Ex Parte Dupuis

Patent Trial and Appeal BoardSep 24, 2018

13712510 (P.T.A.B. Sep. 24, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/712,510 12/12/2012 10800 7590 09/25/2018 Maginot, Moore & Beck LLP One Indiana Square, Suite 2200 Indianapolis, IN 46204 FIRST NAMED INVENTOR Vincent Dupuis 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 2178-0593 1283 EXAMINER NGUYEN, XUAN LANT ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 09/25/2018 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte VINCENT DUPUIS 1 Appeal2018-002300 Application 13/712,510 Technology Center 3600 Before JOHN C. KERINS, AR THURM. PESLAK, and SEAN P. O'HANLON, Administrative Patent Judges. KERINS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Vincent Dupuis ("Appellant") appeals under 35 U.S.C. Â§ 134(a) from a final rejection of claims 1, 2, 5, 6, and 10-15. We have jurisdiction under 35 U.S.C. Â§ 6(b). We AFFIRM-IN-PART. 1 Robert Bosch GmbH is identified as being the real party in interest. Appeal Br. 2. Appeal2018-002300 Application 13/712,510 THE INVENTION Appellant's invention is directed to a brake disc with a surface coating. Claim 12, reproduced below, is illustrative: 12. A brake disk comprising: a friction surface that defines: at least one integral raised region configured to protrude into a surface coating, the surface coating provided with an initial thickness and having a minimum operating thickness that is less than the initial thickness and that defines a wear limit of the surface coating, the at least one integral raised region further configured to act as a wear indicator that becomes visible to an observer when the surface coating is worn down to the minimum operating thickness, the wear indicator defined by a substantially wavy annulus shape that is alternatingly adjacent an inner edge and an outer edge of the brake disk, wherein: the at least one integral raised region has a height which corresponds to the wear limit; and the surface coating covers said friction surface and said height of said at least one integral raised region; and at least one further integral raised portion configured to protrude into a further surface coating, the further surface coating provided with a further initial thickness and having a further minimum operating thickness that is less than the further initial thickness and that defines a wear limit of the further surface coating, the at least one further integral raised portion further configured to act as a further wear indicator that becomes visible to an observer when the further surface coating is worn down to the further minimum operating thickness, the further wear indicator defined by a substantially wavy annulus shape that is alternatingly adjacent the outer edge and the inner edge of the brake ring such that, in a circular direction, as the wear indicator approaches the inner edge and the outer edge, the further wear 2 Appeal2018-002300 Application 13/712,510 indicator respectively approaches the outer edge and the inner edge, wherein: the at least one further integral raised region has a height which corresponds to the further wear limit; the further surface coating covers said friction surface and said height of said at least one further integral raised region; and the at least one further integral raised region is raised such that the further wear indicator has a substantially semi-circular cross section; wherein the at least one further integral raised region and the further wear indicator are on a side of the brake disk facing away from the wear indicator. REJECTIONS The Examiner rejects claims 1, 2, 5, 6, and 10-15 under 35 U.S.C. Â§ 102(b) as anticipated by Khambekar (US 7,261,192 B2, issued Aug. 28, 2007). Final Act. 2. 2 The Examiner alternatively rejects claims 1, 2, 5, 6, and 10-15 under 35 U.S.C. Â§ 103(a) as being unpatentable over Khambekar. Id. The rejection of claims 12, 14, and 15 under 35 U.S.C. Â§ 102(b) as being anticipated by Khambekar was later withdrawn, and is not part of this appeal. Ans. 8. 2 The heading for this ground of rejection fails to identify claims 14 and 15 as being subject to the rejection. However, the detailed grounds include findings and conclusions relative to these claims. Final Act. 7-9. Accordingly, the omission of those claims from the heading is regarded as a harmless clerical error. 