Ex Parte Hanna et alDownload PDFPatent Trial and Appeal BoardJun 15, 201713014200 (P.T.A.B. Jun. 15, 2017) Copy Citation 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. 13/014,200 01/26/2011 Michael D. Hanna P011043-RD-SDJ 1143 104102 7590 BrooksGroup 48685 Hayes Shelby Township, MI 48315 06/16/2017 EXAMINER WILLIAMS, THOMAS J ART UNIT PAPER NUMBER 3657 MAIL DATE DELIVERY MODE 06/16/2017 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 MICHAEL D. HANNA, JAMES A. WEBSTER, and RICHARD M. KLEBER Appeal 2015-007818 Application 13/014,200 Technology Center 3600 Before EDWARD A. BROWN, GEORGE R. HOSKINS, and SEAN P. O’HANLON, Administrative Patent Judges. BROWN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Michael D. Hanna et al. (Appellants)1 appeal under 35 U.S.C. § 134(a) from the Examiner’s decision rejecting claims 1—6, 8—11, 20—27, 39-42, 44-47, 58—62, and 64—71.2 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 General Motors LLC is identified as the real party in interest. Appeal Br. 4. 2 Claims 7, 12—19, 28—34, 38, and 43 have been cancelled; claims 35—37, 49-57, and 63 have been allowed; and claim 48 has been objected to as depending from a rejected base claim, but indicated to contain allowable subject matter. Appeal Br. 4; Final Act. 1 (Office Act. Summ.). Appeal 2015-007818 Application 13/014,200 CLAIMED SUBJECT MATTER Appellants’ disclosure “relates generally to molded components and, more particularly, to molded components having at least one visible design feature, reduced weight, or increased strength via selective inclusion of a porous preform forming a mixed-material composite.” Spec. 11. Claims 1, 20, 22, 39, 48, and 58 are independent. Claim 1, reproduced below, illustrates the claimed subject matter. 1. A brake rotor comprising: a rotor body having a primary portion and a visible design portion, wherein: the primary portion comprising a metal; the visible design portion comprising a mixed-material composite including a porous structure and the metal; the primary portion of the rotor body comprising a frictional surface to be contacted by a rotor pad in operation of the rotor; and the design portion comprising a design surface adjacent the frictional surface of the rotor body. Appeal Br. 24 (Claims App.). REJECTIONS3 1. Claims 66 and 69 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 67 and 70 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 3 A rejection of claims 67 and 70 under 35 U.S.C. § 101 has been withdrawn. Ans. 2; Final Act. 3. 2 Appeal 2015-007818 Application 13/014,200 3. Claims 39-42, 44, 45, 58—60, and 64 are rejected under 35 U.S.C. § 102(b) as anticipated by Kimura (JP 2002-126865 A, published May 8, 2002). 4. Claims 58 and 59 are rejected under 35 U.S.C. § 102(b) as anticipated by Rau (WO 2007/033378 Al, published Mar. 22, 2007). 5. Claims 1—6, 8—11, 20, 21, and 65—71 are rejected under 35 U.S.C. § 103(a) as unpatentable over Murata (JP 5-126178 A, published May 21, 1993) and Rau. 6. Claims 22—27 are rejected under 35 U.S.C. § 103(a) as unpatentable over Novak (US 6,811,003 B2, issued Nov. 2, 2004) and Rau. 7. Claims 46, 47, 61, and 62 are rejected under 35 U.S.C. § 103(a) as unpatentable over Kimura and Rau. ANALYSIS Rejection 1 — Claims 66 and 69 under 35 U.S.C. § 112, first paragraph, written description requirement Claim 65 recites that “the porous structure comprising a preform including a body and a plurality of holes formed in the body.” Appeal Br. 33 (Claims App.). Claim 66 depends from claim 65 and recites the limitation “the plurality of holes are equally spaced from each other.” Id. Claim 69 recites the same limitation as claim 66. Id.4 The Examiner determines that the original Specification does not disclose the specific spacing of the holes in the preform. Final Act. 2. Rather, the Examiner determines, the presence of holes in the preform is only supported by the 4 Claim 69 depends from claim 20; however, claim 20 does not provide antecedent basis for the limitation of claim 69. Appeal Br. 33 (Claims App.). It appears claim 69 should instead depend from claim 68. Id. 3 Appeal 2015-007818 Application 13/014,200 drawing figures, particularly Figure 1, and “unless [FJigure 1 is indicated as being to scale one cannot rely on the figure for supporting the recitation ‘holes are equally spaced apart from each other.’” Id. Appellants assert that “[possession may be shown ... by showing that the invention was ‘ready for patenting’ such as by the disclosure of drawings.” Appeal Br. 13 (citing MPEP § 2163(1)). Appellants contend that: Figure 1 need not indicate that the figure is to scale in order to establish a preform with equally spaced holes. 