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 § 102
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 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.
Claim(s) 1-6, 9 and 10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by JP 3094200 B2.
Re-claim 1, JP ‘200 discloses in figure 1 a shim, comprising: a pair of legs (such as 12a and 12e) disposed upon and in contact with a component 2 of a heavy-duty vehicle disc brake system (see figure 2, the brake can be attached to any type of vehicle as desired); a transition (i.e. the turn or corner portion) extends between and integrally formed with the pair of legs; at least one tab (such as elements 12h and 12d) are connected to and extending away from the plane of one of the pair of legs; the at least one tab engages and is semi-permanently attached to the component. Hooks 12h will engage the component in a manner that prevents removal without causing damage or scratches upon the component surface 2f.
Re-claims 2 and 3, the semi-permanent attachment of the at least one tab to the component prevents tampering and removal of the shim except by a deliberate, destructive, mechanical process; thereby creating a physical hallmark (i.e. damage). As noted above, removal requires damage to the tab, or will cause damage to the component surface 2f.
Re-claim 4, the pair of legs further comprising a transverse width corresponding to a transverse dimension of the component of the heavy-duty vehicle disc brake system.
Re-claim 5, the at least one tab further comprising an opening 12f for receiving a fastener 8; the fastener semi-permanently attaches the at least one tab to the component 2 of the heavy-duty vehicle disc brake system.
Re-claim 6, the fastener is a screw, or bolt.
Re-claim 9, the component 2 is a brake carrier.
Re-claim 10, the shim supports a portion of a brake pad, and reduces fretting and wear of the component of the brake system, see figure 2.
Claim(s) 1-4 and 7-10 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by US 5,901,815 to Kobayashi et al.
Re-claim 1, Kobayashi et al. disclose a shim, comprising: a pair of legs (such as 46a and 46c, see figures 10-11) disposed upon and in contact with a component 12 of a heavy-duty vehicle disc brake system; a transition (i.e. the turn or corner portion) extends between and integrally formed with the pair of legs; at least one tab (such as 60) is connected to and extends away from the plane of one of the pair of legs; the at least one tab engages and is semi-permanently attached to the component. The tab 60 engages recess 62 and step 64 of the component in a manner that prevents removal without causing damage.
Re-claims 2 and 3, the semi-permanent attachment of the at least one tab to the component prevents tampering and removal of the shim except by a deliberate, destructive, mechanical process; thereby creating a physical hallmark (i.e. damage). As noted above, removal requires damage to the tab, or damage to the component.
Re-claim 4, the pair of legs further comprising a transverse width corresponding to a transverse dimension of the component of the heavy-duty vehicle disc brake system.
Re-claim 7, the transition further comprising a radius curvature corresponding to a shape of one of the component of the heavy-duty vehicle disc brake system and a brake pad, see figures 10 and 11, the curvature aligns with both a brake pad protrusion 32 and an internal surface of guide groove 12d.
Re-claim 8, each one of the pair of legs extends perpendicularly away from the other, see figures 10 and 11.
Re-claim 9, the component 12 is a brake carrier.
Re-claim 10, the shim supports a portion of a brake pad, and reduces fretting and wear of the component of the brake system.
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.
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) 7 and 8 is/are rejected under 35 U.S.C. 103 as being unpatentable over JP 3094200 B2.
Re-claim 7, JP ‘200 fails to specifically show the transition having a radius curvature corresponding to a shape of the component, but rather show in figure 1 a transition having a 90 degree angle. JP ‘200 does show in figure 4 a transition between legs having a radius curvature that would correspond to the component, or brake carrier. It is further noted that forming the transition with a curved surface would have reduced the formation of stress points at the transition. As such it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have provided the transition between the legs in the shim of JP ‘200 with a radius curvature to correspond to the brake carrier surface as necessary, and as suggested by the embodiment of figure 4, this would have placed the shim against the brake carrier in a flush manner and would have reduced stress at the transition.
Re-claim 8, the legs 12a and 12e are perpendicular to each other.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Miller, Sundheim, Sinelnikow, Gaye and Shimamura each teach a shim mechanically engaged with a brake component, specifically a brake carrier.
Any inquiries concerning this communication or earlier communications from the examiner should be directed to Thomas Williams whose telephone number is 571-272-7128. The examiner can normally be reached on Tuesday-Friday from 6:00 AM to 4:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Siconolfi, can be reached at 571-272-7124. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Any inquiry of a general nature or relating to the status of this application or proceeding should be directed to the receptionist whose telephone number is 571-272-6584.
TJW
February 3, 2026
/THOMAS J WILLIAMS/Primary Examiner, Art Unit 3616