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 .
Compact Prosecution
In an effort to provide compact prosecution, it is highlighted that the rejections under both 112(b) and 103 may resolve simultaneously with amended claim language related to the phrase “fastening margin.” As a best estimate, this may mean clearance or may mean contact. Whether this means clearance or direct contact can be incorporated into the claim to capture the structure that is intended by this phrase.
Drawings
The amendment filed July 29, 2026, is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure via the amendments to the drawing adding the specific region of the fastening margin and the associated reference numbers. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: the original disclosure does not make clear whether the phrase “fastening margin” is a clearance (typically a margin is a space after the edge of something) or a contact and if the former, relative to what other element or direction the clearance is taken, or if instead this means a range that one element can be fastened to another. The amendment to the drawing narrows these possibilities to a new definition not within the original specification.
Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 112
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 1-13 are 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.
Claim 1 recites "a cover tube which covers a part of the pipe body and is in contact with the caliper with a fastening margin and the cover tube does not have the fastening margin with respect to the caliper in a central axis direction of each of the flare nuts." The specification and drawings have been amended to recite a region encircling multiple structural features that could be the “fastening margin.” It is unclear to what the fastening margin refers. Is this a contact area, a space, a range of possible contact? There is no special definition or description of what this may encompass.
With regard to the prior art, the tube 117 is in contact with surfaces 118 and 119 (see FIG. 44) with fastening margins that presumably do have a margin with respect to the caliper in the central axis direction. It appears that a rounded cutout (formed by 118 and 119) is made at an outer surface of 112 to hold the tube 117. On the other hand, in the invention, the tube 28 is in contact with a curved surface and presumably does not have the margin with respect to the caliper in the central axis direction. In the invention, distinguished from the prior art, the cutout is on the inner surface of 9 to hold the tube 28 rather than the outer surface. FIGS. 7 and 44, respectively, are side by side below to illustrate this difference.
PNG
media_image1.png
183
381
media_image1.png
Greyscale
It is not clear based on the above distinction what feature could be interpreted as a margin with respect to the caliper in a central axis direction of each of the flare nuts, which in the above figures is believed to be the left-right direction. A portion of the contact area for both options is in the left-right direction. What is the margin in the figures?
In addition, the embodiments of FIG. 20 and 24 are not described as being prior art but appears very similar to the prior art with a curve/L-shaped cutout on the outer side of the caliper.
PNG
media_image2.png
211
372
media_image2.png
Greyscale
Furthermore, it is unclear which direction amounts to the central axis direction because the specification states "the central axis directions (circumferential direction) of the flare nuts 27a and 27b" (see paragraph [0103]). This description makes it unclear if this central axis direction is the left-right direction or a circumferential direction.
Claim 2 recites "wherein a gap is provided between the cover tube and the caliper in the central axis direction of the flare nut." It is unclear how there can be no fastening margin, meaning no gap, and also have a gap. Applicant states that the gap is distinct from the margin, however it is unclear what the margin is and therefore it is unclear how the margin is distinct from the gap when recited relative to the same elements.
Claim 5 discloses "wherein the central axis direction of the flare nut substantially coincides with a circumferential direction, and the cover tube is pressed against a surface of the caliper facing radially outward." It is unclear how the straight line horizontal direction illustrated for the nuts could be interpreted as being a circumferential direction which is a curved direction along the outside of the brake. It is also unclear what direction is radially inward. Under a general definition, radially inward would be toward a rotation axis of the wheel or to a center of the circle forming the outer surface of the brake. However, this does not appear to be aligned with Applicant's usage and therefore it is unclear what is meant by this type of terminology.
Claim 6 is indefinite for the same reasons as claim 5.
Claim 7 recites "wherein the central axis direction of the flare nut substantially coincides with a circumferential direction, and the cover tube is pressed against a surface of the caliper facing radially inward." The direction of "radially inward" on its face means inward toward a center, in a radial direction, i.e., toward the rotation center of the wheel or toward a center of the circular forming the outside surface of the brake. However, the surface that is disclosed as illustrating this feature is FIGS. 10B and 11B, and relates to surface 24. However, this surface does not face in a direction radially inward. It is unclear if this is intended to mean facing downward or if the surface extends parallel to the radially inward direction, i.e. facing the opposite of the radially inward direction.
