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 § 112
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
The following is a quotation of pre-AIA 35 U.S.C. 112, fourth paragraph:
Subject to the following paragraph [i.e., the fifth paragraph of pre-AIA 35 U.S.C. 112], a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claim 10 is rejected under 35 U.S.C. 112(d) or pre-AIA 35 U.S.C. 112, 4th paragraph, as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends.
Claim 10 does not require all the limitations of claim 1, the claim upon which it depends. Claim 1 requires “A brake caliper for a vehicle brake, comprising: a bolt guide . . . , a bolt . . . , a bushing . . . [and] at least one damping element” all in an assembled state. Claim 10 is directed towards “A kit for bolt guide of the brake caliper as claimed in claim 1” and therefore does not require the brake caliper and does not require the elements to be arranged in an assembled state.
Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 2-8, 10-13, 15, 17 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 2-8, 10-13, 15, 17, the phrase “the damping element” is indefinite because it is unclear whether this is referring to the “first damping element” and/or “the second damping element.”
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.
Claims 1, 2, 4, 5, 10, 11, 15, 17 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Stoerzel (GB 2142395).
Regarding independent claim 1, Stoerzel discloses a brake caliper (20) for a vehicle brake (see Abstract, FIGS. 1-6), comprising: a bolt guide (102) (see FIG. 6) for axially displacing the brake caliper (100) on a brake carrier (12) (see e.g. FIG. 4), and a bolt (24) axially displaceably received in the bolt guide (see FIG. 4), the bolt including a bushing (108) arranged around the bolt (see FIG. 6), wherein the bushing has a first axial end face at a first end and a second axial end face at a second end (see FIG. 6) wherein the brake caliper has at least one damping element (104, 106) in addition to the bushing and adjacent to the bushing (see FIG. 6), wherein the damping element circumferentially surrounds the bolt and damps a relative movement in the radial direction between the bolt and the bolt guide (see page 2, lines 55-59); wherein the damping element is a first damping element (104) and the brake caliper additionally includes a second damping element (106), the damping elements being arranged relative to the bushing on opposite ends of the bushing and adjacent to the bushing (see FIG. 6); wherein one or both of the first damping element and the second damping element are arranged in direct contact with the first axial end face of the bushing and the second axial end face of the bushing, respectively (see FIG. 6); wherein the bolt guide (102) has a constant inner diameter axially extending along the first damping element and the bushing across the first axial end face (see FIG. 6), and wherein the bolt guide has a constant inner diameter axially extending along the second damping element and the bushing across the second axial end face (see FIG. 6).
Regarding claim 2, Stoerzel discloses that the damping element is arranged adjacent to the bushing in portions in contact with the bushing (see FIG. 6).
Regarding claim 3, Stoerzel discloses that the brake caliper includes a sealing element (A) (see Annotated FIG. 6, below), wherein the damping element is part of the sealing element (see Annotated FIG. 6, below).
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Regarding claim 4, Stoerzel discloses that an inner contour of the damping element, in an unmounted state, is oval-shaped in cross-section (see e.g. FIG. 6; see also FIGS. 4, 5, 8; see also present application, ¶ 0007 – an oval includes a circular shape).
Regarding claim 5, Stoerzel discloses that an inner diameter of the damping element is smaller than an inner diameter of the bushing (see FIG. 6; page 2, lines 123-128).
Regarding claim 10, Stoerzel discloses a kit for a bolt guide of the brake caliper as claimed in claim 1 (see claim 1, above), comprising: the bolt (24), the bushing (108) arranged around the bolt (see FIG. 6), and the damping element (104, 106); wherein the damping element is configured to circumferentially surround the bolt adjacent the bushing (see FIG. 6) and is configured to damp the bolt in the radial direction relative to the bolt guide of the brake caliper in which the bolt, the bushing, and the damping element are received (see page 2, lines 55-59).
Regarding claim 11, Stoerzel discloses the damping element is arranged adjacent to the bushing in contact with the bushing (see FIG. 6).
Regarding claim 13, Stoerzel discloses that the damping element is integrally arranged on the sealing element as an axial extension of the sealing element (see Annotated FIG. 6, above).
Regarding claim 15, Stoerzel discloses that the damping element bridges a radial play between the bolt and the bolt guide (see page 2, lines 123-128).
Regarding claim 17, Stoerzel discloses that the bolt has a greater length than a cumulative length of the bushing and the damping element (see FIG. 6).
Regarding claim 19, Stoerzel discloses that the second damping element is arranged adjacent the bushing (see FIG. 6) and an outer cover (56) of the brake caliper (see e.g. FIG. 4).
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.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over Stoerzel (GB 2142395), as applied to claim 1, above, and further in view of Sakakibara (US 4,557,354).
Regarding claim 6, Stoerzel discloses that the damping element is formed partially or completely from an elastomer (see page 2, lines 55-59).
Stoerzel does not disclose that the bushing is formed partially or completely from a metal.
Sakakibara teaches a brake caliper (30) for a vehicle brake (see Abstract, FIGS. 1, 2), comprising: a bushing (32), wherein the bushing is formed partially or completely from a metal (see col. 2, lines 58-62).
It would have been obvious to form the bushing of Stoerzel form a metal to provide a durable material that is known to be suitable for use in sliding bushings.
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Stoerzel (GB 2142395), as applied to claim 1, above, and further in view of Evans (US 4,199,159).
Regarding claim 7, Stoerzel does not disclose that the damping element has a reinforcing element, wherein the reinforcing element is formed partially or completely from a metal.
