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 .
Terminal Disclaimer
The terminal disclaimer does not comply with 37 CFR 1.321 because:
This application was filed on or after September 16, 2012. The party identified in the terminal disclaimer is not the applicant of record. A request to change the applicant under 37 CFR 1.46(c) must be filed and must include an application data sheet specifying the applicant in the applicant information section and comply with 37 CFR 3.71 and 3.73. To be reconsidered, the terminal disclaimer must be filed with the request under 37 CFR 1.46(c).
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) 19, 31 and 34-39 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2005/0183909 A1 to Rau, III et al. in view of US 5,019,430 to Higgins et al.
Re-claims 19 and 35, Rau, III et al. teach a method for making a braking band for a brake disc, and a brake disc, the method comprising the following steps: a) preparing a mold having an inner cavity (see at least paragraph 58), which comprises a first portion of a shape corresponding to the braking band to be made; b) providing a band preform comprising a central preform 124, an upper outer preform 134 and a lower outer preform 134, the central preform is made of porous ceramic material comprising silicon carbide (Rau teaches the known formation of a rotor using a porous preform of silicon carbide reinforcement infiltrated with aluminum, see paragraph 5), the upper outer preform and lower outer preform are each made of porous ceramic material (such as a CMC), a carbon barrier layer (such as carbon foam, functioning as a bond layer, see paragraphs 30 and 58) made of carbon is interposed between the upper outer preform and the central preform and between the lower outer preform and the central preform, the preforms have the shape of the braking band to be made; c) placing the band preform inside the mold at the first portion of the inner cavity; and d) injecting a liquid or semi-solid aluminum alloy inside the entire inner cavity of the mold to infiltrate with the aluminum alloy the central preform of the band preform made of porous ceramic material, obtaining at the first portion an aluminum metal matrix composite reinforced by the central preform which defines the braking band to be made. Essentially, Rau teaches the known use of metal matrix composites as the brake rotor and central preform to define the braking band. And then further teaches placing upper outer preforms and lower outer preforms made of at least a CMC over a central preform (see paragraphs 44-45, that specifically mention a silicide). However, Rau, III et al. fail to teach the upper and lower outer CMC preforms comprising silicon carbide infiltrated with silicon.
Higgins et al. teach a process of making a silicon carbide body infiltrated with molten silicon, as well as body forming a silicon carbide and silicide of a metal. The end product produces a body of increased strength and fracture toughness, qualities that are desirable for a friction surface. In addition, the teachings of Higgins et al. regarding the silicon carbide body would be pertinent to the suggestion of Rau, III et al. regarding the use of a CMC body for the friction surfaces. 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 looked to Higgins et al. when having decided to form the upper and lower outer portions of Rau, III et al. as a CMC using a silicon carbide infiltrated with a silicon, as this product would have provided a body having sufficient strength and toughness to function as a friction braking surface.
Re-claim 31, Rau, III et al. further teach a squeeze casting (see at least paragraphs 27 and 59).
Re-claim 34, the mold process of Rau, III et al. is in a sealed chamber thus the mold closes over the upper outer preform and the lower outer preform so that during the introduction of aluminum into the mold, the infiltration of aluminum over the upper outer preform and under the lower outer preform is prevented, so that the outer braking surfaces of the disc are free of aluminum. The upper and lower outer preforms are placed in the mold upon which aluminum is forced in by hydraulic press.
Re-claim 36, Rau, III et al. teach a braking band, the braking band consisting of:
a central band made of an aluminum metal matrix composite (Rau teaches as known in the art a central band 124 made of MMC, see paragraph 5) reinforced with ceramic material comprising silicon carbide, the composite is obtained by infiltrating with an aluminum alloy a central preform made of porous ceramic material of shape corresponding to the braking band, (it is noted that this limitation is a process and does not distinguish the invention over the prior art),
an upper band 134 is joined to the central band, along an upper junction layer, the upper band being made of porous ceramic material (such as a CMC) covering the central band on one side thereof, a lower band 134 is joined to the central band along a lower junction layer arranged on the opposite side (opposite to the upper band), relative to the upper junction layer, the lower band is made of porous ceramic material (such as a CMC) for covering the central band on the other side (opposite relative to the upper band). Rau, III et al. further teach as one possibility the upper outer preforms and lower outer preforms made of at least a CMC over a central preform (see paragraphs 44-45, that specifically mention a silicide). However, Rau, III et al. fail to teach the upper and lower outer CMC preforms comprising silicon carbide infiltrated with silicon.