Claim 13 recites "wherein the protuberance is disposed on an orthogonal plane that passes through a position where distances to the respective central axes of the pair of flare nuts are equal to each other in a virtual plane, the virtual plane including the central axes of the pair of flare nuts, and the orthogonal plane being orthogonal to the virtual plane." It is unclear what this means. The first portion recites that the protuberance is on a plane that passes through a spot where distances to the nuts are equal and is clear. However, it is unclear to which element the phrase "in a virtual plane" modifieds. The amendment assists with the definiteness of this feature but it is remains unclear what is “in a virtual plane.”
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.
Claim(s) 1-5, 8, 10, and 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morio (US 11,162,550) in view of Doell et al. (DE 3906162A1; hereinafter "Doell").
Claim 1
Morio discloses an opposed piston type disc brake device comprising:
a caliper (1) including an inner body (2) including an inner cylinder (7), and an outer body (3) including an outer cylinder ("outer cylinders"); and
a communication pipe (44) disposed around the caliper and connecting the inner cylinder and the outer cylinder, wherein the communication pipe includes a pipe body (main portion of 44), a pair of flare nuts (see FIGS. 5 and 7 illustrating one nut at each end of 44) which are provided on end portions of the pipe body on both sides in a manner of being rotatable relative to the pipe body in a state in which central axes of the flare nuts are arranged substantially parallel to each other, and which are respectively screwed and connected to the inner body (2) and the outer body (3), and a cover tube which covers a part of the pipe body and is in contact with the caliper with a fastening margin, and
the cover tube does not have the fastening margin with respect to the caliper in a central axis direction (horizontal direction in annotated FIG. 5) of each of the flare nuts (see non gap to the left of the cover tube below).
Morio does not disclose the cover tube being made of an elastic material. However, it is well known to make various components of a brake caliper assembly is made of elastic material. For example, Doell discloses a cover tube (33, 35, 32) that is partially made of elastic material (see machine translation portion of Doell, paragraph spanning pages 3 and 4). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified Morio so that the cover tube or a part thereof is made of elastic material in order to allow for tightening without damage.
PNG
media_image3.png
400
492
media_image3.png
Greyscale
Claim 2
As best understood, Morio discloses that wherein a gap is provided between the cover tube and the caliper in the central axis direction of the flare nut (see annotated FIG. 5 below).
PNG
media_image4.png
351
512
media_image4.png
Greyscale
Claim 3
Morio discloses wherein the cover tube is pressed against the caliper only in one predetermined direction other than the central axis direction of the flare nut (see FIG. 2, upward direction, or alternatively a diagonal direction to the upper right).
Claim 4
Morio discloses wherein the cover tube is pressed against the caliper in a direction (see FIG. 2, upward direction) substantially orthogonal to the central axis direction of the flare nut.
Claim 5
Morio discloses wherein the central axis direction (horizontal in FIG. 2) of the flare nut substantially coincides with a circumferential direction (horizontal direction in FIGS. 2 and 5), and the cover tube is pressed against a surface of the caliper facing (at least in part) radially outward.
PNG
media_image5.png
351
479
media_image5.png
Greyscale
Claim 8
Morio discloses wherein a surface of the caliper with which the cover tube is in contact while having the fastening margin, is a flat surface (see annotated FIG. 5).
PNG
media_image6.png
407
555
media_image6.png
Greyscale
Claim 10
Morio discloses wherein the caliper includes a protuberance at a portion in contact with the cover tube (see partial annotated FIG. 5 in rejection of claim 8; see also annotated FIG. 4 in rejection of claim 13).
Claim 13
Morio discloses wherein the protuberance is disposed on an orthogonal plane that passes through a position where distances to the respective central axes of the pair of flare nuts are equal to each other in a virtual plane including the central axes of the pair of flare nuts and that is orthogonal to the virtual plane (see annotated FIG. 4 below). It is noted that the orthogonal plane can be drawn anywhere along the length of the protuberance that satisfies the remaining features of the claim. In other words, the protuberance is not at one single point in the prior art or in Applicant's embodiments.