35 U.S.C. §112 merely requires the Applicant[s] to submit figures that would “enable ” one of ordinary skill in the art. There is no requirement that Applicants] submit drawings that function as technical illustrations depicting actual, mathematically equally spaced holes in order to satisfy 35 U.S.C. § 112. Reply Br. 4 (emphasis added). Appellants’ contentions are not persuasive. As for the written description requirement of 35 U.S.C. § 112, first paragraph, “the test for sufficiency is whether the disclosure of the application relied upon reasonably conveys to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.” Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc) (emphasis added). To show “possession,” “the specification must describe an invention understandable to that skilled artisan and show that the inventor actually invented the invention claimed.” Id. The limitation that “the plurality of holes are equally spaced from each other” is not recited in any of the original claims. We also are unable to find this limitation described in the Specification. We construe this 4 Appeal 2015-007818 Application 13/014,200 limitation to mean that the plurality of holes are the same distance from each other. We next determine whether the drawings provide support for claims 66 and 69. We disagree with Appellants’ assertion that “35 U.S.C. §112 merely requires the Applicants] to submit figures that would ‘enable’ one of ordinary skill in the art.” Reply Br. 4. As explained in Ariad, “this court has consistently held that § 112, first paragraph, contains a written description requirement separate from enablement. . . .” Ariad, 598 F.3d at 1351 (emphasis added). Although Figure 1 shows clearly that porous structure 100 has a plurality of holes, Appellants do not direct us to any description in the Specification that those holes are “equally spaced,” that is, a particular distance from each other. Nor does the Specification indicate that Figure 1 is drawn to scale. See Hockerson-Halberstadt, Inc. v. Avia Group Int 7, 222 F.3d 951, 956 (Fed. Cir. 2000) (“[I]t is well established that patent drawings do not define the precise proportions of the elements and may not be relied on to show particular sizes if the specification is completely silent on the issue.”). Accordingly, we are not persuaded that the original disclosure demonstrates Appellants had possession of the subject matter recited in claims 66 and 69. Thus, we sustain the rejection of claims 66 and 69 under 35 U.S.C. § 112, first paragraph, written description requirement. Rejection 2 — Claims 67 and 70 under 35 U.S.C. § 112, second paragraph Claims 67 and 70 both recite that “the visible design portion has the shaped [sic] of a logo.” Appeal Br. 33 (Claims App.). The Examiner determines that “logo” is a “relative term,” rendering claims 67 and 70 indefinite. Final Act. 3. The Examiner states that a “logo” is not defined by the Specification, and “[a] corporate logo can assume many shapes, designs 5 Appeal 2015-007818 Application 13/014,200 and forms and as such is unlimited.” Ans. 2. The Examiner states that “[a] logo to one person may not be a logo to another,” and, as such, the metes and bounds of claims 67 and 70 are not clearly defined. Final Act. 3. Appellants state that “[a] Togo’ is commonly understood to include any representation or symbol that is typically uniquely designed for ease of recognition” (Appeal Br. 11) and that “[t]he term Togo’ is defined as: a ‘graphic representation or symbol of a company name, trademark, abbreviation, etc., often uniquely designed for ready recognition” {id. at 13; see also id. at 20 (citing dictionary.reference.com)). Appellants contend that the term “logo” is not a relative term. Id. at 13. Appellants’ contentions are persuasive. The Specification describes that “[i]n some embodiments, the porous structure is shaped to form