Higgins et al. teach a process of making a silicon carbide body infiltrated with molten silicon, as well as body forming a silicon carbide and silicide of a metal. The end product produces a body of increased strength and fracture toughness, qualities that are desirable for a friction surface. In addition, the teachings of Higgins et al. regarding the silicon carbide body would be pertinent to the suggestion of Rau, III et al. regarding the use of a CMC body for the friction surfaces. 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 looked to Higgins et al. when having decided to form the upper and lower outer portions of Rau, III et al. as a CMC using a silicon carbide infiltrated with a silicon, as this product would have provided a body having sufficient strength and toughness to function as a friction braking surface.
Re-claim 37, Rau, III et al. teach a brake disc for a disc brake, comprising:
a braking band and a bell 130 connected to the braking band (see figure 1), the braking band consists of: a central band made of an aluminum metal matrix composite (Rau teaches as known in the art a central band 124 made of MMC, see paragraph 5) reinforced with ceramic material comprising silicon carbide, the composite is obtained by infiltrating with an aluminum alloy a central preform made of porous ceramic material of shape corresponding to the braking band (it is noted that this limitation is a process and does not distinguish the invention over the prior art),
an upper band 134 is joined to the central band, along an upper junction layer, the upper band being made of porous ceramic material (such as a CMC) covering the central band on one side thereof, a lower band 134 is joined to the central band along a lower junction layer arranged on the opposite side (opposite to the upper band), relative to the upper junction layer, the lower band is made of porous ceramic material (such as a CMC) for covering the central band on the other side (opposite relative to the upper band). Rau, III et al. further teach as one possibility the upper outer preforms and lower outer preforms made of at least a CMC over a central preform (see paragraphs 44-45, that specifically mention a silicide). However, Rau, III et al. fail to teach the upper and lower outer CMC preforms comprising silicon carbide infiltrated with silicon.
Higgins et al. teach a process of making a silicon carbide body infiltrated with molten silicon, as well as body forming a silicon carbide and silicide of a metal. The end product produces a body of increased strength and fracture toughness, qualities that are desirable for a friction surface. In addition, the teachings of Higgins et al. regarding the silicon carbide body would be pertinent to the suggestion of Rau, III et al. regarding the use of a CMC body for the friction surfaces. 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 looked to Higgins et al. when having decided to form the upper and lower outer portions of Rau, III et al. as a CMC using a silicon carbide infiltrated with a silicon, as this product would have provided a body having sufficient strength and toughness to function as a friction braking surface.
Re-claim 38, the bell 130 is one piece with the braking band 124.
Re-claim 39, the aluminum alloy (or metal matrix) is homogenously distributed inside the composite, such as squeezed cast or pressure cast.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 36-39 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 32 and 34-36 of copending Application No. 18/547,354. Although the claims at issue are not identical, they are not patentably distinct from each other because the phrases used in the copending application and the instant application are not sufficiently distinguished from one another, see for instance: central layer vs. central preform; central portion vs. central band; upper portion vs. upper band; lower portion vs. lower band.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Allowable Subject Matter
Claims 20-30, 32 and 33 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Response to Arguments
Applicant's arguments filed March 18, 2026 have been fully considered but they are not persuasive. The remarks regarding the method claims of 19 and 35 have been considered. However, it is noted that Rau implies that the center rotor section can be manufactured using various methods including an aluminum based metal matrix (MMC) comprising silicon carbide (see paragraph 27). As understood, the reinforcement structure containing the silicon carbide can be interpreted as the porous ceramic preform, which is then infiltrated with the aluminum.
With regards to the apparatus claims of 36 and 37, the infiltration process is not necessary for defining over the prior art. As such the central preform need only contain the silicon carbide and aluminum, which Rau appears to offer as an alternative.
The remarks regarding the benefits of the claim pertaining to a “chemical reaction” to form a new junction or bonding between the preforms have been considered. However, these remarks appear more specific than the claim language, as the claim does not explicitly recited this feature, nor is it understood that this feature will or must occur during the manufacturing process. It is further noted that Rau specifically mentions the use of a carbon graphite foam as a bonding agent between the preform elements (see paragraph 30). As such the rejection is maintained.
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.
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
April 16, 2026
/THOMAS J WILLIAMS/Primary Examiner, Art Unit 3616
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