PNG
media_image7.png
419
558
media_image7.png
Greyscale
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morio in view of Doell, and further in view of Way (5,558,183).
Claim 6
Morio discloses wherein the central axis direction of the flare nut substantially coincides with a circumferential direction, but does not disclose the cover tube is pressed against a surface of the caliper facing radially inward. However, Way discloses the shape of the surface of the caliper against which the cover tube contacts faces radially inward (see FIG. 3, the upper surface of the groove in which 63 extends faces inward). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified Morio to substitute the shape of the surface in Morio for that of Way in order to better hold the tube within the surface.
Claim 7
Morio does not necessarily disclose wherein the caliper further includes a coupling portion that couples a circumferential end portion of the inner body to a circumferential end portion of the outer body, and the cover tube is pressed against the coupling portion. However, Way discloses wherein the caliper further includes a coupling portion (see annotated FIG. 1 illustrating the region at which the two bodies connect to one another) that couples a circumferential end portion of the inner body to a circumferential end portion of the outer body, and the cover tube (extending in groove inside the coupling; see also FIG. 3) is pressed against the coupling portion. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified Morio to substitute the shape of the surface in Morio for that of Way in order to better hold the tube within the surface.
PNG
media_image8.png
433
684
media_image8.png
Greyscale
Claim(s) 9 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morio in view of Doell, and further in view of Ishiguro et al. (EP 3929457A2; hereinafter "Ishiguro").
Claim 9
Morio does not disclose wherein the central axis of each of the pair of flare nuts and the surface of the caliper with which the cover tube is in contact while having the fastening margin, are arranged substantially parallel to each other. However, Ishiguro discloses (see FIGS. 8 and 9) wherein the central axis of each of the pair of flare nuts (see end of 26 attached via a nut in FIG. 8) and the surface of the caliper with which the cover tube is in contact while having the fastening margin, are arranged substantially parallel to each other (see FIG. 9, horizontal surface against which 26 contacts is the same direction as the nuts which is also horizontal). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified Morio to have switched the cover tube from a position at an indent under the caliper to one over or in the side of the caliper as taught by Ishiguro since this is a simple substitution of one known cover tube location on a caliper for another to yield predictable results and in this case would allow for easy access to replacement of the tube if damaged or leaking.
Claim(s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Morio in view of Doell, and further in view of Cornolti (US 6,722,476).
Claim 12
Morio does not disclose wherein the protuberance protrudes in a direction substantially orthogonal to the central axis direction of the flare nut. However, Cornolti disclose a protuberance (5) in a direction (side to side direction) that is orthogonal to a direction that would be along the flare nuts (see FIG. 2). It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention with a reasonable expectation of success to have modified Morio so that the surface against which the cover tube abutted was substituted with that taught by Cornolti in order to better align and/or hold the tube in place.
Allowable Subject Matter
Claim 11 is 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.
With reference to claim 11, the prior art does not disclose or render obvious a piston type disc brake device including "wherein the cover tube includes a protuberance at a portion in contact with the caliper." A protuberance is interpreted as a component that extends outward away from the tube surface. In the prior art, the caliper has many different shapes of protuberances, however the cover tube is a tube shape only in the prior art and is only illustrated as having a smooth surface.
Response to Arguments
Applicant's arguments filed July 29, 2026 have been fully considered but they are not persuasive.
Rejection under 112(b)
With regard to the rejection under 112(b), Applicant amended the specification and drawings. While the amendments to the specification and drawings imply a possible definition for fastening margin is direct contact, i.e., no clearance, the definition is not clearly set forth in the original filing. The Examiner must look at the claim language, in light of the specification, without importing features into the claims that are not recited within the claim language. A special definition of a claim term can be used however such a definition must be clearly set forth in the specification. An example described in the specification is not a special definition. There is no evidence in the record as to what actual general definition should be used with this phrase.
