arrangement to the adjuster nut, which transfers force to the service piston to apply the disc brake.
Asano teaches a parking brake indicator (31) configured to indicate whether the parking brake arrangement (12) is in the applied condition or the released condition (see 56: 14-24), wherein the parking brake indicator (31) is a parking brake piston (27) wherein irrespective of the actuation of the service brake (11), the parking brake piston (27) is retracted with respect to the cover plate when it is in the applied condition and in the released condition the parking brake piston projects (27) from the opening in a direction facing away from the service brake arrangement (11) (see Fig. 1, Fig. 2, 55: 16-25, 56: 1-24).
It would have been obvious to combine the parking brake indicator of Asano with the hydraulic disk brake for a vehicle of Bennett in order to “easily recognize visually an operation state of the spring brake from outside the cylinder main body”, which improves safety by providing a reliable method for vehicle user to identify if the brake is actuated (see WO 2008035802 A1 [Asano]; 56:14-24). It should be noted this combination still would have been obvious when regarding the existing electrical indicator of Bennett because the indicator of Asano does not require an electrical circuit and is present in a separate part of the vehicle system (the two features do not conflict), the Indicator of Asano would provide safety redundancies that decrease risk associated with indicator or electrical failures and provide a parking brake system indicator in a different part of the vehicle such that the parking brake actuation state can be identified more easily.
Bennett modified by Asano does not teach wherein the parking brake piston is substantially flush with the cover plate when it is in the applied condition and wherein the parking brake arrangement comprises an adjustment mechanism to account for wear of the rotor and the brake pad, wherein the adjustment mechanism comprises an adjuster nut that is configured to contact a service piston of the service brake arrangement, the adjuster nut being extendable relative to an adjuster screw, wherein the parking brake piston is configured to, during the parking operation, engage the adjuster screw when released by the parking brake arrangement, in order to transfer force from the biasing arrangement to the adjuster nut, which transfers force to the service piston to apply the disc brake.
Angerfors teaches wherein in the applied condition the parking brake indicator (12) is substantially flush (see Fig. 1).
It would have been obvious to combine the teaching of a parking brake indicator being substantially flush of Angerfors with the hydraulic disc brake for a vehicle of Bennett modified by Asano because, in part, Asano teaches wherein the distance the parking brake piston projects when the parking brake is not actuated is X2 and the distance the parking brake piston projects when the parling brake is actuated is X1, and wherein X2 > X1 such that it is “possible to easily recognize visually an operation state” (see WO 2008035802 A1 [Asano]; 55:16-25, 56:1-24) From this teaching one of ordinary skill in the art at the time of invention would recognize that increasing the difference between X2 and X1 would make it easier to recognize the braking state and as taught in Angerfors one way of increasing this difference is by reducing X1 to Zero, essentially making the parking brake piston substantially flush in the applied condition. Additionally, this combination would have been obvious to make in order to reduce the amount of size the brake caliper takes up within a vehicle system because when X1 is smaller X2 does not have to be as large to make it “possible to easily recognize visually an operation state” (see WO 2008035802 A1 [Asano]; 55:16-25, 56:1-24). Thus, when the parking brake piston does not project as far out (X2 is smaller) the system has more available vehicle space.
Bennett modified by Asano and Angerfors does not teach wherein the parking brake arrangement comprises an adjustment mechanism to account for wear of the rotor and the brake pad, wherein the adjustment mechanism comprises an adjuster nut that is configured to contact the service piston, the adjuster nut being extendable relative to an adjuster screw, wherein the parking brake piston is configured to, during the parking operation, engage the adjuster screw when released by the parking brake arrangement, in order to transfer force from the biasing arrangement to the adjuster nut, which transfers force to the service piston to apply the disc brake.
Inagaki teaches an adjustment mechanism (82) to account for wear of the rotor and the brake pad, wherein the adjustment mechanism (82) comprises an adjuster nut (83) that is configured to contact the service piston (78), the adjuster nut (83) being extendable relative to an adjuster screw (84), wherein the parking brake piston (45) is configured to, during the parking operation, engage the adjuster screw (84) when released by the parking brake arrangement, in order to transfer force from the biasing arrangement (30) to the adjuster nut (83), which transfers force to the service piston (78) to apply the disc brake (72) (see Fig. 2).
It would have been obvious to combine the adjustment mechanism located between a parking brake piston and service brake piston of Inagaki with the hydraulic disc brake of Bennett modified by Asano and Angerfors in order to compensate for wear of the friction pads on the disc brake, improving system reliability and safety (see US 20070289823 A1 [Inagaki]; [0060]). It should be noted although four references are used in rejection of Claim 19 the combination is still obvious in part because Angerfors is a small structural modification and Inagaki teaches an adjustment mechanism as well known and common in the art.
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.
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/S.W.I./Examiner, Art Unit 3616
/Robert A. Siconolfi/Supervisory Patent Examiner, Art Unit 3616
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