DETAILED ACTION
The Request for Reconsideration filed 03/23/26 has been entered. Claims 1-27 are still pending, with claims 1-3 and 16-21 being elected. Despite Applicant’s arguments, one of the two parallel 102 rejections is maintained as detailed below. 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 § 102
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.
Murphy
Claim(s) 1-3 and 16-21 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Murphy et al. (U.S. Patent Pub. No. 2013/0240306) (cited by Applicant). Murphy is directed to brake shims. See Abstract.
Claim 1: Murphy discloses a layered product [Fig. 2] comprising a base sheet (20) having one surface (22) and another, opposite surface (24), a first layer (36) on the one surface of the base sheet and a second layer (36) on the other, opposite surface of the base sheet, the first layer being an elastomer (40) [see para. 0015], a thickness of which being obtained through calendering before being applied to the one surface of the base sheet, and the second layer being an elastomer (40) [see para. 0015], a thickness of which being obtained by having been applied to the other surface of the base sheet, and having been applied as a liquid material to one of the following surfaces: as a liquid material onto the other surface of the base sheet [see para. 0032], or as a liquid material onto a surface of a liner, and the liner with a solidified coating of second material having bonded to the other surface of the base sheet. See Fig. 2.
Claim 2: Murphy discloses that an outer surface, opposite to a surface facing the base sheet, of at least one of the first layer and the second layer is provided with an adhesive constituting an adhesive layer. See para. 0030, 0045
Claim 3: Murphy discloses that the adhesive is selected among the following adhesives: an acrylic adhesive, a silicone adhesive, a phenolic adhesive. See para. 0014.
Claim 16: Murphy discloses a brake shim (10) [see Figs. 1, 2] for a disc brake, the brake shim constituting a layered product according to claim 1. See claim 1 above.
Claim 17: Murphy discloses that an outer surface of the first layer, said outer surface of the first layer facing away from the base sheet, has a selected surface morphology, and where an outer surface of the second layer, said outer surface of the second layer facing away from the base sheet, has a selected second surface morphology. See Fig. 2; see also para. 0014-15.
Claim 18: Murphy discloses that the selected surface morphology of the outer surface of the first layer is manufactured by a carrier sheet having a relief of the selected first morphology, said carrier sheet initially having been applied to an outer surface of the first layer and subsequently having been removed from the first layer when having formed on the base sheet, and where the selected surface morphology of the outer surface of the second layer is manufactured by an engraving roller having a relief surface of the selected second morphology, said engraving roller having been forced against the second layer after the second layer has formed on the base sheet. See para. 0012-15, 0033-36, 0042-43, 0047-48; Figs. 2-3.
Claim 19: Murphy discloses that an outer surface of the first layer, said outer surface of the first layer facing away from the base sheet, has a selected first surface morphology, and where an outer surface of the second layer, said outer surface of the second layer facing away from the base sheet, has a selected second surface morphology, where the selected surface morphology of the outer surface of the first layer is manufactured by a carrier sheet having a relief surface of the selected first morphology, said carrier sheet initially having been applied to an outer surface of the first layer, and said carrier sheet subsequently having been removed from the first layer when the first layer has formed on the base sheet, and where the selected surface morphology of the outer surface of the second layer is manufactured by a liner having a relief surface of the selected second morphology, said liner initially having been coated with a liquid second material, which thereafter has solidified, and said liner subsequently having been removed from the second layer when the second layer has formed on the base sheet. See para. 0012-15, 0033-36, 0042-43, 0047-48; Figs. 2-3.
Claim 20: Murphy discloses that an outer surface of the first layer, said outer surface of the first layer facing away from the base sheet, has a selected first surface morphology, and where an outer surface of the second layer, said outer surface of the second layer facing away from the base sheet, has a selected second surface morphology, where the selected surface morphology of the outer surface of the first layer is manufactured by an engraving roller having a relief surface of the selected first morphology, said engraving roller having been forced against the first layer after the first layer has formed on the base sheet, and where the selected surface morphology of the outer surface of the second layer is manufactured by an engraving roller having a relief surface of the selected second morphology, said engraving roller having been forced against the second layer after the second layer has formed on the base sheet. See para. 0012-15, 0033-36, 0042-43, 0047-48; Figs. 2-3.
Claim 21: Murphy discloses that an outer surface of the first layer, said outer surface of the first layer facing away from the base sheet, has a selected first surface morphology, and where an outer surface of the second layer, said outer surface of the second layer facing away from the base sheet, has a selected second surface morphology, where the selected surface morphology of the outer surface of the first layer is manufactured by an engraving roller having a relief surface of the selected first morphology, said engraving roller having been forced against the first layer after the first layer has formed on the base sheet, and where the selected surface morphology of the outer surface of the second layer is manufactured by a liner having a relief surface of the selected second morphology, said liner initially having been coated with a liquid second material, which thereafter has solidified, and said liner subsequently having been removed from the second layer when the second layer has formed on the base sheet. See para. 0012-15, 0033-36, 0042-43, 0047-48; Figs. 2-3.
Response to Arguments
Applicant’s arguments with respect to the 102-rejection due to Afaneh have been fully considered and are persuasive. Hence, that rejection has been withdrawn.
However, Applicant's arguments with respect to the above 102 rejection due to Murphy have been fully considered but are not persuasive. First, Applicant spends significant time explaining how Murphy’s polymer composition 48 is not a “first layer” or “second layer” as defined by the claims. See Remarks, pages 5-7. In response, the rejection relies on Murphy’s first film 36 for the “first layer” and second layer,” composed of viscoelastic material 40. See para. 0015 “first film 36 formed from the viscoelastic material 40”). Applicant mistakenly focuses on polymer composition 48, which is the material for second film 38. As seen in Murphy Figure 2, it is the first film 36 (not second film 38) that is disposed on both opposing surfaces of metal substrate 20. Furthermore, viscoelastic material 40 is elastomeric [see para. 0019 (rubbers)] and may be applied in liquid form [see para. 0032]. Hence, this viscoelastic layer 36 meets the limitations of the claimed “first layer” and “second layer.” Second, Applicant’s argument about “calendaring” is a method of making the claimed device, not an actual structural limitation of this apparatus claim, hence need not be explicitly discussed for a proper anticipation rejection here.
For the foregoing reasons, all pending claims remain rejected as detailed above.
Please also consider/review the new references cited in the attached form PTO-892, which may also be used in possible 102 rejections of the current claims. Substantive narrowing amendments are strongly encouraged to move prosecution forward.
Conclusion
THIS ACTION IS MADE FINAL. 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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VISHAL SAHNI
Primary Examiner
Art Unit 3657
/VISHAL R SAHNI/Primary Examiner, Art Unit 3616 April 6, 2026
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