Evans teaches discloses a brake caliper (11) for a vehicle brake (see Abstract, FIGS. 1, 2), comprising: an elastic seal (70), wherein the elastic seal has a reinforcing element (74), wherein the reinforcing element is formed partially or completely from metal (see col. 5, lines 45-56; FIG. 14).
It would have been obvious to combine the reinforcing element of Evans with the damping element of Stoerzel, to provide a compression fit to the bolt guide (see e.g. Evans, col. 5, lines 51-53).
Regarding claim 8, Evans teaches that the reinforcing element is arranged completely encased in the damping element (see FIG. 14).
Regarding claim 12, Stoerzel does not disclose that the damping element is arranged adjacent to the bushing at a distance from the bushing.
Sakakibara teaches the damping element is arranged adjacent to the bushing at a distance from the bushing (see FIG. 2).
It would have been obvious to locate one of the damping elements at a distance form the bushing to distribute the damping forces over an extended length of the bolt (see e.g. Sakakibara, FIG. 2).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara (US 4,557,354), as applied to claims 1 and 4, above, and further in view of Taylor et al. (US 2019/0162256).
Regarding claim 14, Sakakibara does not disclose that the cross-section of the inner contour is elliptical.
Taylor teaches a brake caliper (see Abstract, FIGS. 1-7) comprising a damping element (13a) (see FIG. 7; ¶ 0061, “rubber”), wherein an inner contour is elliptical (see FIG. 7; ¶ 0056).
It would have been obvious to configure the inner profile of the damping element of Sakakibara to be oval to provide a smooth guiding surface and allow for insertion of a wear sensor (see e.g. Taylor, ¶ 0014).
Claim 20 is rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara (US 4,557,354), as applied to claims 1 and 9, above, and further in view of Adachi et al. (US 4,754,854).
Regarding claim 20, Sakakibara discloses that the first damping element (106) is adjacent the first axial end face of the bushing (see FIG. 6) and is integral with a sealing element (A) (see Annotated FIG. 6, above) arranged at the first end of the bolt (see FIG. 6), and the second damping element (104) is arranged at the second axial end face opposite the first axial end face (see FIG. 6).
Stoerzel does not disclose that the second damping element is adjacent an outer cover of the bolt guide.
Adachi teaches that a first damping element (23) is adjacent a first end face of the bushing and is integral with a sealing element (see FIG. 1) arranged at first end of the bolt (see FIG. 1), and the second damping element (24) is arranged at second end face opposite the first end face (see FIGS. 1, 2) and adjacent an outer cover (25) of the bolt guide (see FIG. 2).
It would have been obvious to combine the outer cover of Adachi with the device of Stoerzel to provide protection to the damping element and the bolt guide from contaminants and debris.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over Sakakibara (US 4,557,354), above, and further in view of Taylor et al. (US 2019/0162256).
Regarding independent claim 18, Sakakibara discloses a brake caliper (30) for a vehicle brake (see Abstract, FIGS. 1, 2), comprising: a bolt guide (31a) for axially displacing the brake caliper on a brake carrier (20) (see col. 2, lines 52-68; FIGS. 1, 2), and a bolt (21) axially displaceably received in the bolt guide (see col. 2, lines 52-68; FIGS. 1, 2), the bolt (122) including a bushing (32) arranged around the bolt (see FIG. 2), wherein the brake caliper has at least one damping element (40b, 41b) in addition to the bushing and adjacent to the bushing (see FIG. 2), wherein the damping element circumferentially surrounds the bolt (see FIG. 2) and damps a relative movement in the radial direction between the bolt and the bolt guide (see e.g. col. 3, lines 1-2; elastic material such as synthetic rubber provides damping).
Sakakibara does not disclose that the inner contour is elliptical and an outer contour of the damping element is circular, and a thickness of the damping element varies along a cross-sectional area of the damping element.
Taylor teaches a brake caliper (see Abstract, FIGS. 1-7) comprising a damping element (13a) (see FIG. 7; ¶ 0061, “rubber”), wherein an inner contour is elliptical and an outer contour of the damping element is circular (see FIG. 7; ¶ 0056), and a thickness of the damping element varies along a cross-sectional area of the damping element (see FIG. 7; ¶ 0056).
It would have been obvious to configure the inner profile of the damping element of Sakakibara to be oval to provide a smooth guiding surface and allow for insertion of a wear sensor (see e.g. Taylor, ¶ 0014).
Response to Arguments
Applicant’s arguments filed 04-Jun-2026 regarding independent claim 1 have been considered but are moot in view of the new grounds of rejection noted above.
Applicant's arguments filed 04-Jun-2026 regarding claim 18 have been fully considered but they are not persuasive.
Regarding claim 19, Applicant argues that “Taylor’s teachings at most would suggest changing the shape of Sakakibara’s bushing profile [and not the damping element]” (see Amendment, page 15).
Taylor, however, discloses that the sensor element is inserted into the bolt guide from a distal end of the bolt guide and passes through an elliptically shaped element made of rubber that supports the bolt. Similar to this structure, the damping element of Sakakibara is located at a distal end of the bolt guide, is made of rubber, and supports the bolt. As such, one of ordinary skill would have understood to apply the teachings of Taylor to the damping element of Sakakibara.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS J LANE whose telephone number is (571)270-5988. The examiner can normally be reached Monday-Friday, 8:30 AM - 5:00 PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
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/NICHOLAS J LANE/Primary Examiner, Art Unit 3616
August 3, 2026
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