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 § 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.
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.
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.
Claims 1-7 are rejected under 35 U.S.C. 103 as being unpatentable over Unno (JP 6760449 B2, attached with translation) in view of Takada (US 2017/0254378 A1), Nukumizu (WO 2020/089979 A1, attached with translation), and Mitsui (Mitsui, "Milex RS-2210 MB Technical Datasheet," 2020). Songhan (Songhan, "Mitsui Milex RS-2210MB Silicone Rubber Modified Phenolic Resin") is cited as an evidentiary reference.
Regarding claims 1-7, Unno teaches a friction material composition that includes a binder, inorganic filler, and fiber base material (p. 6, [0009]). The copper content is 5 mass% or less (p. 6, [00009]). The content of metal fibers not containing copper may be 0.5 mass % or less (p. 6, [0009]). The binder may be silicone-modified phenol resin in amounts ranging from 5-20 mass% (p. 7, [0012]; [0013]).
However, Unno is silent as to use of theta-alumina particles and alumina fiber in the claimed amounts. In the same field of endeavor, Takada teaches inclusion of 1 mass% or more of theta-alumina particles having specific surface area of 40-150 m2/g and particle size in the range of 1-300 microns (p. 1, [0018]-[0019]; p. 2, [0034]). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to combine the composition of Unno and the particles of Takada to arrive at the claimed invention, and to provide a friction material that can stabilize friction properties due to changes in the humidity of the environment, as well as suppress the counterpart material attack, as taught by Takada (p. 1, [0014]).
While Unno teaches that 0-0.5 mass% of non-copper-containing metal fibers may be used, Unno and Takada are silent as to use of alumina fiber. In the same field of endeavor, Nukumizu teaches that alumina fiber having average length of 60 microns is suitable for use in a brake pad composition (p. 12). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the alumina fibers of Nukumizu for use as the metal fiber of Unno, in the amount taught by Unno, to arrive at the claimed invention, and because of the art-recognized suitability for the intended purpose. See MPEP 2144.07.
Unno does not limit the silicone-modified phenol resin that may be used. Mitsui teaches that it is known in the art that the silicone rubber modified phenolic resin, RS-2210MB, may be used in brake pad friction materials (p. 1). Songhan clarifies that RS-2210 MB has a rubber content of 10 phr (10 mass%) (p. 1). It would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to select the resin of Mitsui for use in the composition of Unno as modified by Takada and Nukumizu to arrive at the claimed invention, and because of the art-recognized suitability for the intended purpose. See MPEP 2144.07. These prior art ranges overlap the claimed ranges. A prima facie case of obviousness exists where the prior art range overlaps the claimed range. See MPEP 2144.05.
Unno teaches a copper content of 5 mass% or less as stated above. This encompasses the claimed limitation of “copper free”, i.e. 0 mass%. Alternatively, Nukumizu teaches that in certain US markets the sale of friction materials containing 0.5 mass% or more of copper will be prohibited and that there is an urgent need to develop materials that do not contain copper (p. 1). It would have been obvious to one of ordinary skill in the art at the time of filing to form a copper-free friction material when modifying Unno in order to meet the market need identified by Nukumizu.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ELIZABETH K AMATO whose telephone number is (571)270-0341. The examiner can normally be reached 8:30 am - 4:30 pm M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rob Jones can be reached at (571) 270-7733. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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ELIZABETH K. AMATO
Examiner
Art Unit 1762
/ROBERT S JONES JR/Supervisory Patent Examiner, Art Unit 1762
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