DYNAX CORPORATION

Patent Trials and Appeals BoardMar 31, 2020

15603507 - (D) (P.T.A.B. Mar. 31, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/603,507 05/24/2017 Ryo Ohashi TLP-42436 8639 27505 7590 03/31/2020 RANKIN, HILL & CLARK LLP 23755 LORAIN ROAD SUITE 200 NORTH OLMSTED, OH 44070 EXAMINER DODD, RYAN P ART UNIT PAPER NUMBER 3655 NOTIFICATION DATE DELIVERY MODE 03/31/2020 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): dragony@rankinhill.com overberger@rankinhill.com withrow@rankinhill.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte RYO OHASHI and NORIO TAKAKURA Appeal 2019-005901 Application 15/603,507 Technology Center 3600 Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1, 3, 4, and 7.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Dynax Corporation. Appeal Br. 3. 2 Claims 2, 5, 6, and 8 are canceled. See Advisory Action mailed Feb. 1, 2019. Appeal 2019-005901 Application 15/603,507 2 BACKGROUND Appellant’s invention relates to a friction plate. Sole independent claim 1 is reproduced below: 1. A friction plate in which a plurality of friction material segments are fixed in a circumferential direction of an annular plate, and radial oil grooves are formed between adjacent friction material segments, wherein each of said friction material segments is provided with radially extending side edges and a vertex formed on each radially extending side edge, vertexes of adjacent side edges of the friction material segments facing with each other, each oil groove forming sectors spreading both outwardly and inwardly from said facing vertexes, and said facing vertexes for each oil groove being composed of an inner circumference side vertex located in an inner circumference side from a radially intermediate point of the oil groove or a perimeter side vertex located in a perimeter side from the radially intermediate point. REFERENCES3 The prior art relied upon by the Examiner is: Name Reference Date McDowall US 2,690,248 Sept. 28, 1954 Okamura US 2014/0346003 A1 Nov. 27, 2014 Sittig DE102010021900 A1 Dec. 1, 2011 3 A rejection of claim 1 under 35 U.S.C. § 102(a)(l) as being anticipated by Reiners (DE102013011677 A1, pub. Jan. 15, 2015), and a rejection of claim 2 under 35 U.S.C. § 103 as unpatentable over Reiners are withdrawn. See Advisory Action mailed Feb. 1, 2019; see also Final Act. 6–8. No rejection based on Reiners is before the Board. Appeal 2019-005901 Application 15/603,507 3 REJECTIONS I. Claims 3 and 74 stand rejected under 35 U.S.C. § 112(b) as being indefinite. Final Act. 4. II. Claims 1, 3, 4, and 7 stand rejected under 35 U.S.C. § 103 as unpatentable over McDowall, Okamura, and Sittig5. Final Act. 10. ANALYSIS Rejection I; Claims 3 and 7 – Indefiniteness The Examiner finds that claim 3 is indefinite because the limitation “said oil grooves having said facing inner circumference side vertexes,” lacks sufficient antecedent basis. Final Act. 5. Specifically, the Examiner asserts that claim 1 does not positively recite adjacent segments having an inner circumference side vertex that provide antecedence for claim 3. Id. Appellant argues that claim 1 recites adjacent friction material segments, and that facing vertexes of each of the segments are either inner circumference side vertexes or perimeter side vertexes. Appeal Br. 8; see also Reply Br. 2. According to Appellant, claim 3 further defines this feature by requiring that the facing inner circumference side vertexes and the facing perimeter side vertexes are alternating. Id. 4 Although the Examiner does not provide a specific rejection of claim 7, we understand claim 7 to be rejected based on its dependence from claim 3. See Appeal Br. 17 (Claims App.). 5 Although the Examiner and Appellant refer to DE102010021900 A1 as “DE ’900” we refer to DE102010021900 A1 by the last name of the first named inventor “Sittig.” Appeal 2019-005901 Application 15/603,507 4 The test for definiteness under 35 U.S.C. § 112, second paragraph, is whether “those skilled in the art would understand what is claimed when the claim is read in light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986). In this case, we agree with Appellant that the “oil grooves having said facing inner circumference side vertexes,” as recited in claim 3, further define the oil grooves of claim 1. Specifically, claim 1 recites “said facing vertexes for each oil groove being composed of an inner circumference side vertex . . . or a perimeter side vertex.” Thus, there are only two possible facing vertexes, i.e., facing inner circumference side vertexes and facing perimeter side vertexes. This is consistent with the Specification, which discloses: When the radial dimension h of the oil groove 16 formed by the adjacent friction material segments 14 is bisected in the radial direction, the vertex located in the perimeter side is the perimeter side vertex 14a, and the vertex located in the