Applicant argued that a prima facie rejection was not set forth because the Office Action did not assert “why the claimed features are believed to be definite from the perspective of one of ordinary skill int eh art or based on the teachings of the prior art.” As noted in MPEP 2173(II), the essential inquiry pertaining to this requirement is whether the claims set out and circumscribe a particular subject matter with a reasonable degree of clarity and particularity. “As the statutory language of ‘particular[ity]' and 'distinct[ness]' indicates, claims are required to be cast in clear—as opposed to ambiguous, vague, indefinite—terms. It is the claims that notify the public of what is within the protections of the patent, and what is not.” Packard, 751 F.3d at 1313, 110 USPQ2d at 1788. The detailed rejection of claim 1 under 112(b) is set forth in five paragraphs and two annotated drawings spanning pages 3-5 of the non-final Office Action dated May 14, 2026. These portions all relate to how the phrase “fastening margin” is unclear. No specific responding arguments was made as to what the actual definition of fastening margin is or countering the assertions in those five paragraphs. Applicant also cites a paragraph that notes directions in many of the figures however it is unclear how this relates to the definition of “fastening margin.”
With regard to claim 2, Applicant generally argues that the gap is separate from the fastening margin but does not describe any details or explanation as to support for this conclusory statement.
With regard to claim 5, Applicant points to paragraph [0044] which states that in FIGS. 1, 2, 5, and 12, a left-right direction is a circumferential direction, and in FIGS. 3 and 4, a front-back direction is a circumferential direction. It appears that the Applicant may be arguing to apply a special definition to this feature since the general definition of a circumferential direction is a curved direction around the circumference. Paragraphs [0005] and [0044] recite that unless otherwise specified, a circumferential direction is a circumferential direction of the rotor. Paragraph [0018] recites that the axis of the nuts “substantially” coincides with the circumferential direction, not that it fully coincides, which is consistent with a general definition of a circumferential direction. Applicant is equating a straight direction as the circumferential direction, which is contrary to the general definition. While Applicant may be its own lexicographer, a special definition must be clearly set forth as being a definition. In this case, the descriptions of the circumferential direction being straight rather than along the circular direction are exemplary embodiments and may be describing the closest depiction to a circumferential direction. Essentially, claims 5 and 6 recite that the axis of the nuts substantially coincides with a set direction and the Applicant is asserting that one must look to the specification to define what the set direction actually is, and furthermore that the set direction is different than the general definition. This is not clearly set forth based on the specification and claim language.
For claim 13, the only remaining indefiniteness issue is what “in a virtual plane” is modifying. In other words, what element(s) is in a virtual plane?
Rejection under 103
Applicant argues that the cited references to do not disclose any element “which may correspond to a communication pipe, is pressed to the caliper.” This feature is only in claims 3-7 in some capacity, but not in claim 1. The applicant concludes that this means the prior art does not disclose the fastening margin. It is unclear how pressing of the pipe to the caliper is considered a “fastening margin.” With regard to the meaning of “fastening margin” the Applicant did not argue that this means the pipe is pressed to the caliper. This argument highlights the issue under 112(b).
Applicant also argues that paragraphs [0003] and [0021] have their own descriptions of Ishiguro as being with fastening margins. It is not clear if this is in regard to the claim feature “a cover tube which covers a part of the pipe body and is in contact with the caliper with a fastening margin” or to the claim feature “the cover tube does not have the fastening margin with respect to the caliper in a central axis direction.” Nonetheless, the prior art must be interpreted for what it discloses and not what the Applicant states it discloses. If the margin is interpreted as closely aligned to the general definition of margin as is possible, meaning a clearance, the prior art discloses parts without clearance along the side-to-side direction (recited central axis direction) and parts with clearance (taken along different directions). Thus, as this feature is best interpreted, the prior art discloses this feature.
In view of the above, the rejections must be 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 inquiry concerning this communication or earlier communications from the examiner should be directed to STACEY A FLUHART whose telephone number is (571)270-1851. The examiner can normally be reached M-Th 9AM-7PM.
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, Ernesto Suarez can be reached at 571-270-5565. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/STACEY A FLUHART/Primary Examiner, Art Unit 3655
