Ex Parte Hanna et al

Patent Trial and Appeal Board

May 25, 2017

12174163 (P.T.A.B. May. 25, 2017)

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.
12/174,163 07/16/2008 Michael D. Hanna P001467-R&D-JMC 8175
104102 7590
BrooksGroup
48685 Hayes
Shelby Township, MI 48315
05/25/2017 EXAMINER
NGUYEN, VU Q
ART UNIT PAPER NUMBER
3657
MAIL DATE DELIVERY MODE
05/25/2017 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, MOHAN SUNDAR,
JAMES G. SCHROTH, and THOMAS C. ZEBEHAZY
Appeal 2016-000024
Application 12/174,163
Technology Center 3600
Before: STEFAN STAICOVICI, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael D. Hanna et al. (Appellants) appeal under 35 U.S.C. § 134
from a Final Rejection of claims 1—4, 6—10, and 13—32. Claims 5,11, and
12 are withdrawn. Final Act. 1 (mailed Oct. 20, 2014). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2016-000024
Application 12/174,163
CLAIMED SUBJECT MATTER
The claims are directed to a damped part. Claim 1, reproduced below,
is illustrative of the claimed subject matter:
1. A product comprising:
a part comprising a body comprising a metal, said body
including a first face;
an insert, said insert having a first face; and
a non-load transmitting frictional damping layer
comprising at least one of particles, flakes, or fibers, the layer
having a thickness ranging from about 1 pm to about 500 pm,
said frictional damping layer located between said first face of
said body and said first face of said insert wherein frictional
damping is caused by movement of the particles, flakes, or fibers
against each other, against a binder material or against one of
said first face of said body or said first face of said insert.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Kraft US 3,494,884 Feb. 10, 1970
Snyder US 5,143,184 Sept. 1, 1992
Gagliardi US 5,562,745 Oct. 8, 1996
Reynolds US 5,819,882 Oct. 13, 1998
Saum US 5,878,843 Mar. 9, 1999
REJECTIONS
(I) Claims 28 and 29 are rejected under 35 U.S.C. § 112, second
paragraph, as indefinite.
(II) Claims 1—3, 6—10, 20, 21, and 24—32 are rejected under 35
U.S.C. § 103(a) as unpatentable over Reynolds and Snyder.
(III) Claim 4 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reynolds, Snyder, and Saum.
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Application 12/174,163
(IV) Claims 13—17, 19, 22, and 23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Reynolds, Snyder, and Kraft.
(V) Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable
over Reynolds, Snyder, Kraft, and Gagliardi.
OPINION
Rejection (I), claims 28 and 29
The Examiner finds that the limitations “a minimum width” and “a
minimum length” are unclear because claim 1 (from which claims 28 and 29
depend) provides no basis for the shape of the insert. Final Act. 2. The
Examiner states that for an annular insert as recited in claim 3, “it is unclear
exactly what the width and length refers to.” Id.
Appellants assert that the claims are clear because the insert can have
various shapes and does not require an annular shape. Appeal Br. 7 (citing
Spec. 38). Appellants contend that “one of ordinary skill in the art when
reading the specification would understand what is being referred to by
thickness, width and length.” Id. at 8.
The Examiner responds that although the Specification provides
support for various shapes, the Specification does not clarify whether the
tabs are included in the length or where the length is measured from for an
annular insert. Ans. 2.
Appellants reply that the claims are “not indefinite because ‘the
components of the term have well recognized meanings, which allow the
reader to infer the meaning of the entire phrase with reasonable
confidence.’” Reply Br. 7 (citing Bancorp Serv., L.L.C. v. Hartford Life Ins.
Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). Appellants assert that one of
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Application 12/174,163
ordinary skill would be able to determine a minimum value for the recited
dimensions based on what is disclosed in the Specification. Id.
We agree with Appellants that the claims are not indefinite because
the terms “length” and “width” have well recognized meanings. Although
we appreciate that claim 1, from which claims 28 and 29 depend, is not
limited to a particular shape, one of ordinary skill in the art upon reading the
Specification would understand what is required to determine the minimum
length and width, even if the shape is an annular one. See Spec. para. 58.
By not specifying the exact shape of the claimed insert, the claim is merely
broad, not ambiguous. In this regard, we note that claim 28 requires that the
length of the insert be at least 0.1 mm, not that a sub-portion of the insert
meet this requirement.1 Claims 28 and 29 particularly point out the subject
matter which Appellants regard as their invention. Accordingly, we reverse
the Examiner’s rejection of claims 28 and 29 as indefinite.