inner circumference side is the inner circumference side vertex 14b. Spec. ¶ 22. The Specification further discloses: As shown in Fig. 2, the sectors of the oil groove 16a formed by the adjacent edges of the friction material segments 14 are characterized by the perimeter side vertexes 14a. On the other hand, the sectors of the oil groove 16b formed by the adjacent edges of the friction materials 14 are characterized by the inner circumference side vertexes 14b. Spec. ¶ 22. Given that there are only two types of facing vertexes, regardless of whether the limitation lacks antecedent basis, the Examiner does not find that the lack of antecedent basis would prevent one skilled in the art from Appeal 2019-005901 Application 15/603,507 5 understanding what is claimed when claim 3 is read in light of Appellant’s Specification. We do not sustain Rejection I. Rejection II: Claims 1, 3, 4, and 7 – Obviousness The Examiner finds that McDowall discloses most of the limitations of claim 1, including a friction plate having plural friction material segments with radial oil grooves formed between adjacent friction material segments, but that McDowall does not disclose that each oil groove forms sectors spreading both outwardly and inwardly from facing vertexes, “because only one of its sectors appears to ‘spread,’ while the other maintains an equidistant relationship between two parallel lines.” Final Act. 11. Nonetheless, the Examiner finds that inwardly and outwardly “sloping channels are well known,” and finds that Okumura and Sittig both disclose this limitation. Id. (citing Okamura, Fig. 6d; Sittig, Figs. 2, 3, and 9). The Examiner concludes that it would have been obvious to change the shape of McDowall’s sectors “to spread inwardly and outwardly from the same facing vertexes, because, inter alia, the use of known technique to improve similar devices (methods, or products) in the same way, to yield a predictable result (e.g. controlled oil flow), is a matter of ordinary skill.” Id. at 11–12 (citing KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007)). Appellant argues that similar to the outlet passages of McDowall, the sectors in Okamura’s Figure 6d only have facing vertexes that spread outwardly. Appeal Br. 9–10. Appellant contends that Sittig’s Figure 9 includes various sectors, but one sector is D-shaped and only has one side with a vertex, while the other sector is hour-glass shaped and has Appeal 2019-005901 Application 15/603,507 6 depressions, not vertexes. Id. at 10–11. Appellant thus concludes that Okamura and Sittig do not remedy the shortcomings of McDowall. Id. at 11. The Examiner responds that both Okamura and Sittig depict the claimed limitation. Ans. 7. In support of this assertion, the Examiner provides an annotated version of Okamura’s Fig. 6d, reproduced below. Id. Figure 6d is a front view illustrating a modified working example. Okamura ¶ 36. The Examiner’s annotations include lead lines extending to two points on Okamura’s segment piece 40 that the Examiner designates as vertexes. See Ans. 7. The Examiner also provides an annotated version of Sittig’s Figure 11, reproduced below. Appeal 2019-005901 Application 15/603,507 7 Id. Figure 11 is a schematic detail view of a tenth embodiment of a friction device in a front view. Sittig ¶ 20.6 The Examiner’s annotations include lead lines extending to several points on Sittig’s friction surface segments 24 that the Examiner designates as vertexes. See Ans. 9. In addition to Okamura and Sittig, the Examiner includes newly cited Freeman (US 3,493,087), issued Feb. 3, 1970, which the Examiner considers to show the claimed limitation. Id. A copy of the Examiner’s annotated Figure 2 of Freeman is reproduced below. 6 We refer to the machine translation contained in the image file wrapper of this application. Appeal 2019-005901 Application 15/603,507 8 Id. Figure 2 shows a side view of the ratchet disc. Freeman 3:34. The Examiner’s annotations include lead lines extending to several elements that the Examiner considers segments, and include lead lines extending to several points that the Examiner designates as vertexes. See Ans. 10. In reply, Appellant reiterates its argument about Figure 6d of Okamura, asserting that Okamura’s “oil groove 41 does not form sectors spreading both outwardly and inwardly from facing vertexes.” Reply Br. 2. As to Figure 11 of Sittig, Appellant argues that, even without intervening friction material segments 23, 27, oil grooves 16 only spread inwardly from the Examiner’s identified facing vertexes. Id. at 3. According to Appellant, newly cited Freeman does not teach the claimed feature because each of Freeman’s “oil grooves 19 has a constant width along their respective Appeal 2019-005901 Application 15/603,507 9 length, meaning that the oil grooves 19 do not spread either outwardly or inwardly from vertexes defined by the portions 18.” Id. at 