an emblem such as a trademarked logo of a company. ” Spec. | 64 (emphasis added). This description indicates that a “logo” is an example of an “emblem.” The Specification does not describe that a “logo” has any particular structure. By not specifying particular structure, claims 67 and 70 are broad, but merely because a claim is broad does not mean that it is necessarily indefinite. See In re Miller, 441 F.2d 689, 692—693 (CCPA 1971). Rather, when these claims are read in light of the disclosure, their meanings are sufficiently definite. Thus, we do not sustain the rejection of claims 67 and 70 under 35 U.S.C. § 112, second paragraph. Rejection 3 — Claims 39—42, 44, 45, 58—60, and 64 as anticipated by Kimura Claims 39, 40, 42, 44, and 45 As to claim 39, the Examiner finds that Kimura discloses a brake rotor comprising hat portion lb, frictional disc portion 10 including mixed- material composite 3 comprising a porous structure saturated with a metal 6 Appeal 2015-007818 Application 13/014,200 (i.e., aluminum), in which mixed material composite 3 does not extend to a frictional surface of frictional disc portion 10. Final Act. 4 (citing Kimura, Fig. 6,114).5 The Examiner finds that thin film 11 covers porous structure 3 for at least a period of use. Id. (citing Kimura 116). Appellants contend that Kimura is non-enabling. Appeal Br. 14. “A claimed invention cannot be anticipated by a prior art reference if the allegedly anticipatory disclosures cited as prior art are not enabled.” Amgen, Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1354 (Fed. Cir. 2003). Prior art patents and printed publications cited by the Patent and Trademark Office (“PTO”) in rejections are presumed to be enabling. In reAntor Media Corp., 689 F.3d 1282, 1288 (Fed. Cir. 2012). [Djuring patent prosecution, an examiner is entitled to reject claims as anticipated by a prior art publication or patent without conducting an inquiry into whether or not that prior art reference is enabling. As long as an examiner makes a proper prima facie case of anticipation by giving adequate notice under [35 U.S.C.] § 132, the burden shifts to the applicant to submit rebuttal evidence of nonenablement. Id. at 1289.6 “Enablement of prior art requires that the reference teach a skilled artisan—at the time of filing—to make or carry out what it discloses in relation to the claimed invention without undue experimentation.” In re Morsa, 803 F.3d 1374, 1377 (Fed. Cir. 2015). 5 The Examiner refers to the English translation of Kimura as “Kimura.” For consistency, we will also. 6 The PTO satisfies 35 U.S.C. § 132 by “notifying] the applicant. . . [by] stating the reasons for [its] rejection . . . together with such information and references as may be useful in judging of the propriety of continuing the prosecution of [the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011) (alterations in original). 7 Appeal 2015-007818 Application 13/014,200 Appellants contend that the Kimura translation does not have any description for Figure 6 or element 11 in the disclosure. Appeal Br. 14 (citing “SF2”).7 We disagree. Kimura describes Figure 6 at paragraphs 14 and 16, and thin film 11 at paragraphs 16 and 21. The Examiner’s Answer further explains how the cited portions of Kimura disclose all of the claim limitations. See Ans. 3. Appellants reply by contending that “[t]he sections of Kimura which the Examiner references have not been translated clearly enough to be enabling to one of ordinary skill in the art to carry out the claimed invention.” Reply Br. 5. This contention does not explain with any specificity why the sections of Kimura “have not been translated clearly enough to be enabling,” or otherwise apprise us of Examiner error. Appellants do not provide persuasive argument or evidence to show that one skilled in the art would be unable to make the anticipating subject matter without undue experimentation. Accordingly, we sustain the rejection of claim 39, and claims 40, 42, 44, and 45 depending therefrom and not separately argued, as anticipated by Kimura. Claim 41 Claim 41 depends from claim 39 and recites that “the porous structure comprises a substance comprising at least one of: a metal, or a ceramic.” Appeal Br. 29 (Claims App.). The Examiner finds that Kimura discloses 7 The Appeal Brief includes a Statement of the Facts section presenting statements of fact (“SF”) SF1—SF11. Appeal Br. 20—22. SF2 states, “Kimura merely discloses an aluminum brake rotor having a load sliding portion in which the pad of the outer peripheral part of the brake rotor carries out sliding contact wherein the load sliding part comprises an aluminum impregnated ceramic mesh.” Id. at 20 (citing Kimura 114). 