Rejection (II), claims 1—3, 6—10, 20, 21, and 24—32
The Examiner finds that Reynolds discloses many of the features
recited in claim 1, but does not disclose an insert and a non-load transmitting
frictional damping layer as recited. Final Act. 3. Nonetheless, the Examiner
finds that Snyder discloses an insert (12) and a non-load transmitting
frictional damping layer (70). Id. at 4. The Examiner notes that Snyder does
not disclose using the insert and frictional damping layer together, but that
using them together would have been obvious “to provide the predictable
result of more versatile and robust positive vibration damping,” because
Snyder teaches multiple layers for damping vibrations. Id. (citing Snyder,
1 Similarly, claim 28 requires that the width of the insert be at least 0.1 mm.
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Application 12/174,163
col. 3,11. 29—32). The Examiner reasons that it would have been obvious to
modify the part of Reynolds to include an insert and a frictional damping
layer as disclosed by Snyder to reduce or eliminate squeal vibration without
warpage or reduced strength. Id. As for frictional damping provided by
movement, the Examiner states:
The Examiner interprets that the insert [in Snyder] is said to be
integral to the brake disc because it is merely internal to the brake
disc, but this does NOT preclude the insert from interacting
within the one-piece brake disc. As there are several
embodiments of the insert, this is particularly evident when the
insert takes the form of shredded damping insert members (70;
see Fig. 15). Other embodiments include multiple insert
members layered to provide interacting surfaces (see column 3,
lines 29-32).
Adv. Act. 2 (mailed Jan. 7, 2015).
Appellants argue that “Snyder not only fails to teach or suggest each
and every feature of independent claim 1 but further teaches away from the
use thereof,” because Snyder discloses “an integral damping insert which
does not move.” Appeal Br. 9. Appellants assert that the single integral
piece of Snyder teaches away from elements that face each other and have
frictional damping between elements caused by relative movement of the
elements, as recited. Id. at 9—10.
The Examiner responds that the insert of Snyder is “integral to the
brake disc because it is merely internal to the brake disc, but this does not
preclude the insert from interacting or moving to a small degree within the
one-piece brake disc.” Ans. 3 (emphases omitted).
Appellants reply that the insert of Snyder cannot move because
Snyder discloses that “the damping insert member is located entirely within
the integral disc member so that it cannot migrate or move out of the disc
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Application 12/174,163
member.” Reply Br. 11 (internal citation and quotation omitted).
Appellants contend that “a prima facie showing of obviousness has not been
established as there is no suggestion in Snyder that the insert moves at all.”
Id. (emphasis omitted).
We do not find Appellants’ arguments to be persuasive because the
Examiner has adequately established that Snyder discloses frictional
damping “caused by movement of the particles, flakes, or fibers against each
other, against a binder material or against one of said first face of said body
or said first face of said insert,” as recited in claim 1. Although we
appreciate that the insert cannot move out of the disk, we agree with the
Examiner that this does not preclude all movement. Snyder distinguishes a
weak bond that promotes positive damping under dynamic loading from a
strong bond that induces hysteretic damping. Snyder, col. 3,11. 10—13 and 11.
36—39. One of ordinary skill in the art would understand that the dynamic
loading would break or loosen the weak bond to allow for interaction of the
shredded elements (i.e., flakes or fibers) against each other with the one-
piece brake disc. See Adv. Act. 2; see also Ans. 4. Snyder also discloses
that “[mjultiple layers of the damping insert member 12 would provide
additional surfaces for interacting and dampening squeal vibrations.”
Snyder, col. 3,11. 29-32 (emphasis omitted); Ans. 3. We agree with the
Examiner that interacting surfaces suggest movement.2 Snyder also
discloses using a thin insert so that “interfacial damping is dominant.” Id. at
col. 3,11. 32—34; Ans. 5. The term “interfacial” suggests a boundary
between two elements, not a homogenous one-piece element. As such, a
2 The term “interact” is defined as “act upon one another.” Merriam-
Webster Collegiate Dictionary (11th ed. 2005).