3 Appeal2018-002300 Application 13/712,510 ANALYSIS Claims 1, 2, 5, 6, 10, 11, and 13 Appellant expressly states that rejected claims 1, 2, 5, 10, 11, and 13 are pending in the application, but are not subject to this appeal. Appeal Br. 2. These claims remain rejected as anticipated underÂ§ 102 and as unpatentable under Â§ 103. With no arguments having been presented traversing the rejections, any such arguments that may have been made are waived. The rejections of these claims are therefore summarily sustained. Claim 6 was canceled in an Amendment filed contemporaneously with the filing of the Appeal Brief under 37 C.F.R. Â§ 41.33, on July 12, 2016. Claims 12, 14, and 15--35 U.S.C. Â§ 103(a)--Khambekar The Examiner finds that Khambekar discloses a disk having a friction surface 2 having an integral raised region which is configured to protrude into a surface coating 8. Final Act. 3. The Examiner avers that the surface coating has a minimum operating thickness that defines a wear limit of the surface coating, such that the integral raised region of the disk is capable of acting as a wear indicator that becomes visible when the surface coating is worn down to the minimum operating thickness. Id. The Examiner further opines that common sense would cause a person of ordinary skill in the art to realize that, since the coating has been worn, the disk would need to be refurbished. Id. The Examiner concludes that it would have been obvious in view thereof to have used the integral raised region as a wear indicator. Id. The Examiner acknowledges that Khambekar does not disclose that the wear indicator is to be of a wavy shape, but notes that changes in shape 4 Appeal2018-002300 Application 13/712,510 are merely a matter of choice and would have been obvious to a person of ordinary skill in the art. Id. at 5. The Examiner did not make any additional findings or present any conclusion as to alleged obviousness of the claim limitation requiring that a further wear indicator on a second side of the disk is oriented on the second side such that, in a circular direction, as the first wear indicator approaches the inner edge and the outer edge, the further wear indicator respectively approaches the outer edge and the inner edge. In response to arguments raised by Appellant, the Examiner takes the position that there is no criticality to positioning the first and further wear strips in the claimed manner. Ans. 9-10. Appellant argues that the Examiner's position relative to "common sense" being all that is necessary to realize that when the integral raised region of the disk is visible, the coating has been worn to the point of requiring refurbishment, lacks evidentiary support, and is contrary to that which is taught in Khambekar. Appeal Br. 14. As to the latter, Appellant points out that Khambekar envisions continuing to use the brake disk after the point at which grooves 10 are exposed, and that the grooves operate to avoid an abrupt transition to the cast iron material of the brake disk body after the outer portion of coating 8 has been worn off. Id., citing Khambekar 5:34--44. Appellant additionally maintains that the fact that the Khambekar brake disk is to continue to be used past the point at which the raised portions of the brake disk body are exposed also is indicative that the height of those raised portions is not at a minimum operating thickness of the coating. Id. Appellant has the better position. The Examiner's position that the raised portions of the Khambekar brake disk, when visible, will dictate that 5 Appeal2018-002300 Application 13/712,510 the brake disk is to be refurbished, runs counter to the disclosed use of the brake disk in Khambekar. Khambekar does not disclose taking the brake disk out of service for refurbishment, rather, Khambekar discusses transitioning from braking with the surface coating, to braking using the gray cast iron material after the coating is completely abraded. Khambekar 5:34--44. As such, the Examiner's reliance on "common sense" is conclusory rather than being supported by substantial evidence, and is thus not proper. Arendi S.A.R.L. v. Apple, Inc., 832 F.3d 1355 (Fed. Cir. 2016) ( assertions of common sense as rationale to modify to include missing limitations must be supported by substantial evidence). The Examiner's position regarding the difference in the shape of the claimed raised portion and the shape of the raised portion as being an obvious change in shape relies on Section 2144(iv)(B) of the MPEP for support. Final Act. 5; Ans. 9. That section identifies In re Dailey3 as supporting the obviousness of changes in shape. Appellant maintains that the facts in the Dailey decision differ considerably from the present situation. Appeal Br. 11-13. The Examiner provides no substantive response. The lack of analysis on the part of the Examiner treads perilously close to reliance on a per se rule of obviousness, a practice that is looked upon with disfavor by our reviewing court. In re Ochiai, 71 F.3d 1565, 1572 (Fed. Cir. 1995). Seeing no rebuttal to Appellant's argument, we are not able to support the Examiner in this aspect of the rejection either. Accordingly, the rejection of claims 12, 14, and 15 as being unpatentable over Khambekar is not sustained. 3 357 F.2d 669 (CCPA 1966). 6 Appeal2018-002300 Application 13/712,510 DECISION We affirm the rejection of claims 1, 2, 5, 10, 11, and 13 under 35 U.S.C. Â§ 102(b) as being anticipated by Khambekar, and under 35 U.S.C. Â§ 103(a) as being unpatentable over Khambekar. We reverse the rejection of claims 12, 14, and 15 under 35 U.S.C. Â§ 103(a) as being unpatentable over Khambekar. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). AFFIRMED-IN-PART 7