8 Appeal 2015-007818 Application 13/014,200 porous structure 3 comprising a ceramic mesh. Final Act. 4 (citing Kimura 114). Appellants contend that Kimura does not identically disclose or suggest the limitation of claim 41. Appeal Br. 15 (citing “SF4”). SF4 states, in relevant part, that “Kimura merely discloses a metallic casting component. See Field of the Invention.” Id. at 20. This contention is not persuasive. Kimura discloses ceramic mesh 3 impregnated with aluminum. See Kimura ]Hf 13—14. As such, the impregnated material comprises porous ceramic and metal, and thus, meets the limitation of claim 41. As Appellants do not apprise us of Examiner error, we sustain the rejection of claim 41 as anticipated by Kimura. Claims 58—60 and 64 The Examiner finds that Kimura discloses all limitations of claim 58. Final Act. 5 (citing Kimura 114, Figs. 6, 14). Appellants contend that the Examiner has not shown where Kimura discloses the limitation “the frictional disc portion includes within it a mixed-material composite comprising a porous structure substantially saturated with a body material, wherein the porous structure comprising a preform including a body and a plurality of holes formed in the body.” Appeal Br. 15. The Examiner responds that, in Kimura, “the preform is intended to be saturated by the surrounding metal during the molding process, see paragraph 14 line 4, in which it is stated ... sliding part 2 comprises the aluminum impregnating ceramic mesh 3. The mesh being impregnated is thus properly interpreted as being saturated by the surrounding metal.” Ans. 3. 9 Appeal 2015-007818 Application 13/014,200 Appellants’ contention does not apprise us of any error in the Examiner’s findings, or explain persuasively why Kimura does not disclose the disputed limitation of claim 58. Rather, Appellants’ contention amounts essentially to stating what claim 58 recites and asserting generally that Kimura does not disclose the claim limitations. This is insufficient. See 37 C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim recites will not be considered an argument for separate patentability of the claim.”); see also In re Lovin, 652 F.3d 1349, 1356 (Fed. Cir. 2011). Thus, we sustain the rejection of claim 58, and claims 59, 60, and 64 depending therefrom and not separately argued, as anticipated by Kimura. Rejection 4 — Claims 58 and 59 as anticipated by Rau The Examiner finds that Rau discloses all limitations of claim 58. Final Act. 5. Particularly, the Examiner finds that Rau discloses a brake rotor comprising a frictional disc portion including a mixed-material composite 2 comprising a porous structure saturated with a body material (i.e., a porous ceramic preform having holes), and vanes formed between adjacent vent passages 16 to form two sub-disc assemblies, with the mixed material composite located in each disc sub-assembly. Id. (citing Rau, Fig. 14 A). Appellants contend that Rau discloses a “porous ceramic preform” and fails to disclose “a mixed-material composite comprising a porous structure substantially saturated with a body material. . . wherein the porous structure comprising a preform including a body and a plurality of holes formed in the body,” as claimed. Appeal Br. 16 (citing SF7, SF8). The Examiner responds that Rau discloses a preform having pores infiltrated by a metal. Ans. 3 (citing Rau 9:3—15, 13:1—28, and 28:8—17). 