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Application 12/174,163
preponderance of the evidence supports the Examiner’s position that the
insert of Snyder can move either by the elements of the shredded
embodiment moving against each other, or by the shredded element moving
against the face of the insert, in the multi-layer embodiment, and that the
movement creates frictional damping at the face of the insert. Hence, we do
not find persuasive Appellants’ argument that the disclosure of Snyder is a
teaching that would lead one in a divergent direction from the claimed
invention.
Appellants also argue that any damping in Snyder is hysteric
damping, not frictional damping. Appeal Br. 10. Appellants assert that
“Snyder defines hysteric damping as ‘damping wherein internal work within
the material results in the dissipation of energy,”’ which is not frictional
damping consistent with the Specification. Id. at 11 (internal citation
omitted).
The Examiner responds that “Snyder clearly distinguishes between
positive damping and hysteretic damping as different types of damping.”
Ans. 3. The Examiner states that positive damping “implies or suggests that
with a weak or poor surface bond, there could be some small degree of
relative movement between the damping insert member and the brake
disc/rotor.” Id. at 4. The Examiner notes that Snyder’s disclosure of
multiple damping insert members “without any disclosure of any bonding
between the multiple damping insert members” suggests more than just
hysteretic damping, and that multiple surfaces interacting to provide positive
and/or interfacial damping as “disclosed by Snyder meets the claimed
frictional damping, as broadly recited.” Id. at 4—5.
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Application 12/174,163
Appellants reply that the portions of Snyder relied on by the Examiner
provide “no indication of any relative movement.” Reply Br. 14.
Appellants argue that “the Examiner cannot equate either positive or
hysteretic damping with the claimed ‘frictional damping’ because
nowhere in the reference is it taught that the insert (12, 70) moving
‘against’ or ‘independent’ of the brake disc in the reference, as there is
no disclosure that the insert moves at all.” Id.
Although Appellants do not explicitly define “frictional damping,” the
Specification discloses that frictional damping may include surfaces that
“move relative to each other and in frictional contact, so that vibration of the
part is dissipated by frictional damping due to the frictional movement of the
surfaces . . . against each other.” Spec. para. 43. Appellants do not
adequately explain why Snyder’s multiple layers of damping insert member
12 with surfaces for interacting (see Snyder, col. 3,11. 29—32) do not move
relative to each other in frictional contact. As discussed supra, the use of the
term “interacting” indicates movement. Nor do Appellants adequately
explain why Snyder’s positive damping to dampening vibrations (see
Snyder, col. 3,11. 7—13 and 11. 29-32) is not frictional dampening to dissipate
vibration. As such, Appellants do not persuasively argue that Snyder’s
multiple surfaces interacting to provide positive and/or interfacial damping
is not frictional damping, as found by the Examiner. See Ans. 4—5.
Appellants make additional arguments that the damping insert of
Snyder is integral with the disc member so that it cannot move. See Appeal
Br. 11—12; see also Reply Br. 14.
As discussed above, we find these arguments unavailing because the
Examiner has established by a preponderance of the evidence that there is
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Application 12/174,163
movement in Snyder either by the elements of the shredded embodiment
moving against each other, or by the shredded element moving against the
face of the insert, in the multi-layer embodiment.
We have considered all of Appellants’ arguments for the patentability
of claim 1, but the Examiner has the better position. Accordingly, we affirm
the Examiner’s rejection of claim 1 as unpatentable over Reynolds and
Snyder. Appellants rely on the same arguments for the patentability of
independent claim 24 (Appeal Br. 12), and for the same reasons discussed
regarding the rejection of claim 1, we affirm the rejection of claim 24 as
unpatentable over Reynolds and Snyder. Appellants make no additional
arguments for claims 2, 3, 6—10, 20, 21, and 25—32 (Appeal Br. 12), all of
which depend from either claim 1 or claim 24, and these claims fall with
claims 1 and 24.
Rejections (III)-(V)
Appellants make no additional arguments for the patentability of
claims 4, 13—19, 22, and 23, which depend directly or indirectly from claim
1. Appeal Br. 13—14. Accordingly, claims 4, 13—19, 22, and 23 fall with
claim 1.
DECISION
The Examiner’s rejection of claims 28 and 29 under 35U.S.C. § 112,
second paragraph, is reversed.
The Examiner’s rejections of claims 1—4, 6—10, and 13—32 under 35
U.S.C. § 103(a) are affirmed.
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Application 12/174,163
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l)(iv).
AFFIRMED
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