4. Appellant has the better position. Claim 1 recites “each oil groove forming sectors spreading both outwardly and inwardly from said facing vertexes.” Appellant’s Figure 2 is reproduced below. Fig. 2 is an enlarged partial front view of a principal part of a friction plate. Spec. ¶¶ 16–17. As seen in Figure 2, “oil groove 16a formed by the adjacent friction material segments 14 has sectors, namely, the larger, inner one and the smaller outer one.” Spec. ¶ 20. Similarly, “oil groove 16b formed by the adjacent friction material segments 14 has sectors, namely, the larger, outer one and the smaller, inner one.” Id. “Each oil groove 16 forms a pair of sectors which spread in both directions, namely, toward the side of inner circumference and the perimeter,” that is, inwardly and outwardly. Id. “As shown in Fig. 2, the sectors of the oil groove 16a formed by the adjacent Appeal 2019-005901 Application 15/603,507 10 edges of the friction material segments 14 are characterized by the perimeter side vertexes 14a.” Spec. ¶ 22. “On the other hand, the sectors of the oil groove 16b formed by the adjacent edges of the friction materials 14 are characterized by the inner circumference side vertexes 14b.” Id. Thus, each oil groove 16a forms sectors 14 that spread outwardly from facing vertexes 14a toward “a” and spread inwardly toward “c.” Similarly, each oil groove 16b forms sectors 14 that spread outwardly from facing vertexes 14b toward “b” and spread inwardly toward “d.” Id. Although each oil groove 41 of Okamura’s Figure 6d appears to include sectors that spread inwardly and outwardly, the claims require that sectors spread inwardly and outwardly from the facing vertexes. That is, the spread starts at the vertexes.7 From the vertexes indicated in the Examiner’s annotated Figure 6d of Okamura (see Ans. 7), the sectors appear to include an initial parallel portion and then spread outwardly, and spread laterally (circumferentially) before spreading inwardly (toward the inner circumference). Okamura’s sectors do not spread inwardly and outwardly from the facing vertexes. Similarly, in the Examiner’s annotated version of Figure 11 of Sittig, the sectors spread inwardly from the vertexes identified by the Examiner, but spread circumferentially (transversely) before spreading outwardly (toward the perimeter). Sittig’s sectors do not spread inwardly and outwardly from the facing vertexes. 7 “from” is “used as a function word to indicate a starting point of a physical movement or a starting point in measuring or reckoning or in a statement of limits.” Merriam-Webster.com/dictionary/from, last accessed March 18, 2020. This definition is consistent with use of the term throughout Appellant’s Specification. Appeal 2019-005901 Application 15/603,507 11 Notwithstanding that Freeman is not properly before the Board, we agree with Appellant that each of Freeman’s oil grooves 19 appears to have a constant width, and do not spread either outwardly or inwardly. See Reply Br. 4. That is, although facing sides of adjacent segments extend inwardly and outwardly from facing vertexes, the oil grooves of Freeman do not form sectors that spread inwardly and outwardly as required by claim 1. The Examiner’s finding (Final Act. 11) that shaping sectors of oil grooves to spread inwardly and outwardly from the same facing vertexes, employs a known technique, is not supported by a preponderance of the evidence. Nor do we agree with the Examiner’s assertion that “[c]hanging the shape of a known feature is” as an obvious design choice, “absent compelling secondary considerations.” See Final Act. 11. For design choice, the Court of Customs and Patent Appeals held that the configuration of the claimed container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that “the particular configuration of their container was significant” (Application of Dailey, 357 F.2d 669 (CCPA 1966)), not absent compelling secondary considerations. Appellant asserts that at least paragraphs 12, 21, and 27 disclose that the claimed limitation reduces drag torque compared to the conventional technology by controlling the movement of the lube oil. Appeal Br. 12–13. Because Appellant has provided unrebutted evidence that the claimed configuration has a “technical significance and advantage” (Appeal Br. 12), we are persuaded by Appellant’s argument that “the Office did not advance a ‘convincing line of reasoning’ why including the above noted claim feature was an obvious matter of design choice.” Id. at 14. For Appeal 2019-005901 Application 15/603,507 12 these reasons, we do not sustain the rejection of claim 1, and claims 3, 4, and 7, which depend from claim 1. CONCLUSION The Examiner’s rejections are REVERSED. More specifically, DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 3, 7 112(b) Indefiniteness 3, 7 1, 3, 4, 7 103 McDowall, Okamura, Sittig 1, 3, 4, 7 Overall Outcome: 1, 3, 4, 7 REVERSED