10 Appeal 2015-007818 Application 13/014,200 The Examiner notes that Appellants’ Specification describes that the mixed material composite can be a porous ceramic material, and finds that Rau discloses that the ceramic preform can comprise a variety of materials. Id. at 3^4 (citing Spec. Tflf 35, 41; Rau 13:1—5). The Examiner notes that Rau describes “MMC materials,” and the Examiner correctly interprets “MMC” as meaning “mixed-material composite.” Id. at 4; see, e.g., Rau 19:20. Appellants do not explain persuasively why Rau does not disclose a mixed-material composite, as claimed. Appellants state generally what claim 58 recites, but do not address the specific findings made by the Examiner. This is insufficient. See Jung, 637 F.3d at 1365 (“it has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections”). As Appellants do not apprise us of any error in the Examiner’s findings, we sustain the rejection of claim 58 and dependent claim 59 as anticipated by Rau. Rejection 5 —Claims 1—6, 8—11, 20, 21, and 65—71 as unpatentable over Murata and Rau Claims 1—6, 8—11, 65—67, and 71 Claim 1 recites a brake rotor comprising, inter alia, a rotor body having a “visible design portion,” and “the design portion comprising a design surface adjacent the frictional surface of the rotor body.” Appeal Br. 24 (Claims App.) (emphasis added). The Examiner finds that Murata discloses a brake rotor comprising rotor body 10 having primary portion 14 and visible design portion 18 (“the design portion is a ring when viewed from above, see [Fjigure 2”). Final Act. 6. The Examiner also finds that Murata teaches that the design portion comprises a ceramic material, but does not teach that the design portion comprises a mixed material composite that includes a porous structure and a metal. Id. The Examiner finds that 11 Appeal 2015-007818 Application 13/014,200 Rau teaches a porous ceramic structure infiltrated with a metal that forms a mixed material composite. Id. at 7. The Examiner concludes that it would have been obvious to one of ordinary skill to replace the ceramic structure of Murata with the porous ceramic structure forming a mixed material composite, as taught by Rau, to provide a light weight, wear resistant design structure that is integrally attached to the surrounding metal. Id. Appellants contend that Murata’s “ring portion” is not a “design portion,” but “is merely a product of the circular shape of any brake rotor.” Appeal Br. 17 (citing SF9). Appellants also contend that Rau does not disclose, and the combination of Murata and Rau does not suggest, a “design portion comprising a design surface adjacent the frictional surface of the rotor body.” Id. (citing SF6—SF8). Consequently, Appellants contend, the Examiner has not presented a prima facie case of obviousness. Id. The Examiner responds that: When looking upon the brake rotor of Murata as in [Fjigure 2, one sees a ring about the outer rotor edge. This ring is separate from a primary friction portion 14 and appears as a design. This is not so different from the annular ring that represents a visible design portion of the instant invention as seen in [F]igure[s] 15 or 16. Ans. 4. Appellants’ contentions are not persuasive. Appellants do not direct us to a definition of a “design portion” in the Specification. We note that a “design feature” is described in the Specification, and that design feature 302 is shown in Figure 3. See, e.g. Spec. 1 53, Fig. 3. The design feature 302 is formed by inclusion of a porous structure, such as porous structure 100 or 200. Id. 1 53. Figures 1 and 2 show porous structures 100, 200. The Specification describes that: 12 Appeal 2015-007818 Application 13/014,200 The porous structure may include any of a variety of configurations, including size, shape, and materials. Regarding shape, for example, the porous structure is in some embodiments shaped to form a design feature having at least one letter and in some cases one or more words. In some embodiments, the porous structure is shaped to form an emblem such as a trademarked logo of a company. Spec. 1 64. This description does not limit the shape of the “design feature.” Appellants do not direct us to any other disclosure that precludes the Examiner from finding that the claimed “design portion” reads on Murata’s ring structure. Moreover, the “visible design portion” and “design surface” describe the ornamental appearance of the rotor body. Aspects of these claim features that relate to “ornamentation only and have no mechanical function whatsoever” cannot be relied upon for patentability of a claim in a utility patent application. In re Seid, 161 F.2d 229, 231 (CCPA 1947). Accordingly, we sustain the rejection of claim 1, and claims 2—6, 8— 11, 65—67, and 71, which depend from claim 1 and are not separately argued, as unpatentable over Murata and Rau. Claims 20, 21, and 68—70 As to claim 20, the Examiner’s findings and reasoning (Final Act. 6) and Appellants’ contentions (Appeal Br. 17) are substantially the same as for claim 1. Accordingly, we sustain the rejection of claim 20, and claims 21 and 68—70, which depend from claim 20 and are not separately argued, as unpatentable over Murata and Rau. Rejection 6— Claims 22—27 as unpatentable over Novak and Rau Claim 22 recites a brake rotor comprising, inter alia, a hat portion comprising a hub frictional surface section, which “comprises a mixed- 13 Appeal 2015-007818 Application 13/014,200 material composite comprising a porous structure substantially saturated with the body material,” “wherein the porous structure comprising a preform including a body and a plurality of holes formed in the body.” Appeal Br. 26 (Claims App. (emphasis added)). The Examiner finds that Novak discloses brake rotor 8 comprising, inter alia, hat portion 100 including hub body section 104 and hub frictional surface section 106, but does not disclose that hub frictional surface section 106 comprises a mixed-material composite comprising a porous structure saturated with a body material. Final Act. 8; see Novak, Figs. 1, 2. The Examiner finds that Rau teaches a drum brake interior surface having a hub frictional surface section comprising a mixed-material composite comprising porous preform structure 2 saturated with a body material. Final Act. 8. The Examiner further finds that Rau’s porous structure is provided with pores or “window holes.” Id. (citing Rau 13:12—24). The Examiner determines that this porous structure would provide a wear resistant friction surface on the interior of the hat of Novak. Id. The Examiner concludes that it would have been obvious to provide the interior surface of Novak’s hat with a wear resistant mixed material composite porous structure, as taught by Rau, to increase life expectancy of the interior braking surface. Id. at 8—9. Appellants contend that Novak merely discloses a means of mounting a wheel on a vehicle, and neither Novak nor Rau discloses or suggests the limitation “wherein the porous structure comprising a preform including a body and a plurality of holes formed in the body.” Appeal Br. 18 (citing SF6-SF8, SF11). Appellants’ contentions are not persuasive because they not address the Examiner’s specific findings and reasoning for claim 22. As Appellants 14 Appeal 2015-007818 Application 13/014,200 do not apprise us of any error in the Examiner’s findings, or rationale for combining the teachings of Novak and Rau, we sustain the rejection of claim 22, and claims 23—27 depending from claim 22 and not separately argued, as unpatentable over Novak and Rau. Rejection 7— Claims 46, 47, 61, and 62 as unpatentable over Kimura and Rau Appellants contend that Rau does not cure the deficiencies of Kimura with regard to claims 39 and 58. Appeal Br. 18—19. As Appellants do not apprise us of any deficiency in the rejection of claims 39 and 58, we sustain the rejection of dependent claims 46, 47, 61, and 62 as unpatentable over Kimura and Rau. DECISION The rejection of claims 66 and 69 under 35U.S.C. § 112, first paragraph, as failing to comply with the written description requirement, is affirmed. The rejection of claims 67 and 70 under 35 U.S.C. § 112, second paragraph, as being indefinite, is reversed. The rejection of claims 39-42, 44, 45, 58—60, and 64 under 35 U.S.C. § 102(b) as anticipated by Kimura is affirmed. The rejection of claims 58 and 59 under 35 U.S.C. § 102(b) as anticipated by Rau is affirmed. The rejection of claims 1—6, 8—11, 20, 21, and 65—71 under 35 U.S.C. § 103(a) as unpatentable over Murata and Rau is affirmed. The rejection of claims 22—27 under 35 U.S.C. § 103(a) as unpatentable over Novak and Rau is affirmed. 15 Appeal 2015-007818 Application 13/014,200 The rejection of claims 46, 47, 61, and 62 under 35 U.S.C. § 103(a) as unpatentable over Kimura and Rau is affirmed. No time period for taking any subsequent action in connection with this appeal maybe extended according to 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 16 Copy with citationCopy as parenthetical citation